Wednesday, March 04, 2026 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.

The English text is the authentic text of DIV2 Art. 70(1)

The provisions of R56a cannot be used to save DIV2:

              - The divisional was filed while the parent was still pending (prior to grant)

              - DIV2 was filed in English, so language of proceedings

              - If we apply R56a(3) to file the "correct" application documents, the date of submitting the divisional would change to the date that the correct documents were submitted (GL A-IV 1.1), which would be after the parent application is no longer pending. So in this case DIV2 would not be validly filed

• 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.