DI 2019: Entitlement, third party observations, missing claims, priority, debit accounts

The DI part of the 2019 D paper again had a variety of topics. Scoring about 20 marks in 1,5 hours or 25 marks within 2 hours seems feasible for a well-prepared candidate. How many marks one can achieve does not only depend on the legal knowledge and familiarity with the material, but also depends strongly on the strategy chosen for the D paper as a whole, especially how much time a candidate allocated for DI (some may choose to use only 1,5 hours for DI to have 4 hours for DII), how many marks were targetted, and how the candidate planned to deal with and actually dealt with difficult questions (skip or struggle, impose time limit or continue until no more ideas, ...).

We want to emphasize that our answer is not a typical answer of a candidate sitting the exam. It is the combined or at least cross-checked answer of experienced tutors. But even experienced tutors are not flawless, so our answer may not be fully complete, or even wrong as to certain aspects. We welcome any comments!

Our answers to the DI-part of the 2019 paper are given below:

(For DII, see here; for general impressions to D as a whole, see here).

Q1 (9 marks)

EPC
EP-A has received R71(3) communication with text intended for grant.
To make use of entitlement under Art. 61(1) EPC, EP-A must not be granted yet – R.16(2)(b).
As R.71(3) was issued today, EP-A is not yet granted and still pending.

Actions before the EPO for company B:

(a)
·          Request EPO to stay grant proceedings, and provide evidence that B has instituted entitlement proceedings against applicant A at competent national court in EPC state – R. 14(1) EPC.
·          Do this today or a.s.a.p. The EPO will stay proceedings.
·          Assuming decision is favourable to B, provide evidence of this to EPO within 3 months after decision became final – R. 16(1)(a).
·          For EP-A to proceed to grant, inform EPO that company B will prosecute EP-A as its own application – Art. 61(1)(a).
·          EPO will resume proceedings on a date specified in a communication sent to company B – R. 14(2).
·          The non-elapsed time of the 4m period to respond to the R. 71(3) communication (which was issued today) starts to run again from the date of resumption – R. 14(4). If stay is requested today, company B will have full period to respond.
·          Within this period, file amended claims - R. 71(6). Delete original claim 3 and file new claim 1 as combination of original claim 1 and 2. Give basis for amendments [R. 137(4)]. Since original claims 1 and 2 were allowable, the examiner will have no objection to the new main claim. Bring description into conformity.
·          If speed is desired, immediately file translation of new claim 1 into other two official EPO languages; pay fee for grant and printing [Rfees2(1).7] and waive right to receive further R. 71(3) communication [GL (2017) C-V, 4.11; OJ 2015, A94 or OJ 2015, A52].
·          Period for paying renewal fees is not interrupted – R. 14(4) -, but their due date is deferred until the date the proceedings are resumed – GL (2017) E-VII, 1.5 mutatis mutandis / J 902/87 mutatis mutandis. So, any renewal fee falling due between the date of stay and the date of resumption must be paid by the date of resumption.
·          EP-A will be granted to company B.

(b)
·        At the latest on the day before the mention of the grant of EP-A (or as long as EP-A is pending), file a divisional application with original claim 3 as main claim – Art. 76, R. 36(1) EPC.
·        File divisional in same language as EP-A – R. 36(2).



Q2 (7 marks)
PCT-X was field in English without priority at EPO as rO on 13/04/2017.
PCT-X claims:
1. product A
2. product A + feature B
Client considers 2 unclear and has prior art document showing product A.

What can client do...?

(a) ...during International phase:
·       File 3rd party observation with IB regarding lack of novelty of claim 1  – AG-IP 11.109-11.117; Euro-PCT Guide (2018) 374; GL/PCT-EPO (2017) E-II.
·       This can be after publication of PCT-X, i.e. 18m from priority date 13/04/2017 -Art.21(2)(a) PCT-, so promptly after 13/10/2018, and before 28m from priority, so until 13/8/2019 – AG-IP, 11.110.
·       Documents published before PCT filing date and relevant for novelty (inventive step) are considered – AG-IP, 11.116.
·       Submit document disclosing product A via ePCT – AG-IP, 11.111 – and explain that it destroys novelty of claim 1, using language of publication, i.e. English.
·       Observations about clarity are not allowed -AG-IP 11.109- and would be rejected, so nothing can be done about claim 2 in international phase.

·       The document and observations will be transmitted to competent ISA and/or IPEA, which will take them into account when drawing up the relevant report, if received in time – AG-IP, 11.117.
·       The document and observations will be available for inspection via PATENTSCOPE
·       The document and observations will be forwarded to dO/eO.

 (b) ...regional phase before EPO:
·       3rd party observation can also be filed with EPO while Euro-PCT-X is pending – Art. 115 EPC.
·       Submit observations in writing – in EN, FR or DE language, and state grounds – R. 114(1).
·       Grounds:
o   claim 1 lacks novelty, and provide published document as evidence;
o   claim 2 lacks clarity and explain why.
·       EPO accepts observations on all aspects of patentability, including novelty and clarity under Art. 84 - GL (2017) E-VI, 3.

·       If observation about novelty were filed in PCT phase as outline in (a), the EPO as dO/eO will take them into account – OJ 2017, A86
·       EPO as dO/eO will expedite first OA if they were not file anonymously and if explicitly requested – OJ 2017, A86; EPG (2018) 580 & 586.

·       The observation can be submitted at any time while Euro-PCT-X is pending, but will only be taken into consideration by the examining division if received before decision to grant is handed over to EPO internal postal service – GL (2017) C-V, 6.1.

·       Remark: as the question indicated “…while the competitor’s application is pending…”, opposition is not discussed



Q3 (9 marks)

Last month, X was filed on last day of priority period, claiming priority from earlier DE1.DE1 describes capsules made from Al, and claims capsules made from Al and capsules made from metal.
X has same description as DE1, but forgotten to file the claims with application X.
In priority interval, an article disclosing capsules made from Al and capsules made from metal was published.

Applicant wants protection for capsules made from Al and capsules made from metal.

(a)      PCT-X (PCT)
·          Currently, PCT-X has not been accorded a filing date because no claims were filed. This is a missing element – Art. 11(1)(iii)(e). Can be remedied.
·          Priority of DE1 was claimed on filing and PCT form PCT/RO/101 contains statement of incorporation of reference under R. 4.18, so possible to confirm under R 26 (a) that missing claims are incorporated by reference.
·          Applicant C can do this of his own accord now.
·          The EPO as rO will most likely spot the defect and invite C under R. 20.3(ii) to confirm that missing claims are incorporated by reference within 2 months from date of communication – R. 20.7(a)(i). If no invitation is sent, C has at least until 2 months from date when PCT-X was submitted to EPO – R20.7(a)(ii)-.
·          Within this time limit, C must also submit a copy of DE1  - R. 20.6(ii) -  and provide the missing claims on sheets as contained in DE1 - R. 20.6(i).
·          The claims are deemed to have been received on the date when PCT-X was submitted – R. 20.6(b), so PCT-X is accorded the last day of the priority period as the international filing date.
·          Assuming priority is valid, the effective date of claims is the filing date of DE1. Article published afterwards, so not relevant for patentability and C can get protection for capsules made from metal and from aluminium.
·          Remark: AG-IP 6.028, EPG (2018) 81-84 and GL/PCT-EPO (2017) B-III, 2.3.3 and H-II, 2.2.2 may have been helpful to answer this question.

(b)          EP-X (EPC)
·          Only missing parts of description or drawings can be incorporated under R. 56(3) EPC, so not claims.
·          Claims don’t need to be submitted on filing, but must be present – Art. 78(1)(c), R.57(c).
·          Applicant C can file claims of his volition today, or has until 2 months from notification of invitation from EPO under R. 58 to file them.
·          The late-filed claims are regarded as amendments under Art.123(2) EPC – GL (2017) A-III, 15, which cannot extend beyond filed description and any drawings.
·          Capsules made from aluminium are disclosed in description, so can be claimed in EP-X without violating Art. 123(2).  Assuming priority is valid, eff date of the claim is the filing date of DE1 -Art.89-, published article is not prior art -Art.54(2)- and protection can be obtained for Al capsules.
·          Capsules made from metal not disclosed in description, so cannot be claimed in EP-X. Protection not possible for capsules made from metal.

·          Filing a new application for capsules made from metal will not help. Too late to claim priority of DE1 (the 12m period expired 1 month ago) – Art.87(1)- and published article would be novelty-destroying Art. 54(2) prior art for a new claim.



Q4 (7 marks)

30 May 2918  EP1 granted to Y claiming device A
16 June 2016  EP1 filed, claiming priority from KR1
19 Nov 2015  CA1 published
30 June 2015  KR1 filed by Y in Korean
14 May 2014  CA1 filed by Y discloses device A

(a)  Yes
·        Claim 1 directed to device A cannot validly claim priority from KR1 – Art 87(1). Although EP1 was filed within 12m priority period of KR1 (30/6/15 + 12m -> 30/5/16, possibly plus R.134(1)), and both were filed by Y, KR1 is not Y’s first application for device A.
·        CA1 also discloses device A and was filed on 14/5/14, so before KR1 was filed on 30/6/15. CA1 is thus Y’s first application. Also not possible for KR1 to be considered first application in meaning Art. 87(4) because KR1 was filed in a different State (KR) than CA1 (CA), and was not withdrawn before filing of KR1 because CA1 was published on 19/11/15, well after KR1 was filed.
·        Too late for Y to remedy this by adding a priority declaration to CA1, as that should have been done within 16m from CA1’s filing date, so by 14/5/14 + 16m (R.52(2)) -> 14/9/15 (plus possible R.134(1) extension)
·        Effective date of sole claim is thus EP1 filing date: 16/6/2016.
·        CA1 was published before this date and also discloses the claimed device A, such that CA1 is novelty destroying Art. 54(2) prior art.

·        File opposition and pay opposition fee before 30/5/ 2018 + 9M – Art. 99(1)
·        So before 28/02/2019 (Thu) – R 131(4)
·        Based on the ground of lack of novelty – Art. 100a – and submit CA1 as evidence – R.76(2)(c).
·        EP1 will be revoked – Art. 101(2).

(b)  No
·       The patent proprietor Y can be asked to provide a translation of the priority document by the EPO under R. 53(3), but only if validity of priority claim is relevant for the assessment of patentability – GL (2017) A-III, 6.8
·       The contents of KR1 are not actually relevant for assessing the validity of the priority claim, as the priority claim from KR1 can never be valid in view of CA1 (see a)).
·       KR1 also not needed as evidence, so also need for EPO to request a translation under R. 3(3).



Q5 (8 marks)
PCT-X has two seperate inventions. EPO indicated as ISA on PCT/RO/101. Automatic debit oder filed.
Received invitation to pay one additional seach fee dated 25/01/2019.
Received email today, 26/02/2019, informing you that deposit account didnot contain sufficient funds.

What will ISR and WO-ISA cover...?

PCT
(a)
...if you replenish your account to the amount of the additional search fee today?

·        Time limit to pay additional search fee:
25/01/2019 + 1m  [Art.17(3)(a), R. 40.1(ii), R.80.2] -> 25/02/2019 (Monday)
·        EPO = ISA, so fees must be paid directly to EPO – R. 40.2(b)
·        EPO allows automatic debiting for payment of additional search fee – AAD (2017), 2.1(e) and in particular 3.3(i)
·        Payment is normally considered to have been received on last day of the period 25/02/2019 – AAD, 6.2(a), but insufficient funds on that date, so not executed – AAD, 7.1- and applicant informed.
·        Payment considered made on date of replenishment – AAD, 8 –, so today = 26/02/2019
·        But that is 1 day too late.
·        Fee not paid in time, so second invention will not be searched and ISA+WO will cover 1st invention only – Art. 17(3)(a); also GL/PCT-EPO (2017) B-VII, 6.2

(b)
...if, on 14/02/2019, you gave an order to a banking establishment in an EPC state to transfer EUR 10.000 to the despit account?

·        Rfees7(3)(a) and (b), second half-sentence apply to replenishment payments of deposit accounts – ADA (2017), 4.1.
·        Order to replenish account was given to bank in EPC state on 14/2/19, 11 days before period to pay expired on 25/02/2015 -RFees 7(3)(b).
·        Provide evidence of order date to EPO and payment is considered made in time – Rfees7(3)(a)(ii).
·        No surcharge needs to be paid – ADA 4.1, Rfees7(3)(b), 2nd half-sentence.
·        The EPO will correct the debit with effect for the original decisive payment date – AAD, 9.2.
·        10,000 euros sufficient to cover amount of additional search fee of EUR 1.775 – PCT R. 40.2(a), R. 158(1) EPC; Rfees2(1)(2); or EPO-WIPO Agreement OJ 2017, A115 + OJ 2018, A27 + OJ 2018, A35.

·        Second invention will also be searched and ISR+WO will cover both inventions – Art.17(3)(a).


Looking forward to read your comments!

Please do not post your comments anonymously: it is more easy to communicate with a person having a name. Nicknames are fine, real names as well.

If you are looking for the DII discussion: it can be found here (once available)
If you are looking for first and general impressiona about D 2019: it is here.

The D paper will available here in Englishici in French and hier in German (once received).

Roel, Diane, Jelle

(c) DeltaPatents 2019

Comments

  1. Thank you Roel for the preliminary (correct) answers do DI ! I fully agree with your answer (obviously). I would just like to add that I lost a lot of time dealing with the possibility of opposition in Q3 because I did not read that the question was only referring to a pending application.. I also did not read in the AG-IP that clarity is not a ground for TPOs in international phase.. my bad! Thanks again.

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    Replies
    1. Expanding on non-asked topics is a frequent way to lose time, and maybe get into time trouble at the end. I think it may happen to anyone, also to well-prepared candidates: even after a careful reading of the question, you may get carried away by side-tracks or alternative options. You can reduce the risk that this happens by taking some time to understand the question and planning what you need to answer - we give extensive attention to that in our methodology courses. In any exam however, under whatever conditions and certainly in a 5,5 hour exam, you will use precious time to discuss off-topic issues and you will overlook some op-topic issues - as long as you get 50 (or 45) marks, that is all fine!

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    2. I did same mistake. Any way, Roel, from your experience: let's assume Q1, a). It's maybe worth 6P or 7P. In your ideal answer I counted around 19 statements. If I gave only 9 statements but mentioned all Rules and Articles, how many points do I get ? How "crucial" are statements like "Since original claims 1 and 2 were allowable, the examiner will have no objection to the new main claim. Bring description into conformity." ? Thanks.

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    3. I donot know. It probably depends on what you have written exactly, and whether the reasonign was well-linked. Some statements will be moer important then others. If you made your clients lose rights, prpbably that costs more marks than if things are recoverable. Also depends on whether there are inconsistencies. And the marking tables have not been fixed, it also depends on what everyone else has written. We will need to wait.

      In our answer, we try to be so complete that any well-prepared candidate can understand it. For that reason, there may be some detail that is maybe not always needed. You can probably also be more telegram-style than our full-sentence answers. From what we know about the marking, you get marks for evything that is relevant and explicit on paper, also if the wording is not too optimal (we are not all native speakers), as long as it is unambiguous. However, you miss marks if you miss intermediate reasoning steps, even if you considers those to be implicit: you need to show how the system is applied to the case, and guide the marker through your reasoning so he unambiguously and explicitly sees all the steps. But again: we are not in the committee en details on marking methods are of course a well-kept secret, so it may be a bit differnt from what we "reconstruct" and what we ourselves believe is a good and efficient style ;-)

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    4. The Examiner's Report gave for Q.1-a:

      (a) EP-A is not yet granted. The Rule 71(3) EPC communication was issued only today, therefore, according Rule 16(1)(b) EPC, Art. 61 EPC is applicable.
      Company B has to provide evidence to the EPO that it has instituted proceedings against Applicant A. The effect is that proceedings are stayed according to Rule 14(1) EPC and the period for replying to the Rule 71(3) EPC communication is interrupted, Rule 14(4) EPC.
      According to Rule 14(4) EPC, the period for payment of renewal fees is not interrupted.
      Company B should make sure the renewal fees are paid (if not by A, then by B) during the stay.
      Once a final decision in favour of Company B has been taken, Company B has to provide evidence to that effect to resume the proceedings to grant, Rule 14(2) EPC, within 3 months after the decision recognising entitlement has become final, Rule 16(1)(a) EPC.
      Company B has to inform the EPO that it wants to prosecute EP-A as its own application, Art. 61(1)(a) EPC. Company B also has to file a new independent claim based on original claims 1 and 2 upon resumption within the time which has not yet elapsed under Rule 71(6) EPC, (or within 2 months, Rule 14(4) EPC, Rule 71(6) EPC) and delete claim 3.
      Company B can either wait for a new Rule 71(3) EPC communication, or expressly waive a further Rule 71(3) EPC communication, OJ 2015, A52, and at the same time file a translation of the new claims into the other two official languages and pay the fee for grant and publishing.

      Delete
  2. Thank you for the answers. With respect to Q3, in the PCT case, the entire element "claims" are missing. I don't think that can be repaired by incorporation. I think you will get a new filing date, see R 20.5 (a), AG-IP 6.025.

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  3. For Q4(b), I answered 'yes' essentially based on your exact reasoning; i.e. the validity of the priority claim is in fact relevant for the assessment of patentability in this case. So according to R53(3) the EPO shall ask for a translation.

    I then added indeed that, strictly speaking, the content of the priority document needn't be known in this case; because either (i) it does not disclose the same subject-matter and the priority is not relevant for that reason, or (ii) it does disclose the same subject-matter but is therefore not the first filing of that subject-matter.

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    Replies
    1. Hi Ki, you seem to habve overlooked that the patentability does NOT AT ALL depend on the correspondence between the priority document and the claims of the application, because the validity of the priority claim does NOT AT ALL depend on the contents of the priority document - the priority is ANYHOW not valid as the priorty document is not the first application for the subject-matter claimed - the onmly possible valid priority document was the even earlier application!

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    2. Hi Roel, I think you are missing what Ki is saying. Even though the priority is invalid regardless of the content of KR1, the fact whether or not the priority is valid is relevant for patentability. Following the literal words of R53(3), this would mean that EPO will ask for the translation.

      I came to the same conclusion even though it doesnt make sense, but couldnt find any legal basis to conclude they wouldnt ask the translation. I mentioned that they might need it to have the correct reasoning for refusing the right to priority (ie not first application of not same invention - I also think that the option that KR1 is not the same invention should be part of the answer, which your solution doesnt mention)

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    3. Hi Anonymous, no, I was not missing what Ki is saying. But maybe I didnot get my point across.

      The point is that there is NO DOUBT that the priority claim is INVALID. There is no need to be able to understand what is in the priority document (that is the only purpose of the translation): whatever is in it, the priority is anyhow not valid.
      Thus, there is no need to be able to check whether maybe the priority document comprises the same invention as what is now claimed. So, the EPO will not ask for the translation.
      As the invalidity of the priority does not depend on what is in the priority document, the patentability is not at all affected by what is in it (which would be the only reason to ask for the translation), the claim is not novel because published CA1 shows already the same device A sich that the claim to A is not novel -- the patentability does not depend on the question whether the priority is valid or not, as the answer to that question is already known: the priority is not validly claimed because CA1 was the first application from the propritor for A, and not KR1.

      Whether KR1 relates to the same invention (A) or not is NOT relevant: if is does not have it, prio is not valid; if it has it, prio is also nit valid as it is not the first application.

      Maybe you came to a different conclusion from your interpretation of the literal words of R.53(3), but literal interpretation is not always the conclusive interpretation (there would be hardly any G-decisions if that would be the case). The translation of R.53(3) has a clear purpose, which is to check whether priority is valid or not. If priority is already invalid for another reason with absolute certainty, there is no need to ask it.

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    4. The Guidelines (2017) use the wording of Rule 53(3) in most places, but a further clarification is given in F-VI, 3.1:

      "An applicant who wishes to claim priority must file a declaration of priority
      giving particulars of the previous filing, as specified in Rule 52(1), together
      with a certified copy of the previous application and, if necessary for the
      assessment of patentability, a translation of it into one of the EPO official
      languages (see A-III, 6.7 and A-III, 6.8)."

      In Q.4, the translation is not necessary for the assessment of patentability (because there is no issue as to whether prio is valid or not: it is not)

      and in F-VI, 3.4:
      "A translation of the previous application into one of the official languages of
      the EPO is required only if it is needed for determining the validity of the
      priority claim, where this is of relevance to the patentability of the
      underlying invention. T"

      In Q.4, the translation is not necessary for the determining the validity of the priroty claim, because there is no issue as to whether prio is valid or not: it is not, and it is thus not of relevance to the patentability of the underlying invention as it is for sure not novel.

      Maybe these two citations can convince you on how R.53(3) is applied?

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    5. Yes they do convince me, thanks for your elaboration. I did not manage to find these passages during the exam. But since my analysis is correct I expect I will still score some marks(I also assume part A of this questions should attract more marks than part B)

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    6. The Examiner's Report writes:


      "Many candidates failed to see that, irrespective of the contents of KR1, the priority claim is invalid, and therefore the translation of KR1 is not needed for determining the validity of the priority claim."

      and

      "(b) No, a translation is not needed for determining the validity of the priority claim, GL F-VI, 3.4."

      Delete
  4. For Q3 part A I got that the claims could be added as missing parts, but i was worried that the metal claims would violate A84/A83. in particular, it could be argued that the metal isn’t enabled across its whole scope since there’s no description for it. Further, the metal generally is not supported by the description, and adding such description seems only an option for dependent claims (Guidelines F-IV 6.6)

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    Replies
    1. I agree, even though it is OK to add the claims without loosing the priority, a claim directed to capsules made from metal is not supported by the description, as its scope is broader than justified by the description.

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    2. There is no indication at all in the question that there would be an enablement problem for metal. On the contrary, the article discloses capsules made from aluminium and from metal.
      Why would there be an Art.84 problem? Al is a metal, so no conflicts. Metal is supported by an Al example, as Al is a type of metal. There is no indications that Al has some essential features that other metals donot have.
      Without any indication in the question on Art.83/84 issues, and with the real topic clearly being "how can we get claims in these applications", the core parts of the answer must for sure relate to the date effects (yes/no for PCT/EP) and the broadness differences (PCT/EP due to missing elements vs R58-"amendments)".
      I expect that if you conclude "we can get the broad claim in the PCT, but I think it is not enabled / supported", you will probably not lose marks as long as you do indicate that there is no novelty-problem with the PCT. But you will have spend quite some time on discussing topics which are almost certainly off-topic and donot attract marks.

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    3. For Q.3-a, the Examiner's Report gave:

      (a) In the absence of claims, a date of filing cannot be obtained for the PCT application Art. 11.1(iii)(e) PCT. An applicant can file the claims on his own volition Rule 20.7(a)(ii) PCT within 2 months from the date of filing, or the rO will invite the Applicant to correct a deficiency under Art. 11(1) PCT, Rule 20.3 PCT, in response to which he can file the
      claims, Rule 20.7(a)(i) PCT within 2 months.
      The PCT form (PCT/RO/101) automatically includes a statement of incorporation by reference according to Rule 4.18 PCT.
      The Applicant should send a written notice under Rule 20.6(a) PCT, confirming that the missing claims are incorporated by reference, accompanied by sheet(s) containing the claims as contained in the priority application DE1, a copy of the earlier application DE1
      and indication of where they are contained.
      The filing date is then the date when the application was received by the Office, Rule 20.3(b)(ii) PCT. Hence, the priority is validly claimed for both capsules made of aluminium and capsules made of metal.
      Therefore, yes, the applicant can get protection for capsules made of aluminium and capsules made of metal, because the article does not become prior art under Art. 33(2) PCT.

      Delete
  5. Hi Azru and Ro,

    I agree that the applicant might have problems later to get a European patent, IF he enters the European phase with PCT-X. But the question does not ask whether C can get a validly granted European patent. It asks CAN C still get protection and what should he do in (in the PCT phase). The focus of the question is clearly about incorporation to obtain a PCT filing date and get a valid priority for metal capsules.

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  6. Thanks for your answers!

    No need to also mention the Protocol on Recognition in answer to Q.1? I mentioned Art. 9 or the Protocol.

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    Replies
    1. It is a relevant comment in the answer to support that the decision by the competent court (you cannot know from which state in this question, is also not relevant) needs to be recognized in all EPC states. Art. 9 Protocol together with R.16(2). I would not expect this to be needed for full marks, as there is nothing in the question that hints to the need to discuss it, but maybe it is.

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    2. Hi Anonymous 5 March 2019 at 13:00,
      The Possible Solution in the Examiner's Report does not mention the Protocol on Recognition.
      I think the absence of any mention of any specific state in the question may have been a hint that it was not needed. Also, the question refers to "proceed to grant" and not to "in which states can he get a grant" or alike.

      Delete
  7. You mention AG-IP (I assume that is the Introduction to the Applicant's Guide International Phase) and the Euro-PCT Guide in answering Q.2.
    However, these are not part of the EQE syllabus as specified in Rule 22(1) IPREE.
    Why do you cite them?

    JL

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    Replies
    1. Hi JL,

      They are indeed not mentioned. But they are sometime accepted as legal basis, e.g. as alternative if other legal basis is difficult to find, or if they are the only reference that gives the answer. Note that Rule 22(1) IPREE does not have an exhaustive list, it says "at least the following documents". Lastly, we also give those references to indicate HOW you could have found it "relatively easily" (compared to struggling with the PCT Articles and Rules itself - wherein you would not have found any legal basis addressing third party observations); these sources give the "real" legal basis in the margin.

      By the way, the WIPO makes a compilation of AG-IP general introduction as well as annexes especially for EQE candidates "with the agreement of the Examination Board for the EQE". That an agreement is (suggested to be) needed suggests that the Examination Board will also accept it as a legal source, donot you agree?
      See https://www.wipo.int/pct/en/eqe/index.html:

      "EQE Candidates
      PCT Applicant's Guide
      (Special edition as of 31 October 2018 prepared for EQE candidates)
      Materials for the European Qualifying Examination (EQE)

      In order to assist candidates in the preparation of training materials for the European Qualifying Examination (EQE) for prospective European patent attorneys, the International Bureau, with the agreement of the Examination Board for the EQE, has made available below two PDF files for the PCT Applicant's Guide containing the International Phase and the National Phase as of 31 October 2018.

      International Phase PDF (6,587 KB)
      National Phase PDF (17,730 KB)"

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    2. For Q.2, the Examiner's Report gave as Possible Solution:

      "(a) In the international phase, third party observations may only be filed electronically at the IB, GL/PCT-EPO E-II, within 28 months from the international filing date.
      The 28 months expire on 13 August 2019. The 3rd party observations may only relate to novelty and inventive step.
      Therefore, claim 2 cannot be objected to under clarity in a third party observation, because observations relating to clarity, Art. 6 PCT, will not be communicated to any international authority, and will not be open to public inspection.
      The client should file a third party observation relating to lack of novelty (Art. 33.2 PCT) claim 1 in view of the document.

      (b) Third party observations can be filed according to Art. 115 EPC once the application has entered the European regional phase and may also relate to Art. 84 EPC according GL E-VI, 3.
      The client should file a third party observation under (Art. 115 EPC) raising lack novelty view of the disclosure against claim 1 and raise a lack of clarity objection for claim 2."

      and commented:

      "While third party observations may address an alleged lack of clarity under EPC, third party observations concerning a lack of clarity are rejected when filed under PCT. More candidates than expected missed this issue.
      It is important to carefully read the question. The specification “while the competitor’s application is pending”, render arguments relating to opposition moot"

      Delete
  8. Do you think "EPO-WIPO Agreement OJ 2017, A115 + OJ 2018, A27 + OJ 2018, A35." is needed for full marks in Q.5? I referred to RFees 2(1).2 and R.158(1).

    JL

    ReplyDelete
    Replies
    1. I donot know. In principle, you would need a legal basis in the PCT for the applicability of EPC Rules and EPC RFees - R.40.2(a) could be cited to get the link to the R.158(1) EPC and RFees 2(1).2 EPC.
      We prefer to also cite the EPO-WIPO Agreement (Art.16(3)(b) PCT), as the procedure before the EPO as ISA is governed by the PCT Art and Rules and that Agreement (Art.17 PCT). The fees that the EPO sets as ISA (or SISA or IPEA) are specified in Annex D, part I of that Agreement (OJ 2018, A35).

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    2. Hi JL,

      The Examiner's Report to Q-5-b) just said "[because] € 10 000 is more than sufficient", but surprisingly did not mention the amount of the fee that was actually to be paid. Also the question does not mention the amount in EUR, it just says (in a) "the amount of one additional search fee".
      It appears that, without the need to specify the amount, there was also no need to mention the EPO-WIPO Agreement, nor R.158(1) and RFees 2(1)2.

      Delete
  9. The results are out!

    See https://eqe-deltapatents.blogspot.com/2019/06/results-eqe-2019-available.html for statistics.

    the Examiner's Reports are not yet available.

    ReplyDelete
    Replies
    1. The Examiner's Report is now also available:

      https://www.epo.org/learning-events/eqe/compendium/D.html --> http://documents.epo.org/projects/babylon/eponot.nsf/0/837BCDDD81C9ADCBC125841E00407479/$File/ExRep_D_2019_EN_for_web.pdf

      Delete
    2. Some comments from the Examiner's Report:

      "Examiners’ Report Paper D 2019

      Purpose and extent of the examiners' report
      The purpose of the present examiners' report is to enable candidates to prepare for future examinations (cf. Art. 6(6) of the Regulation on the European qualifying examination for professional representatives).

      General comments
      Candidates are reminded that they should pay attention to the way the questions are asked and should not simply repeat information from the paper in the answer. Repeating information per se is not awarded any marks.

      Alternative answers, one being correct and one being wrong, to the choice of the markers do no attract any marks.

      In Part I, full marks were only awarded when the full legal basis was cited to support the analysis. Citing only the legal basis without any further explanation or reasoning does generally not attract any marks. However, alternative relevant legal bases also attracted marks.

      An unnecessary amount of points was sometimes lost due to miscalculation of time limits.

      It is still noticed that candidates skip entire questions from D1. However, these candidates typically do not pass. All-round knowledge of the syllabus, as tested in Part I, is required to successfully do the legal assessment in Part II.

      Candidates are reminded that the PCT questions may make up a substantial part of paper D.

      Examiners’ Report Paper D 2019 – Part I (selected comments)

      Q.2: It is important to carefully read the question. The specification “while the competitor’s application is pending”, render arguments relating to opposition moot.

      Q.5: "This question was generally not well answered. Essential in this question were the Arrangements for Deposit Accounts (ADA) and its Annex A.1, the Arrangements for the automatic debiting procedure (AAD). "

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    3. Our Answer corresponds largely to the Possible Solution in the Examiner's Report.

      In some answers, we miss a remark (e.g., that the divisional can only be filed after resumption in Q.1-b); in some other answers, we are more extensive (e.g., Q.5-a and Q-5-b). I estimate that our answer would have achieved about 34-37 marks or more.

      We disagree with the official answer as to on aspect: the legal situation with the renewal fees in Q.1.a.
      The Examiner's Report says that:
      "According to Rule 14(4) EPC, the period for payment of renewal fees is not interrupted.
      Company B should make sure the renewal fees are paid (if not by A, then by B) during the stay."
      Our interpretation of Rule 14 is however different: Rule 14 only refers to periods for renewals, not to due dates. Various case law in various cituation clarifies that the due date of R.51(1) is not a period (wheras the 6m of R.51(2) is a period) - see e.g., J 4/91, r.r.3.2, which says “a "due date" is not a "time limit" which can be "extended".”; J 1/81; J 902/87.
      Further, the Guidelines clarify in A-IV, 2.3 that: "Stay of proceedings implies that the legal status quo existing at the time of the suspension is maintained, i.e. neither the EPO nor the parties can validly perform any legal acts while proceedings are suspended (J 38/92)." So, a payment would not be considered valid - and can thus not be required in the stayed period.
      Based on this set of case law, we interpret the reference to periods in R.14 and the lack of references to due dates for renewals in R.14 to be the same as in R.142 for interruption. Therefore, the Guidelines as well as the case law are clear (GL E-VII, 1.5; J 902/87):
      - any renewal fee falling due between the date of stay and the date of resumption must be paid by the date of resumption;
      - any 6m period already running at the date of the stay is not interrupted, so that the 6m may expire in the stayed period, but it may be validly paid on the date of resumption (J 902/97 mut.mut.; principle of J 1/81).
      Our answer therefore reads:
      " Period for paying renewal fees is not interrupted – R. 14(4) -, but their due date is deferred until the date the proceedings are resumed – GL (2017) E-VII, 1.5 mutatis mutandis / J 902/87 mutatis mutandis. So, any renewal fee falling due between the date of stay and the date of resumption must be paid by the date of resumption."
      If anyone is aware of any case law that gives the conclusive answer (on renewal fees falling due in the stayed period; on the last day to validly pay the renewal fee when the 6m period is already running at the date of stay; and -if the new due dates are not deferred- how to deal with the 6m periods of renewals falling due during the stay, esp if that 6m also expires during the stay) and it would be highly welcomed!

      Delete
    4. Hi Roel,
      I agree with your conclusions.
      Case Law Book, III.M.3.1.1 (page 773, English version, 8th edition):
      "Suspension of the proceedings for grant meant that the legal status quo existing at the time they were suspended was maintained, i.e. neither the EPO nor the parties might validly perform any legal acts while the proceedings were suspended (J 38/92 and J 39/92)."
      No reason why fee payments would not be in the scope of the "legal acts".
      Deferring due date and allowing payment of the additional fee at the date of resumption are only consistent legal conclusions for Rule 51(1)EPC and Rule 51(2) EPC.
      Moreover, if legal acts cannot be performed, then legal sanctions can also not take place: must at least be possible to validly act on date of resumption and legal effect of non-performance cannot take place before the date of resumption.

      Delete
  10. In Q.1's answer, Delta has same answer as I on renewals. Delta writes:
    "Period for paying renewal fees is not interrupted – R. 14(4) -, but their due date is deferred until the date the proceedings are resumed – GL (2017) E-VII, 1.5 mutatis mutandis / J 902/87 mutatis mutandis. So, any renewal fee falling due between the date of stay and the date of resumption must be paid by the date of resumption."

    But the Examiners Report has:
    "According to Rule 14(4) EPC, the period for payment of renewal fees is not interrupted. Company B should make sure the renewal fees are paid (if not by A, then by B) during the stay."

    Which is correct? Guidelines donot give the answer. I cannot find Case Law.

    If Delta is correct, how many marks can I win if I appeal?

    ReplyDelete
    Replies
    1. Afaik, GL2017 E-VII, 1.5 and J902/87 both relate to an interruption of the proceedings under R142, not to a stay of the proceedings under R14.

      In the former situation, the party is somehow unable to act; in the latter, there is contention between two parties about who can rightfully act, but they are not unable to do so (and anyone can rightfully pay fees).

      So, in my humble opinion, to apply the reasoning of J902/87 directly onto R14(4) (which what the 'mutatis mutandis' seems to imply) is not a trivial matter.

      Delete

    2. It is correct that E-VII, 1.5 and J 902/87 do not relate to stay, but to interruption, but that does not mean that they are not relevant. They both relate to the meaning of "due date" and "period". As R.14 does not define what happens with the due date of R.51(1) (only what happens with periods, such as the period of R.51(2), but R.14 does specify that the period is stayed, it can only mean that the due date is deferred -- for the same reasons as with R.142.

      J902/87 clarifies that a "due date for a renewal" acc. R.51(1) is not a "period" in R.142. And for that reason, the new due dates are deferred, not interrupted, stayed, or whatever. Same wording (period) used in R.14(4), so also for 14(4), "due date" is not a period in the sense of that Rule.
      Same difference between "due date" and "period" is made in J 4/91, r.r.3.2, which says “a "due date" is not a "time limit" which can be "extended".”, i.e., a due date for a renewal fee falling on a weekend day is not shifted, whereas a period ending on a weekend day [e.g., the 56-m period of R.51(2)] is extended to the next Monday (J 1/81, hn.II & r.5-6 ).

      Requiring a payment or any other act during the stay is also not in line with the nature of the stay: J 38/92. Gl A-IV, 2.3 reads: "Stay of proceedings implies that the legal status quo existing at the time of the
      suspension is maintained, i.e. neither the EPO nor the parties can validly perform any legal acts while proceedings are suspended (J 38/92)." So, a payment would not be considered valid - and can thus not be required in the stayed period.

      Delete
    3. Unfortunately, one cannot tell from the Examiner's Report if any marks where lost if the above argumentation was followed (due date is not a period; due dates for any renewal fee falling due during stayed period are suspended to date on which proceedings are restarted; 6m-periods running at the date of stay are not interrupted hut this renewal fee and it additional fee can be validly paid at the date on which proceedings are restarted) together with the nature of the stay (J 38/92; GL (2017/2018) A-IV, 2.3 r3). In view of (as far as we are aware of) lack of case law that the "periods" in R.14 are to be considered differently as in R.142/J 902/87 and R.51(2)/J 1.81, such interpretation can not be considered wrong in my view, i.e., a "due date" under R.51((1) is not a period and thus deferred, and the 6m period is not interruputed but valid payment if the fee with additional fee can be dine until the datre proceedings are restrated. As we argued above, a different interpretation may not be corrrect, or at least not in line with those decisions.

      In view of the general principle that marks are also awarded for answers that deviate from the expected answer, if the given answer shows that the candidate is fit to practice, if "reasonable and competently substantiated" (see e.g., D 20/17, r.3.4), such answer should ion my view also be awarded (full) marks.

      It could be that such answers did (and I expect so), but unfortunately that cannot be understood from the Examiner's Report, despite its purpose being "to enable candidates to prepare for future examinations (cf. Art. 6(6) of the Regulation on the European qualifying examination for professional representatives)" [see opemning paragraph in the Examner's Reports of each of the main exam papers]. The latter citation implies -in my view- that the Examinier's Report should not only present a single "Possible Solution" but also a wide range of alternative solutions and an indication of the marks attracted by those, as is done for example in the Examiner's Solutions for alternative (non-optimal) solutions for paper A - and that this should also reflect in the marking.

      Note: D 20/17, r.3.4: “It is established case law that the examiners are obliged to allow for fair marking of answers which deviate from what was expected according to the examiners' report, but are reasonable and competently substantiated (see inter alia D 7/05, OJ EPO 2007, 378, Headnote II and Reasons 13; D 12/82, OJ EPO 1983, 233, Reasons 3). This obligation follows from the object of the qualifying examination, which is to establish whether a candidate is fit to practise as a professional representative (Article 1(1) REE); [...].”

      (See also "Roel van Woudenberg 21 June 2019 at 12:22 "Comparison of Examiner’s Reports for the various papers." on the Results Blog (http://eqe-deltapatents.blogspot.com/2019/06/results-eqe-2019-available.html)

      Delete
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    ReplyDelete

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