Tuesday, 7 March 2017

Pre-Exam 2017: our answers to the legal part


As last year and unlike the years before, the legal part tested many non-standard topics. Some topics were quite unexpected, such as interlocutory revision, interruption and second medical indication - even though some of those statements were not that difficult, the unfamiliarity with the topic made them difficult. Well-prepared candidates having good knowledge and knowing their material well for fast look-up should have been able to answer most of the statements correctly. I expect that, as last year, many candidates needed 2 hours for the legal part and the full 4 hours for the whole paper.

Our provisional answers for the legal questions of the Pre-Exam 2017 (paper available here:  English, French and German):


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

Some remarks:

1.4: the state of the art is everything publicly available before the date of filing. It is not necessarily novelty-destroying! So the steel disclosure of Sept 2016 is prior art for the claim to copper, as the copper claim only benefits from the later filing date, 6 March 2017. It is however not novelty destroying.

3.4: the application is pending until, but not including, the date of the mention of the grant. The decision to grant shows the scheduled date of the mention of the grant, which is 4-5 weeks later – see e.g. this recent decision to grant: decision dated 02.02.2017, mention in bulletin 1.03.2017. So, EP4 is still pending for another 4-5 weeks after today.

5.4: GL E-XI, 7.4.2 gives examples as to when interlocutory revision will be granted

6.4: difficult to find explicitly. GL D-IV 1.2 and sub-paragraphs may have been of help. Or the flowcharts from our legal courses.

7.1: note that admissible does not imply nor mean allowable.

7.2: G 1/14

9.1: Swiss-type claim format no longer allowed for second medical indication -  G 2/08; OJ 2010, 514; GL (2016) G-VI, 7.1

We look forward to your comments!

Note: the claims analysis questions are discussed here, and general impressions are here.

(c) DeltaPatents 2017

135 comments:

  1. For 1.4 how do you reconcile your comment with Art 54 (1). An invention shall be considered to be new if it does not form part of the state of the art.

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    1. First step, and ONLY step is Q is about state of the art: determine what all state of the art. No need to look at content of disclosures, just compare dates.
      Second step, if question would be about novelty: compare disclosures of the prior art to the claimed subject-matter.

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    2. For 1.4, the invention (of claim 4 of EP-G) is considered to be new as it doesn't form part of the state of the art (the catalogue).

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    3. The question 1.4 is not about whether the invention is novel, but like Roel said, just about comparing the dates. Copper is species of metal, thus the effective filing date of claim 4 is 6-3-2017. The catalogue is published in Sept 2016, thus A54(2).

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  2. for 10b, is the handling fee not due before the IB instead of the EPO?

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    1. Puzzled me a bit too, but I read the question as "A handling fee is due", i.e., as one of the fees that falls due, "for requesting IPE before the EPO", i.e., for IPE proceedings before the EPO.
      Indeed the handling fee needs to be paid to the IB, but that is in my view not asked.

      Of the statement means "A handling fee is due before the EPO (in the sense of payable to the EPO)", the statement would indeed be F

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    2. PCT AG 10.037:

      "The preliminary examination fee and the handling fee are payable to the International Preliminary Examining Authority, which forwards the handling fee to the International Bureau."

      I'd argue that the fee is paid to the IPEA, and that it isn't any of the applicant's concern what happens to the fee afterwards (unless the statement asks for whose benefit the handling fee is paid).

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    3. No, "directly to the EPO", Euro-PCT Guide 2016, item 346

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    4. Whenever the question is not clear and unambiguous, it's worth appealing :)

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    5. Oops. Colgate and Anonymous of 9:28 are correct: Demand has to be filed directly at IPEA, so also the fee has to be paid there. Thanks for the correction!

      Also the handling fee, even though that is for the benefit of the IB.

      So, no more doubts about 10.2.

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  3. Thank you for getting these up so quickly. Looking forward to the second half.

    7.3: I put false, because although R79(1) states that

    "The Opposition Division shall communicate the notice of opposition to the proprietor of the patent and shall give him the opportunity to file his observations and to amend, where appropriate, the description, claims and drawings within a period to be specified",

    as far as I can tell, the first communication informing the proprietor of a notice of opposition is issued *before* the OD issues the invitation under R79(1). In the limited time available, I couldn't find any evidence that the proprietor is also allowed to amend before an invitation under R79(1) is issued. Is there something in the Guidelines that I missed? Or am I misinterpreting the question?

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    1. I consider it a direct test of R.79(1).

      See also OJ 2016, A42, item 3

      As a real-life case, see e.g. the letters of 5.03.2012 in https://register.epo.org/application?number=EP08003327&lng=en&tab=doclist (the case leading to the G 1/16 referral)

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    2. Thanks Colgate and Roel for your remarks.

      As Colgate, I also answered 7.3 to be F. My basis for this was the slightly different wording of the question from R.79(1) in combination with GL D IV 5.2 stating:

      If the formalities officer considers that no further ex-officio objection to the
      admissibility of each or the only opposition remains, he will invite the patent
      proprietor, immediately after expiry of the opposition period or
      the period laid down by the formalities officer for the remedying of the
      deficiencies in accordance with Rule 77(2), or for the
      presentation of evidence, to file his observations concerning the oppositions _communicated earlier_ and to file amendments (...)

      So at least there seems to be some vagueness in the GL, even if, indeed, in real-life cases it seems to be handled differently.

      Best, Mark

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    3. Hmm i'm not really sure on this. Indeed, the text in the GL reads like it might be possible that the communication of the opposition to the patent proprietor can take place before the communication giving opportunity to file observations. Actually this does not even contradict the wording of R79(1).

      What do you think about this part of the GL, Roel?

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    4. If two oppositions filed, one fully OK and one with some deficiencies to be corrected under Rule 77(2), the OK-one will be communicated immediately after the oppo-period is over and the other one will be communicated once Rule 77(2) deficiencies are remedied.

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    5. But in Q.7, only one opposition filed, so no need to consider non-standard situations

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    6. OJ 2016, A42, item 3:

      3. Reply of the proprietor
      After examination for admissibility or after expiry of the time limit set by the opposition division for remedying deficiencies noted in a communication under Rule 77(2) EPC, the patent proprietor is invited to file its observations and any amendments to the patent within four months (Rules 79(1), 132 EPC). The same applies after expiry of the time limit set for furnishing cited documents or evidence not already filed with the notice of opposition.

      The patent proprietor should within the specified time limit submit a full response to the opposition(s), i.e. all the facts, evidence and arguments in support of its case. If necessary, it should submit amended documents to meet the grounds for opposition.

      The observations and any amendments filed by the patent proprietor are immediately communicated to the opponent (Rule 79(3) EPC) for information.

      At the same time, the opposition division will prepare the next action.

      If the opposition division considers it necessary, it will dispatch a communication and invite the parties to reply within a specified time limit. In most cases however the opposition division will issue summons to oral proceedings.

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  4. 2.1 I answered false, because I thought after the 31 months deadline the renewal fee can still be validly paid within 6 months with a 50% additional fee, so it is not a "must" for validly entering EP phase.

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    1. That is correct, but it must still be paid at some moment. 2.1 does not say when.

      The statement was in an earlier Pre-Exam with basically the same wording.

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    2. My thoughts were exactly the same as those of CI.

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    3. Thought correct, you can pay later with additional fee, but -as said above- then it still needs to be paid.

      Euro-PCT Guide 448: http://www.epo.org/applying/international/guide-for-applicants/html/e/ga_e_ii_2.html

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    4. On the other hand, there is J09/0018, which implies that only the requirements of PCT Art. 22(2) (copy of the application, translation, and filing fee) are necessary for validly entering the European phase. In particular Rasons No. 13, last sentence " [...]proceedings before the PCT authorities are initiated as from the filing date and proceedings before the European Patent Office only as from the day on which the requirements for entering the regional phase prescribed by Article 22(1) PCT have been fulfilled".

      I also think that there is a small but decisive difference between this question and the 2015 question. While the 2015 question was concerned with whether the request of early processing would be valid, this question here dealt with European phase entry in general, e.g. in the present case, when European phase is entered on the last day.

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    5. As a follow-up. I think J09/0018 is also in line with Rule 165 EPC, which only requires an application, its translation where applicable, and the filing fee.

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    6. R.165 is not about entry. It is about creation of the Art.54(3) effect.

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    7. Thank you for the reply, Roel.

      Yes, the renewal fee has to be paid, otherwise the application will be deemed withdrawn... but at what point?

      According to Visser, it seems that, it is not clear when the application will be deemed withdrawn under Art.86(1) EPC if the renewal fee is not paid in due time, although the Explanatory remarks of the EPO to the EPC2000 state that the rewording of Art. 86 should not change the date deemed withdrawal takes effect (Spec. Ed.1 of OJ 2003, p.159) (according to the old law Art. 86(3) 1973 the withdrawal took effect at expiry of the additional period). Newly amended R 51(2)EPC explicitly states that "the legal consequence laid down in Art.86(1) shall ensue upon expiry of the six-month period", which means the application is still pending and divisional application can be filed before the expiry of the six-month period, even though the renewal fee is not paid after all. Although the newly amended R 51(2) took effect on 1.1.2017 and was not taken into consideration for EQEs this year, it still proves that the provisions of EPC have implied it, and the new provision just makes it official.

      Accordingly, if no renewal fee is paid for the Euro-PCT application after the expiry of 6-month period after entering the EP phase, the application was still successfully entering the EP phase and pending until the expiry of 6-month period.

      Would it make sense? Have I misinterpreted or missed some provisions?

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    8. @CI:
      What you say is correct, and confirms that the renewal fee must be paid.
      The statement does not include at which moment it must be paid, so can be at entry or within the 6m (with additional fee).
      The thing that is tested is what the due date is for this case, or -to phrase it different- whether the entry determines the need to pay it 9so, whether it falls due), or whether there is only such a need later (if the R.51(1) date would be after the R.159(1)).

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    9. Thanks again. Well, if the statement had drafted the way as you wrote above, I would definitely have answered it differently. It's really difficult to speculate what is to be tested and what is the intention of the test maker to put Q2.1 and Q2.2 together, either:

      a) what fees fall due upon entry? (then one'd get easy marks for both Q2.1 and Q2.2.)

      Or

      b) does not paying renewal fee and designation fee cause different legal effects on the "validity of entry"?

      Maybe I just overly and/or wrongly interpreted the statement. Oh well...

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  5. Thanks a lot for posting your answers so quickly! I am very much looking forward to comparing my answers in the claim analysis with yours, since this is always the more critical part for me.

    Only comment from my side: In 6.3, I answered True, thinking of prima facie relevant evidence, which may be admitted under certain circumstances - but I suspected already that this might be wrong and noted a big "?"...

    Thanks again!
    Ben

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    1. Only if the opposition would be admissibe. If not admissible (as here), then nothing can be done, no matter how relevant: there needs to be opposition proceedings.

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    2. Are you sure? What about CL IV D 1, 3rd paragraph: As soon as the notice of opposition has been filed, the procedure automatically becomes bilateral, no matter whether the opposition is valid, admissible or allowable.

      I think whether the opposition is admissible or not can be challenged throughout the entire proceedings (CL IV D 2.3.2)

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    3. What i'm saying is: at the moment the opponent files his opposition (which is not admissible, but this is not checked yet) the procedure becomes bilateral. The opponent could then, "later in the proceedings", but before the end of the 9M-limit file more relevant documents?

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    4. ...sorry, the 9M-limit has of course passed here. But still: the opponent is party to the proceedings until the opposition is "rejected as inadmissible". Here, however, the opposition "is" not admissible (which is something different). So, the opponent could file more relevant documents until the the opposition is actually rejected as inadmissible.

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  6. I answered true in 8.3, because the Guidelines read that "Communications and decisions of the EPO ... are to be regarded as null and void and will be
    notified anew after resumption" in GL/2016/VI/2 and I could not find any other explicit relevant part.

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    1. That relates to communications issued in the "dead" interval.

      GL (2016) E-VI, 1.5 describes what happens with time limits that were already running.

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    2. Wow, I can't believe I missed this one even this morning. It seems that those kind of mistakes are inevitable in the pre-exam.

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    3. Don't worry to make mistakes. Everyone does, especially in questions on unfamiliar topics. You do not need 100 marks. But you should not make that many mistakes that you get below 70.

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  7. Thank you very much for promptly posting the answers! When will you publish the claim analysis part? Please, tell me you will do it today! :)

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    1. Trying to find a balance between speed and carefulness. In general and as always, the legal questions are less difficult in the sense that one can for (almost) all of them find a positive confirmation of the answer, by finding the relevant legal provision, case law, Guidelines paragraph or AG-IP. With the claims analysis, it is different: more reading with a chance of overlooking or misinterpreting of the client's application and need to understand several claim sets, prior arts as well as what they are testing... So some more internal cross-checking and discussion needed before we can post our answers. But we will today, but I cannot commit to a time yet...

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    2. Many thanks! Appreciated!

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  8. Many thanks for these answers! I hope they will 100% match the official one... this would mean I only failed a couple of statements ;)

    Small doubt about 4.3:
    - Though R.6(1) EPC specifies the 2m from filing, I still answered F because if the translation is not filed within 2m from filing, a R.58 invitation will be sent, giving another 10d+2m.
    - Also, it is not mandatory (“must”) that Andrienn files the translation himself... her representative (if she decides to be represented) can do it.

    Cheers, and thanks again,
    Bertrand

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    1. R.6(1): I agree, I had the same doubt when the question was there in Pre-Exam 2014, statement 8.2, especially as the invitation to file it within 2m comes without any penalty fee. It is the "shall" in the rule that makes the legal requirement unambiguous. The R.58 invitation is a remedy to repair what should have been done, but does not legally relax the legal requirement -- although it is seem like that and used like that in real life.

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    2. Well... Then, to be fair, they should have used the word "shall" instead of "must". Not sure about the difference in meaning between these two words, but the "must" puzzled me!

      Note that in the french version, R.6(1) and the question 4.3 BOTH use the verb "devoir"... which makes it more fair! :)

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    3. Also, I answered F to 4.2 because of the same reason (presence of R.58 invitation)... but I guess 4.2 is indeed F because R.57 does not have the "shall" as in R.6(1)? Or is there another reason?

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    4. I strongly disagree with 4.3 being True. The English version uses the word "must", which is *not* synonymous with "shall". The preamble also states "under the provisions of the EPC" - R58 is a provision which literally states that there is no legal consequence of *not* filing it in the R6(1) period. The application remains alive, pending, and with substantive rights outstanding.

      Note that compared to, say, Further Processing, there is nothing the applicant needs to do to further his/her cause - the R58 communication will simply invite the applicant to file the translation. There is no "must" about the 2 month deadline from R6(1).

      Fundamentally, this is a shockingly worded question if they intended the answer to be True, especially compared to 8.2 in 2014.

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    5. I answered F to 4.3 because the requirements of Rule 40 have not been met. The application documents consist of a description and drawings, there is no indication that a European patent is sought nor information identifying the applicant. Accordingly, a filing date cannot have been afforded to the application and therefore the deadline for filing a description has not yet been set. The deadline for filing the description will, in any event, be more than two months after the "filing" of EP-A.

      The question did not say "validly filed", which suggests that we are not to assume that it was validly filed.

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    6. If Queen had written "the show shall go on", the song would have been much harder to sing :P

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    7. Regarding the meaning of "shall" in the EPC - look at Art.84. "The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description".

      These requirements are clearly mandatory; in the EPC (as I think generally in legal parlance, of course not in regular speech) "shall" is synonymous with "must".

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    8. Anonymous at 11:36 - I disagree with this argument. A84 does not equate to the claims "must" be clear and concise - clarity is, after all, completely subjective and there are countless patents which are granted with "unclear" claims. A84 certainly stipulates that there is a certain obligation on the applicant to ensure that the claims are clear and concise, but there is no "must" involved - I can file an application with unclear claims and I will simply receive communications under A94(3) until the Examiner feels as though the application comforms with the EPC.

      Similarly, under R6(1), there is a certain obligation that the applicant *should* file the translation within 2 months, but there is no *must* - as I said above, the fact is that substantive rights still exist in the application even if this condition is not met. The application remains pending, and a R58 communication will be issued to invite the applicant (again) to file the translation.

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    9. I just want to echo all the things that have been said above about 4.3. I too answered "F".

      I went through all the same things:
      - There was no "validly filed" (at least in the English version) -> I think this was the most severe flaw
      - When I decided that they mean "validly", I was stuck with R6(1) + R58
      - Then I started looking the wording "must" vs "shall". A bit late now, but can anyone point a legal basis that these have the same meaning? "Shall" I understand to be mandatory, but does "must" have the same meaning?
      - In the end I was staring the plural in "Under the provisionS of the EPC" and decided that there needs to be more than one rule (R6(1)) to apply.

      I lost "easy marks" and valuable time.

      It would be great if someone speaking fluent German or French could check whether the formulation in other languages has been clearer.

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    10. As I mentioned yesterday: in the French version, the same verb (“devoir”) is used both in the question 4.3 and R.6(1) EPC. I don’t know why the question in English did not use the “shall” to stick to the wording of the rule... But anyway, talking to people around, it seems like “shall” in the EPC should be understood as synonym of “must”. So we (people that answered F) are wrong, and it would probably be a lost cause to appeal that question... (though I still think it could have been better drafted).

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    11. But as you can see in 8.2 in 2014, they clearly understood the phrasing of the law in English. There has no change to the law since 2014. I presume the people who write the EQE are aware of past papers. In my opinion the fact that they changed the wording, at least in the English version, should indicate that there is a change in how the question should be interpreted.

      "Shall" is simply not the same as "must" - the former simply implies the obligation, the latter implies a (negative) consequence. There is just no negative consequence of not following R6(1).

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    12. @ trin1728:

      I checked the 2014 exam... You are right: 8.2 in 2014 was drafted using “shall” (to be compared with 8.1 in 2014 which was drafted using “must”).

      So: it seems that in 2014 they carefully drafted 8.2 in order to make it exactly match R6(1), while in 4.3 in 2017 they did not... Was this on purpose? We will find out when the official answers come out. But I guess that someone that ends up with 69 having failed that question could try to appeal (by mentioning that the French version of the question matches the wording of R6(1), while the English version not ; referencing back to the 2014 exam might also help).

      Also: 8.2 in 2014 is drafted using a passive formulation “translation shall be filed”, while 4.3 in 2017 reads “Adrienn must file the translation”. One could argue that it is not mandatory that Andrienn files the translation herself: her representative (if she decides to be represented) can do it. But this is probably far-fetched.

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    13. I have run through 2014 pre-exam many times and I found the wording there much more clearer. The reasons being:
      - 2014 Ms De Jong seems to know what she is doing, as she files also opposition (Not a reason at all, I know. But that is the *first impression* that I've got from the question.)
      - 2014 Q8.2 is clearer because of explicit references "the prescribed" and "shall"
      - 2017 introduction was (too) simple. The missing word "validly" immediately raised my alarm levels. This was further amplified by the fact that filing method (e.g. fax that would have implied contact details) was missing.
      - 2017 Q4.3 itself was more vague, as discussed above

      They have definitely pushed the question more to the grey area compared to 2014.

      That all said, I think Roel is right on how this question *should* have been read.

      It will be interesting to see EPO's explanatory notes.

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    14. @Hannu:
      I think it does not say "validly" on purpose: only a description and drawings were filed, but no claims. So, it is up to the candidate whether a filing date was accorded or not, if the candidate considers that relevant. And up to the candidate to conclude whether any of the acts mentioned in the statements has an effect on the filing being valid or not.

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    15. Bertrand and Hannu, thanks for your further comments.

      For all who plan to appeal, I have actually condensed this into a much better, cleaner argument for why 4.3 this year must be False, compared to 2014, 8.2.

      In 2014, 8.2 reads: "Regarding EP-Z: the prescribed translation shall be filed within two months of filing EP-Z". This is a statement of fact and of law. It mirrors what R6(1) says. There is no applicant or representative involved. There is no doubt in my mind that this statement should be True, because it is the law. Whether or not you follow it is irrelevant in this case, and the fact that there is a remedy in R58 does not make this statement of law *untrue*.

      In 2017, 4.3 reads: "According to the provisions of the EPC, Adrienn must file the translation of the description within two months of filing of EP-A". This isn't simply a statement of fact or law, there is also an *action* made by an applicant. By saying that this statement is TRUE, it is also implying that in ALL possible situations, Adrienn will have filed the translation within two months of filing while still complying with the provisions of the EPC.

      If this statement were reworded, I would say that what it is really asking is whether under the EPC, it is possible that Adrienn files the translation after two months. If it *is* possible, then the statement *cannot* be true, because you have just stated a situation where the necessity indicated by the word "must" does not matter.

      And as we all know, Adrienn can very well have filed the translation within 2 months of receiving a notification under R58, which necessarily takes place after 2 months of a date of filing.

      @Roel - I would appreciate any comments you may have on my argument. I do believe that this question is extremely poorly worded and EPO should at least consider awarding marks for both T and F in this instance.

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    16. Hi Trin1728,

      I feel sympathy for your argumentation, but I donot think I agree there is a difference between "shall" and "must". Although I must admit that with "shall" I do not doubt as it cites the law (as you indicate, the wording of R.6(1)), even though R.58 says there is nothing really wrong if you comply with the ivitation. With "must", there is room for interpretation. But as I consider "shall" and "must" synonyms (I am however, as most candidates, not a native English speaker), I "shall/must" come to the same conclusion as if it said "shall".
      The "According to the provisions of the EPC" could even be read as "must means actually shall" as it clearly refers to R.6(1).
      The "it can be someone else than the applicant" argument is not strong: in many EPC provisions it says applicant, but it can almost always be the representative, as he acts on behalf of the applicant. (It would also make 4.2 and 4.4 meaningless tests, as the representative could do that as well - they are however F for other reasons).
      So, although 2014-8.2 wording may be considered better than the 2017-4.3 wording, I donot think that the question is extremely poorly worded. Whether the Exam Committee would agree with you that it leaves enough room for the interpretation leading to F, I really donot know.

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    17. Roel, thank you for your comments.

      I understand where you are coming from. I still just don't understand why they didn't copy the wording from 2014, 8.2.

      I feel as though this highlights a fundamental flaw with the pre-Exam. I was penalised even though I (feel as though) I clearly understand what is permitted by the law. I'm not sure how a question like this would thus select for people who are more fit to practice.

      Hopefully I will not be (ultimately) affected by the outcome of this question, but it is just worrying that this ambiguity is not thought of months ago given the size of the Examination committee, who all, hopefully, know the EPC.

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    18. Yes, that is a pity. I had the same feeling in 2014, with 8.2: some candidates who knew that there was not a real problem if the 2m period of R.6(1) was missed because the R.58 would allow them to fix it, came to the wrong conclusion (i.e., concluded it was not that "the translation shall be filed within 2m"), whereas candidates that were unaware of R.58 and just saw R.6(1) came to the expected answer. Fit-to-practice to read the Rules, or fit-to-practice to know how it really works is not the same, as a student of mine said. (Also see our blog from that time).
      In 2014, there could not be any doubt about what the -only- correct answer was because the statement literally cited the Rule - that can never be wrong (well.. in PCT it can... ;-)). That you doubt now is well understandable - and again, it is the candidates that do not know about the R.58 invitation for a missed translation that had an easy one (but whether thatb would have helped them to pass... this is one of the best known and most used provisions, to my knowledge and expectation).

      By the way, if this would be an open DI question, you would probably have gotten close to full marks with a R.58-reasoning: DI is more tolerant by its nature to interpretations (valid or not) that differ from what was expected, and reasoning gives marks, most often even more than the final answer in DI.

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    19. Yes I have heard as much from colleagues who are doing D.

      As a final comment, as a native English speaker, the problem with how they have amended this question is also borne out by the following practical situation:

      A client asks you: "should I file a translation within 2 months of filing" - the answer is "yes", as the law says so. A follow-up comment to say that it is not necessary would also suffice. Answering "no" would be poor practice as it is misinforming the client of the obligations of the EPC.

      A client asks you: "must I file the translation within 2 months of filing" - the answer cannot possibly be "yes", as this would then be incorrect legal advice, as the law provides a situation where you *can* file a translation past the deadline specified by R6(1).

      I do not know French or German well enough to understand if the same intricacy exists, or indeed if the question can even be formulated in such a way.

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    21. Hi Trin1728, Hannu and Bertrand D,

      I have followed the discussions about 4.3.
      Actually I also put F on that question. I definitely agree to file an appeal, I think there is a room for discussion when compared to 2014 which clearly make use must and shall to make the difference. Please let me know.

      Kind regards,

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    22. Thanks a lot Roel, your comment clarified my thoughts.

      I did a summary, this is how I see it at the moment: https://dl.dropboxusercontent.com/u/23250820/Q4.3.pdf. Please feel to disagree.

      The problem with "an invalid filing" seems to boil down to an undisclosed filing method. I think one can exclude the possibility that the application would have had another *not mentioned sheet of paper* having the necessary contact information, as the question was worded "consist of".

      Hence, I think there is room to argue "invalid filing" by hand. "Invalid filing" could have (theoretically) happened by post as well, but maybe not so likely given the wording of the question.

      To me the words "with the EPO" do not exclude any filing method, but then again I'm not a native English speaker.

      If it is "a valid filing", then there is "only R6(1)" vs "R6(1)+R(58)" -discussion.

      Delete
    23. @Hannu: I think we are now overemphasizing whether the filing was valid or not. If it says "he filed an EP application with the EPO", you can assume that the "trivial" requirements are complied with - otherwise the question would say "the EPO received a description". A fair and realistic reading and understanding of the question with statement 4.3 would be the "when does a translation need to be filed" - and then we are in what you call the "only R6(1)" vs "R6(1)+R(58)" -discussion.

      Maybe the word "validly" was actually not there for another reason that I thought and wrote initially: can you call it "validly filed" (not defined) if no fees paid yet, no translation filed yet, ... I think you can, but maybe this was the reason? Or maybe simply not thought of, as the focus of all 4 statements is clear?

      Delete
    24. I think it is also worth noting that the Guidelines for Examination A-VII 1.1 indicates that:

      "a translation into one of the official languages must be filed within two months of the date of filing (Rule 6(1))."

      Which clearly uses 'must' rather than 'shall' - and makes things a little clearer.

      Delete
    25. My previous comment seem to have disappeared.

      Just wanted to thank @Roel and @Anynomous for your comments. I'm now convinced that there is no problem.

      Delete
    26. Hi,
      I think we missed the problem originally mentioned with question 4.3 which was the clearly difference between "must" and "shall" used repectively in questions 8.1 and 8.2 in the prexeam 2014. Since 2014 Rule 6(1) did not changed.

      So @Anonymous 17:28, according to your comment, could please explain that?

      Many thanks in advance and kind regards,

      Delete
    27. I mean explain why in 2014, candidates should differenciate the "must" and "shall" from Q8.1 and 8.2 in order to answer correct and in 2017 not, also well explained by Trin 1728?

      Kind regards,

      Delete
    28. The Guidelines reference will kill my argument I think. I will simply point out that the EPO Board of Appeals don't even follow the Guidelines...

      Delete
    29. But... the Boards are not bound by the Guidelines, whereas the EQE syllabus explicitly says that you will be tested on your knowledge of the Guidelines!

      IRPEE:
      Rule 10(4) The paper shall consist of
      (a) legal questions relating to the candidates' knowledge of the documents referred to in Rule 22(1) and
      [...]

      Rule 22 General instructions for answering the papers
      (1) Candidates are expected to be familiar with at least the following documents in the versions valid as at 31 December of the year prior to the pre-examination or the examination:
      (a) the EPC
      (b) the Implementing Regulations to the EPC
      [...]
      (m) the Guidelines for Examination in the EPO

      Delete
  9. Thanks for the answers! I do have a follow up remark/question on 7.1: Rule 80 EPC implies that amendments are only admissible, if due to an opposition ground, which applies in this case (novelty). R. 80 EPC itself does not state that the claim has to be novel. However I read on Art. 101(3) EPC that amendments would only be allowable, if the amendments meet the requirements of EPC, including novelty. In German the distinction between “admissable" ("formal zulässig") versus "allowable" ("materiell zulässig") at least to me didn't appear that clear in the wording of the question (just "zulässig") (see e.g. GL H I for the translations of admissible/allowable). Any chance the question was unclear? ;)

    ReplyDelete
    Replies
    1. Not unclear in my view. Admissible and allowable are legally different things: admissible means that the requests will be let in into the procedure; allowable means that the requests are checked against the requirements of the EPC, so whether the claim is novel, inventive, OK with 123(2), clear, ...
      Rule 80 says that amendments will be admitted if occasioned by a ground of opposition, but that the ground does not need to actually have been raised. The ground here is lack of novelty - so it is admitted. Whether it will be allowed or not is a different topic - probably not, as it is not clear.

      Delete
    2. Falls das hilft: Im Deutschen würde ich eher eine Unterscheidung erwarten zwischen (formal) "zulässig" und (materiell) "begründet".

      Delete
    3. GL H-I: " Erstens müssen die Änderungen formal zulässig sein, d. h. sie müssen vom zuständigen Organ des EPA in das Verfahren zugelassen werden. Zweitens müssen die Änderungen materiell zulässig sein, d. h. sie dürfen insbesondere nicht dazu führen, dass ..."

      Delete
    4. Stimmt schon. In Bezug auf 123(2) Änderungen schreiben die Richtlinien aber meist auch nur "zulässig" und meinen "allowable". So wird's dann auch im Engl. übersetzt. Aber gut ich schätze man kann argumentieren, dass die R. 80 einen Hinweis auf die Prüfung einer nur formellen Zulässigkeit meint ("admissable").
      Im Kley (5-20) war halt in einer Box unter "Materielle Anforderungen im Einspruch, Regel 80" aufgeführt, dass die Änderungen gemäß Art. 101(3) EPÜ allen Erfordernissen des EPÜ genügen müssen. Über die tiefere Bedeutung des Wortes "zulässig" hat ich mir in der Prüfung noch nicht so die Gedanken gemacht ...

      Delete
  10. Regarding 10.4, my thoughts where that amended claims will only be published if they are made under Art. 19 PCT, but Chapter II amendments will not be published together with the International publication, even if they were submitted "in time".

    ReplyDelete
    Replies
    1. Broken toothbrush7 March 2017 at 10:56

      Didn't the question state that the amendments were filed with the International Bureau? I guess that by necessity implies A19 amendments, not A34 amendments, since the latter are filed with the IPEA.

      Delete
  11. Unfortunately, the question does not mention Chapter II and just talks about amendments sent to the IB, which would appear to be Article 19 amendments. Therefore they will be published.

    TGO

    ReplyDelete
    Replies
    1. The question does not mention Chapter I either, only "amendments". According to Rule 59.3 b)-c) PCT, if you file the Chapter II request with amendments at the IB, it will be forwarded to the IPEA. In such a case, there will be amendments that are received by the IB but that will be not be processed.

      Delete
    2. f amendments are filed before technical preparations, it will almost certainly not be Art.34 amendments: the time limit for a demand is 22m from prio (if ISR in time). Further, as broken toothbrush indicated, those should be file directly with the EPO as IPEA.
      Also, no information in the question that the amendments referred to in 10.4 would be Art.34 amendments. The statements have to be read independent of eachother, the only depend on the question.

      So, ISR transmitted to applicant today, nothing said about CH.II in 10.4, so we are at the moment in time to consider Art.19 amendments. Which need to be filed with the IB. So the amendments referred to in 10.4 must be Art.19 amendments.

      Delete
  12. Thanks for these. 10.3 seemed as though it could be either true or false. The euro-PCT guide states that the opportunity to hold a telephone call is at the discretion of the EPO so it doesn't seem correct to say that the applicant is "entitled" to oral communication

    ReplyDelete
    Replies
    1. This was exactly my thought on it, so would appreciate clarification if I'm wrong!

      TGO

      Delete
    2. I answered T based on Art.34(2)(a)PCT.

      Delete
    3. Bertrand of Rijswijk7 March 2017 at 11:49

      Yes, which is further developed in PCT-AG 10.067 : "the applicant has a right to communicate orally"

      Delete
    4. OJ 2011, 532: "5.1 Before the IPER is established, an applicant may file a request for consultation by telephone. The EPO will grant such a request as a rule only once (Rule 66.6 PCT). As a consequence of the new practice under Rule 66.4 PCT, the procedure concerning consultation
      by telephone is amended as follows: [...]"
      and Euro-PCT Guide 386-389.

      So, EPO implements Art.34(2)(a) PCT & R.66.6 PCT --which gives the applicant the right to at least one personal interview-- as follows: only in the form of an oral communication by telephone, only if there is something to discuss, and only once.

      So, the answer is T, but it is not an unlimited right.

      Delete
    5. 10.3: As the question states "today" one could argue F, since *today*, it is not possible.

      Delete
    6. @Anonymous7 March 2017 at 14:55

      Are you serious with that comment?
      If so, then where in statement 10.3 is the requirement that that he is entitled to communicate today?

      Sounds like you a trying to find an excuse how wrong answer can be considered correct based on a far-fetched reading of the question... or?

      It is easier to pass the exam if you try to understand what they are trying to test than if you are trying to find arguments why something might be read differently. And with yesterday's weather in The Hague, there were better ways to spend the afternoon: great terraces, nice beach, good beach clubs, ...

      An unpleasantly surprised tutor

      Delete
    7. @Anonymous of 7 March 2017 at 14:55:
      I agree with Anonymous 7 March 2017 at 15:08: the statement does not say that he is entitled to orally communicate with the examiner today, but just that he is if he is in Ch.II proceedings.
      Being entitled to something does by the way not imply/ mean that you can do it at any moment of your choice: the examiner and you may agree on a date and time as to when.
      In my view, the statement is perfectly fine and the answer is unambiguously T, even though this entitlement is not an unlimited right to orally communicate aat any moment and as often as you would want to.

      Delete
    8. @unpleasantly surprised tutor:

      Actually, as an examinee, i think it should not be my task to understand what they are trying to test but to understand the question as is. Don't get me wrong, I see that my point is quite weak, but what if the question 10.3 was placed at position 10.1 (just a different order) - i think it makes a difference...

      Delete
  13. Thank you for your answers. I think it was a fair legal part. Lets see how the claim analysis will be interpreted by the EPO.. I expected a further increase in complexity as observed from 2015 to 2016 but such did not happen imho. It was a fair test in general. Good luck!

    ReplyDelete
  14. Thanks for getting your answers up so quickly!

    For Q1 - is there an argument that steel and copper are implicitly disclosed in the priority document (and therefore all the claims are entitled to priority)? It seems as though this is a similar situation to that described in the case law book section on added matter at II E 1.2.2, which states:

    "In T 1107/06, quoting T 860/00, the board took the view that when there is a generic disclosure of the invention together with a specific disclosure of an illustrative or preferred embodiment falling under the generic disclosure, it would normally be implicit for the skilled person that all the other embodiments comprised in the generic disclosure without being mentioned specifically also form part of the invention. The non-exemplified or non-preferred embodiments are thus implicitly disclosed as the logical complement of the exemplified or preferred embodiments."

    In this case, is metal not the 'generic' disclosure of the invention and aluminium just one preferred embodiment, making other metals implicitly disclosed?

    I originally had the same answer as you, but changed it at the last minute. The more I think about it, the more I think that this was a foolish decision.

    S

    ReplyDelete
    Replies
    1. GL (2016) G-VI, 5. So, species not directly and unambiguously derivable from genus, nor from other species (unless a very specific case, not here)

      Delete
    2. Thanks for the response. Yes, I saw that section of the guidelines - however it relates to novelty and not the test for whether something is disclosed. My understanding of G 2/98 is that the novelty test should not used for assessing whether a claim is entitled to priority.

      (However, having looked at it again and thought about it some more, I do agree with your answer).

      S

      Delete
    3. G 2/98 says it is a bit more subtle: "not novel" does not yet mean "disclosed" (a genus is not novel over a species, but it also not disclosed). But novel means not disclosed (a species is novel over its genus, but not disclosed.
      G 2/98's test is whether the skilled person is presented with information that is not directly and unambiguously derivable by the skilled person (using his common general knowledge for interpretation but not for supplementing).

      Delete
  15. Should the answer of 7.4 Not be True. Namely, the patent propriator submits an amended claim. I would interperet this as a request to reject the Opposition and to remain the patent in amended form. What are your thoughts on this?
    Max

    ReplyDelete
    Replies
    1. Hi Max,
      I considered the three possible outcomes: reject the opposition (=maintain as granted), maintain in amended form, and revoke the patent.
      Art.101(2) and GL D-VIII, 1.3 say "1.3 Rejection of the opposition -- If the Opposition Division is of the opinion that the grounds for opposition mentioned in Art. 100 do not prejudice the maintenance of the European patent unamended, it will reject the opposition." Which I interpret as rejection only if patent is OK as granted.
      D-VIII, 1.4.1 "If the Opposition Division is of the opinion that, taking into consideration the amendments made by the patent proprietor during the opposition proceedings, the patent and the invention to which it relates meet the requirements of the EPC, it will issue a decision to maintain the European patent as amended." Which is the current situation. So this is what the proprietor requests.

      Delete
    2. I think the wording "to reject" confused me; I interpreted it as meaning that as the amendments are filed in response to the opposition, they are inherently intended to overcome the opposition and cause it to end - i.e. be rejected.

      So I'm happy with your reasoning and I do believe that in answering "T" I was wrong, but I think that the wording of the question was a little ambiguous.

      Delete
  16. I understand, thank you for your fast response!

    ReplyDelete
  17. Thanks for your answers. I am not sure about 5.2. To my opinion the appeal fee is reimbursed at 50 % when expired the time limit of appeal. Thus THE fee (the full fee the plaintiff has paid) is not reimbursed. What do you think?
    John

    ReplyDelete
    Replies
    1. I agree Unknown @ 23:36. I looked up Rule 103(1)(b) in the exam. I put False as I thought the "and" implied that TWO conditions need to be met. Namely:-
      the statement of grounds had not been filed (which they had); AND
      the 4 month deadline for filing those conditions had expired.

      Rule 103(1)(b) does not say "OR".

      Therefore since the grounds have been filed, its False?

      This would kind of make sense in practice since it protects the EPO in that work may commence before the four month deadline is up.

      Delete
    2. The question says that the ground have NOT yet been filed. Last sentence before "For each of the statements..."

      Delete
    3. I can't argue with that, and I can't believe I actually missed that in the exam. Thanks for the response.

      Delete
  18. Paper now available via the link in the post, just above our answers (in English).

    With thanks to the candidate that provides this cleann copy.

    ReplyDelete
  19. First, thank you for this correction. I have a problem with question 7.1. I answered 'true' and here is my reasoning. If the amended claim is not novel, then the amended claim is not admissible. Therefore, the amended claim is admissible only if the amended claim is novel. In my eyes, it does not mean that other requirements will not be he checked. My answer would have been different if the wording of the question had been "if and only if" tough.

    ReplyDelete
    Replies
    1. See above on difference between admissible and allowable.

      Note it is an amendment in response to the notice of opposition. No we are not in a late-filed request situation where allowability may indeed be decisive for admissibility.

      Delete
    2. A candidates asked me if I had a clue why the statements were in the order given, and why 7.3 was not the first statement. He also asked why statement 7.3 was there at all, as 7.1 basically already tests hether you know the requirements for doing so, and 7.2 already implies that the aplicant was entitled to file amendments in reaction to the notice. I could not give a reason. Maybe an earlier draft of Q.7 has another statement at the place of 7.3?

      Delete
    3. Sorry, I missed your previous answer. Thank you.

      Delete
    4. Roel, what about the comment of Anonymous7 March 2017 at 17:40 (and my comment below)?

      GL D IV 5.2 (first paragraph) reads a bit like as if there is a difference between the communication informing of the opposition and the communication giving opportunity to file observations. R79(1) does not say that these communications are sent together.

      Delete
    5. ...me again:

      sorry, now I have seen that you already referred to the "communication of a notice of opposition - first information to patent proprietor" which was issued at 5.3.2012 in https://register.epo.org/application?number=EP08003327&lng=en&tab=doclist

      Still, i don't see, why the patent proprietor is entitled to file amendments already in reply to this first communication. Actually, it could happen that the opposition is deemed not have been filed or inadmissible due to formal deficiencies.

      Delete
    6. Probably it depends on the interpretation of the question. On the one hand, one could argue that the patent proprietor can probably already file amendments in reply to the first communication. But: the question is not if he "can" file amendments (actually one "can" file at any time) but the question is if he is "entitled" to file. The entitlement depends on whether the opposition is admissible or not and this is not yet clear when only the first communication is there. Therefore the patent proprietor is not forbidden to file amendments, but he is also not entitled yet. So the answer should be F.

      Delete
    7. Dear Roel:
      "A candidates asked me if I had a clue why the statements were in the order given, and why 7.3 was not the first statement..."

      In my view, the answer to 7.3 is true (T). The grounds of opposition relate the allowabilty of the granted subject-matter - not their admissibilty. Compatibility with Art 84 (and Art 123) of the amended claims is examined ex officio (only) - it is not up to the applicant to object and file a request in this regard (see the question stating "valid object").

      Delete
    8. Dear KMX,
      I donot get your point. Statement 7.3 is in my view an admissibility question (is he allowed to file amendments) of procedural nature. I tend to agree with the suggestion by that candidate that the "chronological order" is: 7.3 tests whether you are allowed to amend in response to an oppo, 7.1 tests which types of amendments are admissible (Rule 80), 7.2 tests which EPC requirements are examined on amended claims, and 7.4 is about the type of decision requested *the latter could be put more-or-less at any moment in chronology). So I understand the candidates question. The only answer I can give is "The order of the statement does not matter, as they are independent." - byt aht does not answer the "why"...

      Delete
    9. Dear Roel,

      sry - my remark was unclear. My point is the following. I meant 7.2 not 7.3:

      7.2 reads:
      “The opponent cannot validly object to clarity of the amended claim, since lack of
      clarity is not a ground for opposition.”

      The grounds of opposition relate to the allowability of the granted subject-matter. However, the same as in the case of the other questions of 7, 7.2 is about the admissibility (of amendments). Compatibility with Art 84 of amended claims is examined as far as I know only ex officio. It is therefore not up to the opponent to object and file a request in this regard - clarity (Art 84) is no ground for opposition. Stated differently, based on the grounds of opposition, the opponent can only validly object to amended claims which have already been considered by the EPO as admissible (complying with Art 84).

      Therefore 7.2 should be true (T): the opponent cannot validly object to clarity of the amended claim, since lack of clarity is not a ground for Opposition (and only examined by the EPO ExOfficio)

      Delete
    10. Dear KMX,
      7.2 does not relate to grounds of opposition, which relate the the GRANTED claims, but to examination of AMENDMENTS: amendments are also examined for clarity - G 1/14. During opposition, the opponent is a invited to/ entitled to comment on the proprietor's submissions. So, the opponent can validly object to the unclarity introduced by the amendment.

      Delete
    11. @Kathi 10 March 2017 at 13:05 AND 23:42:

      I agree with you that the first letter is not the R.79(1) invitation to file amendments.

      The first letter is form 2316 01.12 "Communication of a notice of opposition" which starts with "You are hereby informed of a notice of opposition ..." and which says "An invitation to file observations and to file amendments, where appropriate, to the description, claims and drawings (R.79(1)EPC) will be issued SEPARATELY." The 2316 form does not include any invitation to file observations or amendments.
      It is only the later R.79(1) communication "Communication of notices of opposition" (form 2317A 12.07), which is send once the 9m period expired, that includes such an invitation. It says: "The notice of opposition indicated above has already been communicated to you. You are requested to file your observations within a period of four months from notification of this communication. You may also file amendments, where appropriate, ...."

      So, the explicit invitation is only in the second one, but from what moment on is he entitled to file amendments in response to the notice of oppo? I cannot find anywhere that is is from the first, so should not we assume from the second, i.e., the R.79(1) communication?

      Delete
    12. Hi Cathy, Colgate and Anonymous,

      I get your point. It is a bit confusing if you know that the Form 2316 communication exists, but in my view, 7.3 refers to the R.79(1) communication. These are my thoughts:

      When a notice of opposition is filed, the proprietor is informed twice:
      (1) first by the Form 2316 communication "Communication of a notice of opposition - first information to patent proprietor" (see Anonymous just above) which is issued promptly after it is received, and
      (2) second, the Form 2317 communication "Communication of a notice of opposition and request to file observations" which is issued under R.79(1) after the opposition period expired and the notice(s) is/are examined for certain R.77 requirements.
      The EPC and the GL do not mention the first communication (I do not think it is covered by D-IV, 1.5, nor D-IV 5.2). The R.79(1) communication is mentioned in GL (2016) D-IV, 5.2. The R.79(1) communication invites the proprietor to comments and amend - amendments then need to be within the limits of R.80. I see no reason why the proprietor would not be allowed to amend in response of the first communication: Art.123 and R.80 apply in my view (right to amend a patent, resp. which types of amendments), and the notice kick of the opposition proceedings.

      In my view, the question reads on the R.79(1) communication as it says in the body of the question "An admissible oppo was filed [...]" before "The notice of opposition was communicated to the patent proprietor who in reply filed...", which shows the chronological order between admissibility check (R.77) and R.79(1) issuance.
      The statement clearly refers to this communication, i.e., the one send after (initial) admissibility check. It does not refer to "the first communication" (so not to the Form 2316 one). So, it is the R.79(1), and the answer is thus T.

      Delete
  20. Hello Roel,

    Thank you very much for your nice work and argumentation.
    According to 9.4 I have a question, while I am thinking of question 5.4 of 2016. 5.4 in 2016 (in English and French) was a question in general (Hassan was not the representative. The BoA decided it different for the German version).

    In 9.4 of 2017 in German is stated:
    ----
    Der folgende Anspruch entspricht den Bestimmungen des EPÜ:

    9.4 Substanz Z zur Verwendung als Medikament.
    ----
    By reading the question 9.4 carefully, there is neather a link to the illness Y or X nor to the known use of the substance Z as a medicament. So the question can be understood in generel. For this general question there is an identical wording in the GL-VI, 7.1, table, example B: "Erzeugnis X zur Verwendung als Medikament".

    So why do you see there an unambiguous connection between the facts of the case and the question?

    BR

    ReplyDelete
    Replies
    1. If the use of substance Z for treating disease Y was not yet know, we could claim substance Z as a medicament, art.54(4), without limiting it to disease X. So then, 9.4 would have been T.
      This claim is now however not novel, so does not comply with all requirements of the EPC.

      Delete
  21. I thought about this in the pre-exam. But isn't there a difference between

    "Is this claim patentable?"

    or

    "Does this claim fulfill the requirements of the EPC"?

    Afaik, the requirements might be fulfilled without a technical review. A claim can fulfill the requirements of the EPC but may not be patentable under the requirements of the EPC. At least this is what I think I learned after a talk with a tutor. Maybe I understood it wrong.

    ReplyDelete
    Replies
    1. Please explain what you mean. The only difference I see is in formal requirements as to line spacing, font size, two-part form, maybe unity, but that is not the subject of the question. In my view, Question 9, its facts, and its four statements are all fully clear and complete.

      Maybe you refer to the different meanings of the word patentable? Patentabe can mean, depending on the context:
      - not excluded under Art.52(2)&(3);
      - satisfying 52(1): technical, new, inventive, industrially applicable;
      - satisfying all patentability requirements, so also Art.82-84, 76(1)/123(2);
      - satisfying all EPC requirements, so also all formal requirements.

      Delete
    2. I would say that either way, the answer is False. The claim is not patentable as it its not novel, and it doesn't fulfill the requirement of art 54 by virtue of which it doesn't fulfill the requirements of the EPC.

      Delete
  22. Such a waste - I entered 3.1 and 3.2 as "true" because I figured they could be revived and thus would be pending. Besides those two, my answers match the set above (hoping that's indeed the correct set of answers!)

    And just so you know it: those two were two of the few that I did not check in any book "because I knew them for sure." That's how it goes. The ones you know for sure are the ones you should check mos def.

    ReplyDelete
    Replies
    1. Indeed you can revive 3.1 using further processing, to make the application pending again. But it has not (yet) been revived, so is today deemed to be withdrawn, and thus not pending.

      Whether you ca revive 3.2 cannot be known based on the information available. The only way to remedy the deemed withdrawal (at the end of the 6m period of R.51(2)) would be re-establishment, but we do not know whether the all due care requirement is fulfilled. But whether we could or not, today the application is deemed to be withdrawn and thus not pending.

      Delete
    2. GL A IV 1.1.1 says "Depending on the non-observed time limit, remedying the loss of rights may be effected either by means of an allowable request for further processing or, where applicable, by a request for re-establishment of rights" .../..." no loss of rights has ever occurred and the application will have been pending throughout".
      So in my opinion 3.1 and 3.2 are T and still pending as the time limit for remedying has not yet expired. Aren't we supposed to consider any potential way to remedy to a situation before it is too late? I agree nothing says we've considered yet an action to remedy but as it is not too late to do so, the "application will have been pending throughout". So to me it is pending on March 6th.

      Chris.

      Delete
    3. Hi Chris,

      The question was not whether you can make it pending again, or whether you can still file a divisional (which requires you to make it pending again first).
      The question is whether it "IS pending TODAY", and you have all the facts (R.22(3) IPREE). So, 3.1 and 3.2 are clearly F.

      3.1 and 3.2: GL A-IV, 1.1.1: "If an application is deemed to be withdrawn due to the non-observance of a time limit (e.g. following failure to pay the filing fee (Art. 78(2)), to pay a renewal fee (Art. 86(1)), to pay the fee for grant and publishing or the claims fees, or to file the translation of the claims (Rule 71(7)) in due time), the application is NO LONGER PENDING WHEN THE NON-OBSERVED TIME LIMIT HAS EXPIRED."
      3.2: see also J 4/11

      Delete
    4. Thanks Roel.

      What confuses me is the fiction created in the GL as it says "no loss of rights has ever occurred and the application will have been pending throughout". To me, by reviving the application you'd have made it pending throughout and consequently, by an action taken on March 6th or later you'd have kept the application pending on March 6th.
      I wonder what will be the official position of the EPO and if someone will appeal this question.

      Thanks again for your great help and support over the years.

      Chris.

      Delete
    5. Hi Chris,

      yes, it is correct that by reviving the application yoy can make it pending throughout. But the quesion does not say that that was done. And you need to stick to the facts of the questions, so it was not done. And if it will be done in the future, it would not change the situation today (it would only retroactively create a legal fiction that it was pending today -- but that is a future legal fiction, it it would happen at all).

      If your answers needs additional facts or acts that are given, and are not implicitly directly and unambiguously derivable from the question, they are not to be considered - Rule 22(3) IPREE (rephrased in my own words). The answers to 3.1 and 3.2 would have been T if the statement would have included the facts that you refer to "and further processing / re-establishment was requested and granted" - but they did not.

      Delete
    6. Perfect !
      100% clear, thanks.

      Best regards,

      Chris.

      Delete
    7. Hi Chris,

      Note the Guidelines explicitly address that you need to REVIVED first, by sucesfully remedying the loss-of-rights. I.e., they distinguish between the phases: no time limit missed yet (pending), deemed to be withdrawn (not pending), remedy requested but still deemed to be withdrawn (not pending), remedy granted (pendency restored, deemed retroactively).

      GL A-IV, 1.1.1:
      Once the application is deemed to be withdrawn, a divisional application can only be validly filed if the loss of rights, as communicated pursuant to Rule 112(1), is subsequently remedied. In such a case, the application is deemed to have been pending throughout.

      Depending on the non-observed time limit, remedying the loss of rights may be effected either by means of an allowable request for further processing or, where applicable, by a request for re-establishment of rights (see E‑VII, 2). Furthermore, if the applicant considers that the findings in the notice of loss of rights are inaccurate, he may also apply for a decision under Rule 112(2). If the competent EPO body shares his opinion or if it gives an unfavourable decision which is subsequently overturned on appeal, no loss of rights has ever occurred and the application will have been pending throughout (J 4/11, reasons 22).

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  23. With the same arguments as Anonymous (15 March 2017 at 15:52), I also considered 3.1 and 3.2 as T.

    ReplyDelete
    Replies
    1. See my answer of 16 March 2017 at 09:47 to that earlier post.

      Delete
  24. Any chances that Delta patent got it wrong!??? :)

    ReplyDelete
    Replies
    1. Yes, we may have some answers different from what is expected, we may have some wrong.

      But if you refer to 3.1 and 3.2: no chance we got those wrong (in my opinion...)

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  25. The Examiner's Report is available on the EQE Compendium website:

    http://documents.epo.org/projects/babylon/eponot.nsf/0/D5EAA4BE858F2350C12580F20031EB92/$File/ExReport_PreEx2017.pdf

    Our answers to the legal questions all agree with those in the Examiner's Report:

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

    ReplyDelete
    Replies
    1. The results are bow also on the EQE webpages.

      See http://pre-exam.blogspot.nl/2017/03/pre-exam-2017-results.html

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