D 2022 - The DI part
- D1-1 had 3 questions, for a total of 26 marks, and had to be done from 9:30-11:00.
- D1-2 also had 3 questions, for a total of 19 marks, and had to be done from 11:30-12:40.
Q.1, 8 marks, addressed re-establishment in respect of the further processing period (failure to answer an office action), as well as any missed fees, esp. renewal fees without and with additional fee (Rule 51(4) EPC).
Q.2, 10 marks, addressed correction of an obvious error in the description after a Rule 71(3) communication was received, getting a grant a.s.a.p., and validating in the Netherlands. For a correct answer, a candidate should have been aware that the waiver for a further R.71(3) is no longer available [OJ 2020, A73], so that he had to use R.71(6) and wait for a new R.71(3). Also, do not forget PACE examination. Some candidates may have forgotten to address validation in NL.
Q.3, 8 marks, was about SIS (PCT R.45bis) for a non-claimed non-unitary invention, and EP entry with such not-(yet)-claimed, non-searched invention (ISA=CNIPA & EPO=SISA only searched claimed, main invention). The Euro-PCT Guide 3.4 (esp. 3.4.007 & 3.4.019-3.4.021) and/or the GL/PCT-EPO B-XII could have been of great help in answering this question. Amendment on entry under R.159(1)(b) or before expiry of the 6m period of R.161(1)/162 to include a claim to the second invention and subsequent R.164(2) EPC had to be discussed (GL E-IX, 4.2 and C-III, 2.3).
Q.4, 6 marks, addressed enablement of product/method (with reference to another application for the start material) and the effect of a non-enabled prior art (and resembled a situation in DII 2010) and non-enabled priority - Guidelines F-III, 8 and H-IV, 2.2.1 could have been of help.
Q.5, 5 marks, was about novelty of a claimed range (5-40%) that claimed (partial) priority - see G 1/15 or GL (2022) F-VI, 1.5- of an earlier application with a narrower range (10-20%), and the effect of a public disclosure that was clearly erroneous but of which it was also clear what it should have been- see Guidelines G-IV, 9.
Unfortunately, the date of the disclosure was erroneously given as December 2017 in the English version -so that the disclosure was prior art irrespective of priority being valid, partially valid or not valid at all-, while it should have been 2019 as in the German and French version; as a consequence, the claim was not new in the English version, while it was new in the German and French version.
Q.6, 8 marks, was about withdrawal of the opposition in first instance (situation 1: a&b) and in appeal (situation 2: c&d). Aspects like own motion of the OD -Rule 84(2)- and, in appeal, G 8/93, had to be addressed. It was also asked what the proprietor could do in first instance (request maintenance in amended form) and before the EPO after the appeal (limitation Art.105a).
We look forward to your comments!
Comments are welcome in any official EPO language, not just English. So, comments in German and French are also very welcome!
Part I: Legal Questions
Question 1: 8 marks
Question 2: 10 marks
Question 3: 8 marks
European patent application EP-F was filed in January 2017 by applicant F. The EPO
issued a communication under Article 94(3) EPC dated 1 September 2020 and which
sets a time limit of four months. Thereafter no acts, including the payment of fees, were
performed with respect to EP-F. Since applicant F did not reply to the communication,
the EPO issued a communication dated 4 March 2021 notifying a loss of rights under
Rule 112(1) EPC.
Despite exercising all due care required by the circumstances, applicant F only became
aware of the notification of loss of rights on 3 February 2022.
By when do these steps have to be performed?
On 22 February 2019 applicant B filed a European patent application EP-B in English
with 15 claims. The European Patent Bulletin mentioned the publication of the European
search report in August 2020. In the examination phase, applicant B filed an amended
set of 16 claims.
applicant B that it intended to grant a patent based on EP-B with these 16 claims. Since
this communication, no acts have been performed by or on behalf of applicant B.
Today you receive a phone call from applicant B asking you to correct before the EPO a
spelling mistake in one of these 16 claims, the correction of which is obvious.
Furthermore, applicant B wants the European patent based on EP-B to be granted as
soon as possible and to take effect in the Netherlands.
Chinese company C filed an international application PCT-C on 26 May 2020 with the
Chinese Patent Office (CNIPA) as receiving Office. PCT-C was filed in English without
claiming priority. The only claim of PCT-C pertains to subject-matter C1, and its
description discloses subject-matter C1 and subject-matter C2. Subject-matter C1 and
subject-matter C2 are not linked by a single general inventive concept.
The international search report (ISR) was established by CNIPA on subject-matter C1.
established by the EPO.
(a) What should be done to request the SISR for subject-matter C1?
(b) Can the SISR cover subject-matter C2?
European phase as Euro-PCT-C. Company C would like to obtain protection in
Europe for subject-matter C2 instead. Can Euro-PCT-C be examined for subject-matter C2?
This Paper comprises:
Part I: Legal Questions
Question 4: 6 marks
Question 5: 5 marks
Question 6: 8 marks
Applicant D filed European patent application EP-D1 in January 2019. EP-D1 discloses
a new raw material D1 and a method for obtaining it. EP-D1 was withdrawn in
April 2019.
In March 2019, applicant D filed European patent application EP-D2 disclosing a method
for producing a new product D2 starting from the raw material D1. EP-D2 does not teach
how to obtain the raw material D1. Instead, the description of EP-D2 merely refers to the
relevant part of EP-D1.
In February 2020, applicant D filed European patent application EP-D3 claiming priority
from EP-D2. EP-D3 claims the same product D2 as disclosed in EP-D2. EP-D3
discloses the same method for producing D2, but from raw material D3. Raw
material D3 has been available to the public since 2019.
Applicant D becomes aware of European patent application EP-D4, which was filed in
January 2020 by a different applicant and published in July 2021. EP-D4 discloses
product D2 and a method for producing D2 from raw material D3, the method being
identical to the one disclosed in EP-D3.
(b) Is the subject-matter of the claim to product D2 in EP-D3 novel?
On 2 June 2020 company E filed European patent application EP-E claiming a
composition comprising 5-40% of compound E1. EP-E claims the priority of a previous
patent application JP-E filed with the Japan Patent Office by company E on 30 May 2019.
JP-E discloses a composition comprising 10-20% of the compound E1.
The examiner cited an article disclosing a composition comprising 40% of the
compound E1 and published in December 2017*. When analysing the technical teaching of
the article, the skilled person would immediately recognise that the disclosure is erroneous
and that the only possible correction would be a composition comprising 15% of the
compound E1.
European patent EP-A was granted with independent claim 1 directed to apparatus A1
and independent claim 2 directed to apparatus A2.
Consider the following situations independently:
according to Article 54(3) EPC and discloses apparatus A1 only. The sole opponent
withdrew the opposition the day after the opposition period expired.
(b) What can the patent proprietor do to address the lack of novelty?
together with a document D1. D1 is prior art according to Article 54(3) EPC and
discloses apparatus A1 only. The opposition was subsequently withdrawn.
(d) What steps can be taken before the EPO to address the lack of novelty?
This comment has been removed by the author.
ReplyDeleteQ.6: "The sole opponent withdrew the opposition the day after the opposition period expired."
DeleteG 8/93, headnote: "The filing by an opponent, who is sole appellant, of a statement WITHDRAWING HIS OPPOSITION immediately and automatically terminates the appeal proceedings, irrespective of whether the patent proprietor agrees to termination of those proceedings and even if in the Board of Appeal's view the requirements under the EPC for maintaining the patent are not satisfied."
G 8/93, reason 2: "2. Since once the Opposition Division has taken its decision the proceedings on the opposition cease to be pending before it, a procedural act taken by a party in subsequent proceedings can only relate to the latter and their subject. In an appeal by an opponent, what is at issue in the appeal proceedings is whether there are any grounds for opposition which prevent maintenance of the patent as granted or amended. WITHDRAWAL by the opponent and appellant OF HIS "OPPOSITION" can therefore only mean that he no longer wishes the Board of Appeal to rule on the matter. Logically, this can only be REGARDED AS WITHDRAWAL OF THE APPEAL. Where withdrawal is by the sole opponent and appellant, this - as the Enlarged Board of Appeal has ruled in decisions G 7/91 and G 8/91 (OJ EPO 1993, 346 and 356) terminates the appeal proceedings as far as all substantive issues are concerned."
Hi, can we use R.125.4 for the first question instead of re-establisment?
ReplyDeleteEh, I do not think so.
DeleteI assume you want to use it for the notification of the loss of rights communication dated 4 march 2021?
Rule 125(4) EPC says: "Where a document has reached the addressee, if the European Patent Office is unable to prove that it has been duly notified, or if provisions relating to its notification have not been observed, the document shall be deemed to have been notified on the date established by the European Patent Office as the date of receipt."
But the question does not indicate that the loss of rights communication dated 4 March 2021 was not delivered or was delivered late.
The question merely says "Despite exercising all due care required by the circumstances, applicant F only became aware of the notification of loss of rights on 3 February 2022", which to me suggests that the notification of loss of rights was delivered in time, but "despite all due care" (so due to a reason at the applicant's side) was only read by applicant F on 3 Feb 2022.
An answer based on Rule 125(4) may also have a problem in remedying the missed renewal fees (esp. the ones due on 31 Jan 2021).
Or did you have other considerations as to why R.125(4) could be used?
I really misunderstood the question. Thanks Roel.
DeleteI had the same misunderstanding as Yalcin, although I think re-establishment is the right answer, as the all due care phrasing is an almost automatic reference to re-establishment (Hindsight is always 20/20 :)).
DeleteThe question would have benefitted from having additional information or a scenario in the question as to why the applicant failed to read the letter at receipt, while showing all due care, e.g. serious illness or organizational upheaval (stolen from GL E-VIII 3.2).
I agree that such additional information or scenario would have been helpful. Not only would it have helped to unambiguously exclude a R.125(4) argument, it would also have allowed to include in your answer an argument as to WHY the all due care argument was satisfied, and WHAT the cause of non-compliance was.
DeleteQ2 was an obvious "do you know your current Guidelines"-question, with regards to the 71(3)-waiver being abolished.
ReplyDeleteQuestion sent back with all the love, even proposed maintaining the application and filing a divisional to fulfill the client's needs (as an option, in case the PACE-request does not suffice...)
Would the divisional really have a chance to be faster than PACE+waiting for a new 71(3)?
DeleteNo, the idea would be to accept the spelling mistake and allowing the (misspelled) application to grant, while correcting the error in the divisional which is then less time-sensitive.
DeleteEventually I put down a solution that involved going round the 71(3) loop again however I wonder if this was in the clients interests? They say they wanted a quick grant so is it possible that you accept the 71(3) and try propose a last minute correction before the mention of grant?
DeleteA last minute request for correction is indeed possible - it can be filed until the day of handover to the EPO internal post - G 12/91).
DeleteBut it would in my view require resumption under R.71a(2) and ussueing and approving a new 71(3).
Hi, thank you for your work.
DeleteRegarding this question, I used R139 without considering that R71.6 was needed.
The question indeed mentions that the correction is obvious which, for me at least, points out R139.
I assumed that the Examining Division can just accept the correction without resending another 71.3 to have the fastest grant as possible?
Am i wrong?
Thank you,
yes, you can -and have to- use Rule 139 EPC, but the EPO will only grant after approval of a complete text intended for grant by the applicant, so they will need to issue a new R.71(3) first. Note that the further 71(3) can not be waived (anymore).
DeleteSee Rule 71(6): "If the applicant, within the period under paragraph 3, requests reasoned amendments OR CORRECTIONS to the communicated text or keeps to the latest text submitted by him, the Examining Division shall issue a new communication under paragraph 3 if it gives its consent; otherwise it shall resume the examination proceedings."
See GL C-V,4 and sub-par
Further, if you would approve now, and file corrections later: see GL C-V, 6:
"Subsequent to the applicant's approval in response to the Rule 71(3) communication (see C‑V, 2), the examining division may resume the examination procedure at any time up to the moment the decision to grant is handed over to the EPO's internal postal service for transmittal to the applicant (see G 12/91). This will seldom occur, but may be necessary if e.g. [...] if the applicant files amendments or CORRECTIONS (having already approved the text) [...].
The resumption of examination after approval is subject to the same considerations as where examination is resumed due to amendments filed in the Rule 71(3) period (see C‑V, 4.7.1)"
Q4: I think emphasis on product by process is a bit misleading, since there was no indication that the product would be any different using either process. Emphasis was purely on the process-side concerning the enabling disclosure on how to obtain the product.
ReplyDeleteI think there may even have been a hint towards partial priority, which ofc died to the insufficient disclosure...
Even stronger, the question explicitly says that the product is the same: "EP-D3 claims the same product D2 as disclosed in EP-D2".
DeleteCan you explain "I think there may even have been a hint towards partial priority"?
Q3: IIRC, one invention was claimed and two inventions were disclosed. The non-claimed invention, at least to my current understanding, can't be searched with an SIS, since it would need to be entered by amendment under Art. 19, which will not be searched according to 8.040 applicant's guide. Have to admit I did not have the PCT printed out. Any comments welcome.
ReplyDeleteCorrect:
DeleteSIS is based on the application as filed - PCT Rule 45bis.5(b); GL/PCT-EPO B-XII, 3; also via Euro-PCT Guide 3.4.007.
Application as filed does not contain a claim directed to C2 and not possible to introduce it by amendments for SIS.
Can introduce it in the EP phase- R.159(1)(b) or R.161(1)/162 + R.164(2).
So was the priority for EP-D3 towards EP-D1 correct regarding the product by process claims ? I based my answer on the 123(2) criterion of G2/98, as I believe changing a product D2 made using D3 to D2 made using D1 infringes 123(2), so I concluded the priority was not valid. But I also find arguments for the priority being valid.
ReplyDeleteNo, that priority is not valid: a non-enabled disclosure cannot give a valid priority right.
DeleteI honestly had to re-read the question twice until I saw why everyone was talking about a product-by-process claim. I see where you're coming from now (and if read this way, I agree with your analysis/answer), though I would argue it could also be seen differently:
DeleteEP-D2 discloses a method of making D2, using D1. EP-D3 claims product D2. Again, I see how you interpret the "as disclosed in EP-D2" as telling us the claim is "D2 produced using D1" or similar. But in my mind, it could also just mean "the same product as disclosed in EP-D2" (where EP-D2 discloses one particular method of doing so), i.e. simply "D2". And in that case, the priority would be valid I think, and the claim novel.
Do you have any thoughts on why that wouldn't be a viable solution?
Indeed I completely overlooked this fact when it came to priority. Thanks !
Delete@PK9500 If I'm not mistaken this question also reads that product D2 is made from D3 in EP-D3. So ths final product is exactly the same (D2), but the process to make it is different.
DeleteQUESTION 4 (6 MARKS)
DeleteApplicant D filed European patent application EP-D1 in January 2019. EP-D1 discloses
a new raw material D1 and a method for obtaining it. EP-D1 was withdrawn in
April 2019.
In March 2019, applicant D filed European patent application EP-D2 disclosing a method
for producing a new product D2 starting from the raw material D1. EP-D2 does not teach
how to obtain the raw material D1. Instead, the description of EP-D2 merely refers to the
relevant part of EP-D1.
In February 2020, applicant D filed European patent application EP-D3 claiming priority
from EP-D2. EP-D3 claims the same product D2 as disclosed in EP-D2. EP-D3
discloses the same method for producing D2, but from raw material D3. Raw
material D3 has been available to the public since 2019.
Applicant D becomes aware of European patent application EP-D4, which was filed in
January 2020 by a different applicant and published in July 2021. EP-D4 discloses
product D2 and a method for producing D2 from raw material D3, the method being
identical to the one disclosed in EP-D3.
(a) Does EP-D2 sufficiently disclose product D2?
(b) Is the subject-matter of the claim to product D2 in EP-D3 novel?
@MB
DeleteI think the only indication that EP-D3 claim a product-by-process is the phrase "EP-D3 [...] product D2 as disclosed in EP-D2", i.e. whether "as disclosed" implies that claims the product produced as shown. I see that it can be read that way, but I don't find it unambigious.
The mere disclosure of a method (same or different) in EP-D3 does not limit the claim to product D2 to products made by that method (if the claim only reads "Product D2").
Can you explain why you consider the phrase "EP-D3 claims the same product D2 as disclosed in EP-D2" to not be unambiguous?
DeleteMy reasoning is:
DeleteEP-D2 discloses a method which results in a certain product. There is no explicit claim to a product produced by said product. The method is obviously important for enablement, but there would (a priori) be disclosure for product claim that simply reads "Product D2".
And maybe this is where I got ahead of myself, but precisely because the process does not distinguish the product D2 (and the question was unambiguous about that), it would seem odd to me to draft a product-by-process claim based on the above disclosure.
So basically, a.) there is no reason to draft a product-by-process claim based on the disclosure of a method that results in D2, and b.) nowhere does it say that a product-by-process is claimed.
With the benefit of hindsight, I agree this is not what they were getting at, but I do think it's a reasonable/fair reading of the question.
Sorry, forgot to type in my name.. the above "Unknown9 March 2022 at 11:38" was me
DeleteI agree that "a non-enabled prior art (D2 in EP-D2) is not prior art" - I expect that that will certainly be part of the expected answer. (a) was also a clear step-up to that element of your argumentation in (b).
DeleteBut D2 in EP-D3 is not new w.r.t. D2 in EP-D4 (54(3), as D2 in EP-D4 is enabled.
I think what most people (including myself) are/were slightly confused about was not so much the question in the exam, but rather the comment in the blog above that "A second aspect was novelty of a product-by-process claim - GL F-IV, 4.12 and 4.12.1."
DeleteThe claim to D2 in EP-D3 was simply a product claim. There is no indication, in my view, that this was a product-by-process claim.
I agree, I had misread the question... I guess due to all references to different methods. I will update the blog post to prevent further misunderstanding.
DeleteHi everyone,
DeleteDoes someone can explain me why product D2 in EP-D3 cannot benefit from the priority of EP-D2?
Thank you,
Hi SombreZboub,
Deleteto claim priority, the priority document has to be an enabling disclosure. Since D2 is not enabling (see first part of the question), the priority cannot be valid
(see CLB II-D 3.1.6)
Indeed. The enablement requirement for the priority may not be immediately appearant from Art.87 itself, but it is explicitly written in, e.g., the headnote of G 1/15: "provided that said [alternative] subject-matter has been disclosed for the first time, directly, or at least implicitly, unambiguously and in an ENABLING manner in the priority document. No other substantive conditions or limitations apply in this respect."
DeleteThe Case Law Book has a clear section on it - Case Law Book (2019) II.D.3.1.6. I cited the start of this section with the leading decision T 81/87 which refers to it as sufficiency of disclosure:
"3.1.6 Enabling disclosure in the priority document
The decisions below highlight that the priority document must disclose the invention claimed in the subsequent application in such a way that it can be carried out by a person skilled in the art.
In T 81/87 (OJ 1990, 250) the board took the view that the argument that the skilled person would supplement the disclosure from his common general knowledge to make it work, should any difficulty be encountered, was no excuse when this was a feature of the definition of the invention, and was missing, not envisaged by the inventor and not implied by the description. In order to give rise to priority rights the essential elements, i.e. the features of the invention, in the priority document had to be either expressly disclosed or directly and unambiguously implied in the text as filed; missing elements recognised as essential only later on were not part of the disclosure, and gaps with regard to basic constituents could not be retrospectively filled by relying on knowledge acquired in this manner. It could become a misuse of the priority system if some parties in a competitive situation were allowed to jump ahead of others on the basis of mere expectations and by omitting the critical features of the invention altogether. This decision was followed in e.g. T 301/87, OJ 1990, 335, and in T 296/93, OJ 1995, 627."
For Q3, shouldnt we refer to R.161(2) and R.164(1) EPC? R.161(2) is if EPO was ISA/IPEA.
ReplyDeletecorrection: R.161(1) is if EPO was isa, which is why i think R.161(2) is the correct basis.
DeleteR.161(1) second sentence explicitly talks about supplementary international search report and Rule 45bis.7(e) PCT
DeleteYes, but did they say in second part of the question that we request SIS? im not sure they did, they only said "how can we get the invention searched in the EP-phase". Why should assume that SIS is done for the second part when it didnt even work for that part(since C2 wasnt in the claim)?
DeleteThe second part of the question reads:
DeleteAfter the SISR is established by the EPO on the subject-matter C1, PCT-C enters the European phase as Euro-PCT-C. Company C would like to obtain protection in Europe for subject-matter C2 instead. Can Euro-PCT-C be examined for subject-matter C2
Q.3, 2: "After the SISR is established by the EPO on ..."
DeleteSo EPO was SISA and no suppl EP search will be established, hence R.161(1) - J 2009, 594
(http://archive.epo.org/epo/pubs/oj009/12_09/12_5949.pdf)
Missed that part then :D Hopefully not too many lost points for that!
DeleteReferring to 161(2) rather than 161(1) will make you loose some marks, as it makes you miss the mandatory response to the objections in the SISR and as the consequence is that you would use R.164(1) rather than 164(2) - with different consequences.
DeleteLuckily, the time limit under 161(1) and 161(2) for amendments is the same - and if you amended at entry under R.159(1)(b) you would possibly not even need to refer to that -, and the effect of R.164(1) (Suppl EP Search report) and R.164(2) (annexes to 71(1)/71(3)) is legally different but very similar.
Will be interesting to see how much marks it has cost you.
I was very unsure during the exam whether Rule 137(5) applied during the R161(1) period. I was happy enough that it did not apply during any R161(2) periods, but given that a search has already been made, I thought that incorporation of unsearched matter would not be allowed (obviously it would be ok if we were talking about unsearched claims - see R 164, but I thought for unsearched material in the description, that would not necessarily apply).
DeleteThe situation is quite well explained in GL C-III 2.3 and GL F-V 7.1 (iv), but I was running out of time during the exam, and only found this after the exam. From the wording of R161, 164 and 137, simply as written, I would say it is not immediately clear whether R 137(5) applies to the scenario, which is presumably why the guidelines exist :)
I sat the exam in German. I read that Q.5 was different in the different languages? What were the differences in Q.5?
ReplyDeleteThe date of the article, which should have been Dec 2019, was incorrectly given as Dec 2017 in the English version only. German and French versions were correct
DeleteQUESTION 5 (5 MARKS)
DeleteOn 2 June 2020 company E filed European patent application EP-E claiming a
composition comprising 5-40% of compound E1. EP-E claims the priority of a previous
patent application JP-E filed with the Japan Patent Office by company E on 30 May 2019.
JP-E discloses a composition comprising 10-20% of the compound E1.
The examiner cited an article disclosing a composition comprising 40% of the
compound E1 and published in December 2017. When analysing the technical teaching of
the article, the skilled person would immediately recognise that the disclosure is erroneous
and that the only possible correction would be a composition comprising 15% of the
compound E1.
Is the article novelty-destroying for the subject-matter claimed in EP-E?
vs
FRAGE 5 (5 PUNKTE)
Am 2. Juni 2020 reichte die Firma E eine europäische Patentanmeldung EP-E ein, die ein
Stoffgemisch beansprucht, das 5 - 40 % einer Verbindung E1 enthält. EP-E beansprucht
die Priorität einer früheren Patentanmeldung JP-E, die beim Japanischen Patentamt von
der Firma E am 30. Mai 2019 eingereicht wurde. JP-E offenbart ein Stoffgemisch,
das 10 - 20 % der Verbindung E1 enthält.
Der Prüfer zitierte einen Artikel, der ein Stoffgemisch offenbart, das 40 % der
Verbindung E1 enthält, und der im Dezember 2019 veröffentlicht wurde. Beim Analysieren
der technischen Lehre des Artikels würde der Fachmann sofort erkennen, dass die
Offenbarung fehlerhaft ist und dass die einzig mögliche Berichtigung ein Stoffgemisch
wäre, das 15 % der Verbindung E1 enthält.
Ist der Artikel neuheitsschädlich für den in EP-E beanspruchten Gegenstand?
QUESTION 5 (5 POINTS)
Le 2 juin 2020 l'entreprise E a déposé une demande de brevet européen EP-E
revendiquant une composition comprenant 5-40% de composé E1. EP-E revendique la
priorité d'une demande de brevet antérieure JP-E déposée auprès de l'Office des
brevets du Japon par l'entreprise E le 30 mai 2019. JP-E divulgue une composition
comprenant 10-20% du composé E1.
L'examinateur a cité un article divulguant une composition comprenant 40% du
composé E1 et publié en décembre 2019. En analysant l'enseignement technique de
l'article, l'homme du métier s'apercevrait immédiatement que la divulgation est erronée
et que la seule correction possible serait une composition comportant 15%
du composé E1.
L'article est-il destructeur de nouveauté pour l'objet revendiqué dans EP-E ?
What is likely to happen as a result of this error?
ReplyDeleteDo not know, and do not want to speculate. We will need to wait for the Examiner's Report which will presumably indicate how this was dealt with in the marking.
DeleteLooks like partial priority is still a hot topic. Roel, do you reckon we can expect it also in paper C again?
ReplyDeleteMay be. Possibly in different way than in C 2021, e.g., with partial first appl problem as DI 2021, or as partial pri in prior art.
DeleteIn paper C practice, effectively every first application problem in the past has been a partial priority issue. When the earlier document is identical to the claimed invention, it would be too easy. As a consequence, the earlier document is always more specific.
DeleteI like the idea of a partial priority problem in the prior art. There has been a 54(3) prior art document with priority issues before. But it's a few years ago and doing it again while testing partial priority does make some sense.
Joeri, can you elaborate on what you mean by "54(3) prior art document with priority issues?" I understand first application issues, partial priority, and priority, but I am not sure what you mean by "54(3)" issue here? This is with respect to paper C. Thank you!
Delete2011. There, A5 was 54(3) because its priority date was before the effective date of some of the claims of A1. However, the last paragraph of A5 was not in its priority document, so that part could not be used under 54(3).
DeleteIn Q5 in the English version was it really necessary to mention G1/15? I didn`t because the answer was only if the article is novelty-destroying. I just mentioned T171/84 and the fact that a wrong number does not affect the validity of the disclosure if the skilled person could have easily corrected it. Therefore the article of December 2017 is novelty-destroying because it is before May 2019 and June 2020. Do you think I will get full marks?
ReplyDeleteThe erroneous prior art disclosure and its correction/understanding and the (partial) priority are substantially independent topics, so I expect that you cannot get full marks for the complete question if you would not have addressed that the erroneous prior art disclosure is understood correctly.
DeleteAs to the need to discuss priority / partial priority, in my personal opinion you should not miss marks if you do not discuss the validity of priority in this case as the article was published well before the priority date, so that the validity of priority (be it fill, partial, or not) is not relevant. G 1/15, r.6.4 clarifies that a conceptual split/partial priority assessment only needs to be done if there is a disclosure in the priority interval. But, you would of course then need to provide that as an argument (“Irrespective of priority being valid or not, the article of 2017 is prior art”).
G 1/15, r. 6.4 (also cited literally in GL (2022) F-VI, 1.5 which you could access during the exam via the External legal text link):
“6.4 In assessing whether a subject-matter within a generic "OR" claim may enjoy partial priority, THE FIRST STEP IS TO DETERMINE THE SUBJECT-MATTER DISCLOSED IN THE PRIORITY DOCUMENT THAT IS RELEVANT, I.E. RELEVANT IN RESPECT OF PRIOR ART DISCLOSED IN THE PRIORITY INTERVAl. This is to be done in accordance with the disclosure test laid down in the conclusion of G 2/98 and on the basis of explanations put forward by the applicant or patent proprietor to support his claim to priority, in order to show what the skilled person would have been able to derive from the priority document. The next step is to examine whether this subject-matter is encompassed by the claim of the application or patent claiming said priority. If the answer is yes, the claim is de facto conceptually divided into two parts, the first corresponding to the invention disclosed directly and unambiguously in the priority document, the second being the remaining part of the subsequent generic "OR"-claim not enjoying this priority but itself giving rise to a right to priority, as laid down in Article 88(3) EPC.”
So, if a public disclosure occurred before the priority date, no assessment of partial priority is needed, and the conceptual split does not need to be done, as the public disclosure is anyhow prior art to the claim as a whole / to both conceptual parts.
We will need to wait what the Examiner’s Report will say in respect of the full argumentation for the English version and in respect of the differences.
In Q.1: is RE until 1 year after 11/1/2021 (expiry period to reply to the communication) or 1 year after 14/5/21 (expiry period for further processing)? I though it was the first, but I used the second because otherwise not possible anymore.
ReplyDeleteGL E-VIII 3.1.1, Re-establishment is available for the further processing deadline itself, rather than for the originally missed deadline.
DeleteUnder Rule 136(3), you cannot claim re-establishment for the communication itself, since FP is allowed for this communication
Indeed James. As a consequence, the applicable 1 yr expires:
Delete14/5/21 (expiry missed FP period) + 1 yr -> 14/5/22 (Sat) -> 16/5/22 (Mon)
@JJ: but this is also not the last day to request RE: the 2m from the removal of the cause expires earlier:
3/2/22 (removal) + 2m -> 3/4/22 (sun) [R.134(1), OJ 2021, A85] -> 4/4/22 (Mon)
So that the last day is 4/4/22
In Q.1 also: renewal fee of January 2021 was not paid with additional fee by July 2021, so we need re-establishment by January 2021 + 1 year = January 2022 or is it from 6m so July 2021 + 1 year = July 2022?
ReplyDeleteRenewal fees are dealt with separately in Rule 51(4) in such situations
DeleteIn Q.2, would it be needed to also discuss renewal fees? I discussed answering Rule 71(3) and pay fee for grant and publishing and one claims fee. But for renewal fee, the question does not tell whether the renewal due on 28 February 2022 was timely paid, so I could not answer.
ReplyDeleteHi JJ,
DeleteI guess you had to adress it because of this sentence : "Since
this communication, no acts have been performed by or on behalf of applicant B." I believe no act also means no pay for renewal fee.
Regardless of the question, does someone know a robot which like to go to the DP EQE blog for posting comments?
I am not sure. Maybe it was expected, in view of the wording " Since this communication, no acts have been performed by or on behalf of applicant B." and since a renewal was due on 28 Feb 2022, so that one could conclude that this renewal was missed but can still be paid with an additional fee - R.51(2) until 31 Aug 2022 (de-ultimo-ad-ultimo). If the fee would not yet have been paid while the next R.71(3) has been approved and the application is ready for grant, the mention of the grant may then be delayed acc R.71a(4) mut.mut.
DeleteNote: I wrote 71a(4) mut.mut because 71a(4) refers to "if it falls due" so would apply to the renewal fee due on 28 Feb 2022 in view of the R.71(3) of 12 Nov 2021, but not literally apply to this renewal fee (with additional fee) due on 28 Feb 2022 in view of a next R.71(3) as it was already due before the next 71(3) will be issued. It could apply to the next renewal if the next renewal fee becomes due after the next communication under Rule 71, paragraph 3, and before the next possible date for publication of the mention of the grant of the European patent. However, as the EPO will surely not grant before all renewals fees that have already been due have been paid (with or without additional fee).
@SombreZboub w.r.t. "Regardless of the question, does someone know a robot which like to go to the DP EQE blog for posting comments?"
DeleteI assume you mean whether you can somehow be automatically be notified by email, RSS feed, or otherwise if a new blog post or a new comment is posted in our blogs?
Unfortunately, blogger has discontinued some of its functionality a few months ago. I particular RSS-feeds & email subscriptions from blogger do no longer work, so that subscription to automatic updates is unfortunately not possible from the blog pages, nor can we manually add your email addresses to a list anymore.
There may be third party tools that allow to monitor changes to blog pages - if anyone is ware of such tools, please post it as a comment to this thread so all can benefit from the tool (maybe https://versionista.com/ offers this functionality?).
Hi Roel,
DeleteYour answer is very serious. It was a bad joke about the captcha for posting comments :)
Have a nice day,
;)
DeleteThe captcha is terrible, but we cannot turn it off - and we also would not want to as we already get quite some garbage that we need to delete manually...
If you post comment with your google account you do not get it - you only get it if you post Anonymously or using an ad hoc name in the Name field.
By the way, if someone has trouble to post comments (for example, if they disappear when you try to submit them):
- see the link "Problems with commenting?" at the top of the column on the right (https://dp-patentlaw.blogspot.com/p/problems-with-commenting.html), and/or
- check your Tracking options (e.g., on iPhone/Mac: Safari options - disable "Prevent tracking" when you want to post comments)
In Q.5, the 2017 date was so strange that I checked the German version. There it said 2019. I then also checked the French version, also 2019. So I answered with December 2019 in my English answer. I forgot to also indicate what the answer would be when using December 2017. Would I get full marks?
ReplyDeleteI do not know, but it seems fair that it will be accepted if you apply the principles of Rule 139, second sentence EPC and its case law, as well as that of GL G-IV, 9. "Errors in prior-art documents" (you also had to apply the latter in this case for the CONTENT of the prior art), to a D1 question itself ;)
DeleteIn Q.6, legal basis that EPO is allowed to continue is Rule 84(2). But what is the legal basis that they will? I could not find a G decision that says they have to?
ReplyDeleteGL D-VII, 5.3 refer to the principles in D-VII, 5.2 which mentions (amoingst other exzampels):
Delete"The opposition division WILL also continue the proceedings if it considers that the stage reached in the opposition proceedings is such that they are likely to result in a limitation or revocation of the European patent without further assistance from the opponent(s) concerned and without the opposition division itself having to undertake extensive investigations (see T 197/88)."
Also see Case Law Book III.Q.3.2, which adds:
"The continuation of the opposition proceedings under these circumstances follows from the EPO's general DUTY towards the public not to maintain patents which it is convinced are not legally valid at all or would be legally valid only with the necessary limitations (T 156/84, OJ 1988, 372; T 197/88)."
In Q.6, d-part: amend by deleting claim 1. Can the new claim 1 (former claim 2) be examined for clarity? Does G 3/14 apply in Art.105a proceedings, or only in opposition proceedings?
ReplyDeleteMaybe, maybe not.
DeleteI do not think this is explicitly covered in the GL, not in GL D-X, nor in H-IV, 4.4, but I may have overlooked it.
You could argue that G 3/14 would also apply in examining clarity of amendments made during limitation under Art.105a, in that a limitation by incorporation a dependent claim into an independent claim keeps that (dependent claim) unchanged. However, one could also argue that an exhaustive list of grounds of opposition that is at the basis of G 3/14, does not exist for limitation - the reason for limitation is not assessed.
Case Law Book (2019) IV.D.1 says "The nature of this procedure, which is ex parte, lies somewhere between the examination and opposition proceedings (G 3/14, OJ 2015, A102)."
G 3/14 itself says in reasons 60-61:
"60. Article 105a EPC, introduced by EPC 2000, provides that, at the request of the proprietor, the European patent may be revoked or limited by an amendment of the claims. (Where there is a clash between opposition and limitation proceedings, Rule 93 EPC operates to give precedence to the opposition proceedings). If a request for limitation is admissible, the Examining Division is then to examine whether the amended claims (a) constitute a limitation vis-à-vis the claims as granted or amended in opposition or limitation proceedings and (b) comply with Articles 84, 123(2) and (3) EPC (Rule 95(2) EPC). Further provision is then made for what is to happen if this is not the case.
61. The nature of this procedure, which is ex parte, lies somewhere between that of examination and opposition proceedings. While the rules refer to a need for compliance of the "amended claims" with Article 84 EPC, the Enlarged Board does not consider that it is possible to draw any conclusions from these provisions as regards the meaning of Article 101(3) EPC. In any event, the meaning can hardly have been altered by this separate amendment to the EPC."
If no conclusions can be drawn from limitation provisions for opposition, why would it be the opposite?...
JJ - no, I don't think it can be examined for clarity - it was present as a dependent claim in the claims as granted.
ReplyDeleteWhen there is an inconsistency between the various papers (French - German - English) this is clearly an unfair treatment of the candidates and a persuasive ground for appealing the paper.
ReplyDeleteIn the 2021 B paper a similar mistake surfaced. See item 10 of D8/21 for more information (https://www.epo.org/law-practice/case-law-appeals/recent/d210008du1.html). The appellant convinced the Board, the decision is set aside and referred back to the Examination Board. Appeal the Paper!
I apologise in advance for the unrelated question, but I am not able to see the exams I am enrolled to in the wiseflow (in my case papers B and C). A message appears under the section "Flows" indicating that "Below, you can see the flows to which you are assigned. Flows can be individual tests, sequences and examinations." and also that "no flows are active". Has this happened to anyone enrolling papers A and/or D before?
ReplyDeleteThe EQE FAQ on the EPO website been updated and provides:
Delete“NEW - 03/2022 - I do not see the flows I am enrolled for. When are they available?
The flows will be visible in WISEflow in the afternoon/avening before the respective exam paper.”
How many points are likely to be lost in question 2 for saying that the applicant can waive the 71(3) communication? I forgot it was abolished. Will I get 0 marks for the whole question only because of this error?
ReplyDeleteDifficult to say. I would consider it the key point tested and the whole argumentation is different if you would base your answer on the waiver (eg, you will also need to pay immediately, and inmediately file claims translation - that can in the correct answer all wait until you get the new 71(3).
DeleteOn the other hand, you will not loose the application if you incorrectly used the waiver. The waiver will (I think) simply be ignored/void and you would anyhow receive a next 71(3).
DeleteThe Examiner's Report provides that Q.5 was neutralized - the "different publication dates" refer to the error in the English version:
ReplyDelete"Due to different publication dates for the article given in the English, German and French versions of the paper, the Examination Board decided to award full marks to all candidates for question 5."
The Examiner's Report provides an answer to the question as it was intended, i.e., with the publication in December 2019.