Thursday, 27 February 2014

Our answer to the DI-part of D 2014

Our answer to the DI-part of the D2014 is given below.
Our answer to the DII-part can be found in a separate thread "Our answer to the DII-part of D 2014".
First impressions to the paper are given in another thread "D2014: First impressions?".
All blog threads allow anyone to add comments and already have a lot of valuable, interesting and sometimes surprising discussions between many candidates who posted their comments as well as tutors resulted from those.
Any remarks, (different) opinions and questions as are welcome! Please post your contribution as comments to this blog, so everybody can paticipate in and benefit from the discussion/ explanation.

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 24-02-2014 17:54"), whereas using your real name or even a pseudonym (nick-name) is more personal, more interesting and makes a more attractive conversation.

Be reminded that the task in DI is to show to the Exam Committee that you understand the law and can apply the law. The law tested is the EPC, the PCT, the Paris Convention, decisions and opinions of the Enlarged Board of Appeal (G-decisions as well as R-decisions on petitions for review), landmark decisions of the Technical and Legal Boards of Appeal (T- and J-decisions), a general knowledge of the national laws of the EPC Contracting States "to the extend that they apply to European patent applications and European patents" and of the US and Japan.
Hereto, you need to give an answer supported by an explicit, step-by-step reasoning, wherein each step cites one or more specific legal provision or other reference, such as an OJ EPO publication.

Click "Read more" to read our answer,

Roel & Pete



Although we believe that the answers that we provide below are correct and (close to )complete, our answers may deviate from what the Exam Committee expects. We would expect our DI answer to score between 36 and 39 marks out of 40.

The answer below should not be considered as a perfect answer that a candidate can generate during the EQE itself:
  • It has been made by more than one experienced tutor
  • We have not considered alternative answers, whereas unexpected but correct answers also get awarded with a reasnable number of marks 
  • You will not need all of these comments to pass
  • Our answer is not necessarily complete - although for the DI-questions, we aimed to be so
  • We do not know where the points will be awarded and how many
  • We do not know whether and where bonus points can be awarded and how many
  • We do not know how strict the Exam Committee will be with legal basis as to accuracy, authentic reference or corresponding republication, whether GL reference is OK as alternative to T-decision (likely?)/ J-decision/ G-decision (likely not?)
Note that the date of the exam was 25 February 2014 ("today" in the questions).

Q.1

a) [which steps to take to have patent protection for subject-matter A through the EPO?]
  • check 3 options:
    1. simply file a new application EP-M1 without priority;
    2. take over the priority right and file a new application claiming priority from EP1;
    3. use entitlement proceedings to "take-over" the application, further referred to as EP-M2.
  • option 1:
    • for protection via EPO, can be EP or PCT application entering the EP phase at 31m from priority - both referred to as EP-M1;
    • file at earliest possible moment = today
    • however, without priority claim,
      • the effective date of the claims is the filing date of EP-M1, which is at the earliest today (25 Feb 2014);
      • the July 2013 scientific article was published before today, so is Art.54(2) EPC prior art
      • the July 2013 article disclosed A,
      • so a claim to A in EP-M1 is not novel - Art.54(1),
      • and will not be granted will be granted - Art.52(1),
      • thus, no patent protection for A
    • although the invention was stolen by B from M, it is not possible to exclude the July 2013 article from the prior art as non-prejudicial disclosure under Art.55(1)(a),
      • as the July 2013 article is published more than 6m ago.
      • Furthermore, the disclosure in scientific article is most likely not considered evident abuse against M, unless the article was published by M.
      • So, no patent protection for A
         
  • option 2:
    • EP1 is the first and earliest application for subject-matter A, but is by B, so M does not own the priority right now - not same applicant Art.87(1)
    • could in principle transfer the priority right, and can than use it as "successor in title",
    • but the priority period expired Jan 2013 + 12m -> Jan 2014,
    • so too late to validly claim priority, and cannot be remedied:
      • RE of priority period can be requested [Art.122(1), R.136(1)], but will not be successful as did not have the right to priority in Jan 2014 when the priority period expired
         
  • option 3:
    • use entitlement proceedings under Art.61 EPC
    • M as true inventor has right to file - Art.60(1)
    • M can start national entitlement proceedings - Art.61(1)
    • EP1 is withdrawn, but not required that EP1 is still pending - G 3/92
    • only option is new application EP-M2 under Art.61(1)(b)
    • M is not an employee - Art.4 PoR-, and there is no agreement between M and B - Art.5,
    • B resident in DE, so entitlement proceedings have to be instituted before court of state of residence of B, so DE - Art.2 PoR
    • decision will be recognized in all EPC states - Art.9(1) PoR
    • after DE court made final decision:
      • give evidence to EPO and EPO - R.14(2)
      • file EP-M2 with identical subject-matter as EP1 - Art.61(1)(b), Art.76(1)
      • which will be treated as a divisional - Art.61(2) -, so takes the dates of EP1 - Art.76(1), so
      • EP1 is not prior art - Art.54(2), Art.54(3)
      • pay filing and search fee within 1m of filing EP-M2 - else deemed withdrawn - R.17(2)
      • renewal not yet due - R.51(1) -;
      • no accrued renewals, but even if they were, no need to pay -R.51(6)
         
  • so: only option 3 works
  • do all steps of option 3

b) [in which contracting states can M get protection?]
  • protection is possible in all states which EP1 had designated - Art.76(2)
  • all EPC contracting states at date of filing EP1 (Jan 13) are designated on filing - Art.79(1)
  • no indication that any designations were withdrawn by B prior to withdrawal of EP1 in may 2013
  • so protection via EP-M2 in all EPC states of Jan 13 = all  38 current EPC states
  • as well as in the current extension states, BA and ME
  • designation fee needs to be paid 6m after publ. SR -Art.79(2), R.39(1)-, so well in future

Q.2

[can a patent be granted for EP1 with claims 1 and 2?]

situation as-is
  • priority period of IT2 expired 4/12/12 + 12m [Art.87(1), R.131(4)] -> 4/12/14 (Wed),
  • so EP1 filed 1 day before expiry, so within priority period
  • IT2 (4/12/12) also disclosed sjm of claim 1 (A) and sjm of claim 2 (A+B) as does EP1, so for both claims, "same invention' criteria is met
  • sjm A:
    • however, IT2 is not the first application from X for sjm A - IT1 is (3/12/12
    • so priority for claim 1 is not valid - Art.87(1
    • also exception of Art.87(4) does not apply, as IT1 was only withdrawn after IT2 was file
    • so eff.date of claim 1 is f.d. of EP1  is 3/12/13
    • symposium of 7/12/12 is earlier, so is Art.54(2) prior art
    • and also discloses A,
    • so claim 1 not novel - no grant
  • sjm A+B:
    • IT2 is the first application from X for sjm A+B - IT1 does not disclose B, nor the combination A+B
    • so priority for claim 2 is valid - Art.87(1)
    • so eff.date of claim 2 is f.d. of IT2 is 4/12/12 - Art.89
    • symposium of 7/12/12 is later, so not prior art
    • no other prior art
    • so claim 2 novel & inventive - can be granted
  • so no patent can be granted for EP1 with claims 1 and 2, only with claim 2
improvements
  • unless we can change the effective date of sjm A to a date on or before the symposium disclosure, so that the symposium disclosure of A is not prior art
  • this can be done by adding a priority claim to IT1:
    • priority period of IT1 expired 3/12/12 + 12m [Art.87(1), R.131(4)] -> 3/12/13 (Tue),
    • so filing EP1 on 3/12/13 was in time to claim priority
    • EP1 is first appl for A, so same sjm as claim 1, so priority will valid
    • so: add a priority claim to IT1 before
      3/12/12 + 16m [R.52(2)] -> 3/4/14 (Thu)
    • so still time to do so
  • then, eff.date of claim 1 is f.d. of IT1 
  • no prior art before f.d. of IT1
  • so claim 1 will be novel & inventive - can be granted
  • maintain the priority claim to IT2 - multiple priorities is allowed - Art.88(2)
  • so patentability of sjm of claim 2 is unchanged and claim 2 can also be granted
So: yes, if we timely add priority claim to IT1, EP1 can be granted for claim 1 and 2

 Q.3

[what should the new representative advise concerning the payment of the examination fee?]
  • req for exam should have been filed and examination fee should have been paid by:
  • 21/8/13 (date mention SR in EP Bulletin) + 6m [Art.94(1), R.70(1), R.131(4)] -> 21/2/14 (Fri)
  • the proceedings were interrupted on 20/11/13 while this period was running
    • proceedings may be interrupted in the event of legal incapacity of the representative - R.142(1)(c) - probably no mark for this statement, as the question already indicated that this was the reason
    • and are resumed after a new representative is appointed - R.142(3) - again, probably no mark for this statement, as the question already indicated so
  • and 20/11/13-21/2/14 did not yet lapse = 1days + 3m (20/11 included)
  • the non-elapsed part of period for req. examination is available after resumption - R.142(4)-, with a minimum of 2m
  • as 1d+3m> 2m, have 1d+3mas from resumption (resumption date included)
  • so the examination fee can be paid until:
  • 20/1/14 + 1d+3m (20/1 included) -> 19//4/14 (Sat) [R.134(1)] -> 22/4/14 (Tue)
  • So, can wait until April 2014 to meet clients wish  
Notes (maybe bonus marks available for these remarks?):
  • reply to search opinion was filed, so R.70a(1) satisfied, and no further response needed
  • the period for payment of the designation fee -Art.79(1), R.39(1)- will start again on 20/1/14 in its entire length of 6m, so expires only by 20/1/14 + 6m (20/1/14 included) -> 19/7/14 (Sat) -> 21/7/14 (Mon)
  • renewal fee due on 28 Feb 2014 -Art.81(1), R.51(1)- and does not change, so pay before or on 28/2/14 (Fri); else need to pay by 28/2/14 (Fri) + 6m (de-ultim-ad-ultimo, J 4/91) -> 31/8/14 (Sun) [R.134(1)]-> 1/9/14 with an additional 50% - R.51(2), RFees 2(1).5
  • if the applicant a person referred to in Art.14(4), he is (under the law as of 31/12/2013) entitled to a 20% reduction of the examination fee if he files the request for examination in his admissible non-EPO language at the latest when paying the examination fee - R.6(3), RFees 14(1).
    However, as the law changes per 1/4/2014 (OJ 2014, A4; CA/D 19/13), he may be entitled to an even larger reduction of 30% (if natural person, SME or university and alike), or to no reduction at all (if another type of applicant, e.g. larger legal entity).
  • as the fee increases per 1/4/2014 (OJ 2014, A5; CA/D 14/13) from EUR 1.555 to EUR 1.620, it may be advisable to pay before 1/4/2014 (if not entitled to fee reduction).

Q.4

a) [is there a defect in the application in view of the requirements for signatures?]
  • the request shall be signed by the applicant - PCT Art.4, R.4.1(d), R.4.15
  • but the agent can sign on the behalf of the applicant - R.90.3(a)
  • hereto, the agent must be appointed by the applicant - R.2.2, R.90.1(a)
  • which can be done by all applicants signing the separate PoA - R.90.4(a) -, i.e., (only) Mr S qas he is sole applicant
    • Note: the question says "S is sole applicant and inventor", which may indicate that the EXam Committee also expects to discuss the  relevance of S being an inventor - this is however only affecting the answer if the IA names S as applicant for the US, which is not needed anymore since 16/9/2012 - further, if the sole inventor is the sole applicant, this anyhow does not require any additional signatures (all applicants - R.90.4(a))
  • which must be submitted to the rO or IB - R.90.4(b)
  • However, the rO may waive this requirement - R.90.4(d)
  • which the EPO has done - OJ 2010, 335 or "How to get - part 2" (6th edition, 2012), 109 & 162
  • so, all requirements as to signatures are complied with - no defect
b) [who can withdraw the international application and what has to be done to this end?]
  • an IA can be withdrawn - R.90bis.1(a) by the applicant
  • although the agent can act on the behalf of the applicant - R.90.3(a)-,
  • the PoA can not be waived for withdrawals - R.90.4(e); "How to get - part 2" (6th edition, 2012), 111
  • so,
    • the applicant himself can sign the notice of withdrawal and submit to rO or IB, or
    • the applicant expressly appoints the agent by signing a PoA - R.90.4(a), and the agent can sign the notice of withdrawal; withdrawal only effective once rO or IB has the notice of withdrawal as well as the signed PoA (Practical Advise in PCT Newsletter October 2013)
  • notice of withdrawal has to be received by rO or IB by 30m from priority

Q.5

a) [is the appeal admissible?]
  • admissible if complying with R.101(1):
  • refusal is decision by ED, so appealable - Art.106(1)
  • applicant adversely affected as claim 1 was rejected - Art.107, 1st sentence- so applicant may appeal
  • notice filed within 2m from notification of decision - Art.108(1), 1st sentence 
    • We donot know when decision was notified, only when decision was take
    • So, notification is at the earliest on 6/8/13, by registered letter with advice of delivery - R.126(1
    • so, 2m period for notice expires at the earliest on:
      6/8/13 + 10d [R.126(2)] + 2m [R.131(4)] -> 16/10/13 (Wed)
    • so filing it on 1/10/13 was in time
  • fee RFees 2(1).11 paid within same period - Art.108(1), 2nd sentence
    • paid on 4/10/13, so in time
  • statement of grounds within 4m from notification of decision - Art.108(1),3rd sentence;
    • expires at the earliest on:
      6/8/13 + 10d [R.126(2)] + 4m [R.131(4)] -> 16/12/13 (Mon)
    • so filing on 28/11/13 was in time
  • statement of grounds includes amended claim = "extent to which it is amended" so satisfies R.99(2) & RoP BoA (OJ 2007, 536) Art.12(2)
  • so, all requirements of R.101(1) satisfied, so:
  • yes, appeal is admissible

b) [will the examining division review its decision and reimburse the fee?]
  • rectification:
    • yes:
    • statement of grounds includes amended claim
    • which corresponds to previous claim 2 considered allowable already by ED
      • as new single claim corresponds to previous 1+2;
      • previous 2 was depending on previous 1, so comprised all features of claim 1 - R.43(3)&(4)
    • so ED will consider appeal admissible (see a) and well-founded - Art.109(1), and
    • ED will grant interlocutory revision - Art.109(1), GL (2013) E-X, 7.4.2(a), T 219/93
  • reimbursement?
    • no:
    • reimbursement is only possible - R.103(1)(a) if interlocutory revision is successful AND reimbursement is equitable by reason of a substantial procedural violation - R.103(2)
    • no substantial procedural violation occurred - even if assessment of inv.step would have be erroneous, that is not enough - T 153/94
    • so, ED will not grant the request for reimbursement,
    • but as reimbursement was requested with payment of the appeal fee, so with filing the appeal,
    • ED will remit request for reimbursement to BoA - R.103(2), last sentence; J 32/95; G 3/03, hn1
    • the BoA will however also decide that no substantial proc violation occurred to which the need to appeal would be equitable, and will refuse reimbursement - R.102

Q.6

a) [amount of filing fee?]

[our original answer]
  • filing fee on entry: R.159(1)(c), Art.78(2):
    • basic filing fee:
      • filed by fax, so not online:
      • RFees 2(1).1 EUR 200
      • (Note: if entry affected before 1/4/14; 210 if affected on/after 1/4/14)
    • page fee  as part of filing fee:
      • number of pages - GL E-VIII, 2.1.3 & A-III, 13.2; OJ 2009, 118 + OJ 2009, 338 [republished as OJ 2010-SE1, 328 & 339]: 
        • OJ 2009, 338: replacement pages with amended claims and translation of description form basis for calculating the additional fee
        • R.159(1)(b): application documents on which EP grant procedure is based:
          • as IA filed in CN, published in CN -PCT R.48.3(a)-, translation into EPO language needed for use in EP-phase - R.159(1)(a), Art.153(4) EPC
          • description as translated in English R.159(1)(a):  35 pages
          • amended set of claims in English: 3 pages
        • 1 page the abstract: 1 page
        • TOTAL: 39 pages
        • 35 are exempted, so need to pay for 4 pages
      • RFees 2(1).1a:  4 x EUR 14 = EUR 56 (if entry affected before 1/4/14; 4 x EUR 15 = EUR 60 is affected on.after 1/4/14)
    • so filing fee = EUR 200 + EUR 56 = EUR 256 (EUR 270 if affected after 1/4/14)
    • Filing fee unaffected by later amendments in 6m period of R.161/162 - OJ 2009, 118 / GL A-III, 13.2 
[however, the correct answer seems to be as below - thanks to discussion with several candidates commenting on the blog (see comments) - 1 March 2014]
  • filing fee on entry: R.159(1)(c), Art.78(2):
    • basic filing fee:
      • filed by fax, so not online:
      • RFees 2(1).1 EUR 200
      • (Note: if entry affected before 1/4/14; 210 if affected on/after 1/4/14)
    • page fee  as part of filing fee:
      • number of pages - GL E-VIII, 2.1.3 & A-III, 13.2; OJ 2009, 118 + OJ 2009, 338 [republished as OJ 2010-SE1, 328 & 339] & Table for section 6 of form 1200 (EP Entry form): 
        • only claims are amended: basis for calculating the additional fee is formed by:
          • OJ 2009, 338:
 
          • replacement pages with amended claims in translation
            -> the 3 pages in English;
          • description from International Publication
            -> the 40 pages in Chinese PCT R.48.3(a)
            Note that, as IA filed in CN, the IA is published in CN -PCT R.48.3(a); a translation into EPO language is needed upon entry into the EP-phase - R.159(1)(a), Art.153(4) EPC; however, if no amendments are made at all, these are not considered "replacement pages" to satisfy R.159(1)(b),
        • 1 page the abstract: 1 page
        • TOTAL: 3+40+1 = 44 pages
        • 44 are exempted, so need to pay for 9 pages
      • RFees 2(1).1a:  9 x EUR 14 = EUR 126 (if entry affected before 1/4/14; 9 x EUR 15 = EUR 135 is affected on.after 1/4/14)
    • so filing fee = EUR 200 + EUR 126 = EUR 326 (EUR 345 if affected after 1/4/14)
    • Filing fee unaffected by later amendments in 6m period of R.161/162 - OJ 2009, 118 / GL A-III, 13.2 

b) [latest day for paying filing fee without incurring additional fees?]
  • last day for payment is time limit for EP-entry:
    4/10/11 + 31m (R.159(1) EPC, R.131(4)] -> 4/5/2014 (Sun) -> 5/5/14
  • also payment of filing fee shall be done within this time limit - R.159(1)(c)
  • if later, appl,deemed withdrawn - R.160(1), and
  • additional fees in the form of fees for further processing will incur, to be paid within 10d+2m (R.135(1)) after the loss-of-rights R.160(2).
  • R.162 only provides for 6m more after entry for payment of correct amount of claims fees


Pete & Roel, 26/2/2014

© Copyright DeltaPatents, 2014
All rights reserved. No part of this answer may be reproduced, used in any way for generating further course material or updates, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise, without written consent of DeltaPatents.
The answer is made available for personal use only.




27 comments:

  1. Anonymous posted the following question on February 27, 2014 at 4:46 PM in the "First impressions" blog:

    Hi,

    I don't agree with the answer you provide for q8 in D1. I checked the OJ and GL references wrt the page fees. According to all of these references, the page fee is based on the published application and not the English translation. Also, this GL reference does not exist:GL E-VI, 2.1.3.

    Best regards,

    Fred

    ReplyDelete
    Replies
    1. Dear Fred,
      Thx for your comments. This is very worthwhile to discuss, as it is very very confusing.
      Actually, the wording in the GL is "the international application as published" and not "the International Publication". This is intentional: "the international applciation as published" refers to the publication under Art.153(3) or Art.153(4) EPC. Thus, it is the International publication if International Publication is in an official EPO language, whereas it is the translation that the applicant has furnished and the EPO has published under Art.153(4) if Internatioonal Publication was in other language, such as CN in the question.
      This is also explicit in the Notice supplementing the notice ... - OJ 2009, 338 [republished as OJ 2010-SE1, 339): see second paragraph on first page, and explicit statement (referring to the situation where the description is also amended) at the bottom of page OJ 2009, 339: "In this case, the calculation of the additional fee must be based on the translation of the description as amended." (also on p.340, middle, in case also amendments were filed in the international phase), and earlier on the same page, amended claims are similarly addressed as: "The replacement pages will form the basis for calculating the additional fee"

      Delete
    2. I completly agree with you.

      Delete
  2. Helge Jordan posted the following question in the "First Impression" blog:

    Helge Jordan February 28, 2014 at 8:31 AM
    Dear DeltaPatents team, first of all - thank you for providing the answers so fast, this is really helpful!

    However, I tend to disagree with your answer for DI, Q4a. Not sure though, so further comments are much appreciated :)

    The EPO as rO may have waived the requirement of submission of a power of attorney. In this case however, it was submitted, but it was not signed. Since it is not likely that the agent has another power of attorney from Mr. Smith which is properly signed, the EPO will be in doubt as to whether the agent is validly entitled to act, see OJ 2010, p. 336, 5th paragraph. So they will consider it necessary to receive a (valid) PoA due to the circumstances in the particular case.

    Then according to R. 90.4 c) PCT, since the PoA is not signed, the PoA is deemed to be not valid.

    Maybe I'm missing something here though.

    Helge

    ReplyDelete
    Replies
    1. Hi Helge,

      Interesting point, although I would think it is a bit farfetched - but I may be wrong, also tutors make errors (luckily, only occasionally ;-)):
      I dono't think EPO would indeed doubt if the PoA lacks a signature (do you have a reference to, e.g. the PCT Adm. Instructions when they will doubt, or to the EPO GL?) - I would rather say that it only indicates that a PoA was prepared to be signed, and already submitted, while the attorney was still waiting to get the official signed PoA back for his records (following IB and EPC recommendations with the latter). Further, you could argue that a non-siged document is deemed not filed - so a non-signed PoA is an absent PoA, in which case there would not be any doubt...

      Any more thoughts on this by you or others? Anyone having the convincing argument by a explicit legal reference?

      Regards, Roel

      Delete
  3. P.D. posted the following comments on the "First Impressions" blog:

    P.D.February 28, 2014 at 8:40 AM

    Dear DeltaPatents Team, thanks for the quick answers, but I would disagree with your Q5 answer.

    The EPO is driving a very hard course at the moment with the admissibility of Appeals if the only request perused is one which could have been brought forward in the first instance. Therefore, I am not sure whether they would admit it.

    May be I just missed something, but why otherwise stretch on the fact that 2 was seen to be allowable in the first instance.

    P.D.February 28, 2014 at 8:46 AM
    because they now use a harsh approach to Article 12(4) RPBA

    ReplyDelete
    Replies
    1. Hi P.D.,

      Thx for your comment. I agree that, of the appeal would make it to the BoA itself, it has a serious chance to not be allowed in the procedure under the "you could have raised this in first instance" objection of Art.12(4) RPBA that you referred to.

      However, it never ends up there, as the first instance department will rectify its decision under "Interlocutory revision" of Art.109(1) EPC, as argued in our answer.

      Also note a subtlety in Art.12(4) RPBA: "the power of the board to hold inadmissible facts, evidence or requests " does not equate to not "hold inadmissible the appeal based on facts, evidence or requests which could have been presented or were not admitted in the first -instance proceedings".

      Can you agree?

      Roel

      Delete
    2. Hi Roel, still not really "A patentee withholding claim requests in first instance opposition proceedings may be
      precluded, under Article 12(4) RPBA, from having those requests admitted on appeal" T 144/09, T 1705/07, T 1067/08

      According to these any request which could (and should) have been filed at an earlier stage, will run the risk of not being admitted by the Boards of Appeal. The question is if they apply this also to not opposition proceedings.

      Delete
    3. In T 1705/07 claims which had been part of a set of claims on file before the first instance and which had been re-submitted as one of several auxiliary requests together with the statement of grounds of appeal, were not admitted by the board into the appeal proceedings, see Case Law IV,E,4,4.3,4.33,e)

      Delete
    4. Hi P.D.,

      I appreciate the discussion, as the BoA is indeed so strict nowadays in real life that you cannot anymore file requests that you may find very reasonable, but that the BoA rejects because they were not filed in first instance or are not admitted during the appeal procedure as they are considered amendments to the case which the BoA is allowed to reject under Art.12 and Art.13 RPBA.

      However, the claim concerned in the question WAS submitted and actually held allowable )claim 2'. The GL gives this also as an explicit example of a succesful interlocatory revision.

      Further, the BoA is NOT required to refuse requests that are only filed at the start or during the appeal, they only have the possibility to do so - see also the "MAY" that you cited from T 144/09, T 1705/07, T 1067/08

      Also, do not confuse admissibility of appeal -to get your appeal proceedings really started- and admissibility of requests into the ongoing appeal procedure.

      Roel

      NB: as it is now Carnaval in the south of the Netherlands (where DeltaPatents is located), I will only continue the discussion after the weekend - but please add more to it, if you want to make more points!

      Delete
    5. I think we can agree that the BoA at the moment does not admit requests into appeal proceedings which could have been brought forward in the first instance (see also T 648/10, with regards to claim 10). In our case in the first instance the applicant could have brought forward a request encompassing claim 1+2 and would have succeeded, but the applicant didn’t do that. Now the only request for the appeal encompasses claim 1+2, when the BoA does not admit this one and only request, it seems logical that the appeal as a whole is not admitted.

      Delete
    6. Again, admissibility of the appeal and admissibility of requests shall not be confused (see above).
      Also, as discussed above, the appeal will not end up at the BoA in the situation of the question, but the department itself will do interlocatory revision - and allow it in view of the Guidelines citation given above.

      Delete
  4. Hi,
    For question 1, is it really necessary to include information on option 1 and 2 to get full marks? I considered these options, but as they didn't work, I focussed on option 3.
    Thanks

    ReplyDelete
    Replies
    1. Hi Nick, we do not know whether you need 1, or 2, or both for full marks, but I think if would be fair if the Exam Committee requires you to discuss at least option 1, as that would be the easiest solution that you shall -as you did, but unfortunately not as part of your answer on exam paper- always consider first. Regards, Roel

      Delete
    2. One of the Main Rules from our D Methodology courses: always write down and hand in ALL your -sensible- considerations: always marks, if not 'required', then probably or at least possibly a bonus mark, and fair chance to get upgraded from 44 fail to 45 compensable fail (as you indicate with those 'additional' statements that you are actually well fit-to-practice)!!

      Delete
  5. Hi,

    I also disagree with the proposed answer to Q6. I understand from the OJ reference which you have cited that "the calculation of the additional fee must be based on the translation of the description as amended". However, a direct translation of the description without amendments does not constitute amendments to the description. Instead, I think the calculation is based on 40 pages of description, 3 pages of AMENDED claims and 1 for the abstract.

    Thanks

    ReplyDelete
    Replies
    1. According to the Tutors report only the recently published documents count. So OJ of 2009 and 2010 should not play a role because Guidelines are published in 2013 and should have taken into account that facts of these OJs if any amendments. (How should we prepare the EQE, bringing all the recent OJs???)

      I hope we do not need to discuss about the sense of such a question. Do we really need to find in such a short time these guidelines? And even now where we have enough time to think about it we can not say what is right or wrong. I lost too much time even if I only recently had this case and knew where I have to search. The example in the guidelines also not clear because they use an English published int. appl.

      The calculation (according to the guidelines) is 1 (abstract) + 40 (description, published) + 2 (claims, published) - 2 +3 (claims, English and amended) -35 = 9

      The German text in the Guidelines clearly says veröffentlichte (past) internationale Anmeldung" and not "zu veröffentlichende Übersetzung", so it can not be the English text for not amended parts.
      (I assume that no amendments according to Art. 19 have been made but amendments on entry. If not I think we should know how many pages the the amendments according to Art. 19 in the Chinese version have but this information is missing)

      I assumed that it was indicated to use the amendments. But the question does not mention which pages the applicant has indicated to use as a basis. In this case both English and Chinese claims should have been considered! ( Fehlen diese Angaben, so gehen etwaige in diesem Stadium eingereichte neue Seiten als zusätzliche Seiten in die Berechnung der Zusatzgebühr
      ein, Guidelines AIII 13.2). No indication that only the translation should be taken into account.

      So I think we will have a lot of discussions with this question.

      Werner

      Delete
    2. Dear Werner,

      thx for following up on the discussion with addressing what actually the Syllabus of the exam is.

      You wrote "because Guidelines are published in 2013 and should have taken into account that facts of these OJs if any amendments."
      Indeed, they should p- and they also did! GThe first paragraph of GL (Sept 2013) A-III, 13.2 reads:

      "This section relates only to applications filed and international applications entering the European phase on or after 1 April 2009 (see also the Notice from the EPO dated 26 January 2009, OJ EPO 2009, 118, and the supplement thereto, OJ EPO 2009, 338). "

      Thus, the GL clearly indicate that the official legal source is these two OJ publications.

      You also wrote: "(How should we prepare the EQE, bringing all the recent OJs???)"

      Officially, yes - you need the status of the law and its interpretation of 31 Dec before the EQE. But, you should be practical and reasonable. In all our legal, methodology and guided exam courses, we recommend the candidates to bring the latest Ancillary Regulations (OJ 2010, Special Edition 1) which are a compilation of -almost- all relevant OJ publications at the moment of its compilation, as well as all useful OJ publications published after the date of the Ancillary Regulations and at the latest on Dec 31 before the EQE. Only then, you have the complete and correct legal references, which you are required to study.

      The Study Guide in our Basic Legal Q&A Book contains an overview of all OJ references in the Anc.Reg. and also indicates which are superseded or supplemented with later OJs.

      You can also use the book "References to the EPC" by Jelle Hoekstra, which has the (relevant parts of the) text of most OJ references integrated in it, and also comes with an Annex-book which contains a list as well as the full text of most OJs published after the Anc.Reg.

      OJ 2009, 338 is fully republished on OJ2010-SE1. On its first page, it says:

      "This notice contains additional information which supplements point 3.2 of the notice from the European Patent Office dated 26 January 2009 concerning the 2009 fee structure. Point 3.2 concerns the _additional fee as part of the filing fee_ for PCT applications entering the European phase. The present notice deals with cases where the _international application has not been published in an official language of the EPO_ .

      Upon entry into the European phase, the applicant must file a translation of the international application as published by WIPO (Art. 153(4) and Rule 159(1)(a) EPC) into an EPO off icial language. This translation (and any subsequent amendments) must comply with the general obligation to file documents in accordance with the formal requirements of Rule 49 EPC. It w ill form the basis of the publication of the Euro- PCT application under Article 153(4) EPC."

      So, there cannot be any doubt that it is the translated pages that count, irrespective of whether there are any amendments. Further discussion will thus not likely be very useful.

      Roel

      Delete
    3. I'm not sure I understand. OJ 2009, 338 further states, under "Amendment of the claims on entry
      into the European phase", that in this case "the additionnal fee will be calculated on the basis of the number of pages of the description belonging to the international application as published by WIPO and the replacement pages containing the amended set of claims in an EPO official language".
      "As published by WIPO" means to me "in Chinese" and not the translated publication by the EPO

      Delete
    4. Hm, I see your point. I interpreted the first two paragraphs of OJ 2009, 338 with the folllowing paragraph from the "Notes to the entry form" (see Form webpage on EPO site) in mind:

      "In all cases, the applicant should specify in the table on page 7 of Form 1200 the documents which are to be used for the European phase and therefore form the basis for calculation of any additional fee. Any exceptional circumstances which may need further explanation must be clarified on an additional sheet."

      and from "the documents which are to be used for the EP-phase" together with R.159(1)(b)/ Art.153(3)&(4), as referring to the publication under Art.153(3)&(4)...

      But, the table on page 7 of form 1200 (the Entry form) does not mention the translation of R.159(1)(a) of an unamended description, but only the (original) International Publication (in the original publication language) and replacement pages with amendments (in the choosen EPO languagem of translation).

      So, I accept that your reasoning and conclusions must be correct.

      (Good that our Formalities Department always uses (automatic) debit orders at EP entry - then the EPO does/corrects the calculatioj for you, as ling as your intention what dicuments to be used in the EP phase is unambigously clear).

      Does somebody else have any evidence that EPO practice is indeed as we have now concluded, or that it is as I originally concluded? (I will check the EPO register for solme examples after the weekend, to take away the last bit of doubt...)

      Thanks for your contributions!!!

      Delete
    5. It seems still not so clear:

      OJ 2009, 338 states

      Where the claims are amended on entry into the European phase the applicant must file a full set of amended claims in the EPO language.

      The filing fee is calculated on the basis of the pages of:
      - the description as published in the PCT
      - the replacement pages of the claims

      BUT it also states

      The applicant can file amended pages of the description or a “complete” amended description, or amended drawings on entry into the European phase. All must be filed in an EPO language.

      The filing fee is then calculated on the basis of:
      - the pages of the translations of the description or drawings as amended.

      Would this not mean = replacement pages of the claims [3] + translations of the description [35] + abstract [1]

      When the number of pages is reduced, why not make use of the second provision in OJ 2009, 338 and make it cheaper for the applicant. I otherwise don’t get the intension of the second provision of OJ 2009, 338, in particular since it explicitly states that a “complete” amended description can be handed in and that the filing fee is then calculated based on this description.

      Delete
    6. Dear P.D.,

      I fully agree. Actually, your comments gives also the reasons why our original answer was what is was...

      If the translation of the description has less pages than the description in the original international publication, it is recommended to:

      - file a complete translation labeled "translation" of the international application as published by the WIPO to satisfy R.159(1)(a);
      - file the same translation, with maybe somewhere a comma added, a different (smaller) fontsize or some marginal amendment, as amended description, labeled "replacement pages" and specify this (together with the amended claims and the original -or, if necessary, translated- drawings) as the application documents as amended on which the EP grant procedure is based to satisfy R.159(1)(b).
      [This is alsowhat I have been doing when performing EP entries as an AP agent for a far east client - the only amendment made then was always changing the "and anything within the spirit and scope of the claims" into "and anything within the scope of the claims" to anticipate an objection as to the use of "spirit".]

      The page fee is then calculated using the amended description and amended claims,which results in a smaller number of excess pages and a lower total filing fee (one may use the smallest font size allowed under R.49(8) EPC = reduced number of pages).

      Regards, Roel

      Delete
    7. Hi Roel,

      I used HTG-II 533-539 as 'legal basis' to compute the page fee. In my view, these provisions leave no doubt that the page fee is to based on the publication in Chinese.

      Regards,
      Aleidus

      Delete
  6. For Q4, I think it is important to recognize that it reads "attorney", not "European patent attorney", and only for the latter the EPO waived the requirement for a PoA. For other attorneys (not prof. representative registered at the EPO), such PoA is still necessary. So probably the answer was expected to discuss both possibilities, for a and b.

    Peter M. from Munich

    ReplyDelete
    Replies
    1. Hi Peter,

      Thx for noting this subtlety - it is withwhile to give it some attention.

      Q.4 says that the international application was filed with the EPO as rO, with the request signed by the agent. The EPO imposes requirements as to who can act as an agent: only European Patent Attorneys Art.134(1) and legal practitioners under Art.134(8) - other attorneys cannot act. The waiver does not impose any limitations to the type of agent - OJ 2010, 335 (or AG-IP Annex C EPO).

      Delete
  7. No comments, dissenting opinions, or "likes" for our answer to Q.3?

    ReplyDelete
    Replies
    1. Hallo,

      concerning Q. 3 I do not understand the given calculation for the time limit:
      "20/1/14 + 1d+3m (20/1 included) -> 19//4/14 (Sat) [R.134(1)] -> 22/4/14 (Tue)"

      I would have made the following calculation:
      20/1/14 + 1d+3m (20/1 included) -> 21//4/14 (Mon) [R.134(1)] -> 22/4/14 (Tue)

      Did I go wrong?

      Robert P.

      Delete