Tuesday, March 05, 2024 D1 2024: a 14-mark question to start with!

One of us sat the D paper today as a benchmarker and made some notes on 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. 

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

• D1-1 had only 2 questions, for a total of 26 marks, and had to be done from 9:30-11:05. 
• D1-2 also had 3 questions, for a total of 29 marks, and had to be done from 11:35-13:20.

For the first time ever, the D1 included a 14 mark question (Q.1). The other questions were also of considerable length: 12, 9, 11 and 9 marks. The D committee indicated at the last tutor meeting (report here, page 41 ff) that the number of questions has been kept constant over the years at 5 - 6, so that the average number of marks for them is much larger for a 55 mark D1 than for a (previously standard) 40 mark D1, and that the committee believes that candidates prefer long questions over shorter questions (some 5-6 mark questions were common in 40-mark D1s).

As in the online EQEs in previous years, the paper had to be taken fully from the screen in Wiseflow - nothing was printable. The pdf of the paper could be viewed side-by-side with the editor without annotation possibility, or in one or more separate tabs with annotation possibility. 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. However, the menu bar of the editor disappeared multiple times, so that the formatting and annotation tools were difficult to use this year - the porblem did not occur with me in the earlier online EQEs.

The online availability of legal texts (EPO legal texts esp. GL/EPO, Nat.Law Tables, RFees, G-decisions, GL/PCT-EPO, Euro-PCT Guide, PCT Applicant's Guide; PCT Treaty) was very convenient. As last year, I did not use the search function in those, but I used the "Topic-Related Index to the EPC and PCT"-book as a master index to all of these (see our webshop ;)). Also, I used the printed books "References to the European Patent Convention" and "The Cross-Referenced Patent Cooperation Treaty".

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 brought calendars of 2022, 2023, 2024 and 2025 (which are also in our D-book).

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

D1-1:

Q.1, 14 marks, "PCT-03": filed in Spanish with Spanish office, EPO as ISA: 

a) filing language and translation (which, when - today, where) - R.12.3, esp (a), (c) and (d); 

b) amended claims at minimum cost (so Art.19 and not Art. 34, language, where) and correction of mistake in description (language, where, when) - R.46, R.48.3, and R.91.

 

Q.2, 12 marks, "EP-2": missed response to negative search opinion, designation fee, request for examination (examination fee), renewal in respect of third year. 3 missed FP periods - R.126(2) old or new; R.135(1). Remedy by 3x RE in these FP periods & 1x R.51(2) or 51(4)? For RE, removal of the cause of non-compliance today - R.136(1), so have until 6/5/2024 - R.134(1).

D1-2:

Q.3, 9 marks, "EP-1": joint opposition by Mexico-resident and Spain-resident applicants (both nationals of Spain), in Spanish: language, translation, fee, representation - R.151/Art.133(2), R.6(2), R.50(3), GL D-III, 3.4 & D-IV, 1.2.1(ii) 

 

Q.4, 11 marks, "EP-4": opposition with limited extent: only independent claim 1, not dependent claims 2 and 3, not independent claim 4; late-filed evidence and facts w.r.t. claim 1 and 4. Advice - G 9/91 (extent) & D-V, 2.1; G 10/91 (late-filed facts and evidence).

A recent addition to the GL based on a recent decision could have been cited:"In particular, the opposition division cannot decide on the revocation of the patent beyond the extent to which it was opposed in the  notice of opposition" - based on T 809/21, headnote & Reasons 5.2. 

 

Q.5, 9 marks: "EP-7" in French, just granted: a) classical validation in UK and PL: steps and time limits; b) request for unitary effect: steps and time limits - OJ 2022, A41 (UPR), as expected in view of information on FAQ.

 

Of all topics tested, requesting unitary effect was not a surprise in view of the message on the EQE FAQ (also referred to by me in the comment to our D 2024 schedule blog), which referred to the UPR (OJ 2022, A41):

Surprisingly, other recent developments such as G 4/19 (double patenting), the amended Rule 56 EPC, new Rule 56a EPC and PCT Rule 20.5bis were not tested, nor were other aspects of the Unitary Patent such as the possibility for an early request (OJ 2023, Suppl 3, page 5-6).

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 05-03-2024 23:22"), 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 2024 blog; for first impressions and general comments to D 2024, see here. 

Update (7-3-2024): the paper is avialaale on the EQE compendium page, here.

Annex - added 6 March 9:40

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

We expanded our answers in great detail, in view of the large number of marks for each question.

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 (2024: "in July" acc to here; 2023: 5 July; 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 - use your google account or otherwise a nickname. Active discussion is appreciated; inappropriate content (non-respectful, offensive, impolite) will be removed by the system or by the blog team.

Diane & Roel

 

QUESTION 1 (14 MARKS)

On 5 January 2024, applicant D filed international application PCT-3 at the Spanish Patent and Trademark Office (SPTO) acting as receiving office. The PCT request indicates the EPO
as International Searching Authority (ISA). The filing fee, search fee and transmittal fee have
been duly paid.

In a notification dated 17 January 2024, the SPTO invited applicant D to furnish a
translation.

(a) In which language was PCT-3 filed and what steps does applicant D have to take for the
ISA to start the search?

(b) Applicant D wants to file amended claims and correct an obvious mistake in the
description at the lowest possible cost during the international phase. In what language, when
and where do the respective documents have to be filed?

Our answer to Q.1

PCT

(a) Languages

• SPTO as rO requires to file in Spanish - Rule 12.1(a), AG-IP Annex C ES
• As SPTO acted as rO (asked for translation), SPTO was competent receiving office w.r.t. nationality/residency - R.19.1- as well as language: PCT-3 has been filed in Spanish; if in other language, would have been transmitted to IB under R.19.4
• Spanish is a language of publication for PCT-3 - Rule 48.3(a), but:
• EPO as ISA requires English, French or German (or if filed with NL office, Dutch) - PCT Rule 12.3, EPO-WIPO Agreement OJ 2017, A115 and updates to Annexes or GL/PCT-EPO A-VII, 2.1
• ...all three are also publication languages - R.48(3)(a)
• So that a translation is needed for the purposes of search under Rule 12.3(a)(i)
   

• If translation into English, French or German filed within 1m from filing, i.e. by 5/1/24 + 1m -> 5/2/24 (Mon), no late furnishing fee would be due
• But as that has been missed, file & pay late furnishing fee within the latest of - R.12.3(c):
• 17/1/24 + 1m -> 17/2/24 (Sat) [R.80.5] -> 19/2/24
• 5/1/24 + 2m -> 5/3/24 (today)
• Fee =  25% of international filing fee acc. to Item 1 of SoF – R. 12.3(e)
   

• So need to do by 5/3/24 = TODAY:
• file translation into English, French or German to rO=SPTO
• pay late furnishing fee to rO=SPTO
• If translation not filed and fee not paid today, can still be done later and will be considered in time as long as SPTO as rO has not sent out “deemed withdrawn” declaration and done < 15m from priority date – R. 12.3(d)
   

• EPO was already indicated as ISA, so no further action needed w.r.t. EPO

(b) Language, when, where

Amendments:

• Amendment would be under Art. 19, as that has no cost while a demand under Art. 34 requires IPE fee and handling fee
• As PCT-e was filed in Spanish and that is a language of publ, amendments need to be filed in Spanish - Rule 46(3)
  
  

• File complete set of amended claims directly at IB – Rule 46.2 & 46.5(a)
• Can be done after transmittal of international search report until later of 2m from transmittal or 16m from priority date – Rule 46.1
• Must be accompanied by a letter which explains the differences between originally filed and amended claims and provide basis for amendments – R. 46.5(b)
• Letter must be in English or French –  Rule 92.2(d), PCT AG-IP 9.006A
• May also be accompanied by a "Statement under Art. 19" which will get published - Art.19, PCT AG-IP 9.008
• The statement must be provided in language of publication, so Spanish –  Rule 46.4, PCT AG-IP 9.007
   

• Can be filed until latest of 2m from transmittal of ISR (not yet known) or 16m from priority=filing - Rule 46(1), or at the latest before completion of techn prep
• No fee is required

Correction:

• Request for correction must be filed with competent authority - Rule 91.1(b)
• For description, that is the ISA, so EPO - R.91.1(b)(ii), PCT AG-IP 11.038
• Note: if I would have chosen to file a demand, it would have been the IPEA
• Note: as only the claims can be amended under Art. 19, Rule 91.1(b)(iv) does not apply
• Correction must be filed in the language of translation used for search (see a), as that has set the language of proceedings before the EPO as int auth - GL/PCT-EPO A-VII, 2, 2nd paragraph & A-VII, 3.1
• Correction must also be filed in the language in which the application as filed, so in Spanish - Rule 12.2(b)(i) (added)
• Request for correction shall specify the mistake to be rectified and the proposed rectification - Rule 91.2
• May contain a brief explanation = R.91.2
• Can be done free of charge – AG-IP 11.033
• Will be authorized by EPO if clear that there was an error and clear what it should be, based on description, claims and drawings as filed alone - R.91.1(c) & (d), GL/PCT-EPO H-IV, 2
• Time limit is 26m from priority=filing date here - Rule 91.2
• So 5/1/24 + 26m [R.80.2] -> 5/3/26 (I do not have a calendar for 2026, but assume that the EPO is open then; if that is also a closure date to the next day the EPO is open)

 

QUESTION 2 (12 MARKS)

In November 2021, company C filed European patent application EP-2. Only the filing and
search fees were paid.

The publication of the European search report, which was accompanied by a negative
search opinion, was mentioned in European Patent Bulletin of 17 May 2023.

On 26 May 2023, the EPO issued a communication pursuant to Rule 69 EPC and an
invitation pursuant to Rule 70a(1) EPC.

No further acts were performed by company C. Due to an isolated mistake within a normally
satisfactory monitoring system, company C became aware only today of a communication
from the EPO dated 12 December 2023 noting that there has been a loss of rights.

Is it still possible for company C to prosecute EP-2? If so, what steps have to be taken and
by when?

Our answer to Q.2

EPC

Yes, still possible, as the missed periods can all be remedied: Only filing and search fees paid, so no designation fee, no examination fee, no renewal fees yet

Written request for examination is in RfG form which must have been filed already as that is checked during formalities examination Rule 57/58. However, request not deemed filed as long as examination fee not paid - see below.

Time limits trigged by the mention of publ of SR in bulletin - as is

Three  time limits missed:

• 1) Response search opinion, Rule 70a: 17/5/23 + 6m [R.70a(1), R.70(1)] -> 17/11/23 )Fri)
• application deemed withdrawn R.70a(3)
• 2) Payment of examination fee to complete the request for examination: 17/5/23 + 6m [R.70(1)] -> 17/11/23 )Fri)
• request for examination not filed - Art.94(1) last sentence,
• so application deemed withdrawn Art,94(2)
• 3) Payment of destination fee 17/5/23 + 6m [R.39(1)] -> 17/11/23 )Fri)
• application deemed withdrawn R.39(2) 
   

• All 3 acts were missed and each can be remedied with 3 x FP
• However, FP time limit until
• 12/12/23 [R.126(2) as in force since 1/11/2023] + 2m -> 12/2/24 (Mon) - R.136(1)
• So 3 FP periods missed

Improvements

• The three missed FP periods can be remedied with RE as not excluded under Art.122 or Rule 136
• As periods legally independent, need 3x RE with each an RE fee - GL E-VIII, 3.1.3
• Tn isolated mistake within a normally satisfactory monitoring system shows all due care and is a valid ground for RE - Art. 122, R.136
• Removal of cause of non-compliance is today, when loss was noted
• So can do RE until
• today + 2m -> 5/3/24 [date of removal of cause] + 2m -> 5/5/25 [Sun, R.134(1), OJ 2024, A80] -> 6/5/24 - R.136(1)
• (expires before 1 yr from missed time limit which is 5/4/25, Sun -> 7/4/25)
   

• To do: file 3x request for RE with the EPO:
• 1) RE w.r.t FP w.r.t R.70a:
• Argue all due care (isolated mistake), reasons
• pay RE fee = RFees 2(1).13
• complete omitted act for RE = request FP
• pay flat FP fee - RFees 2(1).12
• file response to search opinion
• 2) RE w.r.t FP w.r.t R.70:
• Argue all due care, reasons
• pay RE fee = RFees 2(1).1
• complete omitted act for RE = request FP:
• pay FP fee = 50% of examination fee - RFees 2(1).12
• pay examination fee - RFees 2(1).5, whereby written request that is p[resent in already filed RfG form is also considered fi led- Art.94(2); RFees 2(1).
• 3) RE w.r.t FP w.r.t R.39:
• Argue all due care, reasons
• pay RE fee = RFees 2(1).1
• complete omitted act for RE = request FP:
• pay FP fee = 50% of designation fee - RFees 2(1).12
• pay designation fee - RFees 2(1).3
   

• The 3 successful REs mean legal consequences of the failure to observe the time limit shall be deemed not to have ensued - Art. 122(3), so that all 3 FP period deemed met
• The 3 successful FPs mean the legal consequences of the failure to observe the time limit shall be deemed not to have ensued - Art.121(3), so that all missed time limits are deemed met

Renewal fee

• Renewal fee missed: due 30 Nov 2023 - R.51(1)

• Initial thoughs:
• Can be remedied until 30/11/23 + 6m [de ultimo ad ultimo] -> 31/5/24 (Fri)
• by payment of renewal fee + 50% extra - R.51(2), RFees 2(1).5

• But (added 7/3):
• As the renewal fell due on 30/11/23, which is after 17/11/23 when EP- had been deemed to be withdrawn as a result of nom-observance of the 3 time limits discussed above (R.70a, 70, 39):
• The renewal fee due on 30/11/23 and possible future ones that fall due before and including the date of the notification of the decision re-establishing the rights on the RE in respect of FP in respect of those time limits, are only due on the latter date, R.51(4)(a), first sentence
• This fee and any renewal fee due within four months from that latter date may still be paid within four months of that latter date without an additional fee - R.51(4)(a), second sentence
• So can wait to pay the renewal fee

Conclusion

• So still possible, as all missed periods (renewal; response, examination, designation and FP thereof) can all be remedied (R.51(4)(a); 3x RE in respect of FP)

 

QUESTION 3 (9 MARKS)

The opposition period for European patent EP-1 expired yesterday

On 16 January 2024, A and B, two nationals of Spain, A residing in Mexico and B residing
in Spain, jointly filed a notice of opposition against EP-1. The opposition fee was paid on
that date. The notice was filed in Spanish by A and B, named in that order, and signed by
both of them. It includes the opponents' particulars, correctly identifies the opposed patent
EP-1 and contains a statement of the extent to which EP-1 is opposed and properly
substantiated grounds for this.

On 29 January 2024, the opposition division issued an invitation to remedy deficiencies,
setting a time limit of two months.

Yesterday B filed a translation of the notice of opposition in English.

What procedural steps need to be taken to remedy the deficiencies and for substantive
examination of the joint opposition to start?

Our answer to Q.3

EPC

• The notice of opposition must be signed by the joint opponents – R 76(3); R 50(3)
• As both signed, R.151 applies
• As notice of oppo was filed in Spanish by A and B, named in that order, and signed by
• both of them, and A residing in Mexico and B residing in Spain, Rule 151(1) requires representation in view of the Mexican applicant being non-EPC resident - Art. 133(2)
• So, the prof rep of the Mexican applicant A will be considered the deemed common representative, and this prof rep of the Mexican applicant A and should sign the notice of opposition and subsequent documents.
   

• As B resides in Spain, oppo can be field in Spanish as being a doc within a time limit of 9k - Art. 14(4), Art.99
• The opposition was filed in Spanish on 16/1/24, so before yesterday, so within the 9m time limit Art.99
• But needs a translation into an official EPO language - R.6(2)
• Time limit to file the translation expired the later of - R.6(2) -:
• 16/1/24 + 1m -> 6/2/24 and 
• the expiry of the oppo period = yesterday
• Sp by yesterday
• The filing of the translation in 29/1/24 was in time
   

• However: notice of opposition was filed by A&B and translation was filed by B, whereas both should have been filed by the deemed common representative = prof rep of the Mexican applicant - R.151 & Art.133(2)
• So the notice of the opposition (filed by A&B oppo) and the translation (filed by B) are considered not signed
• So the invitation of 29/1/24 was an invitation to remedy the signature by appointing a prof rep - R.50(3), GL D-III, 3.4 and GL D-IV, 1.2.1(ii)
• D-III, 3.4: If the signature is omitted, the formalities officer must request the party, or where appropriate the representative, to affix their signature within a time limit to be laid down by the formalities officer. If signed in due time, the document retains its original date of receipt; otherwise, it is deemed not to have been received (see D‑IV, 1.2.1(ii) and 1.4.1).
• The prof rep must notify EPO of his appointment and confirm that his signature should be attached to the notice of opposition and to the submitted translation
• The signature of the appointed prof rep then results in the filing of the notice of opposition and the filing of the translation retaining their original dates, 16/1/24 resp. 29/1/24
• The appointment and the missing signatures must be filed by
• 29/1/24 [I have chosen to use new Rule 126(2)] + 2m [GL D-IV, 1.2.1(ii)] -> 29/3/24 (Fri) [Good Friday, EPO closed, OJ 2023, A80; R.134(1)] -> 2/4/24 (Tue) (corrected)
• Then all deficiencies are remedied
   

• Opposition fee was paid on 16 Jan before 9m period expired yesterday.
• Anyone may pay a fee to the EPO - GL A-X, 1
• A single opposition fee is sufficient when there are joint opponents - G 3/99
   

• So that the opposition and the translation are considered filed in time and fee paid so that the opposition is considered filed.
• The opposition is also admissible as identification, extent, grounds and "proper substantiation" so indication of facts, evidence and arguments are filed - R.76(2)
   

• So substantive examination of the joint opposition can start

 

QUESTION 4 (11 MARKS)

Your client company E is the proprietor of granted patent EP-4. EP-4 has been granted
with an independent claim 1 directed to subject-matter A, a dependent claim 2 directed to
subject-matter A+B, a dependent claim 3 directed to subject-matter A+C and an
independent claim 4 directed to subject-matter D.

Company F has filed an admissible opposition against only claim 1 of EP-4, based on the
ground that the subject-matter of granted claim 1 is not new in view of prior-art document
EP-D1. EP-D1 does not disclose or suggest any of the subject-matter claimed in EP-4.

In response to summons to attend oral proceedings sent by the opposition division,
company F filed documents EP-D2 and EP-D3, both constituting prior art under
Article 54(3) EPC. It is immediately clear that, as argued by company F, EP-D2 discloses
subject-matter A and EP-D3 discloses subject-matter D.

Advise company E on how to obtain a valid patent conferring the maximum possible scope
of protection.

Our answer to Q.4

EP-4 granted:

- 1. A; 2(1). A+B; 3(1). A+C;

 - 4. D

Opposition by F: extent just claim 1

Claim 1:

• As EP-D1 does not disclose or suggest any of the subject-matter claimed in EP-4, EP-D1 does not destroy the novelty of the claim.
• However, the ground lack of novelty was raised and substantiated so that the opposition is admissible.
• Thus, facts that come to the notice of the OD which, prima facie, wholly or partially prejudice the maintenance of the patent will be considered G 10/91,  GL D-V, 2.2.
• As a result, EP-D2 may be admitted as late-filed evidence and the fact of lack of novelty of claim 1 over EP-D2 may be argued - G 10/91 - as lack of novelty of claim 1 over EP-D2 is immediately clear (at  least as argued by F) = prima facile relevant, even when raised only in response to the summons - GL D-VI, 3.2
• As EP-D3 is not relevant for claim 1, it will not be admitted on that ground

Claim 2 and 3:

• As the opposition is directed only to independent claim 1, the dependent claims 2 and 3 would only be considered to be implicitly covered by the extent of the opposition and may only be examined by the opposition division their validity is prima facie in doubt on the basis of the information already available (G 9/91; GL D-V, 2.1).
• However, as EP-D1 -the only document that was readily available- does not disclose or suggest any of the subject matter claimed in EP-4, dependent claims 2 and 3 are not considered implicitly covered and the extent cannot be extended to cover those.
• Furthermore, even if EP-D2 (disclosing A) and/or EP-D3 (disclosing D) would considered for claims 2 and 3, they would not destroy the novelty of those claims as B esp C are not described in those.
• So claim 2 and 3 can be maintained
• Art.123(3) is trivially satisfied, as these claims were among the granted claims.
• A resulting lack of unity needs to be accepted - G 1/91, GL D-V, 2.2

Claim 4:

• As extent just claim 1, claim 4 being other independent claim is not in extent of opposition as filed extent can not be enlarged later, so claim 4 not part of the opposition
• So that its patentability in view of EP-D3 will not be considered.
• To maintain EP-4 based on claim 4, request to main it in amended form may be field, but it is not even necessary to file such as request - GL D-V, 2.1 ("In particular, the opposition division cannot decide on the revocation of the patent beyond the extent to which it was opposed in the notice of opposition." - based on T 809/21, headnote & Reasons 5.2 )

So:

• You have the right to be heard and respond to the new submissions which are considered a change of subject of the proceedings - Art.113; E-VI, 2.2.2
• File main request and aux request, if possible still within time limit for written submission and else preferably a.s.a.p. - GL D-III, 8.5:
• Amendments submitted before the date set under Rule 116(1) cannot, as a rule, be considered as being late-filed - GL E-VI, 2.2.2
• If the opposition division admits under Art. 114(1) these new facts and evidence (i.e., lack of novelty of claim 1 over EP-D2, EP-D2) because they are prima facie relevant, a request from the proprietor for a corresponding amendment cannot be rejected as being late-filed even if submitted after the date set under Rule 116(1) - GL E-VI, 2.2.2
   

• File main request to reject the opposition, arguing that EP-D2 was filed too late, is not prima facie relevant contrary to what F argued (paper does not indicate thzt F is correct herein, which may be seem as a hint that I need to doubt that), and should not be admitted, so that they should be disregarded under Art. 114(2)
• Low chances of success in view of their prima facie relevance, but does not harm to try as division may have different opinion than wat company F argued (they argued "immediately clear")
   

• File aux request to maintain the patent in amended form:
• amended claim 1 = A+B (granted claim 2)
• amended claim 2 = A+C (granted claim 3)
• amended claim 3 = D (granted claim 4)
• amend the description accordingly
• The resulting lack of unity needs to be accepted - G 1/91, GL D-V, 2.2
• Once decision to maintain in amended form Art.101(2) is taken, file required translations of claims and pay fee for amended publ within 3m of from invitation - Rule 82(2)]
• Appear at the oral proceedings
   

• If an appeal against this decision is filed, the extent of the appeal cannot cover the new claims and so a validly granted European patent will be obtained.
   

• However, if the claim to D indeed lacks novelty over EP-D3, so there is a risk that national or UPC invalidation proceedings are initiated against EP4 - Art. 138(1)(a
• If so, as the grounds for revocation affect the European patent only in part (onoyu the claim to D), the patent can then be limited by a corresponding amendment of the claims and revoked in part, so that the patents can be maintained with the claims to A+B and A+C - Art. 138(2)

 

QUESTION 5 (9 MARKS)

Your client, applicant H, a national and resident of Morocco, filed European patent
application EP-7 in French in March 2020. The mention of the grant was published on
21 February 2024.

What steps have to be taken and by when to:

(a) obtain patent protection in the United Kingdom and Poland; and

(b) obtain unitary patent protection?

Our answer to Q.5

To discuss: "obtain protection", so validation acts

Updated: We consider it not needed to discuss national renewal fees after grant, as this is not to "obtain protection", but to keep in force. Note that anniversary March 2024 is after grant, so a national renewal fee is due in respect of 5th year, and can be paid without additional fee until 2m from the mention of the grant [Art. 141(2)], so 21/2/24 + 2m -> 21/4/24 (Sun) -> 22/4/24; this applies for PL. But in UK, have Nat.Law VI.a provides: "Where the date of publication in the European Patent Bulletin of the mention of grant of the patent occurs less than 3 months before an anniversary of the date of filing, the first renewal fee due on the patent following mention of grant may be paid up to the last day of the third whole calendar month after the date of publication in the Bulletin without any additional fee being charged", so until 31/5/24.
Note that the notification of the communication  (Rule 7(1) UPR) of the date of registration of the unitary effect may allow for a later payment of the renewal fee for a unitary patent - Rule 13(4) & (5) UPR: 3 months from the notification of that communication (which is not yet known).

Filed in Fr. so Fr is language of proceedings - Art. 14(3) EPC

(a) EPC

UK

• London Agreement Art. 1(1), so no translation under Art. 65(1) EPC needed - Nat.Law Table IV
• Also no other acts under Art. 65(2) - Nat.Law Table IV

PL

• Not London Agreement
• Translation of the complete patent specification into Polish under Art. 65(1) to be filed to the Polish office - Nat.Law Table IV
• within 3m from mention, so by 21/2/24 + 3m [Art.65(1)] -> 21/5/24 (Tue)
• Needs national attorney Art. 65(2) - Nat.Law Table IV, as national and resident of Morroco, so not "having their place of residence or registered office within the territory of the European Union, an EFTA member state - a party to the Agreement on the European Economic Area, or the Swiss Confederation".
• Need to pay a fee - Art. 65(2) - Nat.Law Table IV - for publication of the mention of the filing of a translation of the European patent or for making the translation of the European patent publicly available: PLN 90. Where the translation or corrected translation is more than 10 pages long, the fee for each subsequent page of the translation is PLN 10.
• Fee to be paid no later than 3 months after service of the PPO's invitation - Art. 65(2) - Nat.Law Table IV

 

(b) UPR = OJ 2022, A41; UPPreg = OJ 2013, 111 or Regulation (EU) 1257/2012

Unitary effect

• Request for unitary effect to be filed - UPPreg 6(1)(g); Rules 5 & 6 UPR:
• with the EPO
• within 1m from mention, so by 21/2/24 + 1m [Rule 6(1) UPR] -> 21/3/24 (Thu)
• in language of proceedings [Rule 6(2) UPR], so in French
• containing particulars of requester (=client),, number of EP patent, representative (=my) details
• together with a full translation - Rule 6(2)(d):
• into English, as language of proceedings is French - Rule 6(2) UPR or Art. 6(1) Translation Arrangement (OJ 2013, 132/ Council Regulation (EU) 1260/2012)
• As H resident in Morocco, which is not EPC state (just a validation state):
• need prof rep to file the request - Art. 133(2)
  

• Unitary effect in the participating member states - UPPreg 4(1) 
   

 

We look forward to your comments!
 

 

Diane & Roel, 6 March 2024

(c) DeltaPatents