Tuesday, March 07, 2023 D1 2023: a 55-mark D1, hard work!

One of us took the exam as a benchmarker and made a few notes in the D1 paper that we share below. Note that these are just a few brief notes, and have not been reviewed yet by colleague tutor. We will post more extensive answers later, after our internal review. [Update 8/3: our complete answer is added at the end]

Today's D1 was worth an unprecedented total of 55 marks, distributed over 2 parts with a 30 minute break in between:

• D1-1 had 3 questions, for a total of 27 marks, and had to be done from 9:30-11:05. 
• D1-2 also had 3 questions, for a total of 28 marks, and had to be done from 11:35-13:15.

The paper had to be taken fully from the screen in Wiseflow - nothing was printable. As in previous years, 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 - when I did the paper as a benchmarker today, I copied the D1 questions in the editor to have them in the same field-of-view as my answer and to be able to annotate them while staying in the same window.

The online availability of legal texts (EPO legal texts esp. GL/EPO, Nat.Law Tables, G-decisions, Euro-PCT Guide; PCT Applicant's Guide; PCT Treaty) was very convenient (even though I did not really used the search function in those). However, I personally strongly prefer personalized, well-annotated printed material and good reference books (see our webshop ;)) and I did not use the eGuide but my printed copy of the pdf-version of the PCT Applicant's Guide and its keyword index.

As last year, 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. 

I considered the following legal basis for my answers (not exhaustive):

D1-1:

Q.1: EPC Art. 76(1), 123(2), G 1/05 (or G 1/06), G 1/09, Art. 56

Q.2: PCT Art. 8(1), R.4.10; R.26bis.2; R.91.1&2

Q.3: EPC ADA2022; renewal fees, national grace period – Nat.Law. VI.A (DE); infringement; Art.105a, opposition

D1-2:

Q.4: EPC Art. 107, Rule 101(2), G 1/12

Q.5: PCT R.26.2, 26.5, Art. 14(1); PCT Art. 24(2)/25, Art. 48(2) “excuse” ; Rule 58 EPC, Art. 122 EPC

Q.6: EPC Art. 123(2), 123(3); 54(3), 54(4); GL H-V, 7.1 & 7.2

 

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 07-03-2023 20:23"), 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 D2 comments, please refer to our D2 2023 blog; for first impressions and general comments to D 2023, see here

Annex 1 - added 8 March 10:00

Our answers are given below. The answers use full-sentence arguments for clarity - an actual exam answer could be more concise.

Note that there may be errors or omissions in our answers; it may also happen that we expand more on certain topics than expected by the Exam Committee. For the expected answer, we will all need to wait for the Examiner's Report, which usually becomes available in summer (2022: 6 July; 2021: 19 June).

Please feel free to give your comments, to correct us where wrong, and to supplement us where we have gaps. We may update our answer based on your feedback. Please do not post your comments anonymously.

Diane, Gregory, Jelle, Roel

QUESTION 1 (10 MARKS)

Answer

(a) Can valid patents be obtained for DIV1 and DIV2 and what should be done?

DIV1:

DIV1 claims and describes only feature D

DIV1's claim to D extends beyond EP-A as filed as feature B was indispensible for the first invention, so taking just D and not B+D violates essentiality test, and thus violates Art,. 76(1) (gold standard, Guidelines H-V, 3.1 mut.mut).

As DIV1 only describes D, amending to include B (to B+D) would extend subject-mater beyond divisional as filed [Art. 123(2), G 1/05]

So, cannot keep the claim to just D

Can also not amend to B+D

Therefore no valid patent can be obtained for DIV1.

 

DIV2:

DIV2 claims and describes B+D+F (F optional).

B+D is described in EP-A as solution of the 1^st invention.

Optional feature F is described in combination with the 2^nd invention, not the first.

So combination B+D+F is not directly and unambiguously disclosed and not allowed.

DIV2 therefore contains subject matter beyond the content of the parent application, which is not allowed under Art. 76(1). [G 1/06]

 

The EPO will invite the applicant to remove the added subject matter [GL-C-IX, 1.4]; if not removed, the application will be refused under A 97(2).

 

Therefore, optional feature F should be removed in response to the invitation [G 1/06]

This is allowed as F is listed as optional

The claim and description are thus amended to just the second solution of the first invention of EP-A, B+D.

This amendment repairs Art.76(1) wrt EP-A and satisfies Art.123(2) wrt DIV2 as filed

 

So amend to B+D after receipt of the search report

And bring the description into conformity - GL F-IV, 4

 

A claim to B+D is novel [A 54(1)], as only B+C is known from the prior art.

An alternative solution supports inventive step [A 56] and

a valid patent can be obtained for DIV2.

 

(b)  Can applicant A still prosecute invention E+F and what should be done?

Yes

E+F is only described and claimed in EP-A, but not disclosed in DIV-1 and DIV-2. Introducing E+F in DIV-1 or DIV-2 would violate Art.123(2).

To obtain protection for E+F, a new divisional should be filed from EP-A.

 

EP-A has been refused, but remains pending during 2m appeal period of Art 108 – G 1/09, R.36(1) -; not needed to file an appeal.

So until 3/1/2023 + 10d (R 126(2) -> 13/1/2023 + 2m -> 13/3/2023 (Mon).

File a new divisional before this date directed to the second invention, describing and claiming E+F [A 76; R36(1)]

Pay relevant fees within applicable time limits.

 

QUESTION 2 (10 MARKS)
Answer

(a) Is priority claim considered to have been made for purposes of procedure under the PCT?

Yes, the priority claim is considered to have been made.

 

Under the PCT, a priority claim must be made in acc Art. 4 Paris Conv – Art. 8 PCT – and the priority claim must state the date of filing, number of the earlier application and State of filing –Art. 8, R 4.10 (a).

The date of filing and State have been provided and satisfy the requirements:

PCT-B was filed within the priority period US-B, which expired on

9/7/2021 + 12m [Art 8 PCT; Art 4C(1) PC]  -> 9/7/22 (Sat) extended to 11/7/ 22 [R 80.5; R 2.4]

USA is a Paris Convention State

Also, a number was given, even though erroneous.

 

The priority document has been supplied and the EPO as rO checks the indications in the prio doc against those in the priority declaration and issued to an invitation to correct under R 26bis.2(a) due to the noted inconsistency.

This is the only deficiency in the priority claim.

 

The time limit to respond was the later of 4 months from PCT filing date or 16m from earliest priority – R 26bis.1a  -, which has expired on 9/1/22 (latest of 9/7/21 + 16m -> 9/11/22 and 5/5/22 + 4M -> 5/9/22)

 

The failure to correct the inconsistent indication (as only deficiency) does not lead to the priority claim being considered void in the international phase – R 26bis.2(c)(ii).

The priority date therefore remains 9/7/2021 for the calculation of time limits in the international phase.

 

(b) Last day to file a demand for international preliminary examination:

Time limit to file the demand is the later of 3m from transmtittal of the ISR or 22m from priority - R. 54bis.1(a):

- 12/07/2022+ 3m [R 80.2] -> 12/10/2022 (Wed)

- 9/7/2021 + 22m -> 9/5/2023 (Tue)

 

9 May 2023 is later and that is the last day to file the demand.

 

(c) Still possible to rectify the priority claim in the international phase?

Yes

 

The time limit of R.26bis.1(a) have expired (see above), but Can use R.91

 

The PCT application has been published a.s.a.p after expiry of 18m from priority:

    9/7/2021 + 18m -> 9/1/2023.

Rectification after publication is possible under R 91 PCT by requesting rectification of an obvious error.

The correction does not change the earliest priority date, so is possible – R.92.1(g)(iv)

Time limit for rectification is 9/7/2021 + 26m [R 91.2] -> 9/11/2023 Thu, 9/9/2023 Sat [R.80.5] -> 11/9/2023 (Mon), so still plenty of time. [corrected 9/3/2023]

 

Since the mistake is in the Request, submit a request for rectification of the priority application number to the EPO as rO – R 91.1(b) (i) -, specifying mistake = wrong number and rectification = correct number, referring to certified copy.

Furthermore, as a precaution for designated states whose national law requires it, request the IB to publish the details of the late correction of the priority claim and pay admin fee – R. 26bis.2(e)

 

QUESTION 3 (7 MARKS)

Answer
(a) What is the current status of the revocation proceedings for EP-C?

The proprietor, or his representative may request revocation of EP-C at any time after grant [Art 105a(1)] A revocation fee must be paid [Rfees 2(1)10a].

The request may be filed, because no opposition proceedings are pending [Art 105a(2)].

Filing of the request by fax is allowed, but debit orders must be submitted in electronic format – as filed by fax, will not be not executed [ADA2022 7.1.3]

So the date of receipt of the debit order by fax will not be regarded as the payment date [ADA2022 10.2].

Hence, the fee has not been paid, so that the request is deemed not filed. [Art 105a(1)]

 

(b) Why should company D file opposition against EP-C?

Validation in Germany is automatic as DE is London Agreement Art.1(1) - Art.65,

But renewal fees need to be paid to the German patent office to keep it in force.

Last renewal fee paid to EPO was due 30/9/2021 – Art.86(2), R.51(1).

Next renewal fee is to be paid to DE Office as after grant: is due on 30/9/2022 – Art. 141(1), Nat Law VI.A, 5.

but can still be paid with additional fee (of only 50 EUR) until 30/9/22 + 6m -> 31/3/23 - Nat Law VI.A, 5.

So may still give protection in Germany.

Note that if the renewal fee would not be paid with additional fee, the patent will lapse in DE, but that will not have retroacticve effect: the sales as of July 2022 until the lapse would still be infringing.

 

As D sells since July 2022 in Germany, D is infringing on EP-C since then (and possibly earlier - prov prot)

So that C can stop D from selling when the EP-C is valid in Germany, i.e., when renewal fees are paid, and D is liable to damages and further measures.

So, to prevent this, EP-C shall be revoked (see below)

This revocation will have retroactive effect Art.68, so that the infringement that took place is no longer relevant.

 

To revoke EP-C, company D should file an opposition before 8/06/2022 + 9m [Art 99] -> 8/03/2023 (Wed) [International Women's Day, EPO Berlin closed - OJ 2022, A107*; R.134(1)] -> 9/3/2023 (Thu) ,i.e. day after tomorrow:

- File notice with full extent, grounds, indication of facts and evidence - R.76(2)

- Pay opposition fee

 *Note: OJ 2022, A107 was only published on 30.11.2022, so after 31.10.2022 of Rule 2 & 22(1) IPREE... We included the extension in view of a comment by Gerben on our blog. Unfortunately the notice about calendars does not indicate which calendars are needed (i.e., from which year) and how to deal with the calendar of the year of the exam (usually published only after 31.10 of the year before). It may well be that answers with and without this extension are accepted. In any case, there is still time to file the opposition., so it does not impact the rest of the answer.

Assuming that the opposition is successful and the patent is revoked in opposition, this is retroactive and the effect is that the protection will never have existed [Art 68], so that company D cannot be liable for infringement.

QUESTION 4 (7 MARKS)
Answer

(a) Current status regarding the admissibility of the appeal

The period for filing the notice of appeal and paying the appeal fee expired 2m from notification of the decision [Art 108]:

19/12/2022 = 10d (R 126(2)] -> 29/12/2022 + 2m -> 28/2/2023 (Mon)

Notice of appeal of appeal was filed in time and the fee was paid on time.

The notice of appeal must contain the name and address of the appellant – R 99(1)(a)

Appellant must be an adversely affected party, so F - Art.107

Appeal filed by someone else, i.e. here E, is inadmissible - R 101(1)

Since the transfer of ownership has been recorded, and the notice is filed in the name of an incorrect appellant, transfer was effective before the EPO and the BoA will invite correction of this deficiency within a period to be specified – R 101(2).

If the deficiency is not corrected in time, the BoA will reject the appeal as inadmissible.

At present, the appeal is not yet admissible.

 

(b) Improvements

Option 1

Under G 1/12, it is allowed to "alleged that the identification is wrong due to an error, the true intention having been to file on behalf of the legal person which should have filed the appeal, is it possible to correct this error under Rule 101(2) EPC by a request for substitution by the name of the true appellant - is yes, provided the requirements of Rule 101(1) EPC have been met."

So: can correct the error in response to the invitation under Rule 101(2)

by alleging that the true appellant is F,

with the email as evidence,

and requesting to replace the name of company E by company F

Then, the appeal will be in the name of the correct person and the appeal will be admissible.

 

Option 2

Request correction straight away of own volition under R 139 EPC.

Use the email from company F as proof of true intent and the request for correction will be allowed (G 1/12).

 

Note also very recent T 1371/20 () of 16.1.2023, which seems to put the bar to show intention very low.

 

QUESTION 5 (11 MARKS)
Answer

(a) Why was PCT-G declared withdrawn? Legal consequence?

An international application shall contain an abstract – PCT Art 3(2)

A missing abstract is a deficiency under – Art 14(1)(a)(iv) and the INPI as rO invited correction [Art. 14(1)(b)] within a period of 2m – R 26.2

9/12/2022 + 2m [R. 80.2] -> 9/02/2023 (Thu).

 

The abstract was filed much later than this the rO is allowed to declare that the PCT is deemed withdrawn for failure to meet the time limit – Art. 14(1)(b); r.26.5 &R 29.1

The rO notifies the IB and the applicant and IB notifies each designated notice of the decision – R 29.1(ii).

 

No remedies are available in the in the international phase and the application PCT-G is deemed withdrawn in all designated states – Art. 24(1)(ii).

 

(b) Revive PCT-G before the EPO:

The PCT provides that any Contracting State must, as far as that State is concerned, excuse, for reasons allowed by the national law, any delay in meeting any time limit – PCT Art 24(2), Art 48(2).

 

To revive PCT-G before the EPO, request excuse and perform the following steps:

 

Enter the European phase with PCT-G a.s.a.p.

Carry out the minimum acts for entry and pay the filing fee – R 159(1)(c) EPC

Request the IB  to send copies of the documents on file – PCT Art 25(1)(a), preferably within 2m from the deemed withdrawn communication [PCT R. 51.1].

 

The failure to provide the abstract on time in the international phase would be equivalent under EPC to the failure to provide an abstract after an invitation under R. 58 / R.57(d) EPC

 

The available remedy under the EPC is reestablishment of rights - Art. 122, R 136 EPC; PCT Rule 82bis.2 - for the missed invitation time limit - PCT Rule 82bis.1 -> R.58

 

Therefore, a request for RE must be submitted to EPO - Art. 122(1); R 136 EPC.

Time limit: 2m from the removal of non-compliance – R 136(1) EPC -, 6/3/2023 when the deemed withdrawn communication was received, time time limit is:

6/03/2023 + 2m -> 6/05/2023 (Sat) extended to 8/5/2023 [R. 134(1) EPC]

By this date at the latest:

pay the fee for reestablishment [Rfees 2(1)13]

Explain why time was missed in spite of all due care

State the grounds and set out the facts in demonstration thereof – R 136(2)

If the abstract submitted on 3 March is not part of the documents on file, submit the abstract

Assuming that the request is allowed, prosecution of EURO-PCT-G can continue

 

Note: if one would argue that the removal of non-compliance took place when G filed the missing abstract with the INPI, the 2m time limit expires: 3/03/2023 + 2m -> 3/05/2023 (Wed).
However, GL E-VIII, 3.1.3  indicates that "Where the "cause of non-compliance with the time limit" involved some error in the carrying out of the party's intention to comply with the time limit, the removal of the cause of non-compliance occurs on the date on which the person responsible for the application is made aware of the fact that a time limit has not been observed or ought to have noticed the error if all due care had been taken". We consider this when the loss-of-rights was received,.
and Case Law Book III.E.4.1.1(a)(ii) indicates:
"(ii) Presumption as to date of the removal of the cause of non-compliance
If a loss-of-rights communication (R. 112(1) EPC) is served there is: (i) a presumption that removal occurs on the date of receipt of such communication; and (ii) an obligation for the recipient not to ignore it, and to take action. This presumption is, however, rebuttable, in the sense that it is valid unless, due to exceptional circumstances, the cause for non-compliance persisted (J 1/20, T 1588/15). In J 29/86 (OJ 1988, 84) the Legal Board assumed a later date in view of the special circumstances of the case. In T 900/90 the board emphasised that in all cases where the receipt of the notification R. 112(1) EPC could be regarded as the removal of the cause of non-compliance it had to be clearly established that neither the representative nor the applicant was aware that the application had been deemed to be withdrawn before the receipt of that notification". As there is no such indication, the presumption shall in our view be used that removal occurs on the date of receipt of such communication.

Note that a request for review under Art 25 (rather than excuse under Art. 24) would not be successful, since deemed withdrawal was justified.

NB: also see:

Guidelines(2022/2023) E-IX, 2.9.2 “Review by the EPO under Art. 24 PCT and excuse of delaysunder Art. 48(2) PCT”

AlsoEuro-PCT Guide (2022) 5.14.004 “Review by the EPO as designated/elected Officeunder Article 24 PCT”

 

QUESTION 6 (10 MARKS)
Answer

(a) How should EP-H be amended to provide the maximum scope of protection? Give reasons why EP-H as amended meets the requirements of Art 123 and 54 EPC.

 

Lack of novelty was raised as a ground of opposition - Art.100(a) EPC

So amendments to overcome this ground will be admissible - R.80.

Since the claim to product P lacks novelty over EP-J, this claim needs to be amended into a set of 2 independent claims:

1. the method to make product P and 

2. the use of product P as a fertilizer.

As unity and R.43(2) are not assessed in opposition, this set of claims is allowable.

 

EP-H as filed describes the method and the use and so these claims are supported and satisfy Art 123(2).

 

These amendments also satisfy the requirements of Art 123(3), because the method claim and the use claim do not increase the scope of protection.

A product claim may be replaced by a use claim – G 2/88, GL-H-V, 7.1: as the product claim P comprises all uses, limiting to the specifically disclosed use is allowed.

The product claim may also be replaced by a method claim, because the method now claimed only results in the product previously claimed – GL H-V, 7.2: as the product claim P comprises all method to make P, limiting to the specifically disclosed method is allowed.

 

EP-J discloses a different method and only discloses use as a detergent, not a fertilizer, so the new claims are also novel and satisfy Art. 54.

 

(b) How would your answer to (a) change if EP-H described product P for use as a
medicament rather than describing the use of product P as a fertiliser?

 

In this case, new claim 1 should still be directed to the method of producing product P.

 

Claim 2 should not be a “use” claim, as a claim to the use of produce P as a medicament would be excluded from patentability under Art 53(c) as a method of treatment.

 

Claim 2 should claim product P for use as a medicament – Art 54(4)

As EP-H describes product P for use as a medicament, amendment satisfies gold standard – Art. 123(2).

Claim is novel (assuming that it is the first disclosed use of P as a medicament).

The disclosure of product P in EP-J is not novelty destroying for claim 2 and a detergent cannot be considered as a medicament, so the claim is novel and satisfied Art. 54

 

The scope of protection for claim 2 is reduces from a product for any type of purposes, to a specific purpose, such that there the scope of protection is limited compared to the patent as granted and no violation of Art. 123(3).

(c) DeltaPatents, 8 March 2023

Annex 2 - The paper

EUROPEAN QUALIFYING EXAMINATION 2023
Paper D1-1

This Paper comprises:
Part I: Legal Questions
Question 1: 10 marks
Question 2: 10 marks
Question 3: 7 marks

QUESTION 1 (10 MARKS)

Applicant A filed a European patent application EP-A, which describes and claims

·       a first invention comprising two alternative solutions to a technical problem
consisting of features B+C and B+D respectively, and

·       a second invention consisting of features E+F.

The first and second inventions are not linked by a single general inventive concept.
Only the first invention was searched, and relevant prior art was found only for B+C. In
the light of the technical problem, it is directly and unambiguously apparent that
feature B is indispensable for the function of the first invention.

Applicant A filed divisional applications DIV1 and DIV2, both based directly on EP-A.
DIV1 as filed claims and describes only feature D. DIV2 as filed claims and describes
only the combination B+D+F, wherein F is presented as an optional feature.

Subsequently, the examining division issued a written decision dated 3 January 2023,
refusing EP-A on the ground that a claim directed to B+C lacked novelty.

Today, DIV1 and DIV2 are pending.

(a) Can valid patents be obtained for DIV1 and DIV2 and what should be done?

(b) Can applicant A still prosecute invention E+F and what should be done?

QUESTION 2 (10 MARKS)
On 5 May 2022, applicant B resident in France filed an international patent application
PCT-B with the EPO as receiving Office. Applicant B intended to claim priority from the
US application US-B filed by applicant B on 9 July 2021. While the priority claim in the
request of PCT-B stated the correct filing date of US-B, it included a typographical error
in one digit of the application number of US-B. The request contained a certified copy of
US-B.

The description of PCT-B includes a statement that priority is claimed from US-B
indicating the correct application number of US-B. Otherwise the description, the claims
and the drawings are identical to those of US-B.

In May 2022, applicant B received an invitation issued by the EPO as receiving Office to
correct the priority claimed in the request of PCT-B. Unfortunately, applicant B
overlooked this invitation and did not reply to it.

The EPO acting as International Searching Authority transmitted the international search
report to applicant B on 12 July 2022.

(a) Is the priority claim considered to have been made for the purposes of the procedure
under the PCT?

(b) What is the last day to file a demand for international preliminary examination?

(c) Is it still possible to rectify the priority claim in the international phase?

 

QUESTION 3 (7 MARKS)
Company C filed European patent application EP-C on 14 September 2018. The
mention of the grant of EP-C was published on 8 June 2022.

Company D is concerned about infringing EP-C with its products sold in Germany
since July 2022. Company D is preparing notice of opposition against EP-C and is
confident that it will get the patent revoked.

Today, company D consults the European Patent Register and notices that the
representative of company C sent a fax to the EPO containing both a request that
EP-C be revoked and an order to debit the revocation fee from its deposit account.
Company D also noticed that company C has not yet paid any renewal fees to the
German Patent and Trade Mark Office.

(a) What is the current status of the revocation proceedings for EP-C?

(b) Why should company D file opposition against EP-C?

 

 

EUROPEAN QUALIFYING EXAMINATION 2023
Paper D1-2

This Paper comprises:
Part I: Legal Questions
Question 4: 7 marks
Question 5: 11 marks
Question 6: 10 marks

 

QUESTION 4 (7 MARKS)
European patent EP-E was assigned from company E to company F. The transfer of
ownership was recorded in the European Patent Register in November 2022. EP-E
was revoked by a written decision of the opposition division issued on
19 December 2022.

In February 2023 you received an email from company F instructing you to file an
appeal on its behalf. On 28 February 2023 you filed notice of appeal and paid the
appeal fee.

Today, you realise that the notice of appeal was erroneously filed in the name of
company E, rather than in the name of company F.

(a) What is the current status regarding the admissibility of the appeal?

(b) How can you improve the situation?

QUESTION 5 (11 MARKS)
On 2 December 2022 Portuguese applicant G filed international patent application
PCT-G in English with the Portuguese Patent Office (INPI).

By invitation dated 9 December 2022, INPI invited G to file an abstract. Despite taking all
due care, G filed the missing abstract with INPI only on 3 March 2023.

Yesterday, G received a notification from INPI declaring PCT-G withdrawn.

(a) Why was PCT-G declared withdrawn? What will be the legal consequence of this
withdrawal in the designated states of PCT-G if nothing is done?

(b) Applicant G wants to revive PCT-G before the EPO. What procedural steps must
applicant G carry out?

 

QUESTION 6 (10 MARKS)
European patent application EP-H describes a product P, a method only resulting in
product P and a particular use of product P as a fertiliser to enhance plant growth.
EP-H was granted with a single claim to product P.

Opposition was validly filed against EP-H based on the ground of lack of novelty. The
opponent cited EP-J, a document under Article 54(3) EPC that discloses the same
product P, wherein P is obtained by a different method, and the use of product P as a
detergent.

(a) How should EP-H be amended to provide the maximum scope of protection? Give
reasons why EP-H as amended meets the requirements of Articles 123 and
54 EPC.

(b) How would your answer to (a) change if EP-H described product P for use as a
medicament rather than describing the use of product P as a fertiliser?