D2 2024: Spiders, mosquitos and silk
This year's D2 was a paper of 2 h 40 min (14:05 - 16:45 CET) and only 45 marks, together with D2 2023 the shortest D2s ever (or at lerast, since very long).
You will have met Mr. Wool, Xeracno, Prosilk, and Smart SA. You learned about harvesting spider silk, raising spiders, cannibalism between spiders and feeding spiders with tiger mosquitos. Even two species of spiders starred in the paper: AA (Aranea aurata) and AF (Aranea fortis)!
As in the previous online D papers (2021, 2022, 2023), 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. 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).
The paper had a usual design, but related to quite some different and difficult subject-matter. First a careful patentability assessment -esp. priority- was needed, followed by an improvement question, and then a who-is-free-to-do-what analysis.
Candidates may have considered and had to deal with:
- Mr. Wool, Silk, Xeracno, Prosilk, you
- Harvesting spider silk, raising spiders, cannibalism, feeding with tiger mosquitos
- Controlled atmosphere containing acetylene, CO2 and/or N2O ("containing")
- Genus all spider species - species AA (Aranea aurata) and AF (Aranea fortis)
- Ranges, sub-ranges, examples, comparative examples
- Sequence of applications, EP-P3 claiming pri from EP-P2 claiming pri from EP-P1
- Partial priority - GL F-VI, 1.5; G 1/15
- Partial first application - GL F-VI, 1.5; T 282/12
- 54(3) prior rights
- Product-by-process claim
- Product protection from process claim
- Opposition period not yet expired - but no ground.
- I expected double patenting in D2, but to address that for an amended EP-P3 vs EP-P2 seemed too far-fetched
- Missed EP entry - loss-of-rights to applicant and not to agent of international phase
- CH, DE, TR, BA (extension state), US (Colorado)
- Preventing or being prevented from harvesting, selling, import for selling
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 06-03-2024 06:03"), 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 D1 comments, please refer to our D1 2024 blog; for fist impressions and general comments to D 2024, see here.
Update (7-3-2024): the paper is available on the EQE compendium page, here.
Annex - added 6 March 11:37
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
1. Currently
a) EP-P2
Filed 14/1/2020 by Prosilk.
Claims priority from EP-P1 filed 19/1/2019 by Prosilk, which
was withdrawn after publication.
The description of EP-P2 contains EP-P1 in its entirety, so
includes the an example of method with AA where the maximum harvest yield is
achieved at 6% CO2, and a comparative example, in which the concentration of
CO2 16% with AA, where the resulting harvest yield is significantly lower than
at any CO2 is at concentration within the claimed range.
EP-P2 further teaches that the method of EP-P1 can be used
with any other spider species and over a broader range of CO2 concentrations.
EP-P2 discloses a method for harvesting spider silk, said
method comprising raising spiders in an atmosphere containing from 3% to 13%
CO2.
EP-P2 has a single claim directed to:
- a method for harvesting spider silk, said method
comprising raising spiders in an atmosphere containing from 3% to 13% CO2.
EP-P2 claims priority from EP-P1.
Same applicant, within 12m (14/1/20 within 16/1/10 + 12m
-> 16/1/20), EP-P1 is first appl for a method for harvesting, spider silk,
said method comprising raising spiders of the species AA in an atmosphere
containing from 3% to 9% CO2, as well as the exemplified example at 6% and the
comparative example at 16% (even though the latter is outside the claimed range
in EP-P1).
So EP-P2 benefits from partial priority for first conceptual
part of AA 3-9%/6%/16% CO2, no priority for the remaining conceptual part.
It was known from 20 years earlier to use acetylene in
atmosphere to raise spiders so as to inhibit canabalism. No other prior art is
known.
Claim 1 of EP is novel because use of CO2 not known from
prior art and is a different gas
Use of CO2 has advantage of reducing fire risk as CO2 not
inflammable, which supports inventive step.
EP-P2 has been validly granted, on 2 Aug 2023, and gives protection for claimed method in
Germany and Switzerland, where renewal fees have been paid. (only paid in
DE and CH [006]).
Note: it feels uncomfortable that we cannot attack EP-P2
even though we are still in the opposition period until 2/8/23 + 9m -> 2/5/24
(Thu). But sometimes things are not as one expects: there is really no ground
of opposition in our view.
b) EP-P3
Filed 15/5/2020 by Prosilk
Claims priority from EP-P2 filed 14/1/2020 by Prosilk
EP-P3 discloses EP-P2 content, so a method for harvesting
spider silk, said method comprising raising spiders (of any type) in an
atmosphere containing from 3% to 13% CO2.
As the description of EP-P3 contains EP-P2 in its entirety
which included EP-P1 in its entirety, EP-P3's description also includes AA 6%
CO2, AA 16% CO2 comparative example, AA 3-9% CO2.
EP-P3 additionally discloses a method for harvesting spider
silk comprising raising spiders (of any type) in an atmosphere containing from
3% to 26% CO2, and an example of spiders AFD at 19%,
EP-P3 further includes an exemplary embodiment of the
species AF with its maximum harvest yield at 19% CO2.
EP-P3 has a single claim directed to:
- a method for harvesting spider silk, said method
comprising raising spiders in an atmosphere containing from 3% to 26% CO2 (any
3-26 CO2)
EP-P3 claims priority from EP-P2.
However, full claim EP-P3 not in EP-P2: only partial
priority.
Partial priority for the conceptual part of any 3-26 CO2 as
far as EP-P2 is the first application for that, i.e. only for any spider 3-13% CO2
as far as EP-P2 is the first application for that.
However, NO partial priority for AA spider 3-9% as that was
already in EP-P1 so that EP-P2 is not the first appl for AA 3-9%. Same for AA
6% and AA 16%.
So no priority for AA 3-9%/6%/16%: that conceptual part of
any 3-26 has f.d. of EP-P3 as eff date.
So:
- The first conceptual part relating to any 13(not included)-26
CO2 has no priority, as EP-P3 is 1st appl
- The second conceptual part relating to AA 3-9/6/16% CO2 has
no priority, as EP-P1 is 1st appl
- The third conceptual part relating to any 3-9 CO2 but not AA
3-9/6/16 CO2 has partial priority, as EP-P2 is 1st appl for that
EP-P1 is 54(3) w.r.t. the first and third conceptual part of
the claim of EP-P3,
so that
- the AA 16% CO2 in EP-P1 destroys the novelty of the first
conceptual part, and
- the AA 6%CO2 in EP-P1 destroys the novelty of the third
conceptual part
The single claim of EP-P3 is thus not novel and not valid,
as it stands.
Note: as claim has 3-26 and description includes 3-13, could
amend to 13-26. That would however not be new in view of the AA 16% comparative
example in EP-P1 which is 54(3) novelty destroying. An amendment to 16-26 would
also not be novel in view if the AA 16% comparative example in EP-P1.
However, claim could be amended to exclude the AA 3-9% as
that is given as a positive embodiment in the application (whole EP-P1 is in
EP-P2 which is in EP-P3) as well as the 6% and 16% examples - G 2/10. Also, it
would be allowed to disclaim these as undisclosed disclaimer to restore novelty
over EP-P1 - G 1/03 and G 1/16.
Also, a specific embodiment of method, in which the spiders
are AF spiders and CO2 = 19% is disclosed in EP-P3, but not claimed. This level
of CO2 not disclosed in EP-P2, so sjm not entitled to priority and effective
date is 15/05/2020.
For AF 19% CO2, EP-P1 is 54(3) prior art relevant for
novelty only.
AF spiders are not disclosed in Ep-P1; nor is 19% CO2.
So sjm is novel over Ep-P1.
Technical effect is that these spiders can be raised in
relatively high CO2 atmosphere, meaning that canabalistic behaviour can be
greatly reduced.
So sjm / a potential claim to AF 19% is also inventive and could validly go to grant.
As it stands, EP-P3 cannot be validly granted, but is still
pending and Prosilk can amend during prosecution to add a claim to the
patentable sjm identified above.
c) EP-AA+
Filed 14/2/2021 in the name of Xeranco, represented by Smart
SA
We found that spiders of the AA species surprisingly show a
further improved silk production when raised in an atmosphere containing from
3% to 26% CO2 and from 1% to 2% of nitrogen protoxide (N2O). N2O is a gas with
no safety restrictions.
Filed on 15 February 2021, represented by Smart SA therefore
filed a European patent application, namely EP- AA+, in the name of Xeracno,
which discloses and claims:
- in claim 1, a method for harvesting spider silk, said
method comprising raising spiders AA in an atmosphere containing from 3% to 26%
CO2 , and from 1% to 2% N2O
- in claim 2, dependent on claim 1, said method wherein the
CO2 concentration is 16%.
Xeracno’s 1st application and earliest application for
Method of harvesting spider silk incl raising AA spiders in atmosphere with
3-26% CO2 and 1-2% N2.
No prio, so claim1 effective date: 15/02/2021
EP-P1 and EP-P2 are 54(2) prior art, but do not show N2O, so
both claims novel.
Ep-P3 published later in July 2021, but sjm entitled to
priority of EO-P2 has earlier effective date and is A 54(3) prior art relevant
for novelty only. But does not shows N2O, so both claims novel.
Claim 1 inventive
over 54(2) prior art as addition of N2O allows to use high levels of C02 when
raising AA spiders without drawback of reducing yield. In fact yield is
surprisingly improved.
Claim 2 also inventive: in EP-P2, 16% CO2 specifically
mentioned as an example delivering a poor yield. Addition of 1 – 2% N2O
improves yield, so claim 2 id also inventive.
Still pending.
EP-AA+ can lead to validly granted patent protection in
countries where validated.
Protection will be limited to AA and 3-26% CO2 + 1-2% N2O.
Note that also claim 2 requires 1-2% of N2 in view if its
dependency on claim 1. Also, it is limited to AA spiders.
(d) PCT-TM+
Filed 14/4/2021 in the name of Xeranco, represented by Smart
SA
- Filed in English with the EPO as rO
Feeding spiders with tiger mosquitos provides a method for
harvesting spiders’ silk which surprisingly increases the spiders’ It discloses
and claims:
- in claim 1, a method for harvesting spider silk, said
method comprising feeding spiders with tiger mosquitos;
- in independent claim 2, the spider silk obtained by the
method of claim 1.No prio, so eff date is filing date for both claims
Claim 1 and 2 both have effective date: 14/4/2021
EP-P1 and EP-P2 are 54(2) prior art, but do not show feeding
with tiger mosquitos, so claim 1 novel.
EP-P3 is 54(3) in European phase of PCT-TM+ but also no
tigers, so claim 1 novel.
Claim 1 inventive over 54(2) prior art as surprisingly
increases the spiders’ lifespan.
Claim 1 could be validly granted (if entry is remedied).
Protection will be limited to method with tiger mosquitos.
Claim 2 is a product-by-process claim.
This claim is a product-by-process claim.
The method cannot lend novelty to the process.
The spider silk produced by spiders that have been fed with
mosquitoes is still spider silk.
There is no indication that this spider silk is in any way
different from silk produced by spiders raised in a different way.
Consequently claim 2 is not novel and cannot be validly
granted
Current status: pending in USA.
31m period to enter EP phase expired on 14 November 2023
No entry acts performed, so Euro-PCT-TM is deemed withdrawn.
Further processing would have been available by performing
entry acts and paying FP fees within 2m of notification of loss of rights.
NB: loss of rights was sent to the applicant Xeracno because
representation during the international phase by Smart SA does not extend into
the European phase.
Period for requesting FP expired on 14/12/2023 + 2m ->14/02/2024.
This time limit has been missed, but a remedy is available,
See Q2.
At present there is no protection in Europe for method of
harvesting silk by raising spiders via TM feeding.
2) To improve its patent portfolio in order to prevent
Prosilk from harvesting spider silk in Germany and BosniaHerzegovina and
selling silk in Europe, Xerano can:
EP-AA+:
EPAA+ can be validly granted. Proceed to grant, but Prosilk
could do without N2 to work around
Will have been published in August 2022.
Assuming it was published with search report, designation
fee and extension fee for Bosnia would need to be paid within 6 months from
publication, i.e. Feb 2023.
EPAA+ is pending, so designation fee was paid.
If extension fee was paid, granted EP-AA+ can be extended to
Bosnia.
If it was not paid, 2m grace period was also missed, and cannot
be remedied.
Before grant: file translations of the claims into German
for provcisional protection in DE
Request PACE examination
After grant:
- pay renewals in DE; "validate" and
- file required translations and pay renewals in Bosnia (if
the extension fee was validly paid)
to prevent harvesting there.
Can then be used to stop Prosilk from harvesting silk by
raising spiders in atmosphere with 3-26% CO2 and 1-2% N2O, for any spider so
also AF.
Also validate in other EPC state to prevent selling the silk
directly obtained from the claimed method (ART. 64(2) EPC), and importing
therefore.
PCT-TM+:
Need to remedy missed EP entry (see below). Also remedy
missed extension fee when entering.
Prosecute to grant with claim 1, a method for harvesting
spider silk, said method comprising feeding spiders with tiger mosquitos.
This claim can be used to prevent Prosilk to harvesting
spider silk in Germany and Bosnia-Herzegovina by raising spiders of any type,
so also AF, while feeding them with tiger mosquitos - irrespective of the atmosphere,
so also when containing 19% CO2.
The time limit to enter the EP phase expired 14/2/21 + 31m
-> 14/11/23.
The EPO issued a loss of rights on 14 December 2023, so that
FP was available for the missed acts until 14/2/24 (Wed), which was missed.
Smart SA was the agent for the international phase, but was
not explicitly appointed for the EP phase: this is why the applicant himself received
the loss-of-rights and should have acted upon that.
Smart SA shall inform the EPO that they only became aware of
missing the EP entry limit on 4 March, when Mr Wool realised that his internal
instructions of 19 December 2023 to forward the notification of loss of rights
to Smart SA and to instruct them to additionally enter the Euro-PCT regional
phase had not been carried out, despite all due care having been taken, and
when Mr Wool asked Smart SA to get in touch with the EPO as soon as possible
because Xeracno would definitely want to enter the European phase with PCT-TM+.
So, smart SA shall file requests for RE for all the missed
FP time limits for all the missed acts: See GL E-VIII, 3.1.3. So, RE for FP of
filing fee, RE for FP of designation fee, RE for FP of examination fee and
written request. Argue all due care. Indicate situation incl cause and removal
of the cause of non-compliance. Renewal must be paid with 50% additonal fee.
Advise to delete claim 2 upon entry or within the R.161/162
period (if not waived) so that novel and inventive claim 1 can proceed to
grant.
As failed to pay the extension fee during for Bosnia the
basic and the grace period, the request for extension is deemed withdrawn. RE is
not possible for the missed grace period for the extension fee for Bosnia - see
GL A-III, 1.2, last sentence. So, it will not be possible to extend the EP patent
to Bosnia.
Further, waive R 161/162 communication and request PACE
examination.
After entry and revival, establish provisional protection in
DE by filing translation of claims at German PTO and complying with national
requirements.
After grant, validate at least in Germany to stop Prosilk
from harvesting spider silk by method that includes feeding with tiger
mosquitoes
Can then be used to stop Prosilk from harvesting silk by
raising spiders in atmosphere with 3-26% CO2 and 1-2% N2O
Alternatively, I can act for your EP phase and I can do the
above. However, in that case all due care may be more difficult to argue as it
seems that the intention was to use Smart SA.
Sales of spider silk in Europe.
There is no protection for spider silk as such, but the
methods of EP-AA+ and PCT-TM+ also give protection for the silk that directly obtained
from the claimed methods, i.e. the silk that is harvested according to those
methods.
Therefore also validate in EPC countries where important
sales markets are located.
3. In view of patent EP-P2, can Prosilk prevent Xeracno
from freely
(a) harvesting spider silk in Spiez, Switzerland? (AA,
16% CO2 plus 1% NO2, [011])
Yes, EP-P2 has been validated in CH and can be used to stop
you from harvesting silk by raising the spiders in an atmosphere with 3- 13%,
so you are not entirely free.
The activity in Spiez since 2022 - harvesting spider silk by
raising AA spiders in an atmosphere containing CO2 at an optimum concentration
of 16% and 1%N2O – does not infringe the claim because your Co2 level is well
above the claimed range. You can therefore continue with thaT.
(b) harvesting spider silk in Turkey? [AA, 8% CO2,
tigers, [013])
No information that Ep-2 has been validated in Turkey.
Also too late to validate in TR (have 3m extra if paying surcharge:
2/8/23 + 3m Art. 65(1) -> 2/11/23; 2/11/23 + 3m -> 2/2/24) - see Nat.Law
IV.
So no protection in TR and Xeracno is free to exploit.
(c) harvesting spider silk in Colorado (USA)? (AA 8% CO2
tigers)
No, EP-P2 is an EP, that gives no protection in US
Too late for them to file a US claiming priority, as EP-P2
filed about 4 years ago
(d) importing the spider silk harvested in Turkey or
Colorado into Switzerland and selling it there?
Yes for CH,
process protection extends to products directly obtained
from that (Art. 64(2))
rights conferred in CH include import from anywhere into CH
for selling in CH
renewal was paid in CH, so in force
So you are not entirely free to import into CH when silk has
been harvested using method covered by claim 1 of EP-P2.
In Turkey and Colardo, harvesting of silk includes raising
the spiders in an atmosphere with 8% CO2. This method falls under scope of
claim, so import of directly obtained silk would infringe.
4. In view of pending patent application EP-P3, can
Xeracno expect Prosilk to prevent them from freely...:
EP-P3 still pending, so do not just check claims as they are
- there is a risk that they amend the claims before grant -- this is the possibly the reason why the Q is phrased as "can ... expect ... to prevent them".
(a) harvesting spider silk in Spiez, Switzerland? (AA
spiders 16% CO2 plus 1% N2O [011])
Not as it stands, as EP-P3's claim is not novel
As outlined in Q1(c) EP-P3 contains patentable subject
matter. It could be amended to claim a method of harvesting inc. raising AF
spiders in atmosphere containing 19% Co2. Such a claim can be validly granted
and assuming EP-P3 is validated in CH, it can be used to stop you from
executing the same method.
However, your method with AA spiders does not
infringe and you can continue
(b) harvesting spider silk in Turkey? (AA 8% CO2 tigers,
[013])
Not as it stands, as EP-P3's claim is not novel.
There is a risk that they amend the range to "a method
for harvesting spider silk, said method comprising raising spiders in an
atmosphere containing from 3% to 26% CO2, but not spiders of type AA in an
atmosphere containing from 3% to 9% CO2 or 6% of 16% ".
However, the AA 8% CO2 is in the disclaimed range, so they
can still not stop us.
There is another risk that they amend to limit to AF spiders.
However, as you are using AA spiders, they can still not
stop us as long as you use AA 8% CO2.
(c) harvesting spider silk in Colorado (USA)?
EP patent can give no protection in USA, so free to harvest
silk in Colorado
EP-P3 also published more than 1 year ago and EP-P3 filed
about 4 years ago, far outside priority period, so not possible to get
protection in US
(d) importing the spider silk harvested in Turkey or
Colorado into Switzerland and selling it there? (AA 8% tigers, [013])
No
Not as it stands,
process protection extends to products directly obtained
from that (Art. 64(2))
rights conferred include import for selling
However, EP-P3's claim is not novel and if amended with the
disclaimer, this range is disclaimed (see 4(b)), so not within scope of
protection
Also, if EP-P3's claim would be amended to limit to AF
spiders, using AA siders are not within scope of protection
Diane & Roel, 6 March 2024
(c) DeltaPatents
Never stumbled upon partial first filing before, i.e. daisy-chaining priority. So that really made me feel out of comfort zone and ended up just giving claims of EP-P2 and EP-P3 effective dates as filing dates. No idea what consequences that will entail for the subsequent answers of the paper. Spent way too much time pondering on EP-P2 and EP-P3 in Q1. Ended up rushing through the rest in about an hour. For Q2 I suggested reestablishment of regional entry and filing opposition on EP-P3 in light of the first two applications under 54(3) and insufficient discosure due to 16% teaching of EP-P1.
ReplyDeleteThe D2 is (at least since 2013) always designed such that the knock-on effect of a single error or omission is reduced: the major topics are designed to be quite independent (as far as the committee can foresee that and how you can go wrong). E.g., in previous D2 2023, the correct ground of opposition for a patent was Art. 100(c)/123(2), but if you went wrong you had Art.100(a)/56 as an alternative to kill the patent - so, you had to make multiple errors to still come to the wrong conclusion that the patent would survive opposition.
DeleteThus, missing on the partial first filing will not be detrimental if you did well on other aspects of the D2.
See also in our "Main Exam Questions for paper D" (D-book, edition EQE 2024): question C7-18
DeleteI hope more points go to partial priority EP-P2 and partial first filing and partial priority for EP-P3. It is really takes time.
ReplyDeleteBy the way, is EP-P3 somehow insufficiently disclosed since 16% for AA does not yield higher silk production (claimed technical effect)?
I also argued this, but I don't know how strong such arguments are in opposition. It seems DeltaPatents do not agree (but reasons remain unclear to me).
DeleteThe fact that the opposition period is still running means they may very well have expected opposition in the answer, otherwise this is misleading and certainly takes away a lot of the thoughts and time which the candidate can use for something else. In all DII's which I attempted in the past, everything was there for a reason, but in this case, it seems they put it to mess with us?
EP-P3 claims "a method for harvesting spider silk comprising raising spiders in an atmosphere containing from 3% to 26% CO2". The claim does not specify the technical effect, so it cannot be a lack of insufficiency.
DeleteFurther, GL F-III, 1 indicates that is is acceptable if some, but only some embodiments are not enabled: "In this context, the "whole area claimed" is to be understood as ***substantially*** any embodiment falling within the ambit of a claim, even though a limited amount of trial and error may be permissible, e.g. in an unexplored field or when there are many technical difficulties (see T 226/85 and T 409/91)."
Similarly for inventive step: GL G-VII, 5.2: "A technical problem may be regarded as being solved only if it is credible that ***substantially*** all claimed embodiments exhibit the technical effects upon which the invention is based. "
Questions Q3 and Q4 in D2 are ambiguous. they refer to "harvesting spider silk in Spiez, Switzerland", "harvesting spider silk in Turkey", "harvesting spider silk in Colorado (USA)", and "importing the spider silk harvested in Turkey or Colorado into Switzerland and selling it there".
ReplyDeleteAll relate to spider silk in general, which is known since at least 20 years, according to the letter.
Accordingly, the simple answer is that no one can prohibit anyone from harvesting or selling spider silk in any jurisdiction.
This is too simple and not expected in two out of four questions of D2, leading to the participant wondering about the intention of the examining division.
I expect EQE questions to be clearer for testing the actual ability and knowledge of candidates, instead of compounding "tricks" and ambiguous wording.
I agree. Q3 and Q4 were not clear in that it was not specified that the method as it is actually carried out by the parties in the respective countries (% in CO2, Mosquitos or not) was to be analysed.
DeleteI agree with you on this one. The questions were realy odd, especially the effect of the EP patent on USA, I hope someone will adress this, maybe one of the Q3 or Q4 will be neutralized. Also both EP-P2 and EP-P3 were from the same party...
DeleteAs far as I remember Q3 and Q4 asked if in view of EP-P2/P3 it can be forbidden in certain jurisdictions. Further, in the text it was somewhere described which party produces spider silk in which countries under which conditions.
DeleteThis is true, but still the question was odd, somehow. In Q1 and Q2, it turned out that opposition against EP-P2 can be filed, at least for reasons of Art. 83, and beyond that, EP-P3 had problems with priority and its novelty was (at least party) destroyed by EP-P1. So, one could have argued in Q3 and Q4 that both EP-P2 and EP-P3 would not be granted, or would be revoked, anyway. This would make Q3 and Q4 kind of senseless. Maybe we were expected to argue that P could amend the claims and have both EP-P2 and EP-P3 granted / upheld with patentable claims. But this, in my opinion, would go quite beyond the scope of similar questions in the last years.
DeleteQ.3 said: "In view of patent EP-P2, can Prosilk prevent Xeracno from freely ...". As there were no valid grounds of opposition, there was no need to consider amendments to granted patent EP-P2 in my view.
DeleteQ.4 used a different wording: ". In view of pending patent application EP-P3, can Xeracno expect Prosilk to prevent them from freely ...". The explicit reference to "pending" and "expect to" indicates clearly that possible amendments before grant need to be considered. The wording even left room for divisionals in case you considered that there would be a need for those.
Yet again I felt disadvantaged not being able to print off the question paper. So much complicated info to work with on a screen, a limitation that does not accurately reflect day to day practice (not to mention the time pressure). Felt particularly difficult/convoluted wrt previous years. A.
ReplyDeleteI understand your comment about not having a printed paper and I also strongly prefer a printed paper.
DeleteHowever, this is the 4th online EQE with on-screen-only D2, and the New EQE will also be online with only very few things printable, so we need to accept it as a fact and you shall prepare for it in your preparation.
Time pressure is a design parameters for any exam. The exam is designed such that a well-prepared, fit-to-practice candidate is expected to be able to pass it - and that requires 50 marks, do not increase your exam stress by aiming for 75 or more! So, you need to prepare to deal with the time constraint. (I do admit that some papers are more time-consuming than others - this was maybe somewhat above average, but surely not excessive).
I found the partial priorities for both EP-P2 and EP-P3 very tricky to figure out during the exam and just quickly jumped to a (possibly wrong) conclusion regarding priority so as to not loose time. Especially since there is little time overall and it takes time to bring all the wordy claims into something one can analyse. Why not give abbreviations I can easily work with? I find this game of bookkeeping a totally unnecessary exercise during a D2 and wish this year's D2 had given good abbreviations as previous D2s so that candidates can focus on the legal content.
ReplyDeleteI thought the EPO should have sent the LoR to legal representative SA and not to X - R.130(1). So, when informing SA of the LoR today, then the LoR is deemed delivered to SA today and the 2M for doing FP run from today? Then there is no need for doing RE.
Opposition vs. EP-P2 possible, but no question asked for actions vs portfolio of P. Q2 is (very) explicitly asking only about improving patent portfolio of X, so I thought it's expected to focus on the EP entry here, also given that this D2 is only 45p and we have less time.
Q3 and Q4 were asking whether P can prevent X from harvesting spider silk in Y. These questions were too broad in my view, because harvesting spider silk can be done in many ways according to the exam (and as such is already known since 20y). It was frustrating that one has to guess again what is expected. E.g., does the ED want me to check FTO only for the specific plans of X (different specific harvesting methods are mentioned for different countries, I don't remember anymore) or more generally check all specific methods of "harvesting spider silk" for each country asked.
“I find this game of bookkeeping a totally unnecessary exercise during a D2 and wish this year's D2 had given good abbreviations as previous D2s so that candidates can focus on the legal content.” My sentiments exactly. Situation so convoluted that it gets in the way of demonstrating your ability to give a legal opinion, and you have to do it all looking at a screen. A.
DeleteI figured that an opposition against EP-P2 will indirectly improve X's patent situation since then their EP-AA+ will not depend on EP-P2 (EP-AA+'s claim had a range which fell under EP-P2's claimed range if I remember correctly). So by opposing the value of X's patent increased.
DeleteI also ended suggesting that an opposition should be filed, but I think the question was not clear about that. The wording of the question could be understood such that it relates only measures which will directly improve X's own patents and patent applications. An opposition against somebody else's patent would not be covered by that, in my opinion. On the other hand, the questions of the last years always regarding the improvement of the current situation always had to be interpreted very generally. This is also why I decided to suggest that the opposition should be filed, in particular as the period is still running. But again, in my view the question was not clear.
DeleteHow were you opposing EP-P2? I couldn't see any clear insufficiency (only less efficient, but not "unenabled") and partial priority seemed OK. But yes, maybe the intention was to go for insufficiency. Then I would have wished though that Q2 was phrased more clearly and that it said somewhere in the text "and for x% it does not work, no way".
DeleteHmm I just checked my answer and cannot see what my thinking was yesterday; I considered EP-P1 novelty-destroying since it was published, but as the parts in EP-P2 that are disclosed in EP-P1 have priority, the publication of EP-P1 should not matter... I somehow made it novelty-destroying for the parts of the claim that didn't enjoy partial priority. So my current answer to the question how to oppose: I don't know!
Delete@Anonymous: In my solution, EP-P1 was not novelty-destroying for EP-P2, but instead for EP-P3
Delete@Sherlock Holmes: I argued that it was no sufficiently disclosed over the whole breadth of the claims without undue burden for the skilled person, since all kinds of spiders were covered by the claim, but examples only related to 2 species. So the skilled person would have to conduct an unreasonable amount of experiments to figure out whether the invention can be put into practice for all other species. This may be a bit far-fetched, but it was the only reasonable attack that came to my mind during the exam, since prior art and added subject matter could not reasonably be justified in my view.
> Q3 and Q4 were asking whether P can prevent X from harvesting spider silk in Y. These questions were too broad in my view, ...
DeleteI also wondered what they are after. I initially decided to discuss the full broadness of the claims to any type of harvesting, only limited to territory but not to specific spider species, gasses and mosquitos or not in general terms, and to be very specific ass to the specific harvesting that the client is doing or wants to do, as specified in [011] and [013], as that is clearly his main interest. When we discussed the question together, we focussed on the latter, as we assumed that [011] and [013] were to be taken implicit by the references to the territories in Q.3 and Q.4. It would have been better if that would have been explicit in the question if it was intended - it took quite some time to discuss the full scope...
> Opposition vs. EP-P2 possible, but no question asked for actions vs portfolio of P.
DeletePossibly because there was no way to oppose it?
> I thought the EPO should have sent the LoR to legal representative SA and not to X - R.130(1).
DeleteGL/PCT-EPO A-VIII, 1.10 Representation before the EPO as designated or elected Office:
"A (common) agent appointed in the PCT request as agent for an international application is appointed ***only*** for the international phase. This means that a professional representative authorised to act before the EPO and who acted for the applicant(s) in the international phase is not automatically considered to be the representative for the European phase."
GL/EPO E-IX, 2.3.1: "If the agents acting in the international phase are professional representatives entitled to practise before the EPO, such representatives are not automatically considered appointed for the European phase. If any applicant has mandated them to act on their behalf also in the European phase, the representatives need to identify themselves accordingly to the EPO as designated/elected Office. The only case in which professional representatives acting in the international phase are automatically considered appointed for the European phase is if they were validly appointed in the procedure before the EPO as receiving Office, ISA or IPEA and it is clear from the respective file that the appointment extends to representation in the European phase."
So, that is why the communication under Rule 160(2) and the communication according to Rule 112(1) were sent together in one and the same communication to the applicant and not to the agent for the international phase who was not appointed for the EP phase.
Confirmed by Euro-PCT Guide 5.3.014: "If no professional representative is appointed for the proceedings in the European phase, any communication issued by the EPO as designated/elected Office will be sent to the applicant"
Regarding the GL/EPO E-IX, 2.3.1, ... "The only case in which professional representatives acting in the international phase are automatically considered appointed for the European phase is if they were validly appointed in the procedure before the EPO as receiving Office, ISA or IPEA and it is clear from the respective file that the appointment extends to representation in the European phase."
DeleteThe only disclosed fact is that the latter was sent to the client, and it is not clear whether the SA is appointed as the EP representative or not, this is because SA is the EP patent attorney and it is common to appoint SA as a representative in the EP national too. In addition, EPO was the rO for PCT appl. We could consider the rO (=EPO) made mistake.
Neutralisation of 3 and 4?
ReplyDeleteLike it
DeleteSorry, but I do not think that is be expected. Maybe they are not clear as to whether only need to discuss the species methods of [011] and [013[ or also any other harvesting methods (gasses in full claimed range, any spiders, yes/no tigers) - it is clear that you need to at least assess [011] and [013]. However, discussions like this may influence the final marking scheme which is always adjusted based on observations and pre-marking, which is usually done to the advantage of candidates.
DeleteI had the same train of thought and did the same approach with the R. 130(1) EPC.
ReplyDeleteThis is from Guidelines E-IX, 2.3.1:
ReplyDeleteIf the agents acting in the international phase are professional representatives entitled to practise before the EPO, such representatives are not automatically considered appointed for the European phase. If any applicant has mandated them to act on their behalf also in the European phase, the representatives need to identify themselves accordingly to the EPO as designated/elected Office. The only case in which professional representatives acting in the international phase are automatically considered appointed for the European phase is if they were validly appointed in the procedure before the EPO as receiving Office, ISA or IPEA and it is clear from the respective file that the appointment extends to representation in the European phase. The same principles apply where applicants having their residence or principal place of business in an EPC contracting state are represented by an authorised employee (see A‑VIII, 1.3).
In my view, it was not at all clear from the question that the appointment of Smart SA explicitly "extends to representation in the European phase", so I went for re-establishment instead of further processing and R. 130 (1). Correct me if I am wrong, but as far as I remember, the facts of the question were not clear on that.
The only detail I remember is that the application was filed with the EPO as rO. In which case, it would be possible for the appointment you mentioned in the Guidelines to have happened, but there were no specifics in terms of whether such an appointment for the regional phase occurred.
DeleteYes, I think it is safe to assume that Smart SA has been appointed for the international phase. But the decisive question is whether this appointment extends to the EP phase. If it does, the communication should have gone to Smart SA and one would have to request FP with a period starting from the date when Smart SA receives the communication from X. However, if it does not, the communication correctly went to X, and the FP period has already been missed, so RE into FP period has to be requested.
DeleteRegarding the LoR and whether to do RE for FP or directly FP. I remember the text always mentioning that SA acts for X. Already for their first EP application etc. As that is emphasized so much, I thought the intended solution was that all communication of X with the EPO should go via SA and the sending of the LoR to X was a mistake by EPO.
DeleteBut I was doubting and agree it was not so clear. Were maybe both ways (RE for FP or directly FP) viable options, depending on how one advises to communicate to EPO?
@Matthias I think you are right. I went for FP but today i checked in real-life cases and the loss of right was always sent to the applicant. :(
DeleteBy the way, i think they purposely stressed the situation to much and made the issue very tricky.
Yes, it was ambiguous, to say the least. If I remember correctly, the facts of the question said something like "Smart SA represents X in all proceedings". But in my view, this is not specific enough to infer that Smart SA has explicitly stated that their appointment for the international phase also extends to representation in the European phase, which is however the crucial point for their automatic appointment (see the Guidelines above).
DeleteAh, I see. Then I may have missed that evidence, the part of the Guidelines about needing explicit extension to national phase. How strange...
DeleteAt least a well-designed question that leads to the same conclusion (reviving EP entry) and in both cases one mentions the steps of FP. But another part where I may have lost time.
Can Delta Patent and other EPI members influence the outcome of certain aspects of the exam? E.g. how likely is it that questions 3 and 4 will be neutralized in view of their lacking sufficient clarity?
ReplyDeleteYou can influence it by presenting well-argued discussions here (which are not far-fetched) as to how you interpreted certain facts and whether/why you considers things unclear. The blogs are being read, as the D committee has indicated at several tutor meetings.
DeleteIn my view, Q.3 and Q.4 are indeed not clear as to whether you shall limit to the [011] and [013] specific examples, or consider other harvesting methods as well. But there is no doubt that you shall at least consider those specific examples that the client uses and wants to use and I would expect that that also gets most marks (Q.3: patent as is; Q.4: application incl likely amendments). Arguing that it was unclear whether other possible methods would also need to be discussed (e.g., the whole claim scope and beyond) may have the effect that some marks will become available for a broader discussion if that was not planned.
When can we expect an update regarding how Q3 and Q4 will be treated?
DeleteExaminer's Report, in July
DeleteDie DI-Fragen fand ich dieses Jahr recht schlüssig, aber die DII-Frage war ein gezielter Beitrag zur Arachnophobie.
ReplyDeleteZunächst Vermisse ich die strukturierten Merkmale der D2-2023. Komplizierte Teil-Prioritäten, auslaufende 31 M-Frist, widersprüchliche Bereiche und Wirkangaben. Eine merkwürdige Begründung für eine Wiedereinsetzung (war Herr Wool überhaupt Erfinder/Verfahrensbeteiligt?), noch laufende Einspruchsfristen, etc. haben mich ziemlich verunsichert.
Bei Frage 3 / Frage 4 bin ich dann ganz ausgestiegen, warum wurden da zwei Patente der Gegenseite zur Bewertung der Situation herangezogen, und die Frage, ob der Verkauf von Seide als solches verboten werden kann, scheint mir absurd. Wenn die Tierchen sich gegenseitig fressen, wäre nicht eine Einzelhaltung naheliegend? Ich bin kein Fachmann, aber mir ist trotzdem bekannt, dass schon im antiken China und im 18. Jahrhundert in Frankreich Spinnenseide verwendet wurde.
Das Ziel der Prüfer war wohl so viele wie möglich durchfallen zu lassen, das finde ich Schade. Ich werde mir jedenfalls gut überlegen, ob ich da überhaupt noch einmal antrete.
Aber vielleicht wird ja auch eine Teilfrage neutralisiert, gerechtfertigt erscheint mir das.
Spinnenseide in China? Dachte die hätten Raupen bemüht ;)
DeleteÜbrigens meine ich, dass man genau darauf eingehen musste, dass nicht allgemein irgendetwas mit Seide verboten werden kann aus den Patenten/anmeldungen, weil man anders die seit 30 Jahren bekannte Behelfslösung im Sachverhalt nicht hätte verarbeiten können…
The rights that a (validly granted) patent gives are well-defined,
DeleteAs to the exam, Rule 22(3) IPREE says you have all the facts and shall not use own knowledge. So if you believer something is already know, that is irrelevant for the exam.
True that, but in one question it was only written ‘silk’ and not ‘spider silk’, wherein silk obviously is a generic term which spider silk can be subsumed under…
DeleteHi Anonymous of 7 March 00904, please give your name or initials, do we can communicate more easily and more pleasantly.
DeleteIs it, which Q?
Paper is on the compendium:
https://www.epo.org/en/learning/professional-hub/european-qualifying-examination-eqe/compendium/paper-d
Q2, German version.
DeleteIt’s in the English version, too. “[…] selling silk in Europe?”
DeleteIMHO it is far from clear whether this part of the question refers to spider silk or any other silk.
And in addition, it also gives us info that there actually may be other (unspecified) silk besides spider silk.
DeleteI would like to raise a new topic: The product-by-process claim in the PCT application. How have you evaluated its patentability? I have argued that the underlying method (feeding spiders with tiger mosquitoes) only increases the lifetime of the spiders (as stated in the facts of the question), but there is no evidence or hint that this would somehow also influence the (structural) features of the silk. Since the burden of proof lies on the applicant to show that the product defined by the process is indeed novel, and since spider silk per se has already been known, I came to the conclusion that the claim is not novel. But I can imagine that there are other ways to argue here.
ReplyDeleteI said the same. There was no indication about possible differencies between the two types of silk so for me it was not novel.
DeleteI had the same line of argumentation; it was said nowhere that the silk as such would be any different than other silks. The technical effect of the tiger mosquitos was not related to the properties of the silk. So the claim should not be patentable, was my conclusion.
Delete@Matthias: that was also our conclusion. The product-by-process claim is not new. See our answer in the Annex to the blog post (added in the course of this morning, shortly after you posted your comment.
Delete@Matthias. Your argument is sound and I suspect it is the intended answer. However, [008] states that the process step has the effect of increasing the lifespan of the spiders. I would have deduced that there are fewer dead spiders, so the silk is less contaminated. So I would see a differentiating feature in the product based on the process. Since this feature cannot be meaningfully described by structural features, the product-by-process claim seems appropriate, new and inventive to me. However, in retrospect I suspect that your interpretation was the one wanted.
DeleteWe have added our (provisional) answer as an annex to the original blog post.
ReplyDeleteHi Roel,
DeleteIn my opinion, claim 1 of EPP2 is entitled to conceptual part of AA 3-9% CO2, but is not entitled not only to conceptual part of AA 9-13% but to the whole range 3-13% without spider of species AA (which was not disclosed at all in epp1 and is a broader scope).
In that case, Epp1 is A54(3) document to that conceptual part and is therefore novelty destroying.
What are your thoughts?
Regards
Rafael
Hi Rea, I done the same as you, EP-P2 claim scope = ((1: Non-AA 3-13%) + (2: AA 3-9%) + (3: AA 9-13%)), 2 has priority to EP-P2, 1 and 3 have effective filing date of EP-P2
DeleteHi Rafael, see our answer added to our blog post at the end of this morning: EP-P2 benefitsfrom partial priority from its priority EP-P1, so cannot be destroyed by it (whatever the exact partial priority disclosure is). Your argumentation is relevant, mutatis mutandis, for EP-P3 which has the partial first application problem, whereby EP-P1 becomes 54(3) vs (part of) EP-P3 and destroys its novelty.
DeleteIsn't EP-AA+ limited only to AA spiders in both claims 1 and 2? In which case, I disagree in Q2 that EP-AA+ is useful in preventing Prosilk from carrying out their operations in DE, which uses AF spiders.
DeleteHi Anonymous of 7 March 00:04, please give your name or initials, do we can communicate more easily and more pleasantly.
DeleteWe did not consider Q.2 to be limited to what Prosilk does since Sep 2023 in [012], as [003] indicates that they are our client's main competitor and may thus also do (they cannot compete if they gave no commercial activity and they are active already long) and consider other variants: they did extensive R&D on AA and other spiders.
Whether it was the intention of the drafters of the paper to limit Q.2 to just [012]'s harvesting spider silk by raising spiders of the species AF in an atmosphere containing 19% CO2, or to have it broader will probably only become clear from the Examiner's Report.
About Q4, from the Nat Law tables i thought that EP-P3 may have provisional protection in CH, but i probably misunderstood the "n/a"? Does CH requires translation for having provisional protection?
ReplyDeleteCH does not require a translation of EP patent application to establish provisional protection, but the only claim of EP-P3 is not novel, so no protectionat present
DeleteThird party observations for EP-P3 citing EP-P1 (novelty?)
ReplyDeleteGood idea. Does not improve client's portfolio, but worth suggesting as a general improvement
DeleteIs EP-P1 not prior art according to 54(3)EPC for the remaining subject-matter of the claim of EP-P2 for which there is no partial priority? (i.e. all other spider species with 2-26% CO2 => specific vs generic)
ReplyDeleteYes, EP-P1 is 54(3) prior art for conceptual part of EP-P2 claim that is not entitled to priority. It cannot destroy the novelty of that part because that part is by definition new with respect to Ep-P1
DeleteLooking at the model answer above, congratulations to all that were able to do this in 2:40, you must have super-large brains, for me, a humble mortal, it was just too much stuff going on, I would have needed a day ... (wrong line of work?)
ReplyDeleteWe are experienced tutors that use our well-established methodologies for D1 and D2, so we can do a paper like this well in time to come up without 90% of the answer that we show - which is a combination of the answers of two of us. The answer given may not be a full-mark answer, but is probably more than 80% of the marks - there may be some gaps and some inaccuracies or errors.
DeleteAs a candidate, you do not need to score 80% of the marks or more: you need 50% for a pass. So there is room to miss out on some topics, to not be fully complete and to make some errors.
This certainly was a tough paper: the list of topics at the start of the blog shows there were many (small and large) things to consider and the subject-matter was not easy to be abbreviated (and the paper did not give any abbreviations, contrary to the past and contrary to expectations).
Are questions 3 and 4 being neutralised?
ReplyDeleteWhy would Q3 and Q4 be neutralised? A bit of ambiguity does not make it impossible to provide a sensible answer
DeleteIs that so, Diane?
DeleteI left the issue of fixing the EP phase entry till last, as I was time pressured and wanted to answer Q3 and Q4 first. I expected that it could in fact be fixed, but didn't have the time to figure out how/why.
ReplyDeleteJust to get something written, I argued that the missed EP entry did not meet the requirement of unintentional (let alone all due care), as the client instructed their agent to enter the US *only* - the question did not suggest that they were considering entering the EP phase also. The client only seemed to decide to enter EP after the missed deadline(s).
I expect it to attract no marks, but curious to hear if this argument has any merit.
I agree that the original intention was "only enter the US".
DeleteBut that is not relevant for the RE, as it WAS the intention to remedy the missed EP entry with FP and the RE is used to remedy the missed FP time limit. See [009]: "On 4 March 2024, Mr Wool realised that his internal instructions of 19 December 2023 to forward the notification of loss of rights to Smart SA and to instruct them to additionally enter the Euro-PCT regional phase had not been carried out, despite all due care having been taken."
So, even while the original 31m deadline was intentionally missed, there was clearly the intention to enter the Euro-PCT regional phase with further processsing!
@Sam. The re-establishment is with respect to the FP period (not EP entry), which was missed in spite of all due care. Once re-established, the FP period is used to enter Europe.
DeleteI am still wondering if it would be possible to oppose on the ground of 100b EPC.
ReplyDeleteEP-P2 teaches that the method of EP-P1 can be used with any other spider species and over a broader range of CO2 concentrations. However, no examples or comparison tests are disclosed on any other species, only those on AA spiders that are disclosed in EP-P1.
TO me the claim of EP-P2 seems to be generalized (species > genus). GL F—IV 6.2. says: “Thus an invention which opens up a whole new field is entitled to more generality in the claims than one which is concerned with advances in a known technology.” However, this invention was not opening a whole new field.
According to Wikipedia, there are around 50000 spider species. Only 2 of those were exemplified and disclosed in the patents.
DeleteThere is no need to disclosure all spiders, nor all silk spiders, to be enabled. Further, EP-P2 even presents it as a fact that any spider species can be used. There are no indications to the contrary. So, an opposition based on your argument would not be based in the facts contrary Rule 22(3) IPREE and would use own knowledge contrary Rule 22(3) IPREE. Speculative comments do not get marks!
DeleteThanks to Delta Patents for your answer! There is one aspect I did not understand with respect to Ep-p2 and Question 3. Filing date of Ep-P2 is January 2020. Notification of grant is August 2023. National Law VI.A teaches that annual fees for TK should be paid on the filing date, which is in January 2020 and can be paid with an additional fee within 6 months. So they are due January 2024 and Ep-p2 can still be validated in TK? Or am I wrong?
ReplyDeleteBut too late for translation and other validationa cts Art.65(1) & (2) - see answer
DeleteNB: initially, I also thought is was still possible as I did 8/23 + 6m -> 4/24. But then I realized that 8/23 + 6m -> 2/24... So unpleasant that a year has 12 months and not 10 (I also often go wrong with a 16m calculation for e.g., Rule 52(2)/(3) EPC or PCT R.26bis.1 ;( )
DeleteThank you! Same with me. Time limit calculation under time pressure often go wrong. For me not this time for the EQE :)
Deletetoo late for submitting the translation in Turkey but the paper does not say that they had not submitted the translation in due date, only that they have only paid annual fee for Switzerland and Germany... So, one could consider the fact of verifying if they had or not validated in Turkey, and if yes a late payment of the annual fee for Turkey was still possible, and thus this is something the client should monitor.
DeleteIn the EP-P3 analysis, EP-P1 should be 54(3) prior art also for the second conceptual part of claim 1 that has no priority (since EP-P1 is first appl. for such s-m), so irrespective of the conceptual part considered, EP-P1 destroys the novelty of the whole claim 1 of EP-P3. I think that the division of the conceptual parts of claim 1 of EP-P3 is relevant for the priority analysis, but irrelevant in the novelty analysis since EP-P1 is 54(3) prior art for the whole s-m of the claim.
ReplyDeleteI also think that since question 1 required the analysis of the claims of the application/patent applications as they currently stands, the failure to analyze the possible changes in EP-P3 should not be detrimental to obtaining the maximum marks.
I sincerely hope that the Commitee will assign a very high number of points to question 1 (I think that 28-30 points would be appropriate, although impossible considering that they will give at least 4 points for question 3 and at least 4 points for question 4), as it really took a long time (practically, 30-40 minutes to read everything and annotate, about 1 hour and a half for question 1, i.e., about 25-30 minutes for each patent/patent application, 30 minutes for a bad question 2, which clearly would have required much more time, and only 10 minutes to do a terrible job on questions 3-4 trying to write something meaningful).
I think I disagree with the discussion on late entry to the EP phase. As I recall (at least in the EN text) the first or second paragraph explicitly states that SA is the representative for X before the EPO (I am open to being corrected though!)
ReplyDeleteThank you for your responses, as we see them now they seem easy to write. Essentially, I've been on the same line, but many remained only in my mind because I didn't manage to put them on paper within the given time, or they weren't clearly presented and substantiated. For me, who is not a native speaker and not a chemist, in the absence of printing, it was very difficult to remember so many spider names, so many concentrations, intervals, alongside the respective data, even though I put them in my organized table on paper, and there was little time left for explanations and subtleties. For me, there was by far too little time, and here I refer even to D1 which had extremely many legal provisions that needed to be mentioned. No matter how many methodologies you learn, I consider that the short time and long texts with complicated names are a major handicap for non-native speakers.
ReplyDeleteI did not remember the full spider names, but only the abbreviations that were given: AA and AF
DeleteAs you stated in 1.)c) - Protection pursuant to EP-AA+ will be limited to species AA, so i think the conclusion in 2) that Prosilk can be stopped with respect to the genus "any spiders so also AF" is incorrect or do you disagree?
ReplyDeleteMoreover you used the information regarding the species AF in a way that a valid claim could be generated at 19% CO2. Could it be possible that this information was intendet to show that the high CO2 range beyond 13% (working for any spiders in EP-P2) added in EP-P3 is only applicable if AF is used? You mentioned in one reply that there is no issue with respect to A100b)EPC. However, it seems that an essential feature - the restriction to AF for the CO2 range between 13% and 26% - is missing in claim 1. Since a high CO2 content results in general in reduced harvesting (cf. [003]) claim 1 does not provide the technical impact for harvesting in the range between 13% and 26 for any spiders as claimed. Hence, claim 1 is inventive for 13% to 26% only for species AF that contradicts the requriement that the inventiveness shall be present "essentially" for all subject-matter claimed.
1) yes, it should be AA spiders
Delete2) I don't understand your reasoning here. Ep-P2 relates to 3 - 13% CO2. The higher range is in EP-P3 claim 1, which lacks novelty.
The Papers are available at the EPO webpage right now.
ReplyDeleteA general question: What do you expect the point distribution is going to be? I completely ran out of time and didn't get the chance to answer Q2-Q4 properly. I really hope it is going to be 20-15-5-5, or something like that.
ReplyDeleteWhat is your guess?
16-11-4-4
Delete20-14-8-8
Delete18 - 15 - 6 - 6
DeleteI would like to get the book "References to the European Patent Convention of Jelle Hoekstra". On Deltapatents website it appears as unavailable. Does anyone know where can I find one?
ReplyDeleteIt is sold out and a new, updated edition is in preparation.
DeletePlease contact webshop AT deltapatents.com.
Anyone recognized the generic term "silk" instead of "spider silk" in Qestion 2 reffering to protection in Europe?
ReplyDeleteWould the difference be relevant for your answer?
DeleteI do not think so, as you will surely need to address what Prosilk does/want to do as given in [012] and [014], and Rule 22(3) IPREE applies.
Question 2, 3 and 4 were poorly formulated, opening up to various responses that should be neutralized. From the Paper D 2023: "Candidates are reminded that they should pay attention to the way questions are asked"
DeleteQuestion 2: "What can Xeracno do to improve its patent portfolio in order to prevent Prosilk from harvesting spider silk in Germany and Bosnia-Herzegovina and selling silk in Europe?"
a) Improvement in order to prevent Prosilk from harvesting "spider silk" in Germany:
a1) no improvements since harvesting "spider silk" in general is know from 20 years (par. [002]) and in the paper's disclosure there is no patent protection for harvesting spider silk in general, Rule 22(3) IPREE or, according to another interpretation,
a2) no improvements since the harvesting of spider silk of Prosilk in the main farm in Germany, par [012], does not fall within the scope of the grantable claims of EP-AA+ and of (eventually) revived EP phase of PCT-TM+.
b) Improvement in order to prevent Prosilk from harvesting "spider silk" in Bosnia-Herzegovina:
b1) same as a1), or
b2) no improvement since revived PCT-TM+ cannot be validated in Bosnia and nothing in the paper suggest that the extension fee has been paid for EP-AA+, Rule 22(3) IPREE,
c) Improvement in order to prevent Prosilk from selling silk in Europe.
c1) No improvement, since in the paper 's disclosure there is no patent protection for "silk" in general, Rule 22(3) IPREE.
Question 3 and 4 can be answered also following two interpretation. What interpretation should be used? The interpretation with reference to evaluating the possible infrigment of Xeracno according to paragraphs 11, 12 and 13 or the infrngment only for "spider silk" in general? The answers would have been different depending on the interpretations and this is not acceptable since some of the candidates would be treated differently.
Hi Anonymous 21 March 2024 at 14:45: please use your name, initials or nickname.
DeleteI agree that the interpretation in Q.2-Q.4 with reference to evaluating the possible infringement of Xeracno and Prosilk according to paragraphs 11, 12 and 13 or possible infringement for all possible types of spider silk is not clear - both interpretations are possible and there are arguments in support of either argumentation. In both interpretations, it will be needed to discuss the explicit versions of par 11, 12 and 13, but the general interpretation needs quite a bit more work. See also our comments above and those from others. It will be interesting to see how this will be taken into account in the marking!
I did not expect partial priority in D after it has been on already a hew times in D1 or D2 in the last years. But I practiced the previous Ds, so I think I did fine. But testing it again in C?
ReplyDeleteBut testing it again in C in the same year as in D?
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