Provisional answers to D1 and M2 2026
Dear all,
Here at last our provisional answers to Paper D1 [Questions 1 - 6] and Paper M2 [Questions 1 - 5]. There has been a lot of discussion today about certain questions, particularly in Part 2. We did not find question 6 clearly set out the facts that would allow candidates to arrive at a logical solution within the time allowed. We also puzzled about question 3 directed to withdrawal under the PCT. The 8 marks available do not seem warranted according to the solution we decided upon, so we may be missing something.
We found question 1 to be a rather difficult question for candidates with only two years of experience. Question 2 on partial priority is do-able, but made harder by the incomplete information in the question. Question 3 also seemed to be worth more marks than our solution warrants. Question 5 was relatively straightforward in our opinion.
On the whole, we found it a challenging paper.
We await your comments on our answers with interest.
Paper D1 2026 Part 1
Question 1 (10 points)
Applicant A filed international application
PCT-A in Japanese on 6 February 2024. PCT-A validly claims priority from and is identical
to Japanese application JP-A filed on 6 February 2023. On 9 October 2024, A
completed the acts required under Rule 159(1) EPC in order for PCTA to enter
the European regional phase as Euro-PCT-A. In the translation into English
filed under Rule 159(1)(a) EPC, the wording “product made of metal” was
erroneously translated as “product made of iron” throughout the application.
Iron was not disclosed in PCT-A.
On 10 October 2024, A filed divisional
application DIV1 based on Euro-PCT-A.
1) Was DIV1 validly filed?
- Time limit for
entry EP phase:
6/2/2023 + 31m [R159(1) EPC;
R131(4) EPC] Ã 6/9/2025 (Saturday, EPO closed) [R134(1) EPC]
à 8/9/2025 (Monday)
- So acts completed under R.159(1) were performed early (on 9/10/2024).
- Processing of
international application by designated office is prohibited until expiry of
time limit for entry under Art.22 PCT, unless the applicant A lifts the ban
early by requesting early processing, Art. 23(2) PCT. – OJ EPO 2013 P156
- No specific request
for early entry was filed
- So PCT-A will only
enter EP phase on 8/9/2025
- Therefore on 10 Oct 2024, PCT-A had not yet entered EP phase
- PCT-A therefore not
pending as a European application on 10 Oct 2024 – GL E-IX, 2.4.1 / J 18/09
- DIV1 therefore not
validly filed as parent was not pending, Art.76(1) EPC; R. 36(1)
Euro-PCT-A was granted with the wording
“product made of iron” in the only independent claim. The mention of the grant
was published on 14 January 2026. Competitor B filed an opposition against the
patent, asserting that its subject-matter extends beyond the content of the
application as filed, due to the error in translation.
2) Will the patent be revoked in
opposition?
EPC
Yes, Euro-PCT-A will
be revoked in opposition.
- The time limit for
B to file opposition is:
14/1/2026 + 9m (Art.99(1);
R.131(4)) Ã 14/10/26 (Wed)
- Since B already
filed opposition, it was filed in time.
- Euro-PCT contains
sjm that extends the content beyond the earlier application as filed
- iron not disclosed in JP application as filed
- extension of sjm is
a valid ground of opposition - Art 100(c)
- Translation can be
brought into conformity with application as filed in Japanese throughout
proceedings before EP, including opposition - Art. 14(2) EPC.
- This also applies
to Euro-PCT applications – GL A-VII,7 – which are equivalent to EP applications
– Art. 153(2) EPC.
- But during
opposition, this is allowed only if amendment does not violate Art.
123(3).
- In this case it is
not possible to replace "iron" with "metal", as this will
extend the scope of protection of the patent as granted.
On 12
January 2026, A filed divisional application DIV2 in English on the basis of
Euro-PCTA. However, instead of filing the English translation of the
description and claims of PCT-A as intended, A filed the description and claims
of an unrelated application by mistake.
3) Can the intended claims and description
still be included in DIV2?
No, it is not
possible to include the intended claims and description.
It is possible to
bring the translation in conformity with the application as filed throughout
proceedings before the EPO [Art. 14(2) EPC], and correction of the translation
would have been possible if DIV2 had been filed in Japanese.
DIV2 was filed in the language of the parent: English, so addition of the correct description and claims will be an extension of sjm in violation of Art 123(2) EPC.
- R56a(4) cannot be relied upon because although DIV2 claims priority by virtue of the parent claiming priority, the priority application does not "completely contain" the text of the incorrectly translated English description and drawings, so this requirement would not be met. Therefore the submission date of DIV2 cannot be saved.
Question 2 (6 points)
Applicant C filed a European application
EP1 in March 2024. EP1 was published in October 2025.
In January 2026, C filed a European
application EP-C, claiming priority from their earlier application EP0, filed
in February 2025.
EP-C discloses and claims only rubber A.
EP1 discloses rubber A1, which is a specific embodiment of rubber A.
Can a valid patent be obtained from EP-C by
disclaiming rubber A1?
EPC
- Timeline:
March 2024: EP1 filed, discl. A1
Feb 2025: EP-0 filed
Oct 2025: EP1 publ
Jan 2026: EP-C filed; prio EP-0;
d/c A
- EP1 is C’s first
application for A1
- Assuming EP-0
discloses A, then EP-0 is C’s first application for A other than A1
- 12m priority period
of EP-0 expired in Feb 2026 [Art.87(1)], so EP-C filed in time
- The claim in EP-C
to rubber A has two conceptual parts – G1/15 partial priority:
- rubber A1
- rubber A other than A1
- Conceptual part
“rubber A1”:
- not entitled to priority, as EP-0 is not C’s first
application for A1 – Art. 87(1)
- effective date for this part is
filing date EP-C, January 2026
- EP1 was published before
effective date so is Art 54(2) prior art
- EP1 discloses A1, so destroys
novelty of A1
- Conceptual part
“rubber A that is not A1”:
- EP-0 is C’s first application
for A that is not A1
- EP-C was filed within priority
period of EP-0
- EP-0 and EP-C were both filed by
same applicant (C)
- EP-0 and EP-C both disclose A
that is not A1, so same invention – Art.87(1)
- Therefore priority claim is
valid for this conceptual part
- Effective date for this
conceptual part = priority date = Feb 2025
- EP-1 is filed earlier but
published after this effective date so is Art.54(3) prior right, relevant for
novelty only
- EP-1 discloses A1, but not A
that is not A1
- so this conceptual part is
novel over EP-1
- However, the first conceptual part is not novel, so the claim as a
whole lacks novelty due to EP1.
- It is not possible
to disclaim A1 because EP1 is Art.54(2) prior art for the relevant conceptual
part.
- An undisclosed
disclaimer can only be used to restore novelty over an Art. 54(3) prior right,
not an Art. 54(2) prior art that is not an accidental anticipation – G1/03,
G2/03.
- Therefore a valid patent cannot be obtained from EP-C by disclaiming
A1.
Question 3 (9 points)
You are contacted by your client D, who
recently started commercialising in the UK tiles comprising substances B+C, the
tiles being heat-resistant up to a temperature of 1300 °C. D has received a
letter from competitor E, who claims that D’s tiles infringe E’s patent EP-E,
which is currently in force in the UK.
Patent EP-E was granted with a single claim
directed to a tile comprising substance B and defining the tile as being
heat-resistant up to a temperature of 1300 °C. EP-E further discloses a
heat-resistant tile comprising substance B, the tile being heat-resistant up to
a temperature of 400 °C. The mention of the grant of EP-E was published in the
European Patent Bulletin on 11 June 2025.
Your client D provides you with document D1
as evidence that the tile as claimed in EP-E is not heat-resistant above 700 °C
without substance C. D1 is a document that was made publicly available last
month.
Advise your client D on what to do before
the EPO regarding EP-E.
EPC
- EP-E was granted on
11 Jun 2025.
- Opposition period
expires: 11/06/2025 + 9m [Art. 99(1)] --> 11/03/2026 [R. 131(4)] Wed
- File opposition
against EP-E by 11/03/2026:
- pay the opposition fee,
RFees2(1).10
- oppose claim 1
- on the grounds of lack of
sufficiency Art.100(b):
- EP-E does not disclose the
invention in a manner sufficiently clear for it to be carried out by person
skilled in the art.
- In order to be sufficiently
disclosed, the claim needs to be sufficient over its entire range, GL F-III 1;
T518/10
- Submit document D1 as evidence
that the granted claim covers non-working embodiments
- D1 is admissible as evidence
despite being published after filing date EP-E
- The burden of proof will then
lie with the proprietor E to demonstrate that the claim is sufficiently
disclosed – GL F-III 4
- Claim 1 as granted
cannot be maintained
(Update based on further considerations)
- The proprietor cannot file an amended claim directed to the tile with B being heat-resistant up to 400
degrees C
- This embodiment is described in
the application as filed, Art. 123(2)
- But gives protection for embodiments not disclosed therein, so is broader than the grant claim as granted in violation of Art. 123(3) EPC
- There is thus no amendment that the proprietor can make that would satisfy both Art. 83 and Art. 123(3).
The patent will be revoked - Art. 101(3)(b) EPC
Part
2
Question 4 (8 points)
Applicant F, a Slovenian national with
residence in the US, filed an international application PCT-F at the EPO in
English.
Today, a few days after filing, F wants to
withdraw PCT-F.
(a)Before which Authorities can F actively
withdraw PCT-F?
(b)Which steps would F need to take in each
case?
(a)
The EPO will be
receiving Office.
It is competent rO
for nationals of Slovenia (EPC state) - Art. 151; R. 157(1) EPC; R. 19.1(a)(i)
PCT
And accepts
applications filed in English - R.
12.1(a) PCT; R. 157(2) EPC
PCT-F may be
withdrawn before the EPO as receiving Office or before the IB - R. 90bis.1(b)
PCT-F may be
withdrawn at any time prior to expiry of 30m from priority - R. 90bis.1(a)
(b)
Withdrawal is
effected by submitting a notice of withdrawal addressed to the rO or IB
The steps are the
same regardless of where the notice is submitted
The notice must be
signed by the applicant F – R. 90bis.5 PCT
Withdrawal is free of
charge – AG-IP 11.048
Takes effect upon
receipt by IB or EPO as rO
When submitted to the
rO, the EPO will mark with the date on which it was received and promptly
forward it to the IB – GL PCT-EPO A-IV, 2.2
R. 90.1bis allows the
applicant to perform the withdrawal himself.
There is no need to
appoint an agent, even though the EPO as rO would require this, as the
applicant does not reside in an EPC state – Art 27(7) PCT; Art. 133(2) EPC.
(Answer submitted by Diane Tweedlie during exam taken as bench-marker, which is probably closer to what is expected by the exam committee. I changed my mind later)
The EPO will be
receiving Office.
It is competent for
nationals of Slovenia (EPC state) - Art. 151; R. 157(1) EPC; R. 19.1(a)(i) PCT
And accepts
applications filed in English, R. 12.1(a) PCT; R. 157(2) EPC
PCT-F may be withdrawn
before the EPO as receiving Office or before the IB - R. 90bis.1(b)
PCT-F may be withdrawn
at any time prior to expiry of 30m from priority - R. 90bis.1(a)
Withdrawal is free of
change - AG-IP 11.048
Active withdrawal
before EPO
Applicant F does not
reside in an EPC state, so is required to appoint an agent - Art. 27(7) PCT; Art.
133(2) EPC
An agent is required
in all proceedings before the EPO as rO for all acts other than filing the application.
- GL/PCT-EPO A-VIII, 1.3
To actively withdraw,
applicant must appoint an agent entitled to practice before the EPO: A
professional representative or legal practioner on the list
The EPO as rO has
waived the requirement under R. 90.4(b) to file a signed PoA - R. 90.4(d); OJ 2010,
335
If the agent does not
file a PoA, the applicant F must sign the notice of withdrawal, as the waiver
does not then apply - R. 90.5(e) PCT
If the agent is
appointed via a PoA, the agent may sign the notice - R. 90.3(c) PCT
NB: if the applicant
does nothing and does not respond to the invitation to appoint an agent, PCT-F will
be considered withdrawn
Withdrawal before
IB
Applicant F must sign
a notice of withdrawal for PCT-F - R. 90bis.5 PCT - and submit it to the IB
The IB does not
require the appointment of an agent
If an agent is
appointed before the rO, this agent can also submit the notice of withdrawal to
the IB - Art. 48 PCT
Question 5 (12 points)
EP-G was filed on 12 July 2022. The mention
of the grant was published on 11 June 2025.
On 18 August 2025, the EPO issued a
communication informing the proprietor G that unitary effect had been
registered.
Despite having taken all due care required
by the circumstances, G realised today, 3 March 2026, that no renewal fees for
the European patent with unitary effect have been paid.
The proprietor G has also become aware of
European patent application E1, which is state of the art under Article 54(3)
EPC and prejudicial to the novelty of claim 1 but not to the novelty of claim 2
of EP-G. G is interested in having a valid patent EP-G with unitary effect for
claim 2.
Please advise.
Renewal fees
- 4th year renewal
fee was due on 31 July 2025 – R.13(1) UPR
- This falls between
the date of publication of mention of grant (11 June 2025) and the date of
notification of registration of unitary effect (18 August 2025)
- so renewal fee due date is shifted to 18 August 2025 – R.13(5) UPR
- and could have been
paid within 3m of that date without additional fee:
18/8/25 + 3m à 18/11/25 (Tuesday)
- This was missed,
but 4th year renewal fee can still be paid within 6m of due date with
additional fee of 50%:
18/8/25 + 6m à 18/2/26 (Wednesday)
- This was also
missed, so patent is considered to have lapsed as of 18/8/25; R.14(1)(b),
R.14(2) UPR
- G can request
re-establishment of rights – R22(1) UPR to remedy failure to pay renewal fees
with additional fee:
- time limit to pay renewal fees
with 50% additional fee was missed despite all due care
- non-observance of this time
limit had the direct consequence of causing EP unitary patent to lapse;
R.14(1)(b) UPR
- G must request re-establishment
within 2m of removal of cause of non-compliance, so 2m from today (G “realised
today” that the renewal fees were not paid):
3/3/2026 + 2m (R.22(2) UPR) Ã 3/5/2026 (Tuesday)
- Complete the omitted act: pay
renewal fee with additional fee [R.22(3) UPR]
- State the grounds on which
request is based; how the time limit was missed despite all due care and any
relevant evidence [R.22(4) UPR]
- Pay fee for re-establishment
[R.22(2) UPR; Art. 2(2) RFeesUPP, OJ 2022 A42]
- Request will be
granted and legal consequence of EP-G being lapsed will be deemed not to have
ensued; the patent will be in force as of 18/8/2025 – R.22(5) UPR.
Limitation
EPC
- G should request
central limitation of EP-G under Art. 105a
- File at the EPO and pay limitation fee – Art. 105a(1); RFees2(1).10a
- File the request in
writing satisfying requirements of R.92(2)
- File an amended
claim, limiting claims to claim 2
- Also file amended
description and drawings if appropriate
- Amending to claim 2
is a clear limitation and examining division will allow the request – R.95(2)
- Translation of the
claims into other two official EPO languages within 3m from invitation –
R.95(3)
- The patent will be
limited and the amended patent specification published – R.96 EPC
- The limitation applies to all contracting states in respect of which
it was granted – Art. 105b(3) – including the European patent with unitary
effect.
Question 6 (13 points)
European patent EP-H was granted to company
H with a single claim directed to subject matter D and the description as
originally filed, which further discloses an embodiment directed to
subject-matter D+E.
An opposition was filed against EP-H on the
ground of lack of novelty, citing a document under Article 54(3) EPC that
discloses subject-matter D.
The opposition division decided to maintain
the patent in amended form based on a main request filed by company H
comprising a single claim directed to subject-matter D+F.
In subsequent appeal proceedings, the board
of appeal issued a communication under Article 15(1) RPBA raising a new
objection that subject-matter D+F is not originally disclosed.
(a) What should company H do in the appeal
proceedings and why?
(b) How would your answer to (a) change if
the description of EP-H additionally disclosed subject-matter D+E+F?
- The outcome of the
opposition was to maintain the patent in amended form, D+F
- This decision was
appealed, so the decision, including the amended claims, is not final
- The amended form of
the claims contains subject matter extending beyond the content of the
application as filed, Art. 123(2) and extends protection of the claim as
originally granted in violation of Art. 123(3).
- In this case, it
appears the BoA raised an objection under Art.123(2) of their own motion
- The proprietor’s main request was granted, so they are
not adversely affected to the decision to maintain patent in amended form –
T234/86
- Therefore proprietor cannot have appealed – Art.107
- So opponent is sole appellant.
- Prohibition of reformatio in peius:
- The opponent, as sole appellant, cannot end up in a
worse position than had they not appealed – the general principle is that the
proprietor should lose their patent –
G10/93
- However, exceptions apply as per G1/99:
- From G9/92, since the opponent is the sole appellant,
then the Board and the opponent can raise objections against the maintained
amended form of EP-H.
- H should respond to the Art.15(1) RPBA communication
with amended claim to D+E.
- H should argue that:
- the first sequential condition of reformatio in peius
G1/99 (“introduce one or more originally disclosed feature(s) which limit the
scope of the patent as maintained”) cannot be met, as the feature F needs to be
removed regardless of any further amendments. No limitation to D+F is therefore
possible, so this condition cannot be met.
- the second sequential condition of reformation in peius
G1/99 (“introduce one or more originally disclosed feature(s) which extend the
scope of the patent as maintained, within the limits of Art. 123(3) which
states that an amendment cannot broaden the scope of the patent as granted”) is
met by amending the claim to D+E.
A claim to D+E would extend beyond the scope as
maintained, but not beyond the scope of the granted claim.
In this case the amendment to D+E would be allowable, if
the other conditions of patentability are met, as it is not possible to further
limit the scope of the claims.
b) The answer would be different if D+E+F were also
disclosed in the description, as then the first sequential condition of
reformation in peius G1/99 would be possible to be met. That is, it would be
possible to limit the claim as maintained in amended form by the addition of
feature E, and it would not be possible to achieve a broadening amendment as in
part (a).
- So H should file an amended claim to D+E+F in response
to the Art. 15(1) RPBA communication.
