Tuesday, 1 March 2016

Pre-Exam 2016: our (provisional) answers to the legal part


Before checking your own answers with the provisional answers given below, please first check out on the blog post First impressions of Pre-Exam 2016? for general questions and general comments about the Pre-Exam 2016 (English, French and German), and post your first impressions there. The Claims Analysis part is discussed in a separate blog post.

Our provisional answers are:


1:  F T T T
2:  F F F F
3:  F F T T  *
4:  T T F T  **
5:  T T F F  ***
6:  T T F F  ****
7:  T F F T
8:  T T F F
9:  T F T T
10: T F T T

*: 21/12/15 + 10d [R.126(2)] -> 31/12/15; 31/12/15 +2m [R.131(4)] -> 29/2/16 (Mon); 31/12/15 + 4m -> 30/4/16 (Sat) [R.134(1)]->2/5/16; earliest possible R.112(1) comm: 3/5/15 + 10d + 2m -> 13/7/16
**: all answers from GL A-III, 5.6.
*** 5.4: no separate PoA needed if applicant signed the request and representative is appointed therein - R.90.4(a) PCT, AG-IP 11.007; further, if a separate PoA is used, it is not necessary that the representative files it as the applicant can file the PoA himself. 
****: rights conferred were not yet tested in the Pre-Exams so far - they are a major element of the D-paper, where candidates lose many marks if they wrongly state that a patent gives the proprietor freedom to operate.

Any different opinions are welcome! Please post your opinions as comments to this blog, so everybody can from the discussion.  Comments are welcome in any official EPO language. So, comments in German and French are also very welcome!


Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 29-02-2016 23:57"), whereas using your real name or a pseudonym is more personal, more interesting and makes a more attractive conversation.

Roel & Pete

177 comments:

  1. For 9.3 I would suggest: False
    Reason: Not the annual fee for the third year must be paid, but the annual fee + additional fee must be paid.
    Reestablishment of rights can only be performed into the R. 51(2) time limit, which requires payment of the annual fee + additional fee.
    What do you think about this possibility?

    ReplyDelete
    Replies
    1. By the same logic 9.4 would also be false. It is not enough to show all due care, you would have to pay the fees. over interpreting the question?

      Delete
    2. Sorry Anonymous @9:27, I don't think that's a reasonable interpretation. The statement is "One step that must be taken...", this does not preclude the carrying out of additional steps! You even say in your reason that the renewal fee must be paid.

      Compare with the statement: one step that must be taken in making a cup of tea is putting hot water in a cup. The fact that a teabag and milk are also required does not mean that the statement is false.

      Pageflipper

      Delete
    3. Dear Anonymous, dear Pageflipper

      I do agree with Pageflipper´s reasoning concerning the interpretation of "one step that must be taken...", however, I am of the opinion that 9.3 is FALSE due to another reason.

      The question that had to be answered explicitly referred to the REQUEST for re-establishment of rights, NOT re-establishment of rights as a whole procedure. The requirements regarding the request are set out in R. 136(1) - where there is no reference to an omitted act - and R. 136(2), 1st sentence. The latter reads "The request shall state the grounds on which it is based and shall set out the facts on which it relies." PERIOD. Then, paragraph 2, second sentence, states "The omitted act shall be completed within the relevant period for filing the request according to paragraph 1." There is no indication that the latter is PART of the request. Rather, the request and the completion of the omitted act are considered as two distinct requirements which each have to be met accordingly.

      Visser summarises the "requirements for re-establishment" in Art. 122(2):1 (1-7; 1 - the request must..., 2 - the request must..., 5 - the written request must..., 6 - the omitted act must...) The omitted act and the request are linked by the time limit within which they have to be filed/completed and by the fact that the completion of the omitted act is necessary for the request to be GRANTED. Again, this does not make the omitted act a part of the request.

      What is your opinion on this reasoning?

      Best,
      Damaris

      Delete
    4. I had the same reasoning as Damaris, leading to 9.3 being False.

      Delete
    5. @Damaris: statement 9.3 does however not say "the request must comprise", it says "with regard to the request". In my view, there is no doubt that completion of the omitted act is a "step" that must be taken "with regard to the request" for RE.

      Delete
    6. Dear Roel

      Thank you for your esteemed reply!
      To me, the statement "with regard to the request" reads "as REGARDS/ CONCERNS the request", thus clearly referring to the REQUEST of the re-establishment procedure. The distinct requirements for the re-establishment procedure are summarized in Visser Art. 122(2):1, i.a. 4 of them relating to the request and one requirement relating to the omitted act.

      We were so very charged to be careful when reading exam questions. We were told that EVERY word is carefully chosen... This principle should also apply here as there is no legal basis for subsuming completion of the omitted act under the request for RE.

      xxx
      Damaris

      Delete
    7. If "with regard" or "im Rahmen" is interpreted in line with Damaris, what about 9.4 being F with reference to T324/90, provided that "show" or "zeigen" is to be understood as "glaubhaft machen"? According to Visser, the request for RE must contain the grounds and facts, but the facts may be substantiated later by providing means by which those facts are supported (See also Singer/Stauder, 7th edition, under "Wiedereinsetzung", 95).
      Best, TC

      Delete
  2. For what appears to be the "debate" for this year, question 5.4, I reffered to PCT AG 11.048 "Where an Office, Authority or the International Bureau has waived the requirement that a separate power of attorney, or a copy of a general power of attorney, has to be furnished, the waiver does not apply in respect of any notice of withdrawal."
    So I answered "true". What to do you think?

    ReplyDelete
    Replies
    1. I copy my comment from the other post to this one as well.

      In 5.1 I understood that Greta herself filed the PCT-G with DPMA, thus no agent was appointed on filing the international application. Therefore she now wants to appoint an agent (Hassan) to represent her specifically before the EPO as the ISA. In this situation the agent must be entitled to practise before the EPO, which Hassan is not. Thus 5.1 would be False. Did anyone else follow this kind of reasoning?

      Jay

      Delete
    2. That is also what I based my answer on (PCT AG 11.048), combined with the fact that no agent was appointed upon filing. Aside from that I have all the answers listed above. As to 5.1: an EPO agent is required if EPO is the rO, but in this case the rO was the DPMA, so Hassan would be entitled.

      -HJ

      Delete
    3. True. However, it is said in PCT AG 11.002 that "A person may be appointed as agent to represent the applicant specifically before the International Searching Authority...if he has the right to practice before the Office...which acts as that Authority" which is, in my opinion, the case in 5.1.

      Jay

      Delete
    4. I also followed this reasoning. See my reply below.

      Delete
    5. In the heat of the moment of the exam, I assumed the question referred to the specific case of Greta and Hassan in which case I completely agreed with HJ: true. However, in the cold light of day (and much to my chagrin) it's clearly worded as a question about the general case: "a representative" instead of "Hassan"; in which case, false, a representative can be appointed in the request. Also, I don't think the representative *has* to file the power of attorney in either case, I think anyone can file it, but it must be signed by the applicant.

      Delete
    6. Re-reader - yes, I think most people would agree with that. The problem is that my initial thoughts when doing the pre-EQE is that the statements MUST relate to the main question. It just feels intuitively right (or else why have a specific scenario at the top of the page? Just ask four questions instead). Unfortunately, the EPO seems quite keen on making the statments "questions within questions", which ask about a general, unrelated scenario.

      This is what has lead to student confusion in previous years, and I'm not sure why they continue to do it.

      Pageflipper

      Delete
    7. I also relied on PCT AG 11.048 and answered "true" for 5.4. I also checked the reference book by O. Trinks (PCT in der Praxis), where it is said (Rn 336): Es ist jedoch zu berücksichtigen, dass bei einer Zurücknahmeerklärung nach R90bis.1 bis R90bis.4 auf jeden Fall eine Vollmacht einzureichen ist. Der Verzicht eines Anmeldeamts gilt nach R. 90.4 d) nur für dieses Amt, aber nicht notwendigerweise für die anderen am PCT-Verfahren beteiligten Behörden."

      Delete
    8. ... see also footnote 9, PCT Applicant's Guide Annex E, EPO as IPEA

      Delete
    9. so 5.4 should be T?
      because PCT Applicant's Guide Annex E sais:
      Waivers of powers of attorney do not apply (PCT Rule 90.4(e) and 90.5(d)) where the agent or common representative submits
      any notice of withdrawal during the international phase (PCT Rule 90bis.1 to 90bis.4; see also International P hase,
      paragraph 11.048)

      Other opinions?

      Delete
    10. We have F for 5.4 as:
      1) No separate PoA is needed if applicant signed the request and representative is appointed therein - R.90.4(a) PCT, AG-IP 11.007 -. Same if a demand would be filed and signed by the applicant wherein the representative is appointed.
      2) further, if a separate PoA is used, it is not necessary that the representative files it: also the applicant can file the separate PoA himself.
      Also, the statement does not refer to the specific case: it refers to "the provisions of the PCT" and "a representative", not to "this application" nor to "Hassan"

      Delete
    11. PCT R.90.4(a) The appointment of an agent shall be effected by the applicant signing the request, the demand or a separate power of attorney. Where there are two or more applicants, the appointment of a common agent or common representative shall be effected by each applicant signing, at his choice, the request, the demand or a separate power of attorney.

      Delete
    12. PCT R.90.4(e) Where the agent or the common representative submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4, the requirement under paragraph (b) for a separate power of attorney shall not be waived under paragraph (d).

      Delete
    13. R.90.4(e) certaintly applies: a non-appointed representative cannot do any withdrawal.

      But, neither R.90.4(e) nor R.90.4(b) require that the separate PoA is submitted by the _representative_ as the statement says, it can also be filed by the _applicant_ himself.

      Further, the appointment can be done in the request or in the demand, which is signed by the applicant and can be filed by the applicant. So it can not _only_ be done by the representative filing a separate PoA.

      This got us (after some discussion) to F.

      Delete
    14. I think you are right, but I'm not happy that this feels like a "trick" question. From a plain reading of the question it would appear to be asking "If a representative wants to withdraw an international application, does a power of attorney need to be filed?". As you say however, they have snuck in the stipulation that "only....if the REPRESENTATIVE has filed" the PoA, which is not necessarily the case!

      The fact that the applicant or the representative can file the PoA feels secondary to the fact that there absolutely needs to be one for the representative to withdraw. Surely this is the important bit!

      Hmph, I'm just bitter that I lugged the PCT applicant's guide all the way to my desk and still got this wrong somehow.

      Pageflipper

      Delete
    15. Dear Roel, dear Pageflipper

      I would like to know your opinion on the following reasoning:

      (Side Remark: The PCT terminology is different from EPC regarding "representatives". A representative within the meaning of the EPC is considered an "agent" in PCT proceedings. Under PCT, the term "representative" is exclusively used for an applicant, being either duly appointed and authorized (common representative), or, where no such representative is indicated, being deemed common representative.)

      According to the provisions of the PCT, a (common) representative can only validly withdraw an IA if he is duly appointed and authorized - this seems to be clear.

      Consider e.g. Episode 5 (Representation of PCT Applicants) by Matthias Reischle from the PCT Legal Division:

      https://www.youtube.com/watch?v=Z09xt-L8N1E&index=5&list=PLsm_LOEppJawGEathiEBhgNEHmuHgZk9C


      I have typed the relevant statement (7:55-8:35) word-by-word:

      "[...] How are agents or common representatives appointed? The easiest way to do that would be in the Request Form or – if you file a Demand under Chapter 2 – in the Demand Form. So you indicate the agent - let´s say - in the Request Form and then you have your applicants sign the Request Form. Then the Request Form itself serves as Power of Attorney and Appointment of the agent. Of course, the whole thing could also be done by indicating the agent in the Request Form, the agent signs the Request Form and then he submits the PoA signed by all the applicants."

      It goes without saying that this also applies to the appointment of common representatives.

      Taking all this into consideration, I see no possibility how a (common) representative could validly withdraw an IA without having filed a PoA, either implicitly upon his appointment or separately. In the latter case, the (common) representative would have already been appointed (at least simultaneously, otherwise the filing of a separate PoA makes no sense), thus the respective International Authority considers him as "the channel through which to communicate".
      In fact this is the very reason why there needs to be a common representative or at least a deemed common representative, as the respective Authorities need "one person to communicate with", cf. Matthias Reischle, same presentation, 5:20 - 6:10. So any communication is channeled through the (common) representative, and even in the unlikely event, that one of those applicants who commonly signed the separate PoA, filed it with an International Authority, this document would be subsumed under the one "communication channel". This is the appointed (common) representative, which would be deemed to have submitted the PoA.

      In my opinion, the answer seems to be TRUE.

      Best,
      Damaris

      Delete
    16. Addendum:

      In the context of "communication channel", I forgot to type a statement of the presentation of Matthias Reischle from the PCT Legal Division, i.e. episode 5, 5:52-6:02: "So what we need in this case [i.e. in the case of multiple applicants where no agent/common representative was appointed, my remark] is to single out a particular applicant that we can communicate with and THAT CAN COMMUNICATE WITH US [i.e. the IB, or any International Authority]"

      This clearly implies the function of a (deemed) common representative. Any document filed with regard to a particular IA should and is deemed to be filed by him. The point is that the International Authorities do not want to communicate with/receive documents from multiple channels.

      In the context of statement 5.4 the duty of producing a PoA is imposed on the (common) representative, if he has not been authorized by the other applicants. Thus, if the latter tried to withdraw the IA having only appointed himself e.g. in the Request Form, HE would be invited TO FILE a PoA.
      Now, even if "the addressor/despatcher on the envelope" containing the duly signed PoA indicates someone else, the respective International Authority will consider the (common) representative to have discharged his duty, i.e. in the view of the International Authority, he has filed/produced the PoA.

      Any other interpretation seems odd (in my opinion)...

      xxx
      Damaris

      Delete
  3. Regarding 5.4, what about 11.048 of WIPO's PCT applicant's guide - international phase
    http://www.wipo.int/pct/en/appguide/text.jsp?page=ip11.html#_withdrawals
    last sentence reads: "Where an Office, Authority or the International Bureau has waived the requirement that a separate power of attorney, or a copy of a general power of attorney, has to be furnished, the waiver does not apply in respect of any notice of withdrawal."

    And in particular R90.4(e)
    http://www.wipo.int/pct/en/texts/rules/r90.htm#_90_4_e

    ReplyDelete
    Replies
    1. This is why I answered T to 5.4 as well. It was also the only question where I used the PCT applicant's guide, which was very heavy and cumbersome to carry from my car to the examination hall, so I will be annoyed if I got this one wrong >:-(

      Pageflipper

      Delete
    2. :-) In the exam, I actually relied on Visser close to the end of his PCT part. I just left it at home so I could not refer to it.

      Delete
  4. I have trouble to agree with 4.3 According to R.21(1) EPC "An incorrect designation of an inventor shall be rectified upon request and only with the consent of the wrongly designated person and, where such a request is filed by a third party, the consent of the applicant for or proprietor of the patent."

    It is my understanding that whatever the case, the wrongly designated person must always consent, in all cases. So if the applicant files the request, shouldn't the wrongly designated inventor consent and the answer be "true"?

    ReplyDelete
    Replies
    1. There's no wrongly designated person in this case. Philippe was rightly designated. The applicant can just add any inventor. If an inventor wants to be added, however, the applicant must consent.

      -HJ

      Delete
    2. Thank you Roel, I am very happy with your answers at they are exactly the same as mine....

      Johan P

      Delete
    3. But of course... Thank you HJ.

      Delete
    4. GL A-III, 5.6 Incorrect designation

      An incorrect designation may be rectified provided a request is received accompanied by the consent of the wrongly designated person and by the consent of the applicant for or the proprietor of the patent where the request is not filed by that party. If a further inventor is to be designated, the consent of the inventor(s) previously designated is not necessary (see J 8/82). The provisions of A‑III, 5.3 and 5.4 apply to the corrected designation mutatis mutandis. Rectification may also be requested after the proceedings before the EPO are terminated.

      Delete
    5. So 4.3 is F?

      Delete
    6. Ahh, sitting the pre-exam I intended Philippe as the sole Surname subsequently amended and completed with Beatrice as the name. In this case the text is misleading, it should talk about a missing not about an error, since the first inventor is correct but miss the second one.

      Delete
    7. @Anonymous3 March 2016 at 18:00: yes, 4.3 is F

      Delete
    8. thank you Roel. S.

      Delete
  5. I have False for question 6.1: the annual fees for the year in which the grant was published are due in 2016. Am I missing something?

    ReplyDelete
    Replies
    1. Ok I just realized my error - they were of course already paid because due end of May 2015... Stupid mistake.

      Delete
  6. Indeed some doubtfull questions, but I have exactly the same answers as your Roel.

    ReplyDelete
  7. Agree with all answers, except 5.1 and 5.4:

    5.1: FALSE
    Greta has filed the application herself (i.e. Hassan is not on the request and therefore not agent of the international phase), she is only now appointing Hassan specifically for the EPA as ISA. Euro-PCT Guide 209ff:
    Applicants may be represented before the EPO as ISA by the agent appointed on filing the international application and having the right to practise before the receiving Office, i.e. the agent for the international phase (see points 36 ff).
    Any agent specifically appointed to act before the EPO as ISA must be entitled to practise before the EPO (see point 98).
    (http://www.epo.org/applying/international/guide-for-applicants/html/e/ga_c_i_9.html)


    5.4: FALSE
    Waiver does not apply for withdrawal of application
    R 90.4 (e) PCT, see also PCT-AG-IP 11.008:
    http://www.wipo.int/pct/en/appguide/text.jsp?page=ip11.html#_represent_agents

    ReplyDelete
    Replies
    1. CORRECTION: 5.4 TRUE
      (reasoning was appropriate but answer was marked incorrectly)

      Delete
    2. Dear Roel,

      Can we have you comments regarding 5.1 (see also above)? Thanks in advance!

      Jay

      Delete
    3. @Jay w.r.t. 5.1:
      Hassan can act before the DPMA, which is the rO for PCT-G.
      So Hassan can, under PCT Art.49 act for all international authorities for PCT-G

      PCT Art.49:
      Any attorney, patent agent, or other person, having the right to practice before the national Office with which the international application was filed, shall be entitled to practice before the International Bureau and the competent International Searching Authority and competent International Preliminary Examining Authority in respect of that application.

      Delete
    4. Thank you Roel. PCT Art.49 indeed gives that sort of entitlement. However, the wording of 5.1 "Greta can validly a-p-p-o-i-n-t Hassan to represent her before the EPO as ISA" led me to assume that this the case where "the applicant appoints an agent to represent her specifically before the EPO in its capacity as ISA" stated in e.g. Euro-PCT Guide.

      http://www.epo.org/applying/international/guide-for-applicants/html/e/ga_c_i_9.html

      Anyway, I think that 5.1 is a bit unclear.

      Jay

      Delete
    5. Dear Roel,

      first of all many thanks to Deltapatents for providing the answers to the exam!

      Regarding 5.1, I understood the question as follows. It is written that “last week, Greta validly filed” the PCT application and that “now, she wants to appoint Hassan”. From my interpretation, since Greta has already filed the application and since it is explicitly written that “now” she “wants” to appoint Hassan, this means that Greta had not yet appointed Hassan on filing. In particular, if she had already appointed Hassan on filing, why would she now still “want” to appoint him?

      Therefore, I would also conclude that the answer to 5.1 is F.

      From your answer above, I assume that you disagree with this reasoning? Would welcome your feedback!

      Thanks a lot, Martin

      Delete
    6. I also crossed F, with the same reasoning as Martin and Jay.

      Delete
    7. Dear Roel, Dear All,

      Many thanks to everyone for their answers and comments.

      Regarding 5.1, based on the broadest possible reading of the question, I now agree with DeltaPatents that the answer can be argued to be T since, for example, it seems possible for Greta to (still "now") appoint Hassan as her representative in the international phase by way of submitting a power of attorney to the DPMA as rO - with the effect that Hassan would then (also) be entitled to represent Greta before the EPO as ISA (Art. 49 PCT).

      In the exam, however, I interpreted the question essentially as Jay and Martin did: In my opinion, at the very least, there is room to argue that question 5.1 can validly be interpreted as referring to the case of specific appointment before the EPO as ISA (ruled out for Hassan, who could be e.g. a German patent attorney without other legal qualifications, as mentioned e.g. in the Euro-PCT Guide). Unless this interpretation is proven to be untenable, F should perhaps be marked as a correct answer as well.

      Any thoughts?

      Best wishes,

      A Testtaker

      Delete
    8. Hi Martin,
      Art.49 PCT (cited above) does not require that the agent _actually acted_ before the rO for the application, it only requires that he is _entitled_ to act before the rO.
      Further, I see no reason why it would not be allowed to appoint Hassan now to act before the rO itself: that does not need to be done on filing, it can be done at any time with a seperate PoA.

      Delete
    9. Dear Roel, aha I hadn't thought of your last comment. Thanks for clearing that up!

      Best, Martin

      Delete
    10. Dear Roel

      I do not fully agree with your reasoning on Art. 94. I would rather construe Art. 49, R. 90.1 (a) to refer to "a general representation". This view may be supported by the use of "and" (instead of "or") in the enumerative list of Art. 49.

      R 90.1 (b), in contrast, applies to the situation when a representative is appointed specifically to act before one of the PCT institutions such as the ISA. In this case, R 90.1 (b) should prevail and the representative must have the right to act before EPA.

      Hassan would be entitled to represent Greta if she had appointed him in general for representing her during the international phase (irrespective of the fact that Greta filed the application herself, indeed).

      However, here, this is not the case: She specifically ("... TO represent ...")appoints him for the International Search. Hassan therefore is not appointed as a "general" representative of Greta.
      Hence, in my opinion, R 90.1 (b) prevails over R 90.1 (a), i.e. Hassan must have the right to act before the EPA, which is not the case here.

      I think this reasoning is also pointed out quite clearly in the PCT-guide in chapter 11 (11.001 and 11.002; note the different use of "and"/"or").

      Thanks to you and the whole team for your great and valuable efforts!

      MK

      Delete
    11. @MK: You may be OK abiut Art.49, R.90.1(a) but that does not change the answer - it remains TRUE.
      Art.49 and R.90.1(a) allow Greta still to appoint Hassan by seperate PoA as her agent to act before, a.o., the ISA (statement 5.1 does not say "specifically").

      Delete
    12. @Roel: ok, it depends on how you read 5.1. But I agree.

      Delete
    13. Dear Roel,

      I think there is an ambiguity in 5.1, regarding the word "to", which is responsible for the different interpretations:

      1)

      "to" as final subordinate clause in the meaning of "in order to"
      Dear Roel,

      I think there is an ambiguity in 5.1, regarding the word "to", which is responsible for the different interpretations:

      1) "to" a conjunction

      Firstly, "to" may be a conjunction, in the meaning of "in order to" (purpose), at the beginning of a "final subordinate clause".

      One might reformulate 5.1 as:
      >"Greta can validly appoint Hassan to the end that he represents her before the EPO as ISA
      >"In order to be represented before the EPO as ISA, Greta can validly appoint Hassan as her representative"

      The answer would be: TRUE

      2) "to" as a preposition

      Secondly, "to" may be a preposition and as such bound to the (the position after) verb.

      One might reformulate 5.1 as:
      >"Greta can validly appoint Hassan as her representative before the EPO as ISA

      See Oxford Dictionary: "to appoint"

      >appoint somebody as something
      >appoint somebody to do something

      In this context, the appointment is "specifically" directed to the representation before the EPA.

      The answer would be: FALSE


      Conclusively, I think both interpreations are valid.
      MK

      Delete
    14. @MK: interesting observation. I donot know whether I agree with your conclusion that one leads to TRUE and the other leads to FALSE, but I tend to do so.... But w.r.t. your argumentation, I confirm that I used the conjunction interpretation.

      Btw, a non-legal argument (OK, let's call it a hint) to support an answer based on Art.49 PCT can be found in the wording "Hassan is entitled to act before the DPMA [=rO; =competent rO because |Greta is resident on DE]".

      In DE, the statement reads: Greta kann Hassan wirksam als Vertreter bestellen, um sie vor dem EPA als Internationale Recherchenbehörde für PCT-G zi vertreten.
      In FR, the statement reads: Greta peut valablement désigner Hassan pour la représenter devant lÓEB agissant en qualité d'administration chargée de la recherche internationale pour PCT-G.

      Delete
  8. Dear Roel,

    On Question 2.4, "Today is 29 February 2016", the notice of grant has been issued, how can 3P observations be used to re-open the examination proceedings?

    On Question #8, Are the guidelines for examination not clear that the product must be novel by itself? This would make 8.2 "False" ?


    In Question #10.3, Does the opponent not have to provide the Interpretation? I did not know the EPO did?

    ReplyDelete
    Replies
    1. I think there was only communication for text to be approved. So proceedings were not finalized.

      Delete
    2. 2.4 - a notice of grant does not close proceedings

      8.2 - Visser commentary on Art. 64(2) and Guidelines F-IV 4.12, protection of a product by a process claim under Art. 64(2) applies to ALL processes.

      10.3 - EPO will provide interpretation into EPO official languages (given 1 month advance notice), so for French Paco does not need to provide it. For non-EPO languages, the opponent must provide the interpretation. See R.4(1) EPC.

      Pageflipper

      Delete
    3. There is no "notice of grant", there is a R.71(3) communication. After a response to the R.71(3) by the applicant, the proceedings are still open until the decision to grant is taken and handed over to the EPO internal post -- that still takes several weeks (at least 5 weeks for technical preparations for B1 publication).
      If in that meantime, the EPO becomes aware of third part observations, the Examining division will look at it.

      See GL (2015) C-V, 6.1 "When does the Examining Division resume examination after approval?"

      Subsequent to the applicant's approval in response to the Rule 71(3) communication (see C‑V, 2), the Examining Division may resume the examination procedure at any time up to the moment the decision to grant is handed over to the EPO's internal postal service for transmittal to the applicant (see G 12/91). This will seldom occur, but may be necessary if e.g. the applicant files further prior art which necessitates further substantive examination, if the Examining Division becomes aware of very relevant prior art following observations by third parties under Art. 115, if the applicant files amendments or corrections (having already approved the text), or if the Examining Division becomes aware in some other way of circumstances which are such as to cause the subject-matter claimed to fail to comply with the EPC.

      The resumption of examination after approval is subject to the same considerations as where examination is resumed due to amendments filed in the Rule 71(3) period (see C‑V, 4.7.1). In particular, the applicant's right to comment (Art. 113(1)), his right to at least one communication under Art. 94(3) and Rule 71(1) and (2) in examination proceedings (see C‑III, 4) and his right to oral proceedings on request (Art. 116(1)) must be respected.

      The criteria applied in assessing the admissibility of amendments or corrections filed by the applicant after approval are dealt with in H‑II, 2.6.

      Delete
  9. FirstCommenter1 March 2016 at 11:27

    On question 4.4 I also replied True, but am I the only one thinking that the question itself was wrong? Is the "inventor to be added" allowed to file a request by himself, even with "consent" of the applicant? I understand the legal basis to state that the request for adding an inventor must be signed by the applicant/representative, not merely sent with his "consent".

    ReplyDelete
    Replies
    1. R.21(1) EPC: [...] where such a request is filed by a third party [Beatrice], the consent of the applicant [company F] for or proprietor of the patent. [...]

      Delete
  10. Hi everyone, thanks for your great job.

    Could you please detail the answer to question 6.1 ?

    Thanks.

    ReplyDelete
    Replies
    1. feas have to paied to the natonal offices after mention of grand.

      Delete
    2. Art 86 (2) is the legal basis.

      Delete
    3. @R2D2: where was your concern w.r.t. 6.1?

      Delete
  11. 9.1 I thougt the 6 month time limit is ending on the last day of the Month J 4/91 ?

    ReplyDelete
    Replies
    1. 30 July 2015 -> end of month + 6 months = end of January 2016. Last day of January was a Sunday. The date rolls over to the Monday, i.e. 1 Feb 2016.

      Delete
    2. thank you. May you help me again, please? I want to get the ultimo to ultimo thing. If the aplication was filed on February. It is possible to pay the renawal fee on 31 August? If the last day of February was a sunday (saterday ect.) does not matter? But if the 31 August was a Sunday ect. the Fay rolls over to the 1st september?

      Delete
    3. Fay = day I am sorry for the grammer and spellimg mistakes

      Delete
    4. renewal due on last day of the month, so 31/7/15 (does not matter what day of the week it is, due date does not shift if it falls on a day the EPO is closed)

      with 50% extra: 6m from due date, so:
      31/7/15 + 6m [de-ultimo-ad-ultimo] -> 31/1/16 (Sun) -> 1/2/16 (Mon)

      Delete
    5. @Sina:
      yes, if an EP application is filed in February, the renewals will be be due on 28 Feb (29 Feb in leap year), and the 6m period for payment for additional fee expires on 31 August, extended to the next day the EPO is open if EPO closed on 31 Aug.
      The due date (from whcih the 6m calculation starts)) is always the 28 Feb (or 29 Feb), also if a Saturday or Sunday. But if a Saturday or Sunday, payment can be done without additional fee on the next day the EPO is open.

      Delete
    6. thank you so so much! Now it's clear.

      Delete
  12. 7.4 One of the requirements for the validity of the priority right from DE-S is that the transfer of the priority right must have taken place before the date of filing of EP-W.

    Sure, it cannot take place after the filing of EP-W. But there is no reason the transfer cannot occur on the same day EP-W is filed. So, it is not always essential that the transfer occurs before filing EP-W.

    False?

    ReplyDelete
    Replies
    1. I agree.

      Jay

      Delete
    2. In the Mock Exam of 2011 (March), for question 7, both 7.2 (before the filing date) and 7.3 (on the filing date) were considered to be correct. This is why I was also uncertain; 7.4/2016 was worded exclusively, and as ON the filing date is also okay (see Mock Exam), 7.4 could be considered to be "wrong". I decided to go with the wording of GL A III 6.1, and answered "true" for 7.4

      Delete
    3. Guidelines A-III 6.1 specifically states that the transfer must have taken place *before* the filing date of the later application.

      Simon

      Delete
    4. GL (2015) A-III, 6.1:
      As concerns (ii) above, the transfer of the application (or of the priority right as such) must have taken place before the filing date of the later European application and must be a transfer valid under the relevant national provisions. Proof of this transfer can be filed later.

      Delete
    5. I agree that the Guidelines say that, but the Guidelines are not legally binding. T 62/05, for example, held that the same day was fine. That's why I put "False".

      I don't agree with the Examiner's report, and would be minded to appeal had I not passed!

      Delete
    6. Hi Katie, I may overlook it, but where in T 62/05 do you read so, in which reason? (http://www.epo.org/law-practice/case-law-appeals/recent/t050062eu1.html#q=)

      @Suzanne: the "official answer" to the Mock Exam of 2011 (March) also made me doubt, but as said above, I relied on the Guidelines which are considered a high authority in the EQE (also in the Main Exam), even though (strictly) not legally binding.

      Delete
    7. Hmm, looking back, Reasons 3.5 of T 62/05 *suggests* that the same deadline would apply for claiming priority as for transferring the priority document (and hence the same day would be OK), but this is not said in as many words.

      It was probably that in combination with the March 2011 mock and the "EQE4all" answers to that mock citing T 62/05 which made me think the T decision was more explicit in that respect (see: http://www.eqe4all.org/pre-exam%20mar%202011%20answers.php). I looked at that having got the mock question "wrong" when doing it for revision.

      So yes, perhaps I did get that question wrong in the real exam due to using and having believed revision materials provided by the EPO....!

      I've just had a quick look for other relevant case law but nothing jumped out. I would be interested if it does come up, as it would seem rather unfair for someone who has obtained ownership via an assignment and then filed a priority-claiming application the same day to be not entitled...

      Delete
  13. Based on J 08/80 I answered question 4.2 TRUE

    J 08/80 says in the second headnote: "In cases where the making of the alleged mistake is not self-evident and in cases where it is not immediately evident that nothing else would have been intended than what is offered as the correction, the burden on the person requesting correction of proving the facts must be a heavy one."

    What do you think?

    Vic

    ReplyDelete
    Replies
    1. R.21(1) does not give any such evidence requirement. Art.62 gives an inventor the right to be mentioned. Adding an inventor does not have an effect on third party rights (which the wrong designations in J 8/80 did).

      R.21(2) explicitly allows rectification after grant.

      Delete
    2. I think that R 19(2) also applies: "(2)
      The European Patent Office shall not verify the accuracy of the designation of the inventor." So for Q 4.2, the EPO will also not require evidence for an error concerning inventors.

      Delete
    3. In this case question 4 could be considered misleading talking about an error??

      Delete
    4. No, why would it be? Only one inventor was designated, whereas it should have been two. So, it was not correct - hence, an error. I donot see what can be wrong with the wording of the question.

      Delete
    5. Yes reading once again the question is clear now. Sitting the exam in a hurry the word "error" made me though about a correction of the designation needed.
      Thank you Roel

      Delete
  14. Dear Roel van Woudenberg,

    thank you for your solutions. Please comment for question 5.4 why, in your eyes, R. 90.4(e) PCT is not relevant for the PoA? In consideration of the mentioned rule my answer is TRUE.

    Thanks

    ReplyDelete
    Replies
    1. R.90.4(e) PCT is relevant where the appointment is done by a separate PoA -- not when the appointment is done in the request in the demand, and the request or demand is signed by the applicant

      If a separate PoA is filed, that can also be filed by the applicant, whereas, for the statement to be TRUE, it would need to be mandatory that the representative files it

      Delete
  15. Hi is anyone able to post a copy of the paper, or a link to it? I left early (it was far too cold in Bristol!) and couldn't take the paper out, so don't know what questions you are all referring to! thanks!
    Sara

    ReplyDelete
    Replies
    1. Hi Sara,
      We do not have a clean copy yet - if anyone can send us a clean copy of the English version, we can put on online.

      Delete
    2. englisch Version is running through the scanner. How can i send it to you?

      Delete
    3. Thx for sending us a clean copy.

      The Pre-Exam 2016 paper is now available in all three EPO languages via the links in the opening paragraph of the blog.

      Delete
  16. I made the questions in the reverse order, as I noted that the most difficult questions came first :)
    Third party observations in opposition as first question, not really something that is something to easily answer and get in the mood.


    N

    ReplyDelete
    Replies
    1. I also began from the claim analysis part because the questions in this part are linked to each other, hence have to be paid more attention to and to be concentrated on more than the legal part which has 10 questions separate to each other. Before the brain becomes less sober during the exam, i think it is better to start the exam with the more difficult part, namely the claim analysis.

      Delete
  17. Thank you for posting this. I have a question, what is the basis for 2.3? Does the examining division go ahead and examine any additional claims over 15 presented after the 71(3) communication, without waiting on payment of claims fees? Thanks in advance.

    ReplyDelete
    Replies
    1. Further to my original comment above, perhaps it has to do with the fact that they are dependent claims? And considered allowable without requiring examination? Thanks.

      Delete
    2. After filing (or the R.162 communication in the case of an EP-PCT), the only opportunity the Examining division have to invite the applicant to pay more is in the R.71(3) communication. By filing a new claim set the applicant is disapproving the current text intended to grant, and so the Examining division will simply request the payment of excess claim fees if/when issuing a new R.71(3) including the two new dependent claims.

      -TR

      Delete
    3. @ Anonymous2 March 2016 at 10:55 - No. Dependent claims are ALSO examined. They need to be: they could have a problem of extension of subject-matter, clarity, ... The Enlarged Board addressed the relevance of clarity examination of dependent claims in G 3/14 (http://www.epo.org/law-practice/case-law-appeals/recent/g140003ex1.html#q=)

      Delete
  18. Hi Roel and All,

    Has anyone wondered about 5.2? I think the answer depends on the interpretation of the term "as a general rule". If interpreted along the lines of "as a rule that applies in every case", the answer to question 5.2 might have to be F for the reason that the PoA waiver does not apply to legal practicioners who are not on the list of professional representatives... Calling a rule that does not apply to thousands of "legal practicioners" throughout the EPC contracting states a "general rule" (this seemingly being a basis for answering T) may not be the only way of looking at this question.

    Any feedback would be welcome!

    ReplyDelete
    Replies
    1. I also considered the "as a general rule" a difficult wording. In my understanding, "as a general rule" means "as a main rule (but there are some exceptions)".

      The main rule is phrased e.g. in the AG-IP Annex C EP following OJ 2010, 335:
      "4. Subject to Rule 90.4(e) PCT, the
      requirement under Rule 90.4(b) PCT
      that a separate power of attorney be
      submitted to appoint a (common) agent
      or, as the case may be, common representative,
      is waived under Rule 90.4(d)
      PCT by the European Patent Office
      (EPO) acting as receiving Office (RO),
      International Searching Authority (ISA),
      Supplementary International Searching
      Authority (SISA) or International Preliminary
      Examining Authority (IPEA).

      Subject to Rule 90.5(d) PCT, the requirement
      under Rule 90.5(a)(ii) PCT that a
      copy of a general power of attorney be
      attached to the request, demand or
      separate notice, as the case may be, is
      waived under Rule 90.5(c) PCT by the
      EPO acting as RO, ISA, SISA or IPEA.

      The EPO acting as RO, ISA, SISA or
      IPEA may require the filing of a separate
      power of attorney or a copy of a general
      power of attorney if necessary in the
      circumstances of a particular case, for
      example if:

      – a procedural act is performed by a
      purported agent who is not the agent of
      record, unless the purported agent
      belongs to the same office as the agent
      of record, or if both the purported agent
      and the agent of record are employees
      of the applicant or, if there is more than
      one applicant, of the common representative;
      – there is doubt as to whether the agent
      or common representative is entitled to
      act."

      The Euro-PCT Guide gives in par. 109: "The EPO as receiving Office (and also as ISA, SISA and IPEA) has waived the requirement that for the effective appointment of an agent, common agent or common representative a signed separate power of attorney be submitted to it if the PCT request is not signed by (all) the applicant(s). The waiver does not apply to a legal practitioner referred to in Article 134(8) EPC if that person is not also a professional representative."

      Delete
    2. I had been struggly with "as a general rule" for another reason:

      PCT R.90.4(a) gives as the main rule that an appointment must be signed by the applicant (in request, demand, or separate PoA), and R.90.4(b) says where a separate PoA must be filed.
      PCT R.90.4(d) gives an exception: an authority may waive the requirement.
      The EPO waiver thus is an exeption to the general rule.
      So, even though the exception generally applies, it feels a bit strange to can an exception the general rule.

      Delete
    3. "As a general rule" means not "main rule" and undoubtedly it means not "general rule for EPO representatives", but "general rule for all representatives".

      Only EPO representatives must not submit a PoA, but the text of 5.2 tells "representatives" and not "EPO representatives". Also an advocate is a representative and can represent a patent applicant. Also an employee is a representative and can represent his employer patent applicant. So it is not a general rule in my opinion...

      Delete
    4. For the same argument, also 5.4. In Visser pag 863 it is written that the "representative" as to submit a PoA to validly withdraw an international application. Also Hassan as a German representative, that is not an "EPO representative", has to submit a PoA to withdraw Greta's PCT-G. So 5.4 is true and 5.2 is false in my opinion.

      Delete
    5. Visser is not law (sorry Derk :))... The law (PCT Articles and Rules) do not require the representative to file it...

      Note: although reference books as Visser or Hoekstra are not the law, they cite the law and annotate the law. Those annotations are mostly objective, but part of that annotation may be subjective to a small or a large extent. They also comprise many references to other sources, summarized in the author's wording, or cited literally. Those books may have errors, as even the Guidelines or the Euro-PCT Guide could have. I am persionally however quite convinced that the number of errors in those books is very small, so the benefit of using a reference book outweighs a full DIY approach. But after having said so, I recommend to always experessly check the Articles, Rules and headnotes (of G-decisions) - better safe than sorry.

      Delete
    6. Hi Roel,

      I am now convinced that the answer to 5.4 is FALSE (even though I have a very bitter feeling about this question, as I was one of apparently many candidates who relied on 11.048 from the PCT guidelines).

      Do you think this question might be considered by the EPO examiners to be a bit of a "grey-zone" question, so that both the TRUE and FALSE answer are awarded points?

      Thank you,
      IG

      Delete
    7. @IG: (You mean Exam Committee I assume) I donot know, we will see. I am myself in doubt at this moment whether it is in the grey zone or not.

      Delete
    8. Dear Roel

      I would like to add the following for consideration:

      Apart from "a general rule" being a very problematic term to refer to a waiver - the legal definition of which implies that this is the exception to the "standard" - this term gives rise to yet another problem linked with the very broad formulation of "representative".

      As we are dealing with PCT procedures, we NEED to adapt PCT terminology. According to this terminology there are agents and (deemed) common representatives.

      The waiver clearly refers to (common) agents and common representatives.

      However, the statement reads "appoint a representative", thus appointing ANY (legal/natural) person to act on behalf of the applicant(s) (= definition of representative). Indeed, you can also "wrongly" appoint someone, this possibility being included by the broad wording.

      Let´s look at an example: If the applicant(s) appoint(s) a non-applicant as representative (e.g. a subsidiary in one of the EPC contracting states) to act before ISA=EPO, then EPO will be in doubt as to whether the representative is a common representative entitled to act. This however will prompt the EPO to require a PoA [apart from requiring further information on the presumed "common representative"] (cf. www.wipo.int/pct/en/waivers.html, column 5, row 11: "In case of doubt as to whether the agent or common representative is entitled to act")

      So by phrasing the statement so broadly to include situations where ANY representative (not just the ones mentioned in the waiver) could be (wrongly) appointed, one cannot speak of a "general rule" not having to submit a PoA.

      As the one statement 5.2 includes TWO "fishy" parts, shouldn´t the overall answer be FALSE?

      Best,
      Damaris

      P.S. Sorry for adding more to this already very extensive debate... But I just had to ask you about this reasoning...

      Delete
    9. @Damaris: I agree largely with you.

      The terminology "As a general rule" is not easy, especialy as the main rule of the PCT is given in 90.4(a): appointment is needed by the signature of the applicant (of request, demand or sepertate PoA). On the other hand, the intention of "as a general rule" can be clear in the context of the rest of the statement. Esp, if the rest of the statement would say "...in order to appoint a Euopean patent attorney to act before the EPO...", the meaning of "as a general rule" is in my view 100% clear. With the current phrasing however, I agree with you that you can debate it...

      I can anot think of a reason why the question uses "representative" rather than "agent", which is the correct PCT terminology for a professional representative (and as e.g. the D papers have been using consistently).

      Delete
  19. My question is with regards to 10.3. When filing the notice of opposition the opponent is still not a party to oral proceedings. R6(1) EPC and the Guidelines always refer to "Any party to the proceedings", therefore, I understood that said provisions were not applicable (i.e., choice of language) until summons to oral proceedings were issued. From your answer I understand that you can inform of the language you will use in oral proceedings in the notice of opposition but I cannot find legal basis, can you please give me some kind of pointer or help.

    ReplyDelete
    Replies
    1. I maybe donot understand your question. The oral proceedings referred to are future oral proceedings in opposition. These will be more than 1 month away, so well in time to have the EPO provide for interpretation into English - R.4(1).

      All submissions done in the notice of opposition are considered to be submissions by the opponent, so by a party, as long as the opposition would not be considered not filed or inadmissible.

      Delete
    2. I thought that as oral proceedings were not instituted as such (i.e., the EPO had not yet issued the summons to oral proceedings), the opponent could not inform of the language he would use. My fault.

      Delete
  20. Sorry, mistakes in previous post: * "Any party to oral proceedings" and R6(1)EPC should be R4(1)EPC

    ReplyDelete
  21. I'm confusing about the question 7.1: "EP-W is considered to be filed within the priority period of twelve months from the filing date of DE-S".

    The expression "considered to be filed" relates to a "legal fiction". This is the case for R134(5) ("rule of 10 days) in which if the conditions are met, the document received late shall be "deemed to have been receive"d in due time.

    However, for the case of R134(1), the period is automatically extended and this is not "legal fiction" here.

    For exemple, if the applicant requests an extension of 2 months for responding to an Office Action (4 months), the response filed by the applicant within the 2 months extension period is received in time. There is no "legal ficiton" and the response is not "considered to be filed in the original 4 months".

    For the quesiton 7.1, I think that the application is filed in time and the application satifies the period of pariorty provided in the EPC (A87+R134(1)). However, I do not agree that the application is "considered to be filed within the period of twelve months"..

    Thanks in advance if anyone could help answer my question.


    ReplyDelete
  22. Dear Deltapatents - Team, I have a question regarding 3.4; why I know that the applicant received already a R.112(1) comm., because there is nothing mentioned about that. I think that is important to have this comm., because otherwise it is not possible to request further processing? Thanks for your answer. BR Johannes

    ReplyDelete
    Replies
    1. Yes, I totally agree with Johannes. I think your calculation is fine but I´m not sure if this is the correct approach for this question. I think the correct answer is F, since there is no R.112(1) comm.

      Delete
    2. I don't have the legal basis for this now at hand, but wasn't it so that nothing prevents the applicant from filing the request for FP between the expiry of the time limit and such communication? As a matter of fact, that is in the interest of both the applicant and the office, because the proceedings may continue smoothly and it may not be necessary to even issue the R.112 communication anymore.

      Delete
    3. Letter dated 21 December, deemed delivered 31 December.
      Period for reply = 4 months. So date for reply = 30 April 2016.
      This is a Saturday, so it rolls over to Monday 2 May 2016.
      The EARLIEST that the Loss of Rights communication could be posted out is 3 May 2016, BUT this itself is subject to the 10 day rule! So the earliest the LoR communication can be deemed delivered is 13 May. This puts the earliest final date for further processing as 13 July, therefore it is possible to state that further processing will definitely be available on 4 July 2016.

      As anonymous@9:32 says, it is possible to request FP before the LoR communication even issues (although it is very unlikely it would not have issued by 4 July anyway). The communication simply sets the deadline.

      Hope this is clear!

      Pageflipper

      Delete
    4. I think it doesn't matter if it is unlikely or not that the LoR comm. is issued. Is it possible to request further processing without R.112 comm.? If so, what is the legal basis?
      BR Johannes

      Delete
    5. I think it was E-VII 2.1.

      But during the exam I had the same opinion like you, Johannes.

      Delete
    6. Johannes

      As anonymous@10:30 says, the legal basis is GL E-VII 2.1:
      http://www.epo.org/law-practice/legal-texts/html/guidelines/e/e_vii_2_1.htm

      "A request for further processing may also be filed between expiry of the unobserved time limit and notification of the communication concerning either the failure to observe a time limit or a loss of rights."

      So, yes it is possible to file between 2 May 2016 and the LoR (whenever it occurs).

      For the purposes of working out whether 3.4 is true or false, the important thing is to calculate the earliest possible date for the LoR communication to be deemed delivered - 13 July. As 4 July is before this, the answer must be true.

      Pageflipper

      Delete
    7. There is no need to wait for the R.112 communication.

      GL (2015) E-VII, 2.1: A request for further processing may also be filed between expiry of the unobserved time limit and notification of the communication concerning either the failure to observe a time limit or a loss of rights.

      Note: this second paragraph was not in the 2014 edition of the GL. It was formerly in Legal Advice L 13/82, which was cancelled by Decision of the President in 2012)

      Delete
  23. R. 135(1) says "...within two months of the communication concerning either the failure to observe a time limit or a loss of rights".

    ReplyDelete
  24. Reference book Kley relates to Legal Advice 13/82 (http://legis.obi.gr/espacedvd/legal_texts/anc_reg/en/ap_vi_l13_82.htm)
    The advice seems to be suspended, but according to Kley, the procedure still applies.

    ReplyDelete
    Replies
    1. see above: GL (2015-edition!!!) E-VII, 2.1

      Delete
  25. Still not persuaded in regard to Q 5.1 and 5.4, although I appreciate the arguments of the other side. It may (frustratingly) come down to what the Examination committee wants to hear ;-)

    5.1: The question is phrased "Greta can validly appoint Hassan to represent her before the EPO as the ISA for PCT-G". The question is e.g. not phrased "Greta can validly appoint Hassan to represent her for the rest of the international phase". This appears to be a crucial difference in my view, as it seems the question therefore relates to *specific* representation before the EPO as ISA. As such, still FALSE.

    5.4: I appreciate the argument that the power of attorney can also be filed by the applicant. However, consider question 5.4 amended in this way: "According to the provisions of the PCT, a representative can only validly withdraw an international application if the representative *or applicant* has filed a power of attorney". Following the logic of Roel & Pete (thanks for your efforts BTW!), this would still be FALSE because the power of attorney could also be filed by the applicant's secretary (who is not the applicant!) or the attorney's secretary, maybe even a third party (a power-of-attorney filing service ;-).

    Notably, Rule 90 PCT does not stipulate *who* has to file the power of attorney (90.4: "(a) The appointment of an agent shall be effected by the applicant signing the request, the demand or a separate power of attorney...", "(b)...a separate power of attorney shall be submitted...", ). Again, following said logic, all alternative formulations of question 5.4 would be FALSE, AS LONG AS THE "FILING PART" IS NOT WRITTEN IN PASSIVE VOICE.

    Clearly, this logic is deconstructive and not in the spirit of "a mind willing to understand" necessary for the exam. Therefore, in my opinion, Q 5.4 is still TRUE.

    ReplyDelete
    Replies
    1. I donot agree: if the statement explicitly says WHO has to perform a certain act, and especially in the context of representation which is all about who can do ad who cannot, this cannot be ignored.
      Representation is very much about what can the represntative (not) do and what can the applicant (not) do.

      Delete
    2. I agree with Roel's reasoning for statement 5.4.

      However, by following this logic it does not make sense that Greta can validly appoint a non-EPO representative to represent her specifically before the EPO, especially when Hassan would be entitled to do so (according earlier reasoning above) even without such appointment.

      Jay

      Delete
    3. The latter is based in Art.49 PCT.

      Delete
  26. Does anyone know when the official answers are coming out?

    I am kind of looking forward to see if and how many questions will be awarded points regardless of the answer as I am somewhere between 67 and 71 points according to the preliminary answers and every point matters for me:).

    ReplyDelete
    Replies
    1. Last year it took about one month, so I assume that the results will probably be published by the end of March?

      Delete
  27. Dear all,

    Question 5.1 relates to the valid appointment of Hassan before the EPO as ISA, and not the appointment as “the agent for the international phase”.

    Therefore, the answer to 5.1 is False.

    Guide for Applicants Euro-PCT point 211 – Any agent specifically appointed to act before the EPO as ISA must be entitled to practise before the EPO

    AG-IP 11.002 - A person may be appointed as agent to represent the applicant specifically before the International Searching Authority, before any Authority specified for supplementary search, or before the International Preliminary Examining Authority if he has the right to practice before the Office or intergovernmental organization which acts as that Authority. The right to practice before an Office or organization is governed by the national law applied by the Office or organization concerned.

    R90.1(b) PCT - A person having the right to practice before the national Office or intergovernmental organization which acts as the International Searching Authority may be appointed by the applicant as his agent to represent him specifically before that Authority.


    Question 5.4 concerns the valid withdrawal of an international application by a representative if the representative files a power of attorney.

    In this case, the answer should be True, because a waiver for a separate power of attorney made by an Office, an Authority or the International Bureau does not apply where the agent submits any notice of withdrawal referred to in Rules 90bis.1 to 90bis.4 (AG-IP 11.008, AG-IP 11.048 and, for example, PCT Newsletter 06/2004 or 01/2004 or 12/2004).

    A power of attorney still has to be furnished.

    Greta Bluesky

    ReplyDelete
    Replies
    1. 5.1: EPG 35 (based on Art.49): Any attorney, patent agent or other person ("agent") having the right to practise before the national or regional patent office with which the international application was filed is entitled to practise before:
      – this receiving Office,
      – the IB,
      – the competent ISA,
      – the competent SISA and
      – the competent IPEA.
      Says "having the right to practice", does not day "appointed to act before the rO"
      As Hassan is entitled to act before DPMA, he is entitled to act before EPO as ISA. And can thus be appointed therefor.

      5.4: see discussion above

      Delete
  28. Isn't question 5 a bit strange: a 4-line situation sketch, with only one statement (5.1) being directed to the specifically sketched situation, and three statements (5.2, 5.3 and 5.4) that are not limited nor directed to the specifically sketched situation?
    I didnot check in detail, but I can imagine that the answers to 5.2-5.4 depend very much on whether you read them as limited to the sketched situation or read them as phrased i.e. not within the context of the sketched situation.
    E.g., for 5.2: is the "representative" mentioned there Hassan, or not necessarily?
    E.g., for 5.4: is the "application" PCT-G that was filed a week ago, or not necessarily? In particular, cam it be one that still needs to be filed and wher the appointment can be done in the request?

    Johan

    ReplyDelete
    Replies
    1. Surprised me too, but there have been "general" statements in between or next to "case-specific" statements also in earlier exams. It needs some care and caution when reading and answering.
      I can imagine it helped some candidates that the case sketch as 5.1 were very specific to get to the relevant legal provisions and legal sources, before needed to answer some more abstract statements. But some other candidates may have read the limitations of the case sketch also into statements 5.2-5.4, and may then have gone wrong.
      Would be interesting to hear your opinions on this.

      In our answer, 5.1 is case specific and 5.2-5.4 are general (and thus NOT limited to the IA already being filed, nor to rO=DPMA, nor to appl-Greta, not to applicant resident in Germany, nor to PCT-G, ...).

      Delete
  29. Dear all,
    Question 5.1 - it is a little bit of a trap in doing exams to point out that the text of the law or Applicant's Guide or even a reference book can be misleading or read in different ways. This is why you cannot just buy Visser in January and do the exam in March ;-). During your preparation you learn how everything works based on the texts that you have, and during the exam these text's "remind you" of the answer.
    For 5.1, there are two possibilities for representation before the EPO as ISA - an agent qualified to act before the rO (Art. 49, R.90.1(a): it does not matter when they are appointed and they can act before any authority in the international phase) OR an agent qualified to act before the EPO (R.90.1(b) - again it does not matter when they are appointed, but they are not entitled to act before all authorities, just that one). So the answer must be T.

    For 5.2, it refers to a general rule which is something covering most situations. Unfortunately, you cannot always find this in the law. If you ask an experienced attorney or formalities officer, they will say yes. Unfortunately, for the exam, you don't have the experience, so you need to look at what the EPO says itself. Euro-PCT Guide 212 and 109 support it being a general rule.

    For 5.4, we had some discussions here in the office. After careful reading it must be an F - it refers to an "only" situation by the "representative", so if we find other alternatives it cannot be true. You can only withdraw the IA if the IB has the signature of all the applicants on file, or they all sign the withdrawal. It does not matter when they get them (in the Request form, in the Demand form) or in a separate Power of Attorney. These documents can also be filed by the applicant or the representative. So it must be F.

    ReplyDelete
    Replies
    1. Dear Pete

      Thanks that you waited with your advice "This is why you cannot just buy Visser in January and do the exam in March ;-)." until after I sat the pre-exam. I actually pretty much did that, except that I bought the Visser in December and did the exam in February which gave me a bit of a head start. :-)

      If I had known this important fact earlier, I probably would have gotten nervous and failed. So - with the exception of 5.4 - I came to the same answers as you guys by just looking it up in Visser. And with 5.4, I have the feeling that the intention of the EPO was more a T than an F. But we'll see soon.

      Thus I still think it is a valid option relying heavily on Visser. At least for the pre-exam. :-)

      Thanks for all the effort you, Roel and your colleagues put into this!

      C

      Delete
    2. @ Anonymous3 March 2016 at 17:31
      I totally agree you should rely on your reference, whichever it is. We don't recommend the traditional approach proposed by some tutors where you start with a blank EPC and make your own reference book.

      But if you read something at the exam for the first time, you may interpret it incorrectly. You can then not complain that the text is unclear.

      I am not against somebody doing this - it is impressive if you pass :-) But realise that the pre-exam gives you the possible answers so you have keywords to look up. The D paper at the Main Exam requires a deeper understanding of the system because you have to formulate your answers.

      Delete
  30. Association of Trainee Representatives somewhere in NL3 March 2016 at 14:41

    For 5.4, we also had some discussions in our office. And we concur with DeltaPatents that the answer should be 'F' based on the Euro-PCT Guide, part B, paragraph 111, citing : "However, as a matter of strategy and caution, (common) agents and common representatives are recommended to obtain explicit authorisation from (all) the applicant(s) by way of direct signature of the PCT request or by duly signed powers of attorney. The authorisation of each applicant is required in any case in which a withdrawal of any kind is submitted." (http://www.epo.org/applying/international/guide-for-applicants/html/e/ga_b_27.html). It confirms that an authorization is required for a withdrawal, but that (in the general case) such authorization can also be provided by way of direct signature of the PCT request, i.e. not only by way of a power of attorney.

    ReplyDelete
    Replies
    1. Box IV on Page 1 of the PCT Request form and the Notes to Box IV on page 2 of the Notes (=page 15 of the pdf): http://www.wipo.int/export/sites/www/pct/en/forms/request/ed_request.pdf

      Delete
    2. The arguments indeed make sense. But I think the examination committees only want to test if a POA is necessary in the case of withdrawing an application by a representative.The appointment in the request is considered as a kind of "special" POA. The problem is that this question is not well drafted...

      Delete
    3. It does not matter what the examination committees WANTS to test, it matters what the ACTUAL test is.
      A candidate shall limit to the FACTS of the question, not to what he THINKS the committee WANTS to test. See Rule 22(3) IPREE.
      Here, the statement clearly includes the FACT that the representative needs to file it.

      Delete
    4. A candidate of the pre-exam 2016 wrote on the claim analysis part of the blog the following:

      JoGi8 March 2016 at 11:46
      Again concerning 5.4:

      "What I noticed is that in French and English, the wording is "a
      representative" and "un mandataire" whereas in German it is "DER
      Vertreter" which is in my opinion a significant difference because the
      definite article "der" should be understood as refering to Hassan but
      not to a "Vertreter" in general.

      Therefore my question to the DP experts:
      Does this linguistic difference - especially the reference to Hassan and
      the specific case - lead to a situation in which both T and F might be
      correct?

      Thank you for your answer!

      Regards,
      JoGi"

      Delete
    5. Thanks Anonymous,
      just wanted to post it here ;-)

      Regards,
      JoGi

      Delete
    6. You are welcomed.

      This is an important issue because the candidates that read the question in German had a different information than candidates that read it in English or German.

      Regards

      Delete
    7. @JoGi:
      Interesting observation.

      For the other readers: statement 5.4 reads in the three languages:
      DE: Entsprechend den Bestimmungen des PCT kann _der_ Vertreter nur dann eine internationale Anmeldung wirksam zurücknehmen, wenn er eine Vollmacht eingereicht hat.
      EN: According to the provisions of the PCT, _a_ representative can only validly withdraw an international application if the representative has filed a power of attorney.
      FR: Conformément aux dispositions du PCT, _un_ mandataire peut valablement retirer une demande internationale seulement si le mandataire a déposé un pouvoir.

      I donot see a reason why "der" (the) was used in the DE version and "a" in the EN and FR version. For the exact same meaning, I think it should have been "ein" (a) in the DE text too - as it was written in statements 5.2 and 5.3.

      Whether it really makes a difference, I am also not sure. In my view, the statement can still refer to te general situation. Further, Hassan is not yet appointed as "the" representative, there is only a wish. So, "der" is rather incorrect and to be understood as "a".
      In the other hand, if it says "der"/"the", it can be read to indicate that the representative was already appointed, so that the possibility to apppoint him in the request (as one of the other ways to appoint him and be allowed to withdraw) is not exisiting anymore - whereas it is possible for "a" representative.

      Delete
    8. The Examiners Report about 5.4:

      Statements 5.2 to 5.4 relate to representatives (agents) dealing with international applications in general, and these statements are not restricted to PCT-G and Hassan as the representative (agent).
      [...]
      A withdrawal of an international application has to be filed either by the applicant(s) or by a representative (agent), provided that he has been appointed by the applicant(s) signing the request, the demand, a separate power of attorney or a general power of attorney (Rule 90bis.5, Rule 90.4(a) PCT and Rule 90.5(a) PCT. [Note that the case referred to in Rule 90.4(e) PCT does not apply whenever the representative (agent) was appointed by the applicant signing the request or the demand].

      5.4 - FALSE

      Delete
    9. Thanks Roel.
      Quite late and I am tired but let me share my thoughts with you. Maybe they are correct ;-)

      Not appointing Hassan in the request means appointing Hassan by means of a PoA after filing PCT-G. However, such PoA does not have to be submitted with DPMA. In case of withdrawal PCT-G, PoA needs to be submitted... So 5.4 would be T (depending on convincing arguments why 5.4 relates to Hassan and not to a representative in general!)

      Delete
  31. Hi,

    I've got this response from the Exam committee, thought this might be interesting for many of you:

    "The results should be available on the EPO website the 3rd week of March 2016. We will send an email to inform all candidates of the exact date.
    You will be able to find your results by searching in the list for your EQE Registration number (EQEReg). This number is indicated on all mail correspondence from the Examination Secretariat.
    The dispatch of the result letters (legally binding) is foreseen for the end of March 2016."

    BR,
    Ivana

    ReplyDelete
  32. Somewhere in Itay, Spain or France14 March 2016 at 23:44

    Any news on whether the pre-examination results will be available this week or next?

    How about a few T/F questions for the Exam Committee?

    1. The third week of March begins on 14 March.

    2. The third week of March begins on 21 March.

    3. If the third week of March begins on 14 March, the Exam Committee can request further processing and after processing the results further, can make them available during the week of 21 March, provided that they pay a fee of 2 extra exam points to each candidate.

    4. April showers bring May flowers.

    ReplyDelete
  33. I love this post!!! I emailed them yesterday but no reply yet. I think the 3rd week of March should clearly be this week! but, then that's just me and I don't think I think along the same lines as these guys! S

    ReplyDelete
  34. Dear SiISoF,

    I got FTFT for your questions

    1/2. I think the appropriate legal basis here is Rule 131(5):

    "When a period is expressed as one week or a certain number of weeks, it shall expire in the relevant subsequent week on the day having the same name as the day on which the said event occurred."

    This would seem to imply that "third week" strictly begins on the 21st of March.

    3. While the issuing of exam results is not explicitly excluded from the periods eligible for Further Processing under Rule 135, I believe that even if FP is available there is sadly no provision for increasing all our marks (I would be happy if they just completed the "omitted act" ASAP though!).

    4. Obviously true :)

    Pageflipper

    ReplyDelete
    Replies
    1. The "third week" surely implies the third FULL week, i.e. the week beginning 21 March. Saying that, it is a sloppy, ambiguous statement where they probably meant the week beginning 14 March. Clearly it is the same person who set the exam paper.

      Re: Q3 - FP is not available as the time period set is not in relation to an application. Perhaps re-establishment? - it would be difficult to show all due care though and thus probably not allowed.

      Answers taking statement as it is: FTFT
      Answers interpreting statement considering subjective intent: TFFT

      Good luck everyone!

      Delete
  35. Apparently 1 is T, and 2 is F - just had this from the EQE guys. still not very specific but better than nothing!

    The results for the pre-EQE exam will be available online towards the end of this week.
    An email will be sent to the candidates as soon as the results are available online.
    The candidates will also receive a written letter in the end of March.

    S

    ReplyDelete
    Replies
    1. Damn! On the other hand, I'm actually glad to be wrong in this instance ;)

      Pageflipper

      Delete
  36. Somewhere in France (maybe Spain or Italy)15 March 2016 at 11:44

    More T/F's for the Exam Committee

    1. Towards the end of this week means: Thursday or Friday.

    2. Towards the end of this week means: Saturday or Sunday so they can provide the results on the next business day, Monday.

    3. Cardboard contains wood fibres.

    4. Renewal fees are due if you fail the EQE and want to take it again.

    ReplyDelete
  37. I'm thinking not Saturday or Sunday..definitely after Wednesday..so Thurs or Fri. But equally it could all go t*ts up and not be until next week or the week after! I'd still like to hear something from them about the conditions in Bristol - at least an apology for making everyone almost freeze to death. I feel so sorry for the finals people having to go back there day after day. I think I'd have been tempted to go home!
    S

    ReplyDelete
    Replies
    1. One further question - when people have appealed particular answers previously, did people file a joint appeal, or separately? S

      Delete
  38. I just got an email from the secretariat that just says "The Examination Secretariat hereby confirms that you sat the pre-examination of the European Qualifying Examination 2016 on 29.2.2016."

    At least I didn't just hallucinate that! Made my heart jump to see the email arrive, but no results as of yet.

    Pageflipper

    ReplyDelete
    Replies
    1. It would be a pretty poor hallucination if so..I'm sure you could do better!
      I haven't had an email..so maybe I did imagine mine!
      S

      Delete
  39. I´ve had the e-mail yesterday to. Nice to know that they probably haven´t lost my paper with my answers...worried about that as I think I might have passed this time.
    /Minnie

    ReplyDelete
  40. This waiting is so stressing, think that I probably have passed this time, but I want to be sure, and I want it now!

    What have you told your employer regarding your most likely result?
    Are you planning to celebrate if you pass? How?

    This waiting is drivning me just nuts!

    /Minnie

    ReplyDelete
  41. If I pass (which is very borderline..I can't remember what I put for a lot of the claims answers as I had no strong opinion either way, so likely totally messed that part up),I'll just be relieved! I keep checking on here in case someone has posted that the results are out!
    If I fail I fail I guess. sigh. S

    ReplyDelete
  42. Somewhere in Europe today but in the United States tomorrow17 March 2016 at 15:13

    I'm guessing that it will be tomorrow around 10 am CET. Unfortunately, I may not be able to see the results until much later in the day after I land at the airport in Atlanta, Georgia, USA.

    ReplyDelete
  43. Examiner's report is online:
    http://www.epo.org/learning-events/eqe/compendium/preexamination.html

    ReplyDelete
    Replies
    1. 82/100 according to that! Woohoo!

      Pageflipper

      Delete
  44. Results now also online:
    http://www.epo.org/learning-events/eqe/statistics.html

    ReplyDelete
  45. Our answers are all the same as the answers in the Examiner's Report. (So far) all statements have only been awarded a single answer, T or F.

    See http://pre-exam.blogspot.nl/2016/03/pre-exam-2016-results.html

    ReplyDelete
  46. Which effect does the different translation between German and the other languages have for the sample solution?

    There were asked different kind of questions.

    German was "the representative" instead of "a representative". So, it was asked for Hassan, a German patent attorney. (5.2 and 5.3 related to just a representative).

    Also, "only" was changed to "nur dann", what means "only then". The word "then" gives a time rank to question.

    Example:
    I can pay my rent only then, if I got my money on my bank account.
    I can pay my rent only then, if I got my money back from my neighbour.
    I can pay my rent only then, if I find my purse again.

    Many effects are correct. Every single statement is correct for itself.

    "Only" refers to "then" and builds a rank.
    "Only" is not limited to a special person, i.e.

    ReplyDelete
  47. Well, the appeals are out and for 5.4, TRUE is also accepted by the Board. see e.g. D 4/16.

    ReplyDelete
  48. See also our blog post on the caselaw blog: http://dp-patentlaw.blogspot.nl/2016/09/d-416-representative-vs-der-vertreter.html

    ReplyDelete