Tuesday, 27 February 2018

D 2018: first impressions?

To all who sat the D-paper today:

What are your first impressions to this year's D-paper? Any general or specific comments?

Were the topics well balanced in the DI-part?
Was the balance between EPC and PCT right for you? Substantive topics in DI?
Which of the the DI Questions did you consider particularly difficult, and which relatively 'easy'?
Did you skip any DI-questions? if so, why? Too difficult, or allocating the time for another question?

Were the legal issues in the DII-part well doable? Patentability? Difficult priority analysis? Business situation and relevance clear? Exploitation?
Did errors with one of the legal issues or one of the patentability issues in DII have a big knock-on effect on the rest of the paper in your view (the D papers of the last four years were very well designed in this respect!)?

How much time did you allocate for DI, how much for DII?
Which part did you do first, DI or DII?
How many marks do you expect to have scored in the DI-part, in the DII-part, and for the whole D?
What is your expectation of the pass rate and the average score?
How did this year's D-paper compare to the D papers of 2013 - 2017 (assuming your practiced those) - DI and DII-wise?

How did you use the additional 30 minutes that were available to to the paper? Did you work longer on the DI or on the DII? How many marks do you expect to have scored extra thanks to those 30 minutes?

The paper and our answers

The D paper is available here in Englishici in French and hier in German. (Thanks for the candidates that provided us with a clean copy!)

The core of our answers will be given in two separate blog posts: one for the DI-questions and another post for the DII-part.

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 03-03-2018 03:03"), whereas using your real name or a pseudonym 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.

Please post your comments as to first impressions and general remarks to the D-paper as a whole, and to the two parts (DI and DII) as whole part to this blog.

Please post substantial questions to specific DI questions to our DI post and DII-related questions to our DII post. Thanks!


  1. DI was doable. DII was quite different than the last years and threw me back. Organization was per application (not per inventions) and thus patentaibility was harder to tackle. There were enablement issues, which I missed. Improvements were not straightforward. Too much appeal was tested in both parts. I found it clearly more difficult than the D's of last years.

  2. So DI was pretty fair, but again a wall of text. Q5b => Was the answer a divisional?

    I didn´t see the option for PCT-BB2 to claim 175-200°C as selection invention.

    Consequently, I thought that PCT-BB2 contains no patentable subject matter and proposed as an improvement to withdraw/not enter the EP-Phase.
    Reason: to avoid patentability problems for EP-BB3, because PCT-BB2 contained the drawings (as a misfiling) of EP-BB3 and would be A.54(3) soa

    Moreover, I didn´t realize that the priority for a PCT-BB3 might invalid, because EP-BB2 is the first disclosure.

    I thought there is no way that PCT-BB3 can claim validly the priority form EP-BB2 (but well PCT 2 Month etc could work, but not for EPO, because RE with all due care before the EPO will not work)

    That´s the stuff I missed ... I hope this will not screw me ...

    DII - Q1, what was to do?
    => reasoned statement was filed in time
    => claim combination 1+3 might be accepted, because BB can provide measurements?
    Protection for method and directly obtained product possible in validated epc states

    1. i think q 5b is limitation after grant

    2. two options: file limited claims and explain to the Examiner that there is a novelty destroying document, before the decision is taken. He can than send a new 71(3). Second option was central limitation, where you simply limit the claims without explaining why.

    3. is at least cheaper ...

    4. first option costs only new translations, which you can do yourself. Second has a fee for limitation, but you do not need to explain why you are doing it and contrary to the first option is not in the discretion of the Examiner.

    5. One option was to inform the examining division before the decision to grant was handled to the internal post service of the epo.
      Free of charge but the reason must be provided.
      The other was to wait for the grant and file limitation ....
      At least that's my answer...

    6. Please refer to our DI post on http://eqe-d.blogspot.nl/2018/02/di-2018-our-answers.html

  3. For me, I think it was not a disaster but it did not go well either.

    I thought there was a lot of appeal stuff. In part II, I suspect now that our appeal was not properly substantiated...but I tried to argue that it was. What do people think?

    Otherwise, I found it very difficult to organise part II by application and given that lack of any real opponent with conflicting applications, it was also difficult I feel to gain marks in the advice section.

    For part I, I found it fairly ok, not great but ok. There were lots of things I was familiar with and I felt I could say something sensible for every question, but I was also pushed for time right until the last minute. So not opportunity to check my answers.

    Part I about average, part II noticeably more difficult and the random appeal question really threw me off.

    1. Exactly my own experience. This year the DII question rather was a C-type question: Various Products (FLP, Oliebollen) AND Processes AND starting substances (fruits) AND temperature ranges AND embodiments (conical, trumpet) AND further essential features (screw type conveyor, etc.) together with the usual issues (priority, disclosure, patentability) - this was far too much for me to solve completely in the remaining time, after having lost time with solving DI and the surprisingly appearing "6th DI question" at the beginning of DII.

  4. I found the paper markedly more difficult compared to the 2012-2017 past papers which I covered in my preparation. In part, I hadn't prepared enough for the short answer questions. I spent over 3 hours on the first 4 D-I questions and decided to move on to D-II with just under 2.5 hours to go. I rushed D-II with having question 5 still to do at the back of my mind, so made sloppy mistakes. I had about 10 minutes left to come back to question 5, but my brain was completely frazzled. I found a G decision about amendments being allowed at the discretion of the examining division until the Decision to grant is handed down to the postal service. Now I think there is actually a rule to go with this.

    D-II threw me compared to previous years. I was not practiced enough in dealing with overlapping ranges and selection inventions. I also suggested to withdraw PCT-BB2 before publication or at least refrain from entering the European phase to avoid an Art54(3) situation. I thought the appeal by BB was inadmissible because they merely filed their same opposition submissions and did not indicate reasons for setting aside the decision R99(2), T213/85. BB would still be a party as of right because the opponent's appeal was admissible, but would be in a reformation in peius situation. However now I'm thinking this is all wrong and I misunderstood what BB actually filed as their grounds....

    In summary, harder than previous years but probably just myself to blame.

  5. I thought D2 was harder than last year's. I got tied up in knots about priority being valid if the claim of PCTBB2 is amended to recite a screw conveyor.
    Also whether EPBB2 discloses the trumpet shaped nozzle when published as the priority document on PCTBB2 file. I said it does.

    1. Well EP-BB2 is deemed withdrawn and won´t be published no way to save EP-BB2 => loss of rights notification was July 17 or so ...

  6. To me it felt very different to past D papers (I did the last four years).

    DI was just about doable but as others have said there was far too much text to read, and I felt that the questions were too generic i.e. *wall of text* "Advise the applicant".

    DII really threw me. Question 1 felt just like a D1 question, except I couldn't figure out what they were getting at. As others have said, the breaking down into applications rather than subject matter made it much more difficult to assess novelty etc. when there were multiple claims per application. So I lost a lot of time just putting together a novelty table. Similarly in previous years there were generally obvious suggestions to improve the client position, but that seemed much less clear-cut this year.

    I was writing up until the last minute, even with the extra 30 minutes.

    1. Yes, indeed, that was exactly my own experience. I first worked through part 1 as planned, but when starting part 2 I was convinced I would have to solve the appeal question first and thoroughly because this would significantly influence the answers to the following questions (What else could be the reason for posing this long question right at the beginning of part 2?). Thus, I lost time with this actually "6th part 1 question" and as my brain was already exhausted and part 2 was intentionally drafted quite confusing (e.g. the drawings issue, discussion per application instead of subject-matter, etc.) it took even more time and at the end I ran out of time, despite the 5,5 hours. If I fail the exam by 2-3 marks I would rather blame the structure of part 2 rather than my own strategy.

  7. DI in brief
    Q1 => file missing parts and avoid redating => Requirements fullfilled, because checkbox was marked. Do this before early publication to get quick protection.
    For quick protection
    - request early publication at IB
    - Pay additional fee, because ISR not yet available
    - cite legal basis that pct has same legal effect as EP application. cite legal basis for legal effect of EP application = legal effect like national application
    - cite legal basis for provisional protection and actions to be done => translations or fee payment

    a) only if D1 is novelty destroying will claim 1 be invalidated
    b) no G3/14 clairity problem was in dependent claims

    a) 15.11.17
    b) Refile translations, fee payment was valid by E

    a) RE is possible for patent proprietor
    b) no RE possible for opponent

    => file amended claims, file argumentation
    => exam division will send new R.71(3) or reopen examination, as long decision to grant is not handed over to internal post service
    no additional fees need to be paid => first r.71(3) fee payment will be credited
    => improvement: waive second R71(3) and file necessary translations
    b) use limitation proceedings
    (I argued with divisional application ..)

    1. Agreed. NB Q2a they say it is novelty destroying: "D1 ... and discloses the subject matter of claim 1 of EP-B".

    2. agreed I missed this, but i wrote if novelty destroying => so shouldn´t cost too much

      DII ... well is difficult I am looking forward for a solution where I score some marks.

    3. Given the lack of consensus on here for DII answers, I think we all are!

    4. DI/Q1 appears to correspond to "Coffee Break 2017" Question 33, except for the nationality of the applicant and filing per form instead of online filing.

  8. Far too much on appeals! Is that really wat most of us do on a daily basis?

  9. I found the paper unusual, and I think that many people will find it difficult precisely for this reason.
    Part 1. Question 1 was a very laborious PCT thing (citing all the legal basis right, oh dear). The rest was okay. The 'please advise' manner of questions is not very helpful, but then we all know that the questions don't have to be leading or helpful, so no one can
    Part 2 was interesting. Initially I didn't like it, but as I progressed through the paper, I started to like it more and more. The appeal question was definitely my thing. The rest was doable, a bit long but doable. I was also counting my 'idiot factor' (how many facepalms while thinking 'oh these clients are idiots') - it was unusually high this year. :)

  10. In DII has someone indicated that the claims and the description of PCTBB2 Could be amended on the basis of the drawings? in order to obtain protection for the shape of the nozzle via PCTBB2

    1. Yes I did, not sure if right...

    2. but it is crucial to have a screwer type nozzle so that embodiment (with a trumpet nozzle) could not be implemented i think? in my opinion it is the best way to add priority claim of ep bb2 to ep bb3 and req fp for the fees for ep bb3 to obtain protection with a trumpet nozzle. By the way it is only my opinion and i really dont know whether it is true or not :)

    3. I mentioned it could be an option but it depends exactly what the drawing shows - may not be enough to satisfy "directly and unambiguously derivable". Then again, PCT-BB2 said that the screw thing is essential, so we would have to include it in a claim - does the drawing show both the trumpet and the screw conveyor? MY D-II answer was just a word vomit/brain dump of my thoughts as I went along, since I was hadn't enough time to do a thorough analysis and write a nice coherent answer :/

    4. besides this, this document could be novelty destroyng for bb3 in enters the ep phase

    5. Yes, I considered it, but it didnot serve a purpose.

    6. @Anonymous 27 February 2018 at 17:54:
      Why would you want to amend PCT-BB2 to include a claim to apparatus + mixer + screw conveyor + trumpet nozzle? You can not do it to apparatus + mixer + trumpet nozzle in view if the "must" in the description.

  11. DII: I thought that the accidentially included drawing in PCT-BB2 shows only the nozzle, but not an apparatus having a mixer and the nozzle; also this was deleted from the description: as consequence, I concluded that the claim of EP-BB3 is not disclosed by PCT-BB2 (the shape of the nozzle as such is known anyway from other fields of application).
    would withdrawal of the drawing before publication of PCT-BB2 also be an option?

    1. Yes also a problem and not completely clear in my opinion whether this is novelty destroying! Among other things this rendered the analysis much more difficult.

      I dont think you can delete the drawing .... the application will be published as filed ... ?!

    2. Rule 48.4 (l) PCT:
      (l) The International Bureau shall, upon a reasoned request by the applicant received by the International Bureau prior to the completion of the technical preparations for international publication, omit from publication any information, if it finds that:

      (i) this information does not obviously serve the purpose of informing the public about the international application;

      (ii) publication of such information would clearly prejudice the personal or economic interests of any person; and

      (iii) there is no prevailing public interest to have access to that information.

  12. DII appeal from opponent was not allowable since the matter was not raised in opposition (only insufficiency of claim 1). Appeal from client did not provide more reasons and will be rejected too. Analysis was long and difficult. Did anyone raise a non unit question on Euro-PCT-FK1? Between process and device? I was short of ideas for advice, seemed too few too simple to me (my solution).

    1. See our DII blog: http://eqe-d.blogspot.com/2018/02/dii-2018-oliebollen-methods-and.html

  13. Euro-PCT-FK1
    => file oppostion or 3rd party observations to destroy broad claim to device => is not sufficiently disclosed
    specific claim
    => specific example is already known from 20th century devices => so not new

  14. Euro-PCT-FK1 - while the nozzle and conical shape is not new from 20th century devices, what is new in the claim is combining the nozzle to deposit the balls directly into the oil. This is a new apparatus, no? It increases the production...


    1. it is unclear was exactly is disclosed by the 20th century devices => I thought "don't think too complicated"

  15. Quite OK, I felt that DII was pretty fine. Timeline was not so complicated, since there was no competitor with a pile of applications. Questions were different this year but maybe this way it's easier to know what to answer in which question.

    I skipped one DI question because I didn't have time anymore. Only 5 questions, so quite a lot of points per question was allocated. I skipped Q4.

    I was a little bit disappointed that there were not much (or at all) questions on recent changes. And no ADA!

    No need to check National Law tables or PCT annexes.. it's frustrating to get and bring all that material - for nothing. Why they don't e.g. specify that this year bring the annexes of these 10 countries. We know the alphabets, so no need to test that.

    Missing parts asked twice, which was a bit annoying.

    1. The National Law tables and the annexes were needed to check how provisional protection can be obtained in “all EPC states” in Question 1 of D1. Took lot of time, checking it for 38 states.

    2. I was also disappointed that from all “recent” law changes, only G 3/14 was tested

  16. a) I think the right answer is to claim priority of EP-BB2 for EP-BB3:
    - still possible
    - otherwise PCT-BB2 would be Art 54(3) EPC upon entry into European phase; withdrawing: no, since one would lose the process claims).

    > For the new PCT-application (other countries then EP) PCT-BB2 no state of the art (no problem; no priority needed)

    b) I restricted the process claims to range 175 to 200°C which has the effect (not over 150 to 220° which however is not new) over the here relevant Euro-PCT-FK1 range of 155°C to 250° of a lower acryl content (for 220 > 250, PCT-FKI does not show this effect).

    c) All in all, DII was difficult to structure properly. The questions didn´t help much in this regard but rendered the structuring even more cumbersome.

    1. I'm with you in a), adding priority to ep-bb2, but I concluded that filing a new IA claiming pri from epbb3 would not be possible as it is not the first application (epbb2 is)...

      b) anyone else suggested to amend only the lower limit? 175 to 220? I found a t decision somewhere with this exact (allowable) example but was highly unsure if would be possible.

    2. I also proposed amending the lower boundary only. I could not find the legal basis though, I am not sure if I will get any pooints for that...

    3. Is it necessary to claim any priority at all for PCT-NEW? There is not state of the Art 54(2) ... no entry into EP phase necessary since there is EP-BB3?!

    4. Why can you restrict the range? The application does not mention effects of the smaller range, so you cannot succesfully argue “purposive selection”. You can not base such selection on an effect not mentioned. The effect you mention is not in the application. Furthermore, it is not specific for the narrower range.
      I think not a single amended range can be novel. Any amendment is completely arbitrary. So method claim needs to be cancelled.


  17. The term "trumpet shape" is highly unclear. It is the same as conical? Or a species of conical? Or a very different shape? I could not find a definition in the paper, but it is crucial to solve the novelty and inventive step issues.

    Merriam-Webster says (https://www.merriam-webster.com/dictionary/trumpet-shaped):

    Definition of trumpet-shaped
    1 : conical but flaring at the broad end

    Does not really help... what is "flaring"?...

    1. Was it needed to know the details of the shape?
      From [009], 1st sentence, it is clear that the trumpet-shape has a particular advantage, so it must be different than conical nozzles - wither as a species or as an alternative species of "nozzles".
      The paper does not indicate that "trumpet shape" would be unclear, so it is not for the purposes of the paper.

  18. Has anyone thought about the research institute topic? they do not produce things only doing research and creating patents. crosslicensing might not be reasonable topic to discuss.
    So BB would violate the patent, because the directly obtained product is also protected ...
    Consequently, BB needs to stop to sell Balls with A,C,D or get a license from FK
    After invalidating one claim, the price should be reduced!?

    1. FK can not license it to us as FK will not own it: they will offer it to a competitor if we donot buy it. See [013].

  19. Can you please post the papers? If you have the answers you must have at least one language version... That would be greatly appreciated. Thanks.

    1. We only post the papers if we have a clean copy, ad we donot want to share the notes that a candidate made on his exam paper with the whole world...

      So, if someone can send us a clean copy of the English version of D-paper, that would be welcome!

    2. No technical knowledge5 March 2018 at 12:19

      The EPO have now uploaded the paper to the compendium: http://www.epo.org/learning-events/eqe/compendium/D.html