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 JP application as filed
- 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
- The proprietor may
file an amended claim directed to tile with B being heat-resistant up to 400
degrees C
- This embodiment is described in
the application as filed, Art. 123(2)
- and is narrower than the granted
claim, Art. 123(3)
- and would satisfy Art 83
- Assuming this
amendment meets the further requirements of the EPC, the patent may be
maintained in amended form.
- In that case, the
client’s tile which is heat-resistant up to 1300 degrees will not be
infringing.
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.
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…
DeleteIn 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
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)!
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.
ReplyDeleteFor 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.
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 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.
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!!!!!
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.
ReplyDelete"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
DeleteRegarding question 1, in the FR topic, it seems to me that the translation had been submitted in French. Can anyone confirm?
ReplyDeleteQ5 : 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?
ReplyDelete@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.
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?