Wednesday, March 12, 2025 D1 2025: our (provisional) answers

Please find below our provisional answers to the D1 questions of the 2025 paper (D1-1, D1-2). 

(Note: D2 answer here, first impressions blog here)

QUESTION 1 (8 MARKS)

On 11 November 2024, German applicants A and B jointly filed an international application PCT-AB with the EPO. PCT-AB validly claims priority from an earlier EP application EP-B, filed on 10 November 2023 by applicant B.

The European search report for EP-B cites only A documents.

Today (11 March 2025), A and B wish to delay the entry of PCT-AB into the regional phase before the EPO for as long as possible for strategic reasons.

What steps should be taken and why?

Answer

·       The 31m period for EP entry is calculated from earliest priority date - R 159(1) EPC.

·       At present, the 31m period will expire 10/11/2023 + 31m [R 131(4) EPC] --> 10/06/2026 (Wed)

·       To postpone EP entry as far as possible, the priority claim to EP-B must be withdrawn, as the time limit will then be recalculated from the new earliest priority date, i.e. the PCT filing date - R. 90bis.3 (d)

 Actions:

·       The applicants must submit a notice of withdrawal, withdrawing the priory claim under R. 90bis.3 PCT

·       To be submitted to the EPO as rO or to the IB - R 90bis.3(c)

·       Time limit: can be done at any time prior to expiry of 30m from priority - R. 90bis.3(a)

·       So until 10/11/2023 + 30m [R. 80.2 PCT] --> 10/05/2026 (Sun) extended to 11/05/2026 [R. 80.5 PCT]

·       The notice of withdrawal must be signed by both applicants: A and B - R. 90bis.5.

·       Or, if one of the applicants is the common representative and has been appointed and authorized by the other applicant under R 90.4, the common representative may sign the notice of withdrawal.

·       An agent appointed and authorized via a PoA under R 90bis.4(e) may also sign,

 

Effect of withdrawal:

·       Time limits are recalculated based on new earliest priority date, i.e. the PCT filing date - R. 90bis.3 (d)

·       So 31m period for entry [R 159(1)] will now expire on 11/11/2024 + 31m --> 11/06/2027

·       A further effect of withdrawing the priority claim is that that upon entry into the EP phase,  the date for assessing patentability w.r.t. the prior art becomes the PCT filing date.

·       If EP-B publishes, it will be novelty destroying 54(3) prior art for Euro-PCT-AB.

Further necessary actions: 

·       EP-B will publish shortly after 18m from priority - Art 93(1)a on: 
 10/11/2023 + 18m --> 10/05/2025

·       To guarantee non publication, EP must be withdrawn before technical preparations for publication are complete - R 67(2) EPC

·       These are deemed complete 5 weeks before exipry of 18m period, so on 5 April 2025 - R 67(1) EPC; OJ 2007, SE3, D.1

·       Request for withdrawal, indicating that it is being done to prevent publication, should be submitted on 4 April at the latest, so still time.

·       Declaration of withdrawal must be signed by the applicant B, or a professional representative appointed by B, and must be clear - J11/80

·       Note: you can further delay the entry by missing the 31m deadline, wait for the loss-of-rights communication -R.160(1), R.112(1)- and then do further processing at the end of the 2m period that runs from the date of the loss-of-rights communication [R.126(2)], where you need to do various omitted acts of R.159(1) (filing fee, examination fee, written request for examination, designation fee) and pay multiple FP fees, and pay the (missed) renewal fee of R.159(1)(g) with 50% additional fee. Whether this was expected to be part of your answer or not is uncertain.

QUESTION 2 (7 MARKS)

On 16 January 2024, applicant C filed patent application IT-1 in Italian with the Italian patent office. IT-1 claims and describes invention A. IT-1 was withdrawn shortly after filing, without having been published. On 17 April 2024, invention A was published in a journal.

On 16 January 2025, applicant C filed application EP-1 with the EPO, claiming priority from IT-1. The filing and search fees were paid on the same day.

On 17 February 2025, applicant C filed application EP-2 in English with the EPO. EP-2 claims and describes invention B. EP-2 does not claim any priority.

Inventions A and B are unrelated.

Today (11 March 2025), applicant C notices that, by mistake, EP-1 neither claims nor describes invention A but includes the same description and claims as EP-2.

(a) What should applicant C do to obtain a patent for invention A? 

(b) Applicant C additionally wants to prosecute invention B. What needs to be done to obtain a patent on the basis of EP-2?

Answer

(a):

·       Invention A described and claimed in IT-1, which is C's first application for A EP-1 filed on last day of 12m priority of IT-1 [Art 87(1) EPC] by same applicant C.

·       C may validly claim priority for inv A, but unfortunately wrong application documents have been filed and at present, EP-1 relates to a different invention.

·       This can be corrected under R. 56a(4) EPC, since priority of IT-1 was claimed at filing of EP-1.

Actions:

·       Within 2m of filing EP-1: 16/01/2025 + 2m [R 131(4)] --> 16/03/2025 (Sun) extended to 17/03/2025 [R. 134(1) EPC], so by 17 March (still time)

·       C must notify the EPO that the wrong application docs have been filed and request to keep the filing date using R.56a(4):

·       Provide a copy of IT-1 - R. 56a(4)a

·       Since it was filed in Italian, a translation must be submitted into EN, FR or DE - R. 56a(4)b

·       The applicant must also indicate where the correct parts are completely contained in the priority application, i.e. the complete description and all claims of IT-1.

·       All of these actions must be taken before 17/03/2025 to ensure that the filing date of EP1 remains 16/01/2025 and can validly claim priority to IT1 and the effective date of the claims is the filing date of IT1 - A 89 EPC

·       If not and the correct documents were merely submitted later within 2m from filing under R. 56a(3), the application would be redated to the  date when the correct documents were submitted  

·       This will be outside the 12m priority of IT1 and journal publication will be novelty-destroying 54(2) prior art

Further actions to get a patent for A in EP-1

·       The wrong application documents (EP-2 descr and claims) will be maintained in the application as filed – R.56a(4)

·       The erroneously filed description and claims must be removed during grant proceedings by amendment under Art. 123(2) – GL A-II, 6.4

·       Can only be done after receipt of the search report – R 137(1)

·       NB: since the search fee was paid at filing, it could be that the EPO has already started to draw up the search report for the wrong claims.

·       If so, the EPO will invite the applicant to pay an additional search fee under R. 56a(8) to be paid within 1m

 

b) Protection for B in EP-2

·       Since the wrong application documents remain in the application as filed, EP-1 is the first application for B

·       It has an earlier filing date than EP-2 and, currently, would be novelty-destroying 54(3) prior art of the claims of EP-2, after publication of EP-1.

·       To avoid this, add a priority claim to EP-1 under R. 52(2) EPC, within 16m from earliest priority:

·       16/1/2024 + 16m [R. 131(4)] à 16/5/2025 (Fri)

·       Pay filing and seach fee for EP-2 until:

·       17/2/2025 + 1m -> 17/3/2025 (Mon)

·        Claim to B in EP-1 must be deleted, to prevent double-patenting – G 4/19

 

QUESTION 3 (9 MARKS)

In appeal proceedings following the refusal of European patent application EP-D filed by company D, the Board remitted the case for grant based on a complete text which had been finally decided by the Board.

 

Within the time limit set by the communication under Rule 71(3) EPC received in November 2024, D requested an amendment, namely the addition of a further dependent claim.

 

In a communication under Rule 112 EPC dated today (11 March 2025), D was informed that EP-D is deemed to be withdrawn.

(a) Why was the communication under Rule 112 EPC issued by the EPO?

(b) Can a patent be obtained with the complete text as decided by the Board and the additional dependent claim?

 

Answer

a) Rule 112 loss-of-rights communication was issued because:

·       When a case is remitted for grant on the basis of a complete text which has been finally decided by the Board, under Art 111(1) EPC, it is not allowed to request further amendments under Rule 71(6) in view of Art. 111(2) EPC – GL E-XII, 9.

·       The application was therefore deemed withdrawn under R 71(7) EPC

b) Yes

·       It is possible to obtain a patent with the complete text as decided by the Board + additional dependent claim, but not via EP-D directly, as the Examining Division are bound by the Board’s ratio decidendi in this case – Art. 111(2) EPC.

·      A divisional application needs to be filed - Art 76(1); R 36(1) – while EP-D is pending.

Actions

·       To restore pendency of EP-D, request Further Processing within 2m of notification of R 112 communication – Art. 121; R 135(1) EPC - by

·       Complete omitted acts of R 71(3): pay fee for grant and printing – Rfees2(1)7 – file translation of claims into other 2  EPO languages, and 

·       Pay flat FP fee – RFees2(1)12

·     After pendency is restored and at the latest on the day before the mention of the grant of EP-D: 

·       File divisional with Board-approved text + desired claims and 

·       Pay filing fee and search fee within 1m – R 36(3)

·     After divisional is filed, withdraw EP-D to avoid double patenting – G4/19.

·    The paid fee for grant and publishing will then be refunded – Rule 71a(6)

·    As approved by Board, claims of approved text are patentable. 

·    As a dependent claim (if allowable under Art. 123(2), no information and if same effective date, no information) is then also allowable, can proceed into examination and to grant.

 

QUESTION 4 (10 MARKS)

Company E filed an automatic debit order for its international application PCT-E, for which the EPO is acting as International Searching Authority (ISA). During the search phase, the ISA considers that the claims of application PCT-E contain seven inventions and invites E to pay six additional search fees.

(a) E is not interested in any of the additional inventions. Does E need to act?

 

(b) In order to enter the regional phase before the EPO, Form 1200 has been filed and all acts under Rule 159 EPC have been performed, except for paying the fees. 

Will all fees for entry into the regional phase before the EPO be automatically debited?

Company F has an active automatic debit order for its European patent application EP- F, filed on 16 February 2020.

 

(c) EP-F was refused by the Examining Division. Company F filed an appeal against this decision on 28 February 2025. On this date, there were 3 000 EUR in the deposit account. Have any fees been automatically debited?

Company G filed a European patent application EP-3 in February 2021, together with an automatic debit order for EP-3. The transfer of EP-3 to company H was registered with the EPO in January 2025. EP-3 is still pending.

 

(d) Has the renewal fee for the fifth year been paid for EP-3?

Answer

a)

·       The automatic debit order filed for PCT-E is valid as automatic debiting is allowed for all types of European and PCT proceedings (AAD, point 2.1), including additional search fees to be paid under PCT Art. 17(3)a within 1m from invitation [PCT R. 40.1(ii)] in the case of non-unity.

·       Additional search fee not excluded in AAD point 3.2.

 

Action to avoid payment of 6 additional search fees:

·       E needs  to either revoke the ADO in Central Fee payment [AAD, point 10.1] or inform EPO as ISA that he is not interested in any of the additional six inventions, ...

·       ... before the 1m period of PCT R. 40.1(ii) expires.

b)

·       The fees associated with EP entry acts of R 159(1) EPC will not be automatically debited, because an automatic debit order filed during the international phase has no effect in proceedings before the EPO as designated or elected Office - AAD, point 2.2

·       A separate automatic debit order must be filed for international applications entering the European phase. (AAD, point 2.2).

·       Or pay in another way, e.g., direct debit order ADA, via bank transfer or credit card central fee payment.

c)

·       Yes, appeal is also covered by ADO when the appeal is filed by an applicant – AAD point 5.1

·       The fee for appeal is 2925 euros - RFees 2(1) 11, so there is sufficient money (3000 euros) on the deposit account.

·       NB: 2925 euro is the maximum amount; if the applicant is an entity under R 7a(2) EPC, the fee is reduced.

·       The appeal fee will be debited when the notice of appeal is filed: AAD point 5.1(c)

·       Even if  several automatic debit orders are pending on that day, esp. the renewal fee, the appeal fee takes precedence and will be deducted first – AAD point 4.5(a)

 d)

·       The renewal fee for the 5th year is due on 28 Feb 2025 (Fr) - R 51(1) EPC.

·       Unless Applicant G has explicitly revoked the AAD, EPO will continue to automatically debit fees from the relevant deposit account, even in the event of a transfer (AAD, point 10.3).

·       Via automatic debiting, the payment will have been deducted on the due date: 28 Feb 2025 (Fri) and has been paid.

 

QUESTION 5   (11 MARKS)

In August 2024, applicant I filed international application PCT-I in English with the Swedish Intellectual Property Office, specifying that office as ISA.

 

PCT-I has two independent claims directed to inventions C and D. C and D are not linked by a single general inventive concept.

 

Last week, applicant I received an invitation to pay an additional search fee for invention D.

 

What are the options if applicant I wants to have the EPO carry out an international preliminary examination only for invention D in PCT-I? What steps need to be taken and why?

 

Answer

·       The EPO will act as IPEA when the Swedish office has been ISA - EPO-WIPO agreement Art 3(2), OJ 2017 A115

·       The EPO as IPEA will not examine unsearched claims - PCT-EPO GL, C-V, 1

·       EPO is competent IPEA when an invention is searched by EPO itself or a number of selected other offices including the Swedish patent office (Art. 32(2) PCT, EPO-WIPO Agreement (OJ EPO 2017, A115, Art. 3(2))).

·       Thus, EPO can be IPEA when invention D has been searched by the Swedish office (option 1) or by the EPO (Option 2)

   Option 1

·       The applicant should pay the additional search fee for D within 1m from invitation [ R. 40.1(ii) PCT], such that the ISR established under Art 17(3)a PCT covers C and D

Option 2

·       EPO can search Inv. D as SISA, because SE Office is ISA – R. 45bis.9

·       File request for SIS at IB [R. 45bis.1 (b)], indicating EPO as SISA and pay the SIS fee for EPO as SISA and a handling fee within 1m from request [R. 45bis.2(c) and R. 45bis.3(c)].

·       Indicate that claims directed to inv D are to be searched – R. 45bis.1(d)

·       The EPO as SISA will then limit the SIS to inv D - R.45bis.5(b)

 To get inv D examined by EPO as IPEA

·       File a demand directly with the EPO as IPEA. – Art. 31(6) PCT

·       Time limit: later of 22m from priority or 3m from transmittal of ISR – R 54bis.1(a) PCT

·       Together with the demand, the applicant should file claim amendments under Art 34 directed to invention D.

·       Pay the preliminary examination fee and handling fee to the EPO within 1m of submitting the demand or no later than 22m from priority to avoid a surcharge – R. 57.3(a) jo R. 58.1(a)

·       When the EPO is also SISA, it is possible to file a demand under Chapter II with the EPO and additionally a request for SIS by the EPO; the examiner will first establish the SISS and then continue with Chapter II – PCT-EPO GL B, XII, 11

 

We look forward to your comments!

(Also: D2 here, first impressions here)