Provisional answers to D1 and M2 2026
Dear all,
Here at last our provisional answers to Paper D1 [Questions 1 - 6] and Paper M2 [Questions 1 - 5]. There has been a lot of discussion today about certain questions, particularly in Part 2. We did not find question 6 clearly set out the facts that would allow candidates to arrive at a logical solution within the time allowed. We also puzzled about question 3 directed to withdrawal under the PCT. The 8 marks available do not seem warranted according to the solution we decided upon, so we may be missing something.
We found question 1 to be a rather difficult question for candidates with only two years of experience. Question 2 on partial priority is do-able, but made harder by the incomplete information in the question. Question 3 also seemed to be worth more marks than our solution warrants. Question 5 was relatively straightforward in our opinion.
On the whole, we found it a challenging paper.
We await your comments on our answers with interest.
Paper D1 2026 Part 1
Question 1 (10 points)
Applicant A filed international application
PCT-A in Japanese on 6 February 2024. PCT-A validly claims priority from and is identical
to Japanese application JP-A filed on 6 February 2023. On 9 October 2024, A
completed the acts required under Rule 159(1) EPC in order for PCTA to enter
the European regional phase as Euro-PCT-A. In the translation into English
filed under Rule 159(1)(a) EPC, the wording “product made of metal” was
erroneously translated as “product made of iron” throughout the application.
Iron was not disclosed in PCT-A.
On 10 October 2024, A filed divisional
application DIV1 based on Euro-PCT-A.
1) Was DIV1 validly filed?
- Time limit for
entry EP phase:
6/2/2023 + 31m [R159(1) EPC;
R131(4) EPC] à 6/9/2025 (Saturday, EPO closed) [R134(1) EPC]
à 8/9/2025 (Monday)
- So acts completed under R.159(1) were performed early (on 9/10/2024).
- Processing of
international application by designated office is prohibited until expiry of
time limit for entry under Art.22 PCT, unless the applicant A lifts the ban
early by requesting early processing, Art. 23(2) PCT. – OJ EPO 2013 P156
- No specific request
for early entry was filed
- So PCT-A will only
enter EP phase on 8/9/2025
- Therefore on 10 Oct 2024, PCT-A had not yet entered EP phase
- PCT-A therefore not
pending as a European application on 10 Oct 2024 – GL E-IX, 2.4.1 / J 18/09
- DIV1 therefore not
validly filed as parent was not pending, Art.76(1) EPC; R. 36(1)
Euro-PCT-A was granted with the wording
“product made of iron” in the only independent claim. The mention of the grant
was published on 14 January 2026. Competitor B filed an opposition against the
patent, asserting that its subject-matter extends beyond the content of the
application as filed, due to the error in translation.
2) Will the patent be revoked in
opposition?
EPC
Yes, Euro-PCT-A will
be revoked in opposition.
- The time limit for
B to file opposition is:
14/1/2026 + 9m (Art.99(1);
R.131(4)) à 14/10/26 (Wed)
- Since B already
filed opposition, it was filed in time.
- Euro-PCT contains
sjm that extends the content beyond the earlier application as filed
- iron not disclosed in PCT-A, which is the application as filed - At. 153(2) EPC
- extension of sjm is
a valid ground of opposition - Art 100(c)
- Translation can be
brought into conformity with application as filed in Japanese throughout
proceedings before EP, including opposition - Art. 14(2) EPC.
- This also applies
to Euro-PCT applications – GL A-VII,7 – which are equivalent to EP applications
– Art. 153(2) EPC.
- But during
opposition, this is allowed only if amendment does not violate Art.
123(3).
- In this case it is
not possible to replace "iron" with "metal", as this will
extend the scope of protection of the patent as granted.
On 12
January 2026, A filed divisional application DIV2 in English on the basis of
Euro-PCTA. However, instead of filing the English translation of the
description and claims of PCT-A as intended, A filed the description and claims
of an unrelated application by mistake.
3) Can the intended claims and description
still be included in DIV2?
No, it is not
possible to include the intended claims and description.
It is possible to
bring the translation in conformity with the application as filed throughout
proceedings before the EPO [Art. 14(2) EPC], and correction of the translation
would have been possible if DIV2 had been filed in Japanese.
DIV2 was filed in the language of the parent: English, so addition of the correct description and claims will be an extension of sjm in violation of Art 123(2) EPC.
- R56a(4) cannot be relied upon because although DIV2 claims priority by virtue of the parent claiming priority, the priority application does not "completely contain" the text of the incorrectly translated English description and drawings, so this requirement would not be met. Therefore the submission date of DIV2 cannot be saved.
Question 2 (6 points)
Applicant C filed a European application
EP1 in March 2024. EP1 was published in October 2025.
In January 2026, C filed a European
application EP-C, claiming priority from their earlier application EP0, filed
in February 2025.
EP-C discloses and claims only rubber A.
EP1 discloses rubber A1, which is a specific embodiment of rubber A.
Can a valid patent be obtained from EP-C by
disclaiming rubber A1?
EPC
- Timeline:
March 2024: EP1 filed, discl. A1
Feb 2025: EP-0 filed
Oct 2025: EP1 publ
Jan 2026: EP-C filed; prio EP-0;
d/c A
- EP1 is C’s first
application for A1
- Assuming EP-0
discloses A, then EP-0 is C’s first application for A other than A1
- 12m priority period
of EP-0 expired in Feb 2026 [Art.87(1)], so EP-C filed in time
- The claim in EP-C
to rubber A has two conceptual parts – G1/15 partial priority:
- rubber A1
- rubber A other than A1
- Conceptual part
“rubber A1”:
- not entitled to priority, as EP-0 is not C’s first
application for A1 – Art. 87(1)
- effective date for this part is
filing date EP-C, January 2026
- EP1 was published before
effective date so is Art 54(2) prior art
- EP1 discloses A1, so destroys
novelty of A1
- Conceptual part
“rubber A that is not A1”:
- EP-0 is C’s first application
for A that is not A1
- EP-C was filed within priority
period of EP-0
- EP-0 and EP-C were both filed by
same applicant (C)
- EP-0 and EP-C both disclose A
that is not A1, so same invention – Art.87(1)
- Therefore priority claim is
valid for this conceptual part
- Effective date for this
conceptual part = priority date = Feb 2025
- EP-1 is filed earlier but
published after this effective date so is Art.54(3) prior right, relevant for
novelty only
- EP-1 discloses A1, but not A
that is not A1
- so this conceptual part is
novel over EP-1
- However, the first conceptual part is not novel, so the claim as a
whole lacks novelty due to EP1.
- It is not possible
to disclaim A1 because EP1 is Art.54(2) prior art for the relevant conceptual
part.
- An undisclosed
disclaimer can only be used to restore novelty over an Art. 54(3) prior right,
not an Art. 54(2) prior art that is not an accidental anticipation – G1/03,
G2/03.
- Therefore a valid patent cannot be obtained from EP-C by disclaiming
A1.
Question 3 (9 points)
You are contacted by your client D, who
recently started commercialising in the UK tiles comprising substances B+C, the
tiles being heat-resistant up to a temperature of 1300 °C. D has received a
letter from competitor E, who claims that D’s tiles infringe E’s patent EP-E,
which is currently in force in the UK.
Patent EP-E was granted with a single claim
directed to a tile comprising substance B and defining the tile as being
heat-resistant up to a temperature of 1300 °C. EP-E further discloses a
heat-resistant tile comprising substance B, the tile being heat-resistant up to
a temperature of 400 °C. The mention of the grant of EP-E was published in the
European Patent Bulletin on 11 June 2025.
Your client D provides you with document D1
as evidence that the tile as claimed in EP-E is not heat-resistant above 700 °C
without substance C. D1 is a document that was made publicly available last
month.
Advise your client D on what to do before
the EPO regarding EP-E.
EPC
- EP-E was granted on
11 Jun 2025.
- Opposition period
expires: 11/06/2025 + 9m [Art. 99(1)] --> 11/03/2026 [R. 131(4)] Wed
- File opposition
against EP-E by 11/03/2026:
- pay the opposition fee,
RFees2(1).10
- oppose claim 1
- on the grounds of lack of
sufficiency Art.100(b):
- EP-E does not disclose the
invention in a manner sufficiently clear for it to be carried out by person
skilled in the art.
- In order to be sufficiently
disclosed, the claim needs to be sufficient over its entire range, GL F-III 1;
T518/10
- Submit document D1 as evidence
that the granted claim covers non-working embodiments
- D1 is admissible as evidence
despite being published after filing date EP-E
- The burden of proof will then
lie with the proprietor E to demonstrate that the claim is sufficiently
disclosed – GL F-III 4
- Claim 1 as granted
cannot be maintained
(Update based on further considerations)
- The proprietor cannot file an amended claim directed to the tile with B being heat-resistant up to 400
degrees C
- This embodiment is described in
the application as filed, Art. 123(2)
- But gives protection for embodiments not disclosed therein, so is broader than the grant claim as granted in violation of Art. 123(3) EPC
- There is thus no amendment that the proprietor can make that would satisfy both Art. 83 and Art. 123(3).
The patent will be revoked - Art. 101(3)(b) EPC
Part
2
Question 4 (8 points)
Applicant F, a Slovenian national with
residence in the US, filed an international application PCT-F at the EPO in
English.
Today, a few days after filing, F wants to
withdraw PCT-F.
(a)Before which Authorities can F actively
withdraw PCT-F?
(b)Which steps would F need to take in each
case?
(a)
The EPO will be
receiving Office.
It is competent rO
for nationals of Slovenia (EPC state) - Art. 151; R. 157(1) EPC; R. 19.1(a)(i)
PCT
And accepts
applications filed in English - R.
12.1(a) PCT; R. 157(2) EPC
PCT-F may be
withdrawn before the EPO as receiving Office or before the IB - R. 90bis.1(b)
PCT-F may be
withdrawn at any time prior to expiry of 30m from priority - R. 90bis.1(a)
(b)
Withdrawal is
effected by submitting a notice of withdrawal addressed to the rO or IB
The steps are the
same regardless of where the notice is submitted
The notice must be
signed by the applicant F – R. 90bis.5 PCT
Withdrawal is free of
charge – AG-IP 11.048
Takes effect upon
receipt by IB or EPO as rO
When submitted to the
rO, the EPO will mark with the date on which it was received and promptly
forward it to the IB – GL PCT-EPO A-IV, 2.2
R. 90.1bis allows the
applicant to perform the withdrawal himself.
There is no need to
appoint an agent, even though the EPO as rO would require this, as the
applicant does not reside in an EPC state – Art 27(7) PCT; Art. 133(2) EPC.
(Answer submitted by Diane Tweedlie during exam taken as bench-marker, which is probably closer to what is expected by the exam committee. I changed my mind later)
The EPO will be
receiving Office.
It is competent for
nationals of Slovenia (EPC state) - Art. 151; R. 157(1) EPC; R. 19.1(a)(i) PCT
And accepts
applications filed in English, R. 12.1(a) PCT; R. 157(2) EPC
PCT-F may be withdrawn
before the EPO as receiving Office or before the IB - R. 90bis.1(b)
PCT-F may be withdrawn
at any time prior to expiry of 30m from priority - R. 90bis.1(a)
Withdrawal is free of
change - AG-IP 11.048
Active withdrawal
before EPO
Applicant F does not
reside in an EPC state, so is required to appoint an agent - Art. 27(7) PCT; Art.
133(2) EPC
An agent is required
in all proceedings before the EPO as rO for all acts other than filing the application.
- GL/PCT-EPO A-VIII, 1.3
To actively withdraw,
applicant must appoint an agent entitled to practice before the EPO: A
professional representative or legal practioner on the list
The EPO as rO has
waived the requirement under R. 90.4(b) to file a signed PoA - R. 90.4(d); OJ 2010,
335
If the agent does not
file a PoA, the applicant F must sign the notice of withdrawal, as the waiver
does not then apply - R. 90.5(e) PCT
If the agent is
appointed via a PoA, the agent may sign the notice - R. 90.3(c) PCT
NB: if the applicant
does nothing and does not respond to the invitation to appoint an agent, PCT-F will
be considered withdrawn
Withdrawal before
IB
Applicant F must sign
a notice of withdrawal for PCT-F - R. 90bis.5 PCT - and submit it to the IB
The IB does not
require the appointment of an agent
If an agent is
appointed before the rO, this agent can also submit the notice of withdrawal to
the IB - Art. 48 PCT
Question 5 (12 points)
EP-G was filed on 12 July 2022. The mention
of the grant was published on 11 June 2025.
On 18 August 2025, the EPO issued a
communication informing the proprietor G that unitary effect had been
registered.
Despite having taken all due care required
by the circumstances, G realised today, 3 March 2026, that no renewal fees for
the European patent with unitary effect have been paid.
The proprietor G has also become aware of
European patent application E1, which is state of the art under Article 54(3)
EPC and prejudicial to the novelty of claim 1 but not to the novelty of claim 2
of EP-G. G is interested in having a valid patent EP-G with unitary effect for
claim 2.
Please advise.
Renewal fees
- 4th year renewal
fee was due on 31 July 2025 – R.13(1) UPR
- This falls between
the date of publication of mention of grant (11 June 2025) and the date of
notification of registration of unitary effect (18 August 2025)
- so renewal fee due date is shifted to 18 August 2025 – R.13(5) UPR
- and could have been
paid within 3m of that date without additional fee:
18/8/25 + 3m à 18/11/25 (Tuesday)
- This was missed,
but 4th year renewal fee can still be paid within 6m of due date with
additional fee of 50%:
18/8/25 + 6m à 18/2/26 (Wednesday)
- This was also
missed, so patent is considered to have lapsed as of 18/8/25; R.14(1)(b),
R.14(2) UPR
- G can request
re-establishment of rights – R22(1) UPR to remedy failure to pay renewal fees
with additional fee:
- time limit to pay renewal fees
with 50% additional fee was missed despite all due care
- non-observance of this time
limit had the direct consequence of causing EP unitary patent to lapse;
R.14(1)(b) UPR
- G must request re-establishment
within 2m of removal of cause of non-compliance, so 2m from today (G “realised
today” that the renewal fees were not paid):
3/3/2026 + 2m (R.22(2) UPR) à 3/5/2026 (Tuesday)
- Complete the omitted act: pay
renewal fee with additional fee [R.22(3) UPR]
- State the grounds on which
request is based; how the time limit was missed despite all due care and any
relevant evidence [R.22(4) UPR]
- Pay fee for re-establishment
[R.22(2) UPR; Art. 2(2) RFeesUPP, OJ 2022 A42]
- Request will be
granted and legal consequence of EP-G being lapsed will be deemed not to have
ensued; the patent will be in force as of 18/8/2025 – R.22(5) UPR.
Limitation
EPC
- G should request
central limitation of EP-G under Art. 105a
- File at the EPO and pay limitation fee – Art. 105a(1); RFees2(1).10a
- File the request in
writing satisfying requirements of R.92(2)
- File an amended
claim, limiting claims to claim 2
- Also file amended
description and drawings if appropriate
- Amending to claim 2
is a clear limitation and examining division will allow the request – R.95(2)
- Translation of the
claims into other two official EPO languages within 3m from invitation –
R.95(3)
- The patent will be
limited and the amended patent specification published – R.96 EPC
- The limitation applies to all contracting states in respect of which
it was granted – Art. 105b(3) – including the European patent with unitary
effect.
Question 6 (13 points)
European patent EP-H was granted to company
H with a single claim directed to subject matter D and the description as
originally filed, which further discloses an embodiment directed to
subject-matter D+E.
An opposition was filed against EP-H on the
ground of lack of novelty, citing a document under Article 54(3) EPC that
discloses subject-matter D.
The opposition division decided to maintain
the patent in amended form based on a main request filed by company H
comprising a single claim directed to subject-matter D+F.
In subsequent appeal proceedings, the board
of appeal issued a communication under Article 15(1) RPBA raising a new
objection that subject-matter D+F is not originally disclosed.
(a) What should company H do in the appeal
proceedings and why?
(b) How would your answer to (a) change if
the description of EP-H additionally disclosed subject-matter D+E+F?
- The outcome of the
opposition was to maintain the patent in amended form, D+F
- This decision was
appealed, so the decision, including the amended claims, is not final
- The amended form of
the claims contains subject matter extending beyond the content of the
application as filed, Art. 123(2) and extends protection of the claim as
originally granted in violation of Art. 123(3).
- In this case, it
appears the BoA raised an objection under Art.123(2) of their own motion
- The proprietor’s main request was granted, so they are
not adversely affected to the decision to maintain patent in amended form –
T234/86
- Therefore proprietor cannot have appealed – Art.107
- So opponent is sole appellant.
- Prohibition of reformatio in peius:
- The opponent, as sole appellant, cannot end up in a
worse position than had they not appealed – the general principle is that the
proprietor should lose their patent –
G10/93
- However, exceptions apply as per G1/99:
- From G9/92, since the opponent is the sole appellant,
then the Board and the opponent can raise objections against the maintained
amended form of EP-H.
- H should respond to the Art.15(1) RPBA communication
with amended claim to D+E.
- H should argue that:
- the first sequential condition of reformatio in peius
G1/99 (“introduce one or more originally disclosed feature(s) which limit the
scope of the patent as maintained”) cannot be met, as the feature F needs to be
removed regardless of any further amendments. No limitation to D+F is therefore
possible, so this condition cannot be met.
- the second sequential condition of reformation in peius
G1/99 (“introduce one or more originally disclosed feature(s) which extend the
scope of the patent as maintained, within the limits of Art. 123(3) which
states that an amendment cannot broaden the scope of the patent as granted”) is
met by amending the claim to D+E.
A claim to D+E would extend beyond the scope as
maintained, but not beyond the scope of the granted claim.
In this case the amendment to D+E would be allowable, if
the other conditions of patentability are met, as it is not possible to further
limit the scope of the claims.
b) The answer would be different if D+E+F were also
disclosed in the description, as then the first sequential condition of
reformation in peius G1/99 would be possible to be met. That is, it would be
possible to limit the claim as maintained in amended form by the addition of
feature E, and it would not be possible to achieve a broadening amendment as in
part (a).
- So H should file an amended claim to D+E+F in response
to the Art. 15(1) RPBA communication.
Regarding q6: no comment on potential problems with late-filing of a new request- involving the distinct levels of convergence? Any new filing is late and, at this stage, exceptional circumstances must be present. Furthermore, admissibility then also depends on the Board‘s discretion.
ReplyDeleteI think T 295/87 and T397/01 is highly relevant as these decisions held that Board can allow late filed amedments if they are real attempt to overcome objections and they are clearly allowable T 295/87.
DeleteThere is recent case law of the BoA. If the BoA raises an issue on their own motion, this constitutes exceptional circumstances. And these are required for any amendment at this stage of the proceedings.
DeleteAnd only if there are exceptional circumstances, the BoA can admit a request - this will then depend on the suitability of the amendment to overcome the issue etc.
The answer cannot go without discussing the stage of appeal proceedings.
I'm not sure I agree with the reason for Q 1 3) and referring to the PCT filing date as determining whether or not R.56a EPC can be invoked. This is from the GL A-IV 1.1
ReplyDelete"Where the applicant inserts missing parts of the description and/or missing drawings under Rule 56 (see A‑II, 5) or corrects erroneously filed parts under Rule 56a (see A‑II, 6) after the divisional application's date of receipt, the requirements of Rule 36(1) may no longer be fulfilled (see A‑IV, 1.1.1). If the divisional application claims priority, the date of receipt does not change if the missing parts or the correct application documents are completely contained in the earlier application whose priority is claimed (Art. 88(1))."
If the divisional claims priority (which is does, because the parent claims priority) the date of receipt does not change if the correct application documents are completely contained in the earlier application whose priority is claimed (which is the case here). R. 56a(4)(b) specifies that if the earlier priority document is not in an official EPO language, the applicant should file a translation and 56a(4)(c) allows the applicant to indicate where in the priority application or the translation thereof the missing parts are contained. Am I missing something? Why is the effective filing date of the PCT application, and not the date of receipt being considered?
To add to this, the GL refer to the date of receipt of the divisional application, and not the filing date of the parent. Date of receipt of the divisional is 12/01/2026 + 2 months = 12/03/2026 (Thursday). We're still in the two month period, so erroneously filed parts can still be corrected to avoid changing DIV2's date of receipt so that DIV2 was validly filed during the pendency of the parent.
DeleteThank you for providing this passage of the guidelines. We will update the answer shortly.
DeleteThis was something we discussed internally but hadn't found legal basis, so thank you.
One point though - the "intended documents" are the (incorrect) English translations of the Japanese original filing. So the priority application does not "completely contain" the corrected documents as the Japanese version is not the same as the problematic English translation, so this requirement would not be met. Therefore the date of submitting DIV2 would not be "saved", and the parent is no longer pending by this point
GL is not a legal base here. R56a(3) clearly refers to 2M from the date of filing. The same "date of filing" as we all know from R40. And the same as inherited by a divisional under art 76(1).
DeleteI see GL more like an indication to that EPO can still invite the applicant to correct the documents and only in this case r56a correction may be possible.
Still I wonder why DP have not explored this in their answer.
I'm still struggling to understand why the intended documents would be the incorrect English translation though?
DeleteArt. 70(2)(b) stipulates that if an application is filed in a non-EPO language (i.e. JP), it will be this language that is the application as filed (and accordingly, the EN translation can be brought into conformity with the JP application as filed during pre-grant proceedings). Art 76(1) stipulates that the div should not extend beyond the earlier application as filed. So to me, the application as filed is the original JP application, and not the EN translation. R. 36(3) allows for the filing of the div in the original non-EPO language that the parent was filed in (so JP in this case), so I just cannot understand how the incorrect English translation would be considered the 'earlier application as filed'?
I could be completely wrong here, but are we positive that they are referring to error/missing part being filed to the divisional application in that GL? It’s not completely clear wether they refer to the parts being filed to the parent (but after the divisional has been filed). Is that interpretation crazy?
Delete@Anonymous - The question states that "instead of filing the English translation of the description and claims of PCT-A as intended, " (they filed the unrelated documents). So the applicant is trying to file the English translation as DIV2. The earlier application is indeed originally filed in Japanese, and it would be possible to have filed DIV2 in Japanese, but it was already filed in English.
DeleteThe incorrect English translation is not considered the earlier application as filed - it is simply the documents that the applicant intends to file as DIV2.
Also, George, I don't agree with your interpretation of 'date of filing' here. The GL do not specify that just because the div inherits the parent's date of filing (ie the effective date), that all acts need to be performed from the parents fili by date (and the divs effective filing date). For example, GL A-IV 1.2.1 specifies the following: "Since Rule 40(1) does not require a European patent application to contain any claims on its date of filing, the same applies to a European divisional application." and "This may be done after the parent application is no longer pending, provided that the requirements of Rule 40(1) were satisfied with regard to the divisional application when the parent application was still pending."
DeleteIt's the divisional application's date of filing/date of receipt that is used to determine when claims can be supplied eg in response to a deficiency notice (R. 58), so I don't see why this doesn't apply m.m. to Rule 56a.
Stefanie - I'm still not sure I follow your reasoning. DIV2 allows for the erroneously parts to be corrected to the JP priority document. R. 36(2) allows for filing of a translation into the EN LoP. I don't think correcting DIV2 to the original documents from the JP priority documents precludes the applicatnt from filing the EN translation afterwards (as we're still in the 2 month time period of R. 36(2))?
DeleteMaybe this is a stupid take, but is it not irrelevant for the application of R56a what was intended to be filed? - Nina
Delete@Nina - Yes, for R56a it is irrelevant what was intended to be filed. The issue of intention is simply to indicate what we're trying to correct DIV2 with - this is what the applicant wants to achieve.
DeleteHey Anon of 20:12. I do not get your point. When GL contradicts the Rules, clearly the Rules take precedence.
DeleteBut submission of claims under r58 is not linked to the date of filing, so no problem for a divisional, and there is no GL vs Rules situation here. For R56a it is different as the deadline is defined from the filing date. And for divisional - it is clearly the filing date of the parent.
For you who used R56a(4), how is that possible without extending beyond the parent? The error. parts remain in the application, and they were from an unrelated application. Those parts should extend beyond the parent, no?
DeleteG1/05 allows you to amend a divisional to comply with Art76(1) so you can delete the erroneous parts in examination. At least that’s how I answered after having established that you can indeed file the correct parts under rule 56a(4) epc.
Delete*provided that deleting those erroneous pages doesn’t add matter in itself of course!
DeleteAh, I see, thanks. Nicely done, that’s a really complicated sub-question…
DeleteI agree with George. That section of the guidelines mentions it is possible to file missing parts for a divisional, but you still have to fulfill the requirements of Rule 56a, and it warns that it does not work if it creates a change in the date of filing (by saying that the requirements of Rule 36(1) may no longer be fulfilled - therefore, I am assuming the divisional does not get accepted). Date of filing - as stated in R..56a(3) - is a different thing than filing date (that governs the payment of the filing fee and search fee of a divisional application for example). I agree that the phrasing of this part of the guidelines is awkward, but the guidelines cannot go against a Rule.
DeleteHi, thanks for this. I keep coming back to Q1(3) as I think it will have a significant impact on whether or not I have passed.
DeleteI do not follow the logic that Rule 56a(4) EPC does not apply here.
The Guidelines at A-IV 1.1 state “Where the applicant inserts missing parts of the description and/or missing drawings under Rule 56 (see A‑II, 5) or corrects erroneously filed parts under Rule 56a (see A‑II, 6) after the divisional application's date of receipt, the requirements of Rule 36(1) may no longer be fulfilled (see A‑IV, 1.1.1). If the divisional application claims priority, the date of receipt does not change if the missing parts or the correct application documents are completely contained in the earlier application whose priority is claimed (Art. 88(1)).”
The divisional application claims priority automatically. As the parent had a language of proceedings which was English, DIV-2 must also eventually have this language of proceedings. The GL quoted above suggests that the application to divisional applications is that the date of receipt of a divisional would not be affected by the correction within two months of the date of receipt of the divisional application. The date of receipt applies a difference between the fact that a divisional is only ‘deemed to have been filed’ on the same day as the parent (Art. 76(1), rather than actually filed on that day for the purposes of Rule 56a(4) EPC. The deemed filing within Art 76(1) provides suitable legal basis for paying the renewal fees, for example, but the date of filing as in, date of receipt, is 12 Jan 2026.
Above, Stefanie wrote “One point though - the "intended documents" are the (incorrect) English translations of the Japanese original filing. So the priority application does not "completely contain" the corrected documents as the Japanese version is not the same as the problematic English translation, so this requirement would not be met. Therefore the date of submitting DIV2 would not be "saved", and the parent is no longer pending by this point.”
I am confused as to how the priority application does not completely contain the corrected documents. The only difference between the text of the priority document and the intended filing is that one is in Japanese and one is in English; ‘completely contained’ cannot mean ‘must completely contain in the language of proceedings’ - otherwise the provision of Rule 56a(4) would apply exclusively to applications claiming priority to applications in English/French/German, and only that which was the language of proceedings. Therefore it is surely possible under Rule 56a(4) to file an English translation (a correct version) of the Japanese priority document?
I also don’t understand why the ‘intended documents’ are those with the error - as surely the applicant is not intending to refile with the erroneous claims that have just been opposed. And even if they had - it would then be possible to correct during pending examination proceedings under the provisions for bringing a translation into conformity.
I can’t see why legally it should be that Rule 56a(4) does not apply here - what is the negative impact to third party certainty of allowing the correction of application documents Within the two months of receipt, given that the priority parent has likely published (and if it hasn’t, again, what can be the adverse impact on third party certainty)?
If someone could point out why I’m wrong (or, in the less likely event, considers I may be right!), I’d be grateful for your thoughts :)
In Q3 "the tiles being heat-resistant up to a temperature of 1300 °C" is not a range, it is a property of being able to resist heat up to a specific temperature (1300°C). There reference about disclosure in the whole range is thus inapplicable (but the logic is overall the same), but more importantly, no limitation tiles heat-resistant up to 400 degrees C is possible, as that would be an extension against art 123(3), as materials heat-resistant up to 400°C obviously include all materials resistant up to 1300°C, but also some additional (less resistant) materials.
ReplyDeleteAgree
DeleteAgree
DeleteClearly, more tiles fall under a claim requiring only up to 400 than up to 1300. so amending to 400 extends the scope
DeleteWhy is up to 1300 not a range, I didn't completely follow the reasoning. Their example showed a tile comprising B that is heat resistant up to 400. It doesn't make sense to me that they would get a claim granted that doesn't cover their own product.
DeleteThere are a couple of things in this question that make it unclear and open to interpretation:
1) Patent EP-E was granted with a single claim directed to a tile comprising substance B and defining the tile as being heat-resistant up to a temperature of 1300 °C.
- To me it is unclear if the definition of the tile is in the claim or in the description. I interpreted this statement as the single claim being a product claim for a tile comprising substance B.
2) EP-E further discloses a heat-resistant tile comprising substance B, the tile being heat-resistant up to a temperature of 400 °C.
- To me this reads as the Example they had.
so, if the heat resistant part of the definition was only in the description, I see no reason why they could not amend a claim for a product comprising B, to a product comprising B, heat resistant up to 400.
@CA: I think you got pretty much everything there was. :)
DeleteYou are right, it does not make much sense that their claim did not cover their example. But that is how it is. The problem clearly states that it is their claim that defines the tile as heat resistant up to 1300, while in fact their example degrades above 700.
And limiting to "up to 400" does broaden the scope. In particular their own example would then be covered.
@George: so you agree that limiting it to up to 400 does not broaden the scope? Or would it receive a 123(3) objection?
DeleteThanks!
ReplyDeleteQ3: I contemplating on commenting on the ”up to 400 deg”, but wouldn’t the clients tile still infringe that? I mean a tile that can handle 1300 can indeed handle 400?
Q4: do you mean R.90bis.1 as legal basis for no representation needed? Is it because ”the applicant” is referred to in that rule?
Q5: 3 May 2026 is a Sunday.
For Q4, if it is only because ”the applicant” is referred to in that rule that no representative is needed, we could say the same for R20.5.b), R20.5bis.b), R20.6.a), etc. while it is not the case..
DeleteDP has it wrong here because art.27(7) PCT specifically indicates that a rO may apply his own laws regarding representation.
DeleteIt's not "up to 400" if it can handle 1300.
DeleteThat interpretation of a claim is becomes extremely strange. If you have a tile that can withstand 1300 and you throw it into 400 deg oven, it would not break. That it can withstand even more does not circumvent the scope of the claim.
DeleteWhich must mean that the amendment violates Art 123(3)!
DeleteQ4. There are many provisions in the PCT where "applicant" doesn't have to mean applicant and can be replaced by agent, in which case the rO can require that a procedural act which the applicant is allowed to do must be performed by an agent (when appointment of an agent is mandatory).
DeleteI would argue that the applicant referred to in Rule 90bis.1 really does mean the applicant. The applicant's signature is required on the notice of withdrawal, or someone allowed to sign on behalf of the applicant.
Ah, okey, thanks. I figured that the applicant needs to sign, but that the notice has to go through the representative. Had a feeling that it was too cumbersome to be true, but couldn’t find any clear basis for it not to be true.
DeleteFor Q5 - 3 May 2026 is a Sunday, not a Tuesday. So the roll on provisions would also apply there.
ReplyDeleteAgree
DeleteFor Q6: shouldn’t we file the claims as maintained by the opposition division as our main request? As otherwise the proprietor cannot rely on reformatio in peius? T226/98
ReplyDeleteI think for Q6, there must be a sole appellant (=the opponent); because of the main request was upheld, the proprietor is not adversely affected and thus could not have filed an appeal.
ReplyDeleteLet's see how strictly they mark these questions. If it's not too strict, I hope I pass!
ReplyDeleteFor Delta Patents tutor: Regarding Q4, could you please further elaborate the part of your answer in which you say that applicant doesn't need a professional representative at EPO as RO? From Article 133(2) I infer that the representative is necessary because the applicant does not reside in a Contracting State. Thank you. FP
ReplyDeleteBloodbath. I think I failed M2-part 1.
ReplyDeleteYou are not alone brother/sister…
DeleteFor Q1-2: Euro-PCT-A was filed in English with the wording “product made of iron” (application as filed).
ReplyDeleteIron was disclosed in Euro-PCT-A, thus, I thought that this is not an extension of subject matter according to A.123(2). Claims were not amended. The only issue with the translation is that priority is not valid A. 87(1) as it relates to a different subject matter.
Do I miss something here?
Euro-PCT-A was filed in Japanese and translated into English. So the reference to iron is not in the application as filed.
DeleteYes, the application as originally filed is not the euro pct, it’s the Japanese PCT. So support must be from the original Japanese PCT.
DeleteOops right, I somehow had read the question wrong...
DeleteDo any of the DP tutors have an opinion on neutralisation of Q2 in light of the issue in the German language paper? Or on why the pass mark should be?
ReplyDeleteIf they don’t neutralize Q2 it will lead to a wave of successful appeals.
DeleteDo you have the text of Q2 in German? Can you share it?
DeleteNeutralizing/awarding full marks to everybody seems to be a fair solution, however for those candidates that have prioritized answering this question over finalising other parts, it appears suboptimal. Could a solution be to mark Q2 and at the same time award everybody +6 marks (max marks for Q2)? Has such a solution been seen before?
ReplyDeleteWhy is it sub-optimal for the people that prioritised answering the question? Neutralisation is the rising tide that lifts everyone…
DeleteLast year, neutralizing meant being marked on 19 (Q1 + Q3) points instead of 25. For those who get 5 or 6 points on Q2 such a neutralization would be disadvantaging.
DeleteOh I see what you mean. I thought standard procedure for the main papers was to award full marks to everyone for the neutralised question to avoid exactly the disadvantage you mention.
DeleteBecause the time spent on Q2 for points that might now be awared either way could have spent improving the answers for Q1 or Q3 I would assume. But it seems that there is no perfect solution to this anyways
DeleteFor old D yes, but with flexible passing rates of M2 basically it will be top X% who will pass, where X will be negotiated in the Exam Commettee to be reasonable. Among people who have answered strongly to Q1 and Q3, but failed at Q2, and their couterparts, who answered Q1 and Q3 badly, but answered Q2 perfectly, the first group will get a relative advantage from neutralization of Q2 over the second group. Cruel logic of new system.
DeleteI don't think it would be fair at all to neutralise the question in a way such as in the paper F last year, as lots of people used their time to fix their Q2 answer after the notification came on screen, which made people spend even more time on Q2 that they could have used on Q1 and Q3. If they are going to neutralise it now, then they should have never given the notification to draw attention to the matter.
DeleteWhat notification are you talking about?
DeleteThe notification we got in wiseflow mid-exam that there was a mistake with the german question? You didn't get it? Maybe only M2 got it?
DeleteI didn't get such a notification during D1.
DeleteVery weird, I assumed everyone got the notification! It popped up on my screen mid-exam during M2-I with a text similar to "in the german frage 2 there is an error in the question, blabla should have been blabla".
DeleteThe neutralization situation is a bit different than 2022, as the error was informed during the Exam (2022 wasn't). However, neutralization still seems to be fair & necessary, as changing the question on the flight could have made people that already started with answering it lose time (every one konws how significant the time is for this exam).
DeleteSee Tutors’ Report on the EQE 2022 (https://information.patentepi.org/issue-4-2022/tutors-report-on-the-eqe-2022.html):
There was a problem with D1, Q5 for which all candidates received full marks...
A tutor asked whether why the Committee or the Examination Board had not informed all candidates during the Exam that there was an error in the English version and how it had to be corrected, so that the exam could have continued, as was done in paper times, such that there would not have been a need for any neutralization. Tiem indicated that this was a small question, such that changing the question on the flight could have made people that already started with answering it lose time. Also, D1.1 2021 learned that giving extra time in the WISEflow system also does not always work and has complications.
So wait a moment, the examination board knows that informing the candidates during the exam makes them lose time and decided to do so anyway, knowing that the question would likely be neutralised anyways? Mistakes happen and we are all human, but the examination board really needs to be held accountable for their incompetence (since I hope from the goodness of my heart that it isn't malice)
DeleteI don't think it is malicious. Maybe different people on the examination board. Maybe they forgot the considerations in 2022. Maybe, this time through the notification, they would like to avoid the neutralization, which, however, made things worse, as for many candidates, even full marks on Q2 might not compensate for the time lost/marks that could have been obtained from other questions.
DeleteIn any case, it is the examination board that must ensure the correctness of the exam paper, and candidates should not bear adverse consequences for reasons beyond their control.
I agree, it was of course not done with bad intentions. I realise it's easier to analyse the situation after the fact, but wouldn't it have been better if they had simply announced that there was a mistake in the German version and the question will be neutralized? They could have said it would be disregarded and advised everyone to focus on the other questions, instead of making a correction in the middle of the exam.
DeleteDoes anybody know if they announced the 2022 neutralization together with the results, or was it made public beforehand?
For those of us M2ers who might not pass because of low scores on Q1 and Q2, remember that lightning rarely strikes the same place twice. We were especially unfortunate to face a tough D1 part 1 while needing to pass both sections individually. It sucks, but those who prepare thoroughly will succeed next year!
I really would like the exam secretariat to account for themselves as to how these questions were appropriate for M2 candidates.
ReplyDeletePlease everyone stop referring to the exam secretariat!! The exams are drafted under the supervision of the examination board, not the secretariat
DeletePCT Question: Art. 27(7) indeed allows the EPO to oblige the applicant to appoint an agent. I certainly wondered long and hard if the expected answer was about appointing an agent and waiver of PoAs etc. when withdrawing.
ReplyDeleteThe rO Guidelines seem clearer on this matter: 314. The applicant may file with the receiving Office a notice of withdrawal of the international application (Rule 90bis.1(b)), of any designation, including the withdrawal of a designation for the purpose of a given kind of protection (Rule 90bis.2(d)), or of any priority claim (Rule 90bis.3(c)). The applicant may also file such notice of withdrawal directly with the International Bureau. Any notice of withdrawal has to be signed by, or on behalf of, all applicants indicated as such in the international application at the time the notice of withdrawal is submitted. Upon receipt of such a notice, the receiving Office marks the date of receipt on the notice of withdrawal and checks whether the withdrawal is effective, that is, whether:
(i) the notice of withdrawal is received within the time limit referred to in Rule 90bis.1(a), 90bis.2(a) or 90bis.3(a), as the case may be;
(ii) the notice of withdrawal is signed by or on behalf of all the applicants.
In a case where the applicant's signature is what counts, it seems odd that the applicant would need the signature of an agent in order to withdraw his application.
Diane, you can understand how hard this D exam was then!
DeleteI agree, it seems odd that the applicant would need an agent to sign the withdrawal with the EPO, but art.133(2) EPC leaves no room for interpretation: all acts other than filing require a prof rep, and in this case it should be a pref rep under art.134 EPC because the ro is the EPO.
I've also added that request to IB must be sent in EN or FR or any other publication language [R.92.2(e) PCT]. with the EPO only FR, EN or DE is permitted.
DeleteSurely it’s like a non-EPC applicant trying to do anything before the EPC.
DeleteApart from filing the application itself, their signature is not recognised by the EPO because they are not entitled to sign - R50(3) EPC - and so the EPO would request that they appoint a professional representative that is entitled to sign on their behalf.
The way the question was phrased didn't help either. Asking to list the required steps *for each case* seemed like a hint that these steps are different in each case, with appointment of a representative being required before the rO but not the IB.
DeleteQuestion 4:
DeleteI have now entered the answer that I submitted when taking the exam as a bench-marker. (see above) It didn't feel right that it should be necessary to appoint an agent before the EPO in order to submit the signed document that is required for valid withdrawal, but it seemed to be what was expected. I changed my answer later based on my interpretation of the meaning of applicant in R. 90bis.1 (which may of course be wrong) and a passage in the rO Guidelines (which is not part of the EQE syllabus).
It still seems nutty that a document signed by the applicant - whose signature is the most important part - would ultimately be deemed not filed by the EPO as rO, because it has not been submitted by an "appropriate" person.
But there is legal basis for this course of action.
Diane, thank you for the updated version!
DeletePlease see R.2.1 PCT which specidically says: "Whenever the word "applicant” is used, it shall be construed as meaning also the agent or other representative of the applicant...". There is no way to actively withdraw the application with the EPO without a valid signature [R.50(3) EPC]. The signature of the applicant is not valid vis-a-vis the EPO in this case. One would argue that the provisions of the PCT prevail over the provisions of the EPC, but here the PCT clearly gives the EPO full right to impose the representative requirement under Art.27(7) PCT.
I guess we will have to find a natural from an EPC contracting state living outside of a contracting state to file a PCT application with EPO as RO, pay no fees, and then send EPO a signed notice of withdrawal to actually find out what EPO will do
DeleteHi Stefan, your reasoning is sound. But the PCT and EPC are different when it comes to withdrawals, as there is no provision in the EPC that requires the applicant to provide a signature in order for the application to be withdrawn, and in practice there may be differences in what the EPO actually does.
DeleteAs somebody in the new EQE system, part 1 was thoroughly depressing. Candidates now have around 4 months of anxiety to await how the EPO will deal this, especially given the restrictive fact that candidates must pass both parts of the exam.
ReplyDeleteFor context:
Module F (1 year experience) - "list the steps of the problem solution approach" -> 5 marks.
M2 (2 years experience): so, you've filed a divisional from a Euro-PCT application that hasn't yet entered the regional phase, oh and you've accidentally filed the wrong parts of another divisional after filing in an ill-advised language...
Hahaha! Seems like a reasonable step up…?
DeleteHolly Molly 😂😂😂 when you put it like this it becomes even more absurd!!!!!
DeleteI agree. I just posted our answers to the F1 legal questions. It takes longer to write out answers nicely, but in principle I can do the legal part in 20 minutes. Have needed 20 hours to think about the D1 questions and am still not done. The gulf between F and D1/M2 is too large.
DeleteI 100% agree with you!
DeleteFor G 1/99 to apply, it must be that the OD allowed an inadmissible amendment, but there's no indication of that in Q6b. This entirely depends on whether it was based on an unallowable intermediate generalisation. I argued that D+F can still be defended if this embodiment was based on an allowable intermediate generalisation, but the claim has to be amended to D+E+F if it wasn't.
ReplyDeleteI see your point. In part a) it is clear that the OD allowed an amendment to a feature not present in the application as filed.
DeleteIn part b), feature F is apparently present in the application as filed, but in combination with E.
I suppose we have to assume that D+F (without E) violates Art. 123(2) in the opinion of the Board. If this is not correct (we don't know enough), then yes, you would argue for D+F.
But in part b) you do have to explain why an amendment to D+E is not allowable - because it does not fall under the exception of G 1/99
"The proprietor may file an amended claim directed to tile with B being heat-resistant up to 400 degrees C"
ReplyDeleteThis violates 123(3), no?
Nevermind, I'm dumb. It is definitely narrower than up to 1300.
DeleteOf course it is broader and a violation of 123(3)
DeleteNow I'm confused again.
DeleteTo me, "up to 400" places a limitation on the scope of protection conferred by the claim. It protects tiles made from B which exhibit heat resistance to a maximum temperature of 400 degrees C. The term "up to" is used, not "at least" (which certainly would be broadening). Tiles with a higher heat resistance would fall outside of the scope of the claim and thus it has to be narrower.
DeleteDoesn't this interpretation imply that "up to 1300" covers all materials that can withstand a temperature below 1300? So it covers a material that fails at, for instance, 700C? This sounds very problematic because the claim will inevitably cover subject-matter that is not novel, unless B itself is a novel substance
DeleteTo me, amending to 400 is a broadening. But it is a very strange case, since the heat resistance is the result to be achieved and if amending to 400 would be a limitation, the scope would be extremely unclear (1300 includes ”up to 400” and beyond…)
DeleteSo, I wouldn’t treat it as a range in the ”normal” sense. Or another way of seeing it would be that 1300 includes the ranges ”up to 400” AND 400-1300.
The issue of the tile's heat resistance is not immediately obvious and we've spent some time going through it. The granted claim is (in our interpretation): "Tile comprising B, the tile being heat resistant up to 1300 degrees"
DeleteAn attempted amended claim would be "Tile comprising B, the tile being heat resistant up to 400 degrees" A tile that breaks at 500 degrees would not fall within the scope of the granted claim, as it is not heat resistant up to 1300 degrees. But it would fall within the scope of the amended claim, as it is heat resistant up to 400 degrees (and then some). So this would contravene Art. 123(3).
We have updated our answer
thanks Diane, I liked the previous version more :p I interpreted the question text as if the granted claim would be "Tile comprising B, being heat resistant". Since they mention "defines" I was led to think that the definition of what it was to be understood as heat resistant was in the specification. It seems odd to think that Competitor E would get a patent that does not cover their product and only working example (from what we were told in the question)
DeleteRegarding question 1, in the FR topic, it seems to me that the translation had been submitted in French. Can anyone confirm?
ReplyDeleteYes it was (and in German for the German paper I assume)
Deletethanks !!
DeleteQ5 : I wrote in my paper that the notice was served on August 19th — could that be a mistake on my part? All my reasoning is correct; if I lose 12 points over a reading error, I’ll never get over it.
ReplyDeleteQ1: To me it sounds odd that Euro- PCT enters the EP-phase on 8.9.2025 and then it is granted on 14.1.2026. There is no mention of acceleration of the proceedings.
ReplyDeleteFor Q1/1: the question itself says that DIV1 was filed. If EURO-PCT-A had not entered the EP phase, how can practically a DIV1 would have been filed without indicating a parent EP number? How does this justify the fact of question?
ReplyDeleteI am also wondering this. According to the model solution PCT-A was granted in 4 months after entry to the EP phase.
DeleteThe fact the question even refers to a "EURO-PCT" insinuates the application is already a EURO-PCT. In combination with the way the question is phrased, I think the question was ridiculous. Quite obviously we all know that you cannot file a divisional unless you have a "pending" application.... what exactly are they testing us on here.
DeleteThis was exactly my line of thinking on the exam. The question states ”On 10 October 2024, A filed divisional application DIV1 based on Euro-PCT-A.”
DeleteIf it hadn’t entered, Euro-PCT-A wouldn’t exist, so filing based on something that doesn’t exist seems impossible? I know that PCTs get an EP number during the int. phase, but it isn’t yet a euro-pct? Right?
I did not get this question. I understood that it was a fact that it had entered the EP phase. (The euro-pct application is cited and is clearly valid for parts 2 and 3 of the question). It does not say that the early entry was requested but it does not say that it was not, so why assume that it is not ?
DeleteI agree with Anonymous. I wrote that the divisional was valid, on the condition that the applicant filed a request for early processing along with the acts of R.159. I really hope they will not subtract points because of a reason like "the answer should have been no, since the request for early processing was not explicitly mentioned in the question".
DeleteI said the same, that one had to request early processing and then it would have been validly filed. It feels quite sadistic to think that they would let people wonder whether it was not validly filed for extending subject matter from the original parent in Japanese for then to want the right answer to be - actually, it did not enter because this was not requested. Then how was the div granted in b)?
Delete@Deltapatents: amending the granted claim from "heat-resistant up to 1300" to "heat-resistant up to 400" extends the scope of protection. E.g., a tile melting at 700 would not infringe the granted claim, but would infringe the amended claim.
ReplyDeleteIf a claim protects materials that are heat-resistant up to 400C, a material that can withstand 700C would not be in the claim's scope.
Delete"Heat-resistant up to 400C" imparts a limit on the material's properties, it doesn't merely mean "it is heat-resistant at 400, and could possibly withstand higher values". Anything that can withstand values above 400C cannot be covered by such a claim.
@Anonymous: in your interpretation, what is the imparted limit of "heat-resistant up to x" on the material's properties?
DeleteIt is heat-resistant up to that temperature, and fails above that temperature.
Delete@anonymous: I would argue: when a tile is not melting at 700, it meams the tile is not melting at any temperature below 700, so it is not melting at any temperature below 400, so it has the property "heat-resistant up to 400", so it falls under the scope of the claim.
DeleteIt wouldn't be heat-resistant up to 400, because it resists 700. For you to be able to use "up to", it must fail above that value
DeleteIf my car can travel at speeds up to 200 km/h, it can also travel at 100 km/h. But it doesn't travel at speeds up to 100 km/h, because it can travel faster
If your oven can operate at temperatures up to 240C, would you say that it operates at temperatures up to 180C, only because it can operate at that value?
Ah okay, "heat-resistant up to that temperature, and fails above that temperature". In that interpretation we would still have an extension of scope? If tile X is heat-resistant up to 400 and fails above 400, it does not infringe the granted claim (because it fails above 400, so not heat-resistant up to 1300), but it infringes the amended claim (literal infringement).
DeleteWouldn't this interpretation also mean that the amendment not only infringes art. 123(3) but also that it would infringe art. 83 as well, since D1 states that it can still resist up to 700°C? That does not seem logical to me?
DeleteAs a follow-up question: wouldn't this strict interpretation of "up to" imply that if D1 had stated that substance B would still be able to be heat resistant up to 1400°c, that the claim would also be non-valid due to art. 83 epc?
DeleteAlso, and I am really sorry to split my questions in three comments, but wouldn't this interpretation be impossible to enforce in practice? Because that would mean that even materials which are heat resistant up to 1350°C would not fall under the claim? That can clearly not be the intention of the person who drafted the claim? The claim can only logically be interpreted as "tile with substrate B wherein the tile is heat resistant up to at least 1300°C".
DeleteWouldn't an interpretation as in "tile with substrate B wherein the tile is heat resistant up to at most 1300°C" also be equally logical?
DeleteI fully agree Mr Tiles: 1300 includes ”up to 400” and beyond that. So it includes ”up to 400” and 400-1300.
DeleteAnd even with the interpretation of the ”other side”, there is a breach of A123(3). In that case, a tile being heat resistant up to 400 before the opposition would not infringe the ”up to 1300”, but would infringe an amended claim including ”up to 400”.
Just as a query to those who think it's an art 123(3) violation, ignoring the sufficiency issue etc, if the claim had been limited to "up to 1500 degrees C", would you view this as a limiting amendment? Because up to 1500 would encompass far more tiles but both ways can't be broadening.
Delete@anonymous of 08:32 - Yes, that would be a limitation, a tile resistant up to 1300 is not "heat-resistant up to a temperature of 1500 °C". If you put the 1300-tile in an oven which is 1500 deg, it would melt. So I do not get your point that "up to 1500 would encompass far more tiles". However, a tile resistant up to 1500 can withstand 1300.
DeleteI don't see how "up to 1300" can cover a material that can resist up to 400.
DeleteSuch an interpretation would imply that this claim inevitably encompasses all the materials that were known before it. Things that fail at 100C, 200C, 400C, 600C, 1000C, etc., everything would be covered according to your interpretation. A claim's scope cannot cover subject-matter that is not novel, hence selection inventions.
The claim includes more features than the "result to be achieved" of the heat resistance up to a certain degree. And yes, "things that fail at 100C, 200C, 400C, 600C, 1000C, etc" would be covered IF they are a tile comprising "B". So, if there are tiles comprising "B" know before the effective date of this claim, I would agree that it isn't novel. Since "tile" and "B" are the only features of the claim, except the result to be achieved, such a known tile would be novelty destroying.
DeleteTo me, this is not a case of a range in the sense that is discussed in relation to selection inventions, i.e. it's not some sort of ingredient up to a certain amount. It's but a result to be achieved, and that is the whole issue with the claim, the technical features to achieve the result are not included in the claim.
But we probably have to agree to disagree :)
If the premise is that B itself is novel, why even mention a temperature? A tile comprising B would be novel and inventive anyway.
DeleteYou’d have to ask the person drafting the claim. Going into whether this claim, made up for exam purposes and with the limited amount of information given, is novel and inventive seems difficult.
DeleteBut my take is: If there is prior art disclosing a tile comprising B, a claim to ”A tile comprising B that can withstand up to 1300 deg”, given that nothing is included how this is achieved, would not be novel, as the only technical features are Tile and B.
This discussion could go on in infinity, we’ll have to disagree I guess. I probably failed the exam, so I am by no means an expert and could of course be wrong.
@anonymous: the claim has more features than just the particular claim feature "up to 1300". The question is whether that particular claim feature can be amended to "up to 400" while not extending the claim scope. It appears that independent of which interpretation one chooses, one ends up with finding one example that does not fall under the granted claim but does fall under the amended claim, so that the amendment contravenes 123(3).
DeleteNow this is complicated since we both are anonymous, but I am the one that thinks that amending to 400 is a broadening (regardless of interpretation).
DeleteThe other anon, you stated in your last post:
”I don't see how "up to 1300" can cover a material that can resist up to 400.
Such an interpretation would imply that this claim inevitably encompasses all the materials that were known before it. Things that fail at 100C, 200C, 400C, 600C, 1000C, etc., everything would be covered according to your interpretation.”
You have changed your interpretation mid-discussion. I am saying that a claim to a tile 1300 does NOT cover a tile that fails at 400, as it cannot withstand 401-1300. What I am saying is that a claim to ”up to 400” WOULD cover a tile which fails at 400, and a tile that fails at 1300 (and everywhere in between). Hence, an amendment to 400 would broaden the scope. You contradicted yourself in your post, hence some confusion in my response.
"Up to 400" can not cover a tile that fails at 1300. The limitation is that the material is not heat-resistant above 400C, this is what "up to" means.
DeleteI'm not contradicting myself. "Up to 400" can not cover 1300C, and whether up to 1300C can cover 400 depends on what is disclosed in the prior art. If prior art discloses a tile with B that is heat-resistant up to 1100C, the same but up to 1300C would be novel, but the protection would only cover the values between 1100-1300, because a patent's protection cannot cover something that's not patentable per se. This is well established under Formstein defence (DPMA), Gillette defence (UKIPO) and the Wilson case (USPTO).
Without any prior art disclosing a tile comprising B, the patent protects ALL tiles comprising B, provided the tile is heat-resistant up to any temperature wherein the ceiling for the said temperature is 1300C. If someone then invents a tile comprising B and is heat-resistant up to 1700C, you can't assert that your claim covers this, because it's not something you invented or envisioned at the date of filing.
DeleteLook, you stated that: ”I don't see how "up to 1300" can cover a material that can resist up to 400”
DeleteSo, you seemed to believe that a tile that can withstand up to 400 does not infringe a claim directed to ”up to 1300”, correct?
If the claim is then amended to ”up to 400”, now said tile is infringing the amended claim, correct?
If a product was outside the scope pre-amendment, but covered post-amendment, that is a breach of A.123(3), correct?
Now, you seem to be of the opinion that wether a claim, including the result to be achieved ”up to 1300”, cover a tile which can withstand 400 depends on prior art in line with ”Formstein defence et. al.”. I don’t see how that would warrant discussing in line with the model solution for Q3, but maybe you are right and I hope you score points with your reasoning.
Yes, then I realized it entirely depends on what's disclosed in the prior art documents.
DeleteThere wasn't any prior art document given in the question, so they probably wanted us to assume that there's no prior art disclosing a tile comprising B. Under that assumption, a tile comprising B and is heat-resistant up to 1300C would cover any tile comprising B, as long as the tile is heat resistant up to a temperature up to 1300C. So a tile comprising B and is heat-resistant up to 500C would also be covered, because it was patentable at the date of filing.
Accordingly, amending the claim from 1300C to 400C does not contravene 123(3), because the claim as granted also covers 400C and any value between 400C and 1300C, but the claim as maintained would only cover temperatures up to 400C.
OK, so this is an additional twist. When I put forth that a tile with B must be new, you questioned why the heat resistance was included in the claim, yes?
DeleteSo, by the same token, why limit oneself to 1300? My answer would be that it’s not relevant for this question, as the claim defines a result to be achieved, which is in turn not sufficiently disclosed.
You are treating the heat resistance as a range, while I see it as a result to be achieved, I.e. a requirement. A tile that melts at 400 does not fulfill the requirement of having a heat resistance of ”up to 1300” in my line of thinking.
The ”feature” of having ”a heat resistance of up to 1300” does not in itself lead to any technical effect, like a range wt% of some ingredient in a compound. To me, as mentioned, it is a result to be achieved, i.e. unclear, i.e. cannot confer novelty.
A claim being defined in terms of the result it is trying to achieve does not inherently make it unclear, and is allowed in exceptional cases as laid out in F-IV 4.10.
DeleteThe issue here is that the essential features that are required to reach the said result must also be defined in the claim, i.e. B+C in this case, but the patent does not disclose B+C. If the application as filed disclosed B+C, a claim directed to a tile comprising B+C and is heat-resistant up to 1300C could be allowable, even though it's still defined by the result, because the features that are essential to achieve the result in question would be present in the claim. But this is only valid under the oversimplified conditions given in the exam, such a claim would not be allowed in a real application, because the claim would have to include something like, at least 20%wt B and at least 40%wt C in order to achieve the result.
So what you're saying is correct, but it shouldn't be relevant for the question due to the simple conditions we were given. After all the question is a complete mess, but my understanding is, based only on what we're given, amending to "up to 400" should not contravene 123(3). I treat it as a range because that seems like the only technically sensible interpretation. How else can you determine what the conferred protection is? Is a tile comprising B that starts melting at 1200C infringing?
I don’t see that any of the exceptional cases regarding ”result to be achieved” applies to this case so I don’t understand how that is relevant.
DeleteFeeling like I’m repeating myself, but: as I repeated during the course of this discussion, my view is that a tile comprising B which melts at 1200 would not fulfil the requirement of being heat resistant up to 1300, as it would melt before reaching 1300. So my understanding is that such a tile would not infringe such a claim.
Thank you for the discussion.
Thank you for the interesting discussion. I think the issue is just that people (like me) read the question as "tile with a heat resistance of up to 1300°C" instead of "tile being heat-resistant up to 1300°C". It is very easy to confuse between the two, especially when in such a shortage of time.
DeleteRegarding Q1: "A filed divisional application DIV1 based on Euro-PCT-A".
ReplyDeleteGL E-IX 2.4.1: "One or more European divisional applications may be filed in respect of subject-matter contained in a pending Euro-PCT application, but not before the latter application has entered the European phase"
In this context, I am wondering, how A was able to file a divisional, when the the PCT has not yet entered the European phase?
One can "file" a filled-in form with the EPO, indicating e.g. the European application number assigned to the PCT application, which can be obtained from the EPO register as from publication of the PCT. It turns out not to have been validly filed in this case.
DeleteBut I agree that when it comes to divisional applications, there are too many interpretations of the word "filed" and "filing date".
Thanks Diane for chipping in.
DeleteI realise that I will most likely receive 0p for this question, but I found the wording really tricky.
Yes, it is possible to ”attempt to file”, or whatever one should call it, during the international phase with that number you receive. However, the question states ” On 10 October 2024, A filed divisional application DIV1 based on Euro-PCT-A”. I may be over-interpreting, but if one file during the int. phase, would it really be based on Euro-PCT-A? The fact that they wrote ”based on Euro-PCT-A” and not ”PCT-A” made me think (and I thought long and hard on this specific thing during the exam) that it had validly entered. Could this be a valid line of thinking?
This actually relates to Diane's comment below. According to Euro-PCT guide: 1.6.002
DeleteEach international application for which the EPO is designated or elected Office is (also) given a European application number. This number is notified to the applicant in a communication informing the applicant of the requirements for entry into the European phase (EPO Form 1201), which, as a rule, is issued approximately ten months after international publication of the application. The PCT A was published on 6.8.2024 and 10 mo after that is 6.6.2025. However, the Q1 tells that DIV 1 was filed on 10.9.2024. As a non-native speaker I assumed that entry to EP-phase was done (early) as the question tells that the acts of R.159 were completed.
R.159 does not govern early processing requests, that is governed by Art. 23(2) and Art. 40(2) PCT, and the applicant must expressly request it.
Deletehttps://www.epo.org/en/legal/guidelines-epc/2025/e_ix_2_8.html
Agree that R.159 does not govern early processing requests. However, how can Euro-PCT- be granted in only 4 months after the entry to EP phase? For Q1 to make sense, there must have been an early‑entry request, otherwise the timeline would be impossible. Am I totally lost?
Delete@anonymous of 14:05, that's actually a very good point! Euro-PCT was granted a whole 8 months before the expiry of the 31m period, so early processing must've been requested at some point. Atlthough it is not clear from the question whether it was requested before or after the filing of DIV1.....I hate that this was the first question of the exam
DeleteAgree. It makes no sense that early processing could not have been requested. This was implicit in the question. Perhaps the answer was to discuss whether or not early processing was requested before or after the filing of DIV1? Although that does not seem a fair question
DeleteQ3: "being heat-resistant up to a temperature of 1300 °C" Isn't this actually rather a technical effect than a technical feature? I am any wondering whether it is from the wording 100% clear whether this was in fact written in the claim...
ReplyDeleteIt's not a technical effect, it's the result to be achieved.
Deletehttps://www.epo.org/en/legal/guidelines-epc/2025/f_iv_4_10.html
Q3: shouldn't you in addition request accelerated opposition proceedings (OJ 2023 A99)?
ReplyDeleteThis could maybe get you to the associated number of marks available besides only the sufficiency attack. There is a threat of said letter of infringement. I based myself on the following passage of OJ 2023, A99: "In the absence of such information, a party to the parallel opposition proceedings may request accelerated processing at any time."
DeleteNobody took this same approach?
DeleteDoesn't OJ 2023, A99 just mean that a party may request accelerated processing at any time by providing the opposition division with evidence that a court action is pending? While in the question there is no evidence of a court action in the UK?
DeleteYes, but what would be the point of this infringement letter? It could mean that an infringement action is imminent
DeleteIf Q2 is most likely to be neutralised, how many points are necessary to pass each part?
ReplyDeleteneutralization means full marks for everyone. This is the least they can do, given the fact that we wasted so much time on this question and missed the oportunity to score marks on the other two questions. I personally didn't have time to solve q3 even though i knew the answer....q2 really f*** up my exam...i started with q2 because it looked small and easy
DeleteIt would depend on whether "neutralising" means (i) giving all candidates 6 marks, or (ii) removing the question from the paper.
DeleteIf they remove the question from the paper (as they did for last year's Module F), then the part 1 is worth 19 marks. Pass rate for M2 will be set at 30-60% for each part, so the pass mark will be between 5.7 and 11.4 marks (rounded up? unsure).
I suspect many M2 candidates will score very highly on part 2 yet will struggle with part 1 (I include myself!). It seems hugely unfair that M2 candidates are at the mercy of the examiner's ordering of the questions rather than the content of questions themselves. For example, had Q1 been switched with Q4 or Q5, then everybody would likely be feeling a lot better right now. I wonder if Rule 6(4) of the IPREE (= M2 candidates must pass both part 1 and part 2) can be "ignored" or deleted somehow...
The requirement of passing ”both parts” (I feel reluctant to even call it two parts) is so bizarre… The success of the exam, for which I’ve put a whole year of preparation into (+ expensive courses), can be decided upon what order they decided to put the questions in.
DeleteEven if they put a low threshold on part 1, it’s doesn’t make sense. I hope they make an exception for this year.
For Q3, I personally cited 100b) for the same reasons as you, but also 100a) for lack of inventive step based on the following argument. What do you think?
ReplyDelete"It is also possible to invoke the ground under Article 100(a) EPC, in particular for lack of inventive step (Article 56 EPC). The problem of obtaining a tile that is heat-resistant up to a temperature of 1300°C is in fact not solved over the entire scope of the claim, given the absence of substance C, whose presence document D1 shows to be necessary to solve the technical problem above 700°C."
My thinking was that because heat resistance is a technical effect recited in the claim, the issue is sufficiency problem (Art 100(b)). If the claim were simply "A tile comprising B" then you would argue lack of technical effect across the claim (Art 100(a)). I'm not certain though.
DeleteThe problem with these types of questions in Paper D/M2 is that we are just a half-sentence about the patent of interest and then have to assume the rest of the situation under extreme time pressure. From memory, the question said something like "the patent CLAIMS a tile comprising B and heat resistant up to 1300C, and also DISCLOSES a tile comprising B up to 400C". So, does the patent not disclose an example of heat resistance of up to 1300C and instead merely claims it? Are we to assume that 1300C is then a random number that just snuck in through prosecution? Maybe I'm just ranting now...
The question said "Patent EP-E was granted with a single claim directed to a tile comprising substance B and defining the tile as being heat-resistant up to a temperature of 1300 °C." It is therefore rather difficult to determine precisely which characteristics are included in the claim. We could understand the question as if the description of EP-E defined the tile in the claim as being heat resistant up to a temperature of 1,300°C.
DeleteThis question does not meet the requirements of A84 EPC :')
I assumed that the document D1 cannot be used for an inventive step attack since it was published a long time after the filing date of the patent. Inventiveness is always seen from the perspective of the skilled person at the date of filing the patent, which is not the case for art. 83.
DeleteIf you can proof that the problem is not solved over the entire scope of the claim then it lacks inventive step, whether or not a skilled person would arrive to the claimed solution with a combination of prior arts A54(2). I went to an appeal In Munich where the patent was revoked because the patentee couldn’t proof that the problem was solved over the entire scope of the claim.
DeleteIt is the board's settled case law that a technical effect is to be taken into account in assessing enablement only if it is explicitly claimed (Case Law [2025] II. 7.2.3 b). If it is not claimed, it is irrelevant for enablement whether or not it is actually achieved. The question whether it is achieved might then become relevant when assessing inventive step, namely for the purposes of formulating the objective technical problem (T 1216/12, citing T 862/11 and T 2001/12). In this case, the TE was claimed, so it made sense to me to only raise the Art 100(b) EPC ground and not Art 100(a), Art 56 EPC.
Delete@FME, I agree with your comment, but the burden of proof is on the opponent to proof that the problem is not solved over the whole scope of the claim and most importantly in view of what the skilled person would know at the date of filing. A claim does not need to remain inventive over the lifetime of a patent, a claim does however need to remain enabled over the lifetime of a patent. You simply cannot use your knowledge obtained after the date of filing for the inventive step (unless it is plausibility-related but I don't think that can be used by opponents as far as I know?)
DeleteA very messy exam overall, Q1-3 has conflicting legal basis, Q2 should be neutralized, Q3 is extremely unclear and doesn't represent a real-world scenario at all, Q6 has missing information.
ReplyDeleteRegarding Question 1(3), I'm wondering why we ignore the opposition filed in Part (2), which would result in pendency of Euro-PCT A, so that a redating of DIV-2 still occurs while Euro-PCT A is pending (in opposition proceedings).
ReplyDeleteI would imagine that if we were supposed to ignore some information (like the opposition filed against Euro-PCT A in part 2 of the question), it should have been explicitly indicated that each part of the question is to be considered as an independent scenario.
Because divisionals may only be filed for pending applications. (R. 36(1))
DeleteOpposition proceedings do not make a patent pending again! See GL A-IV 1.1.1
DeleteI don't think the answer to Q1-2 is correct, based on G 1/93, which I referred to during the exam.
ReplyDeleteG 1/93 specifically states that "A feature which has not been disclosed in the application as filed but which has been added to the application during examination and which, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, is not to be considered as subject-matter which extends beyond the content of the application as filed in the sense of Article 123(2) EPC. "
I concluded that the patent will be maintained as granted, because no technical effect has been attributed to iron specifically, and keeping the claim as granted does not adversely effect the interests of third parties.
Except: the application as filed is the Japanese PCT not the Euro-PCT. there are specific guidelines for this look it up. I feel you though, I had the same error :(
DeleteI don't really understand why it would matter, what specifically prevents the patent from being maintained as granted?
DeleteNo technical effect has been attributed to iron specifically, and therefore iron replacing metal does not provide a technical contribution.
It merely limits the the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention (non-iron metals are excluded)
It does not adversely affect the interests of third parties.
Therefore it should not contravene Art. 123(2) according to G 1/93. Nor does it contravene Art. 123(3) if it is maintained as granted. So what exactly is contravened here?
G1/93 refers to a feature added during examination, whereas in this case the feature was included from the entry into the Euro-PCT phase following an erroneous translation, so perhaps G1/93 is not applicable in this situation?
DeleteFurthermore, G1/93 refers to a situation where the restrictive element simply had to be deleted and not replaced by another term. So I think that G1/93 applies when it is simply necessary to delete an unsupported feature, but not when it is necessary to replace it with another feature (from description e.g.) that has a broader scope.
Delete"However, the core of the matter before the Enlarged Board in the present case is rather what to do in a situation where, before grant, there was added to a claim an undisclosed limiting, technically meaningful feature, which cannot be deleted or replaced by any other feature properly disclosed in the application as filed without extending the protection conferred by the patent as granted in contradiction to Article 123(3) EPC. "
DeleteIt seems to be the same situation to me. Iron can't be replaced with metal, because it violates Art. 123(3).
Iron was not disclosed at all in the PCT as filed.
DeleteThat is the whole point of the decision...
DeleteAnd I don't even agree with that statement. Iron is implicitly disclosed because it's a metal. In carrying out the teaching of the original application, a skilled person would inevitably arrive at iron, a result falling within the terms of the teachings disclosed. Iron is directly and unambiguously derivable, because a genus implicitly discloses every species within it. Of course, you normally can't rely on such implicit disclosure to pluck a species to establish patentability over the prior art, but this is not the case here.
DeleteArt. 123(2) would only be violated if there was a technical teaching or effect specifically attributed to iron, but the technical effects obtained by iron are simply the very technical effects that are obtained by any metal, as disclosed by the original application. A skilled person would recognize that the technical effects disclosed in the application as filed are valid and shared for all metals. There is no new technical effect.
Alternatively, Art. 123(2) would have been violated if the reason why a patent was granted in the first place was related to the fact that the product is made of iron (e.g. prior art discloses a product made of aluminum). But this would be pure speculation. There's no indication whatsoever that the selection provides an advantage to the proprietor and iron is clearly not a deliberate selection.
I know why it makes sense to you that replacing a genus with a species should not contravene art.123(2), I’ve struggled with this concept myself as well. The truth of the matter though is that there are many jurisprudence that prohibits this particular replacement if the species was not directly and unambiguously derivable from the app. Implicit disclosure is very rarely, almost never, a solid basis for amendments. See T296/96 or T777/08
DeleteI think it may be a bit clearer for you if you draw a parallel between priority and Art. 123(2). If you have a first patent application EP-1 that discloses metal, and you file a second patent application EP-2 that discloses iron while claiming priority from the first application EP-1, your priority will not be valid because the first application EP-1 does not disclose iron.
DeleteThis assessment of the validity of priority is identical to the one used to determine whether an amendment to an application satisfies the requirement of Art. 123(2) (Guidelines F-VI, 2.2). You therefore understand that replacing metal with iron (when iron is not disclosed) does not meet the requirement of Art. 123(2) (as you would not accept it for a priority either).
Furthermore, in decision T 201/83 (OJ 1984, 481) it was stated that the examination of compliance with Art. 123(2) EPC is essentially equivalent to a novelty test, meaning that no new subject-matter may result from the amendment (see also T 136/88). If we draw the parallel between the novelty test and Art. 123(2), it seems even more logical that replacing metal with iron does not satisfy the requirements of Art. 123(2); otherwise, it would be impossible to obtain a patent for a species that would always be anticipated by a patent disclosing a genus.
I'm aware that narrowing down to a species when only the genus thereof was disclosed is not allowed, because this is almost always deliberately done to establish patentability for the subject-matter by introducing technical teaching that was not disclosed in the application as filed. This is not the case here though. The proprietor does not benefit from this change in any way. I don't disagree with the things you said, but to me it seems like the situation is exactly in line with G1/93.
DeleteThere is a feature that was not disclosed in the application as filed (iron)
This feature does not provide technical contribution (no technical effect of iron), but it is not technically meaningless (Reason for the Decision par. 4)
It merely limits the protection conferred (metal to iron is narrower)
This is done by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed (non-iron metals are excluded)
Accordingly, the introduction of this feature should not be regarded as a violation of 123(2). Paragraph 9 further states that,
"With regard to Article 123(2) EPC, the underlying idea is clearly that an applicant shall not be allowed to improve his position by adding subject-matter not disclosed in the application as filed, which would give him an unwarranted advantage and could be damaging to the legal security of third parties relying on the content of the original application."
This is not the case here at all, and this is exactly what G1/93 is discussing. So what you're saying is true, but the examples you've given correspond to situations where an applicant is trying to improve his position with an amendment that goes beyond the original disclosure.
Paragraph 16,
"A typical example of this seems to be the case, where the limiting feature is creating an inventive selection not disclosed in the application as filed or otherwise derivable therefrom. If, on the other hand, the feature in question merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed, the adding of such feature cannot reasonably be considered to give any unwarranted advantage to the applicant."
Narrowing down to iron is not an inventive selection, and merely excludes protection for part of the subject-matter of the claimed invention as covered by the application as filed.
Honestly, that's quite convincing. Now, does it make a difference that the limitation was not made during the examination, as mentioned in decision G1/93? Also, as you said, there must be no technical contribution from this element. Based on the wording of the question, it is unclear whether this limitation, for example, enabled the patent to be obtained because it is more limited than metal. My (humble) opinion is that this concerns a fairly important element of the claim and that it is therefore difficult to say that it does not really make any particular technical contribution. I tried to better understand the nuances of this G1/93 decision in section ‘II.E.3. Relationship between Article 123(2) and Article 123(3) EPC’ of the ‘Case law of the Boards of Appeal of the European Patent Office’, but it is not easy for me to form a clear opinion.
DeleteThat's the key part. If a product made of metal was not patentable, but a product made of iron was, then the applicant definitely did benefit from the amendment by going beyond the original disclosure. But as you said, this is not clear from the question.
DeleteMy assumption would be that since the disclosure only mentions technical effects obtained by any metal, and does not disclose what the specific selection of iron brings to the table, in view of a prior art disclosing a product made of a different metal, iron would be obvious (no new or surprising technical effect) and would not be patented anyway. I didn't have time to include this argument in my answer, but based only on the information we're given, I'd guess that metal would also be patentable and iron could not have resulted in an unwarranted advantage.
Does it make a difference that the limitation wasn't made during the examination, that one I have no idea about.
It does seem to me that G1/93 *could* apply, but that does not make the answer wrong in general. For G1/93 to apply, some specific conditions should be met which are not present in the question. I think that your answer should just be an alternative correct solution to the problem as long as you indicated that it depends on whether the iron gives a surprising technical effect of not, which we just don't know. But that's just my opinion lol
DeleteI gave the conditions above, I think all the conditions required are already present in the question.
DeleteLikewise, for you to be able to say that iron violates Art. 123(2), you must show that the applicant gains an unwarranted advantage by narrowing down to iron, or that the applicant argued that iron specifically provides a new technical effect that could not be obtained by all metals, because G1/93 sets a boundary. This can not be derived from the question, because it would have to include more info, such as, a prior art document US-C disclosing a product made of copper.
In any case, an answer that merely states that the subject-matter extends, or does not extend beyond the content of the application as filed is incomplete in my opinion.
Let's agree to disagree with respect to whether the conditions are present in the question. Saying that iron cannot be inventive merely because it was filed undeliberately, I think that's making too many assumptions based on the question.
DeleteI agree that we don't know, but the correct answer should not require us stating all of the lex speciali/boundary conditions that might apply if the question does not give a hint towards it being applicable.
You're right. What I'm saying is, saying that it'll be revoked because it can't be maintained as granted, as that would violate Art. 123(2) is also based on assumptions, and even more assumptions than the other conclusion requires.
DeleteAs I tried to explain above, my interpretation is that if iron was granted without having any technical effect exclusively associated with it, this is a very strong indicator that metal was also patentable; because if another metal was known in the prior art, its technical effects would also be known and this would render iron obvious in view of the fact that only the common technical effects obtained by metals were given in the application as filed. Obviously a speculative approach, but assuming that the patent would not have been granted if the original disclosure was kept is also a speculation, a necessary one to reach the above-mentioned conclusion of DeltaPatents.
Now, I don't think we were expected to discuss any of this and the expected answer is probably a simple one considering it's only a sub-question worth like 4 points at most. It's likely that both answers will be accepted unless I'm missing something.
I don't really understand why it would matter, what specifically prevents the patent from being maintained as granted?
ReplyDeleteConcerning question 2: If it isn’t neutralized, will only candidates who speak German have the right to appeal? How does that process work? If that's the case, doesn’t it violate the principle that all exam conditions should be equal regardless of language—meaning German speakers can appeal, but others cannot? I realize I might be grasping at straws, but I have to explore every possible option here...
ReplyDeleteIt is absolutely impossible to determine who is affected. I am French but I’ve written the exam in English and checked the French version many times during the exam. I guess it would be applicable to Germans who write in englisb
DeleteIf it is not neutralized and only German speakers may appeal, it is definitely unfair for other candidates. The similar situation (error in EN-Version) in 2022 led to full marks of Q5 for everyone.
DeleteEvery single candidate may appeal it because there is no way for the exam board to know who can read in German and write in English.
DeleteFor Q3, you did not cite any legal basis regarding D1 being allowed to be used despite being post published evidence. Do you believe that this wasn’t required?
ReplyDeleteI spent a lot of time searching for the correct basis as I thought this was the core of the question… finally found https://www.epo.org/en/legal/case-law/2025/clr_ii_c_7_4.html which seems appropriate. But see now that this time could have been better spent on other questions. Well, just have to wait a year until I can have another go :):):)
I am a trainee with exactly 2 years of experience and have extensively prepared for M2 with several courses. I am puzzled how these questions should reflect the knowledge of a 2nd year candidate, especially since until now, we would be tested in preexams with pre-defined, clear answers to choose from.
ReplyDeleteYou and me both, with the difference that I have much longer experience than 2 years.
DeleteI did all D1 papers available in WiseFlow under time pressure and when comparing to the Exam. report I strongly believe I would have passed all of them. Sure, it’s not the same as taking the exam for real with the added pressure etc, but still. This years questions felt like it was ”all or nothing”, if you missed one twist there were no marks ”here and there” to collect. Also, instead of hints, there were traps.
Taking question 2 as an example: Comparing Q2 this year with a similar question in Q4 of 2021, the 2021 question was split up in sub-questions which clearly made you think twice about the dates etc. This year, they name the earliest EP ”EP-1”, and the later EP ”EP-0”, i.e. some sort of tricks instead of hints…
Also, for a M2 candidate, spotting that the effective date of EP-C falls in such a way that it renders EP1 an A54(3)-document and knowing about the G-decision that allows for undisclosed disclaimers to restore novelty against A54(3) documents seem like reasonable knowledge, and something a M2 candidate could come up with in 20 min (6p)(although this is to me not that easy to figure out on the spot). But, then there is a final twist with partially invalid prio, which makes it an ”all or nothing” question, giving zero marks (I guess??) for the first reasoning.
To make matters worse for us M2ers, losing such a big chunk of points in one question becomes so crucial, as we
1. cannot save a poor result on D-1 with high points on D-2 and
2. have to pass both parts of D-1 individually.
Our result is completely dependent on in which part the questions pop up, I.e. the order (!) of the questions determine our success…
Totally agree with the comment above - Q2 felt incredibly mean for M2 candidates as an error at the “root” of the question leads to 0/6 and we have no way to rescue marks in Pt 2 (or D2 if we were in the old system).
DeletePersonally, after spending so long in the exam on trying to figure out Q1 (especially subpart (3)), I rushed Q2, missed the ‘trick’ and will likely receive 0 points. I estimate my total score on Pt 1 to be around 40% but potentially 75% on Pt 2. This would be an overall score of 56% yet very likely a failing performance due to Pt 1. I can imagine this will be a common theme among M2 candidates.
And all of this is of course not even considering how they accommodate for the suffering of the German speakers…
Ah so you think this yields 0p? :( even though discussing undisclosed disclaimers, priority period, but missing that EP1 was filed by the same applicant? I guess the final conclusion is wrong, but even though you spotted the partial prio issue, you’d still have to discuss A54(3) and undisclosed disclaimers? So maybe 2p for discussing that? :’) or are all our hopes out…
DeleteQ1 sub 3) I think the solution should be different.
ReplyDeleteThe text of Euro-PCT-A as originally filed is the text of PCT-A in Japanese.
When using R.56a(4) to include in DIV2 the correct description and claims of PCT-A, DIV2 would end up with content that does not extend beyond the subject matter of Euro-PCT-A as originally filed.
Therefore the intended parts of PCT-A can be included in DIV2.
Doesn’t matter that the parent was filed in Japanese, DIV2 was filed in English, which means you’re stuck in that language -Art70(1) - so you can’t amend or correct based on a different language.
DeleteAlthough I’m not really happy with that explanation - reading https://www.epo.org/en/legal/guidelines-epc/2025/a_ii_5_4_2.html
DeleteAnd applying it to R56a(4), which has equivalent text as R56(3)
You would think that since you can provide a copy of the translation of the priority doc, it could be in a different language to the authentic text of your filing.
DIV2’s authentic text is not relevant here but rather PCT-A’s authentic text which is in JP.
DeleteThe situation is like this:
- authentic text of PCT-A is the JP text
- Content of Euro-PCT-A as filed is the authentic text of PCT-A.
- DIV2 can and should be amended in a way that does not extend beyond the content of Euro-PCT-A as filed, even after Euro-PCT-A is granted!
Now the real question: which EN text they expect us to use for this?
- if the intended text is the erroneous EN translation of Euro-PCT-A, then DIV2 cannot be saved. I don’t think this is what wanted because Euro-PCT-A was revoked because of this erroneous translation.
- if the intended text is the translation of the authentic JP text, DIV2 can be saved because the intended parts are completely contained in the prio app.
Absolutely insane that this question is supposed to be a answered by M2’ers with 2 years of experience 😑
Euro-PCT-A is not necessarily revoked, see the discussion above regarding G1/93. But Euro-PCT-A's fate isn't really relevant for DIV-2's fate, because 123(2) and 76(1) have slightly different implementations
DeleteSorry if this has been discussed somewhere else in the forum, but what happened with R. 24(3) of the IPREE? It states:
ReplyDelete” Part 1 of paper M2 lasts no more than 90 minutes and comprises various types of questions, such as multiple-choice questions, multi-select questions, tabular questions, questions requiring a fill-in answer, dropdown menu questions, rating choice/rank order questions, multi-point scale matrix questions, and/or drag and drop questions. Part 2 of paper M2 lasts no more than 90 minutes and comprises open questions requiring a free-text answer.”
My experience of part M2-1 does not align with that text… I’ve heard afterwards that the fact that M2 and D will have the same questions has been communicated via a discussion in the comments of a post on LinkedIn?! I did not get the memo.
If they can deviate from the IPREE in the way they did for this exam, they should be able to make an exception from the requirement of passing both parts, and instead grade us on the total marks scored.
I share this experience. Part M2-1 was completely different from Part 1 of the mock exam, which made the format quite unexpected during the actual exam.
DeleteApparently, the fact that M2 and D would have the same questions had also been communicated in advance through several tutors.
However, if that is the case, there should clearly have been an official memo on the EQE/EPO website so that all candidates had access to the same information.
Relying on comments on LinkedIn or information circulating informally through tutors cannot reasonably be considered proper communication for an exam of this importance.
In my view, candidates should not be penalized for what appears to be the examining committee’s decision to reuse the same questions rather than preparing two distinct exam parts.
If the exam format effectively deviated from what is stated in R. 24(3) IPREE, then it would be reasonable to consider grading based on the total marks across both parts, rather than requiring candidates to pass each part individually.
More generally, it should not be harder for candidates who are only around two years into their training to pass M2 than it is for candidates after three years to pass Paper D — at least with regard to the D1-type questions, especially considering that in Paper D a weaker D1 result can still be compensated by a stronger performance in D2.
My personal impression after this year's D1 is that the tasks seem to be becoming increasingly atypical and complex every year. Sometimes it almost feels as if the difficulty level is intentionally raised to limit the number of candidates who pass and eventually become European patent attorneys – perhaps to control the number of new professionals entering the field. Of course, I do not know the real reasons behind this, but this is the impression it gives.
ReplyDeleteWhat I find particularly concerning is that even tutors needed several days to work through some of the questions, and the proposed answers kept changing as candidates commented and discussed them. That does not seem entirely fair in the context of an exam where candidates are expected to solve everything within a very limited time and under significant stress.
In previous years, it felt more like the exam was testing practical legal skills and methodology. Some of the recent cases, however, seem almost excessively convoluted for the exam setting.
This is, of course, just my personal impression. Very disappointing and demotivating.
I agree with this. Every year they seem to deviate more and more from actual scenarios and test our knowledge of one in a million situations which most of us will never have to deal with, under extreme time pressure. And they can't even do that properly because half the questions require more background information for us to be able to provide a comprehensive answer. This is like telling a medical school student that they can't practice because they couldn't find in 2 hours how to treat Kelley–Seegmiller syndrome.
DeleteOne of my colleagues mentioned that he was able to answer one of the questions correctly and without wasting any time merely because he made the same mistake while filing an application. I've never made such a mistake although I filed hundreds of applications. So he's basically rewarded for making a mistake and I'm punished for being a prudent practitioner.
Personally I was able to answer some of the questions correctly with practically zero knowledge about the topic, simply by finding the relevant passage in Visser and copy pasting it. So what even is this exam testing?