Tuesday, March 08, 2022 D 2022 - The DII part: FEED, CLEAN, SPRAY

 

This year's D2 was a paper of 3 h 20 min (13:25 - 16:45 CET) and 55 marks. The paper had to be taken fully from the screen in Wiseflow - nothing was printable. The pdf of the paper could be viewed side-by-side with the editor, without annotation possibility; or in one or more separate tabs, with annotation possibility (note here). For the first time, no calendars were given with the exam paper, but candidates had to bring their own lists of Saturdays and Sundays and had to check EPO closure dates in the OJ (see here). 

As usually, the paper required a careful analysis of a plurality of EP and PCT patent applications from the client (OTP) and another party (TOR). The various applications described and/or claimed one or more of:

a) a FEED machine with a feeding duct, 

b) a FEED machine with two feeding ducts, 

c) a CLEAN method, 

d) a SPRAY device, and 

e) a FEED machine with a SPRAY device.

A mix of common and less-common aspects of a D2 paper were to be considered: 

• Non-patent disclosures: a demonstration at a fair, a brochure, exchange of technical documents and a prototype in the presence of a secrecy agreement, a video on the client's website;
• Multiple applications from the same application claiming the same subject-matter - careful check of first application requirement/issues;
• Differences between a subsequent application and its priority application;
• Interpretation of "a" (vs "one" and "two") in a claim - novelty, scope of protection;
• Product and method claims;
• Art.54(3) prior art, also vs the European phase (only) of a PCT-application;
• A suggestion of the client to submit recently obtained evidence of a new effect in support of inventive step in defending his patent in opposition - why/ why not follow the suggestion;
• A pending opposition filed by a German lawyer with the need for a response to the notice of opposition - client suggest to submit that lawyer has no interest in the case so that the oppo must be rejected, opponent argues lack of novelty w.r.t. a video on the clients website and lack of inventive step;
• Non-claimed subject-matter;
• The other party just received a R.71(3) communication for an application with a broad claim scope - how to reduce/remove the risk;
• Intervention in a pending opposition appeal, while client OPT only received a "cease and desist" letter from proprietor TOR and while the opponent/appellant Avidus is considering to withdraw the appeal (if Avidus can make a deal with proprietor TOR ratehr than with client OPT) - based on a new ground of opposition;
• Entitlement;
• How to be attractive for investment fund Avidus - help to manufacture our own machines and to expand in US, CN, IN;
• Different territories: EP and non-EP (US, IN).

An outline of our answer is given below [added 10 March 2022].

The questions of this D2 paper, from client OPT, were:

 1. Outline the patent situation as it currently stands for:

        (a) the FEED machine with a feeding duct at the bottom of the mill
        (b) the FEED machine with two feeding ducts at the bottom of the mill
        (c) the CLEAN feeding process
        (d) the SPRAY water spray device
        (e) the FEED machine with the SPRAY water spray device

2. How would you advise us to respond to the opposition against OPT-EP1?

3. What could we do to improve our situation?

4. After the improvements, what products and methods could we stop TOR from making or using, and in which countries?

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!

Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 08-03-2022 23:24"), whereas using your real name or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in or make an account - it is OK to just put your (nick) name at the end of your post.

NB: for D1 comments, please refer to our D1 2022 blog; for fist impressions and general comments to D 2022, see here

------

Annex 1 - The D2 part of the D 2022 paper

EUROPEAN QUALIFYING EXAMINATION 2022
Paper D2
This paper comprises:
Questions 1-4 (55 points)

Part II: Legal Opinion

Today is 8 March 2022.
You receive the following e-mail from the firm Optimisme.

Dear Representative,

[001] My name is Candide. I am the General Manager of Italian company
Optimisme (OPT). OPT specialises in plastic recycling. We design our own recycling
machines in-house and we have them made by Torre (TOR), an Italian company
manufacturing plastic recycling machines. When we started working with TOR in 2018,
we signed an agreement. Under this agreement, TOR is bound to secrecy, and all
intellectual property generated since then belongs to OPT. In future, we will manufacture
these machines ourselves.

[002] A known process of recycling includes cutting the plastic waste into small pieces in
a mill, i.e. in a container with blades rotating at its bottom. An inorganic filler in the form
of a powder is fed to the mill to be mixed with the plastic pieces to increase rigidity of the
plastic. The problem with this known machine is that the maximum amount of filler that
can be fed to the mill is 10% by weight. If higher amounts are fed to the mill, part of the
filler is ejected outside the machine and a lot of dust is generated. Conventionally, to
reach 50% by weight of filler, the plastic exiting the mill must be processed with another
machine, where more filler is mixed with the plastic.

[003] In January 2019, we invented a new machine for recycling plastic. In our machine
the filler is fed to the bottom of the mill so that it is mixed with the plastic pieces while the
plastic waste is cut. This is a great improvement over the prior techniques: we can feed
up to 50% of filler to the plastic in the mill and during the process less dust is generated,
so that workers are safer than before.

[004] On 3 June 2019 we gave TOR our complete technical drawings and a fully
enabling explanatory report to enable them to manufacture our machine, which we
called FEED. On 1 July 2019 we received a prototype of the FEED machine with one
feeding duct at the bottom of the mill. We modified the FEED machine received from
TOR by adding a second feeding duct at the bottom of the mill. We discovered that by
using two feeding ducts for the filler, a surprisingly greater uniformity of the recycled
plastic can be obtained. We filed a European patent application, OPT-EP1, on
22 July 2019. OPT-EP1 discloses and claims a machine comprising at least one duct for
feeding filler at the bottom of the mill. OPT-EP1 also discloses the machine with two
feeding ducts at the bottom of the mill. This feature is claimed in dependent claim 2.

[005] After filing OPT-EP1, we realised that by mounting a special water spray device
(SPRAY) on the FEED machine it is possible to reduce the dust generated by the
machine, surprisingly without affecting the properties of the recycled plastic.
On 4 October 2019, we filed European patent application OPT-EP2 without claiming any
priority. OPT-EP2 includes the entire description and claims of OPT-EP1; it additionally
discloses the SPRAY device and the FEED machine with the SPRAY device mounted
on it.

[006] On 30 September 2020, we filed international application OPT-PCT. OPT-PCT
contains the entire description and claims of OPT-EP2 and additionally claims the
SPRAY device per se, and the FEED machine with the SPRAY device mounted on it.
OPT-PCT claims priority from OPT-EP2.

[007] OPT-EP1 was granted as filed. The mention of grant was published
on 27 January 2021. OPT-EP1 was opposed by a German lawyer. The grounds of
opposition are lack of novelty and inventive step based on two documents.

[008] The first document is TOR-EP, a European patent application filed by TOR
on 3 June 2019. The figures in TOR-EP are identical to the drawings we gave TOR, and
the paragraphs of the description are identical to paragraphs of the report we gave to
them. TOR-EP has a single claim directed to a machine having a duct for feeding filler at
the bottom.

[009] TOR-EP discloses a subject-matter almost identical to the subject-matter
of OPT-EP1. The only difference is that TOR-EP is silent on the two feeding ducts of
OPT-EP1. TOR-EP is also silent on the water spray device [some words not copied]
communication of the intention to grant was sent to TOR five days ago.

[010] The second document is one of our own videos showing our prototype FEED
machine and explaining how it works. We uploaded the video to our website, where it
has been publicly available since 10 July 2019. The prototype machine disclosed in the
video has only one feeding duct and no water spray device. According to the opponent,
a claim directed to a machine having two feeding ducts is obvious in view of a machine
having a single duct.

[011] We received a communication from the Opposition Division dated 3 December 2021
inviting us to file a response to the opposition within four months. Please help us to
prepare our response. In our opinion, the opposition should be rejected because it was
filed by a lawyer who has no interest in the case.

[012] There is another surprising advantage of having two ducts for feeding the filler to
the bottom of the mill. We recently discovered that when filler in the form of a powder is
fed from one duct and filler in the form of granules is fed from a second duct, the blades
of the mill remain clean. The granules are made by compacting the filler powder. This
feeding process, which we call CLEAN, provides an important advantage because it
saves up to 30% of the costs of the recycling process by avoiding the machine having to
be stopped in order to clean the blades. Feeding granules only does not provide this
advantage.

[013] As it is such a valuable development, we want to protect the CLEAN process with
a patent application. Before filing the application, we want to know the Opposition
Division’s opinion on it. Our idea is to explain this newly discovered advantage of having
two ducts when arguing inventive step, in our written response to the opposition.

[014] We filed our OPT-PCT application in view of a joint venture we plan to enter with
Avidus, an investment fund which will help us to manufacture our own machines and
expand our activities in the US, China and India.

[015] There is another problem with TOR. Two weeks ago we received a “cease and
desist” letter from TOR requesting us to cease any use of our FEED machine with the
SPRAY device in view of their European patent TOR-EP-old. TOR-EP-old discloses and
claims a water spray device that is identical to the one we make and use in our machine
and which is disclosed in OPT-EP2. This water spray device was shown by TOR for a
different purpose at a fair in Barcelona in 2014 which we attended. This water spray
device was fully disclosed in a brochure with a date on it, which was handed out at the
fair and is in our possession.

[016] TOR-EP-old was filed in 2015 without claiming priority and was granted in 2017.
Avidus filed an opposition against TOR-EP-old on the ground of insufficiency of
disclosure only. The opposition was rejected and Avidus appealed the decision of the
Opposition Division. The appeal is pending.

[017] We attempted to contact TOR to resolve the above issues, but TOR refused to talk
to us. Avidus informed us that they were contacted by TOR. TOR is using TOR-EP to
convince Avidus to replace us with TOR in the joint venture. Avidus told us that if they
reach an agreement with TOR, they will withdraw their appeal.

We have a meeting with Avidus scheduled for next week, and we need your help on the
following points:

1. Outline the patent situation as it currently stands for:

(a) the FEED machine with a feeding duct at the bottom of the mill
(b) the FEED machine with two feeding ducts at the bottom of the mill
(c) the CLEAN feeding process
(d) the SPRAY water spray device
(e) the FEED machine with the SPRAY water spray device

2. How would you advise us to respond to the opposition against OPT-EP1?

3. What could we do to improve our situation?

4. After the improvements, what products and methods could we stop TOR from
making or using, and in which countries?

Annex 2 - Outline of our answer

Our main conclusions in this paper [added to the blog post ion 10 March 2022 after some requests].

Note that we do not give the reasoning in full detail, e.g., a complete answer would require a full patentability discussion and not just the given conclusion and main argument as shown below:

1. Outline the patent situation as it currently stands for:

(a) the FEED machine with a feeding duct at the bottom of the mill

• New and inventive claim in granted TOR-EP. 
   
• Not new in OPT-EP1, OPT-EP2 and OPT-PCT (EPC and non-EPC):

• OPT-EP1 is first appl from OPT, so pri in OPT-PCT not valid; no pri claimed in OPT-EP2 
• Not new in OPT-EP1, OPT-EP2 and OPT-PCT due to internet video.
• Comment: although in PCT, only written disclosures are considered in the international phase -PCT Rule 33.1-, we consider it reasonable to assume that most states (and in particular US, CN and IN) will consider a video to be prior art and we will do so in the paper. One could possibly also argue that a video is a written disclosure as it is a sequence of images which can be printed. However, as US, CN and IN are not part of the EQE syllabus (except for the US, but then only as far as it has effect on the EP procedure), an answer based on "video not written, so OPT-PCT outside EP may be new, so let's ask foreign agents and, if videos are not prior art in those states, enter in US, CN and IN including this claim, such that it may provide broad protection in US, CN and IN" will possibly not be considered wrong. 
• Not new in OPT-EP1, OPT-EP2 and Euro-OPT-PCT due to TOR-EP (54(3)). 
• Not new in OPT-EP2 and Euro-OPT-PCT due to OPT-EP1 (54(3)).
  
  
• Opposition vs OPT-EP1 will be successful for claim 1

(b) the FEED machine with two feeding ducts at the bottom of the mill

• New and inventive in OPT-EP1:
• Not shown in internet video, TOR-EP (54(3)), OPT-EP1 (54(3)).
• Inventive: TOR-EP (54(3)), OPT-EP1 (54(3)) not to be considered
• Inventive w.r.t. internet video due to the surprisingly greater uniformity of the recycled plastic than that of a one-duct version
   
• Not new in OPT-EP2 and Euro-OPT-PCT:
• OPT-EP1 is first appl from OPT, so pri in OPT-PCT not valid; no pri claimed in OPT-EP2 
• Not new due OPT-EP1 (54(3)).
   
• New and inventive in OPT-PCT outside EP – US, IN, CN:
• Not shown in internet video
• 54(3) not to be considered outside EP
   
• Opposition vs OPT-EP1 will be not be successful for claim 2 if we file correct arguments

(c) the CLEAN feeding process

• No applications as the moment
• Can file a new and inventive application – see Q.3

(d) the SPRAY water spray device

• Our machine FEED+SPRAY is in the scope of the SPRAY claim of granted TOR-EP-old (in EP)
• Claim is not new due to Barcelona fair and the brochure.
• We can invalidate TOR-EP-Old – see Q.3

• OPT-EP2 does not claim SPRAY as such. 
   
• Not new in OPT-PCT (claim 3) due to TOR-EP-old and the Barcelona fair/brochure

(e) the FEED machine with the SPRAY water spray device

• New in OPT-EP2, but only disclosed and not (yet) claimed in OPT-EP2
• The non-claimed FEED+SPRAY is new and inventive 
• See Q.3
   
• New in OPT-PCT (claim 4), in EP as well as outside EP:
• Valid pri from OPT-EP2
• No prior disclosures of the combi
• SPRAY in TOR-EP-old used for different purpose, so not considered in PSA, so inventive

2. How would you advise us to respond to the opposition against OPT-EP1?

• No interest is not relevant, as anyone can file an opposition [also see G 3/97]
   
• Advise to, before 3/12/2021 + 10d + 4m -> 13/4/2022 (Wed):
• file amended claims: deleting claim 1 as it lacks novelty over internet video, 
• request that patent is maintained based on present claim 2,
• submit why claim 2 is inventive (see above)
• do not submit CLEAN arguments (effect not derivable from application itself so cannot be considered; could jeopardize new appl)

3. What could we do to improve our situation?

• TOR-EP-old:
• use intervention (detailed series of steps needed in answer)
• file notice of intention a.s.a.p. to prevent risk that Avidus has already withdrawn its appeal
• include reasoning w.r.t. new ground of lack of novelty (see Q.1)
• which will be allowed as intervener can base oppo on any ground
• need indication of evidence w.r.t. Barcelona fair and brochure; attach copy of brochure
   
• TOR-EP
• Agreement of 2018 shows that TOR is bound by secrecy and all IP belongs to OPT
• TOR was not entitled to file application on our FEED invention
• So we can start entitlement with IT court
• Request stay (give time limit and details)
• After stay, EPO will resume and we can take over TOR-EP and answer 71(3)
• We will proceed to grant in EP with TOR-EP with claim to FEED (1-a)
  
  
• OPT-PCT
• In EP: Only Claim 4 (FEED + SPRAY) is patentable
• Enter EP phase based on claim 4 (31m: 4/5/22 (Mon)
• Claims 1-3 are not novel in EP, so should be deleted.
• NB: Alternatively, a claim to this sjm can be added into OPT-EP2, since it is the description.
  
  
• Outside EP: Claim 2 (FEED + 2 ducts) and Claim 4 are patentable
• National entry in CN, US (both 30m: 4/4/22 (Sat) or, if extended, 6/4/22) & IN (31m: 4/5/22).
• On entry, if allowed, or during prosecution, delete claims 1 and 3 
• PCT-OPT claims 2 and 4 can lead to granted patent protection.
   
• OPT-EP2
• Can alternatively not enter OPT-PCT into EP, but add a claim to FEED+SPRAY into OPT-EP2, since it is the description.
• Delete claims 1&2 of OPT-EP2 as not new
• If adding will not be admitted in ED executing discretion, can do divisional. Due to this uncertainty, OPT-PCT entry instead is advised.
   
• CLEAN
• File a new application describing and claiming CLEAN as soon as possible.
• File PCT application so that protection can be obtained in EP, US, IN and CN
• New and inventive (identify prior art, give advantage)
   
• Avidus
• After all improvements, TOR has no valid patents/patent applications anymore, and we can stop TOR and other fully,
• So Avidus will want to stay with us in the JV
• Avidus should not withdraw their appeal vs TOR-EP=-old (SPRAY) until we have filed the intervention
• to make sure that we are in time, intervene before we talk to Avidus next week, so that we can get TOR-EP-old revoked based on the fair/folder after intervention
   
• Additional aspects
• e.g., provisional protection, fast grant, validation, etc.

4. After the improvements, what products and methods could we stop TOR from making or using, and in which countries?

• After grant, validate the EP patents, and at least TOR-EP as it has the broadest scope, in at least in Italy so that we can stop TOR from making and using any of machine within the claim scope and any method within the claimed methods in Italy. 
   
• TOR-EP (after we got it after entitlement) (FEED-a/1+)
• After grant, validate TOR-EP at least in Italy and any other EP states of interest
• OPT can stop TOR from manufacturing, selling and using FEED machines with one or more ducts, with or without SPRAY device, incl use of the 2-duct machine acc CLEAN method, in IT and any other countries where TOR-EP is validated.
   
• OPT-EP1 (FEED-2)
• After grant, OPT can stop TOR from manufacturing, selling and using FEED machines with 2 ducts, with or without spray device, incl use of the 2-duct machine acc CLEAN method, in countries where OPT-EP2 is validated. Advise at least Italy.
   
• Euro-OPT-PCT (after amended to claim FEED+SPRAY) or alternatively OPT-EP2 or a divisonal therefrom
• After grant, OPT can stop TOR from manufacturing, selling and using FEED+SPRAY machines with 1 or more ducts, in countries where OPT-EP2 is validated. Advise at least Italy.
   
• OPT-PCT – Outside Europe (2: FEED-2, 4: FEED+SPRAY)
• After grant OPT can stop TOR from manufacturing, selling and using FEED machines with 2 ducts, with or without spray device, based on claim 2, in countries where OPT-PCT is nationalised. Advise at least US, IN and CN.
• After grant OPT can stop TOR from manufacturing, selling and using FEED +SPRAY device, based on claim 4, in countries where OPT-PCT is nationalised. Advise at least US, IN and CN.
   
• PCT-NEW directed to CLEAN (EP and outside EP)
• After grant, OPT can stop TOR from using the CLEAN feeding method in countries where PCT-NEW is nationalized and granted: IN, CN, US and EP where validated - Advice at least Italy.
   
• Note: this is one of the rare D2-papers where there is no licensing or cross-licensing! It may have cost you some time during the exam to confirm and feel confident that this is the case.

Diane, Roel

(c) DeltaPatents

We look forward to your comments and alternative answers!
Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 08-03-2022 23:24"), whereas using your real name or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in or make an account - it is OK to just put your (nick) name at the end of your post.