Monday, 23 February 2015

Our (provisional) answers to the Legal Part of Pre-Exam 2015


Before checking your own answers with the provisional answers given below, please first check out on the blog post  First impressions of Pre-Exam 2015?  for general questions and general comments about Pre-Exam 2015 (click here for EnglishFrenchGerman version)!, and post your first impressions there. The Claims Analysis part is discussed in a separate blog post: Our (provisional) answers to the Claims Analysis Part of Pre-Exam 2015 

My provisional answers (not yet thoroughly reviewed; and subejct to any typos...) are:


Q.1:  T, F, T*, F**;
Q.2:  F, T, F, T;
Q.3:  F, T, F, T;
Q.4:  T, F, T, F;
Q.5:  F, T, F***, T****;
Q.6:  F, F, T, F;
Q.7: T, T, F, T;
Q.8: F, T, T, F;
Q.9: T, F, T, T;
Q.10: T, T
*****, F, T.

Key legal basis and/or argumentation to the answers is given below. I will double-check the answers today (Tue Feb 24) with my colleague tutors in DeltaPatents. Some comments for now:

* /** Q.1: not really a nice question to start with: 1.3 and 1.4 may have taken quite some time.
* For 1.3, I originally answered False as I did not recognize that the "change of representation" from A to B implied a termination of the authorization of Mr.A. Oops... See the discussion below: thx guys! 
*** 5.3: a bit of a tricky question, but almost the same as 4.2 of Pre-Exam 2014: an easy mark?!
**** 5.4: OJ 2013, 156, example 5, item 22; "on" in the statement.
***** 10.2: who of you ever tried?

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 26-02-2014 23:59"), whereas using your real name or a pseudonym is more personal, more interesting and makes a more attractive conversation.


1.1 T - as San Marino is EPC state (since 01.07.2009)
1.2 F - as Mr. A is a prof.rep. not needed - OJ 2007 - SE3 - L.1, Art. 1 / GL A-VIII, 1.5
1.3 T - not needed as the informing by Mr,A of the change of representative implied a
            termination of Mr.A's authorization - OJ 2007 - SE3 - L1, Art. 1(2)
1.4 F - not in Rules, not in RFees and not in Schedule of Fees and Expenses.


2.1 F - 15/1/15 + 10d [R.126(2)] -> 25/1/15 R.126(2) does not apply to fictitious date of notification 
2.2 T - 15/1/15 + 10d [R.126(2)] + 4m [R.131(4)] -> 25/5/15 (Whit Monday) [R.134(1)] -> 26/5/15
2.3 F - loss of rights notification can only be send at the earliest on 27/5. so have at least until
            27/5/15 +  10d [R.126(2)] + 2m [R.135(1), R.131(4)] -> 6/8/15 
2.4 T - must request before original expity, so at the latest 26/5/15 (see 2.2)
Note: also when wrongly concluding 26/1/15 to be fictitious date of delivery, calculation under 2.2 gets you to 26/5/15, so does in my view not optimally test the udnerstanding of R.126(2) and  R.134(1) - and wrong order of 10 day and 4m would also not have changed the answer for 2.2. 

3.1 F - 16/1/15 + 1m [R.40(1)(ii) PCT, R.80.2 PCT] -> 16/2/15 -- no 10-day rule in the PCT
3.2 T - 21/2/14 + 12m [Art.8 PCT, Art.4C PC] -> 21/2/15 (Sat) [R.80.5] -> 23/2/15
3.3 F - EPO as ISA, so cannot be SISA - R.45bis.9(b); AG-IP 8.003
3.4 T - R.40.2(b)

4.1 T - 18/6/14 + 9m [Art.99(1)] -> 18/3/15 (Wed)
4.2 F - no fee reduction for opposition anymore under R.6(3) and RFees 14 since 1 April 2014.
4.3 T - EP-Y in an official EPO language, so not needed
4.4 F - he also needs to provide for interpretation - R.4(1), last sentence

5.1 F - 2/8/12 + 31m [R.159(1), R.131(4)] -> 2/3/15 (Mon)
5.2 T - missed entry can be remedied using FP, need multiple FPs for each of the missed acts
5.3 F - commenting to the deficiencies in the WO-ISA is enough under R.161(1)
5.4 T - renewal fee under R.51(1) due on 31/8/14, so before (early) entry on 27/2/15, 
            so must be paid on entry, "as if 31m period expired on the date of early entry"
            See OJ 2013, 156, item 22 (Example 5) and HTG-II (2014), 434-435
            both referred to in GL (2014) E-VII, 2.9
6.1 F - R.137(5) requirement, not Art.123(2) -- same as in Pre-Exam 2012, 15.4
6.2 F - e.g. GL (2014) H-IV, 2.2, last sentence
6.3 T - e.g. example helical springs in GL (2014) H-IV, 2.5
6.4 F - should have basis in PCT application as filed, not in added matter

7.l T - Art.87(1)
7.2 T - not in DE-C
7.3 F - priority is assessed per claim; a later application may include more detailed embodiments
7.4 T - this genus "solution" not in DE-C, only the species "solution in water"

8.1 F - claim 2 has valid pri from DE-C, so scient publ is not prior art, Art.89
8.2 T - claim 1 has no pri, and scient publ in Sep so earlier, and Art.54(2)
8.3 T - claim 3 has no pri, and DE-C publ in Mar so earlier, and Art.54(2)
8.2 F - scient publ is Art.54(2) and shows the solution of X in water as claimed

9.1 T - Guidelines (2014) G-VII, 3, last sentence
9.2 F - can already be challenged in R.70a response
9.3 T - GL (2014) F-III, 1 (T 727/95 reference)
9.4 T - GL (2014) H-IV, 2.3.1 (referred to by F-III, 8), test of T 737/90

10.1 T - any person except proprietor, inventor is not the proprietor
10.2 T - G 3/97
10.3 F - not adversely affected Art.107
10.4 T - G 3/97, hn 1(d)

Any different answers and opinions are welcome! Please post your opinions as comments to this blog, in English, French or German, so everybody can from the discussion.

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 26-02-2014 23:59"), whereas using your real name or a pseudonym is more personal, more interesting and makes a more attractive conversation.

Roel

© Copyright DeltaPatents, 2015

All rights reserved. No part of this answer may be reproduced, used in any way for generating further course material or updates, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise, without written consent of DeltaPatents.The answer is made available for personal use only.

155 comments:

  1. Regarding Q3.3: Rule 45bis.5 and R45bis.1(d) as well as AG-IP 8.024 led me to answer true. Can you explain?

    And thanks for getting your answers up so fast :)

    ReplyDelete
    Replies
    1. EPO was main ISA, so cannot be SISA - R.45bis.9(b); AG-IP 8.003

      Delete
    2. Duh - of course. Thanks, Roel.

      Delete
    3. It is an element of SIS competence that 75% of the main exam candidates forget when they practice main exam papers... so, don't worry if you missed this point ;-)

      Delete
  2. With respect to question 9.1: My considerations were that for the analysis for sufficient disclosure the skilled person has the prior art and the application, while he has only the prior art in case of inventive step.

    But I see that the german wording uses "Wissensstand" (level of knowledge) rather than level of skill

    ReplyDelete
    Replies
    1. I am also not fully certain about the answer I gave in the post, that's why I gave what I think is the most relevant sections in the Guidelines - GL (2014) F-II, 4.1 (Art.83) and GL (2014) G-VII, 3.1 (Art.56). But I am open for any better arguments, in support as well as against my provisional answer (which was/is True).

      I conclude from these sections that he has the same level of skill, but there is a difference:

      For enablement/sufficiency, he uses the application, his level of skill ij the relevant technical field, and his common general knowledge.

      To asses inventive step of the claimed invention, he uses the closest prior art and combines it with his common general knowledge in the relevant field (of where he expects to find the solution to the objective technical problem) to see whether the solution is obvious or not.

      Note to all: the English version of the statement reads:
      "9.1 The skilled person has the same level of skill for assessing inventive step and sufficient disclosure".

      Delete
    2. For this question I did not look at the english version, but for "level of skill" I would agree, the statement is true.

      For "level of knowledge" (Wissenstand) I would say, the statement is false, as the skilled person also knows the teachings of the application.

      However a possible argument is that for sufficient disclosure the skill includes the application, for inventive step it does not.

      Delete
    3. See T0060/89; OJ 1992, 268; mentioned in Kley 3-55: Evaluation of sufficiency of disclosure and of inventive step are to be based on the same level of knowledge (der selbe Wissensstand ist zugrunde zu legen)

      Delete
    4. Thx Christoph - that is the conformation I looked for!

      I now also found it in the Guidelines (2014) G-VII, 3, last sentence:

      It should be borne in mind that the skilled person has the same level of skill for assessing inventive step and sufficient disclosure (see T 60/89, T 694/92 and T 373/94).

      Zu beachten ist ferner, dass der Fachmann bei dernBeurteilung der erfinderischen Tätigkeit und der ausreichenden Offenbarung den gleichen Wissensstand hat (siehe T 60/89, T 694/92 und T 373/94).

      Il convient de garder à l'esprit que l'homme du métier a le même niveau de connaissances pour apprécier l'activité inventive et la suffisance de la divulgation (cf. T 60/89, T 694/92 et T 373/94).

      Delete
    5. This appears to be an EXTREMELY unfortunate wording in the German version of the exam. In my view, they got it plainly wrong and the confusion comes from a wrong headnote in T 60/89. There it is said that the same "Wissensstand" is to be applied for the purposes of Art 56/83.

      Throughout the decision though, they only speak of "allgemeiner Wissensstand", which, in my view, equates to common general knowldge. For this it would make total sense that the same standard is applied for Art 56/83.

      If you speak of "Wissensstand" in general though, this should differ between Art 56 and Art 83, as fully supported by the further cited T 694/92 (forget about the first half sentence referring to the headnote of T 60/89):

      7. Für die Zwecke der Artikel 56 und 83 EPÜ ist vom Fachmann in zwei unterschiedlichen Ausgangssituationen der gleiche Wissensstand zugrunde zu legen (s. T 60/89, ABl. EPA 1992, 268): Während er bei der Beurteilung der erfinderischen Tätigkeit nur den Stand der Technik heranzieht, berücksichtigt er bei der Beurteilung der ausreichenden Offenbarung (und somit der Stützung durch die Beschreibung) den Stand der Technik wie auch die offenbarte Erfindung.

      This very unfortunate wording in the German version may not have remained unnoticed, as it was replaced by "skill" in the English version, which is not a literal translation of "Wissensstand", but would appear to come closer to "allgemeiner Wissensstand".

      What are your thoughts? Should one rather read the exam in all three languages next time to deduce what is possibly meant to be asked? In any event, I felt that there were also quite a few questions that could be answered in both ways (also see eg Q11.3) and wonder if this is very fortunate for such multiple choice format...

      Delete
    6. Statement 9.1 uses the exact wording of Guidelines (2014) G-VII, 3, last sentence, in English, French AND German.

      So, the exam is correctly worded.

      If the confusion arose because you did the exam in English whereas your mother tongue is German, that is unfortunate if you consider skill and Wissenstand to have different meaning.
      Also, if you did the exam in German, while using an English-language reference book, that could have caused confusion between skill and Wissenstand. However, it is very well possible and a very wise choice to use an English-language EPC reference book -in view of the high quality the books of Jelle Hoekstra (References to the EPC) and Derk Visser (The Annotated EPC)-, but where it comes to the exact legal wording, you should then preferably use the EPC Art & Rules, Guidelines, OJ's and G-headnotes in German. With the direct references and citations given in e.g. Jelle Hoekstra's book, the entry in the German version of the GL can be found very quickly!

      Delete
    7. You can also find the exact wording in German language in "Singer - Stauder, Europäisches Patentuebereinkommen, 6. Auflage".

      Delete
    8. However, the guidlines do not use the term "wissensstand" consistend as "skill". For example in GL part G chapter VII, 4. the term "Wissensstand" is used for "knowledge" and not for skills !!!

      "...und den Wissensstand zu berücksichtigen, der dem Fachmann im Allgemeinen spätestens an diesem Tag zugänglich war."

      "...and to have regard to all the knowledge generally available to the person skilled in the art up to and including that day."

      Delete
    9. Hi EPCreader,

      I do not get your point. As I indicated above, the wording in Guidelines (2014) G-VII, 3, last sentence and that of statement 9.1 is consistent in each of the three languages.
      So, in my opinion, there is no legal need to discuss whether answering the paper in one EPO language with legal references in another EPO language is 100% consistent (although there is very often of course a practical reason - as the most used EPC reference books [Hoekstra and Visser] are in English).

      Can you clarify?

      Roel

      Delete
    10. Dear Roel,

      Indeed German Guidelines (2014) G-VII, 3, last sentence is consistent with the statement 9.1. However, it is my opinion that the German EQE (and the Guidelines) is (are) not correctly worded.

      Firstly, as Ioeidos24 pointed out above, decision T 60/89 uses the term "common general knowledge" (i.e. "allgemeines Fachwissen") in this regard, which indeed is the same both for Art. 83 and Art. 56. Therefore, I have to disagree with the (german) statement in Kley 3-55, since "common general knowledge" as used in the decision is not translated with "Wissensstand", but rather with "allgemeines Fachwissen".
      (see e.g. http://www.linguee.de/deutsch-englisch/search?source=auto&query=common+general+knowledge (I hope the link works))

      T 60/89 also uses once "level of skill", as do the English Guidelines and the English EQE question, which is nevertheless different from "Wissensstand", the later actually translates into somewhat like "state of knowledge ". On the other hand, "level of skill" is rather to be translated into something like "Fertigkeitsniveau" (although there may be people out there with a more suitable translation). In any case, "level of skill" is neither "wissensstand" nor "common general knowledge" as used in T 60/89.

      It seems the wrong translation of "wissenstand" into "skill" was the point of EPCreader, who pointed out that the Guidelines do not translate these terms consistently (and wrongly in the present case)

      Using the correct German meaning for "Wissensstand" and based on the EPC there is a clear difference between the state of knowledge (i.e. "Wissenstand") for Art. 83 (the application and the related state of the art) and the state of knowledge (i.e. "Wissenstand") for Art. 56 (the published state of the art before filing of the application, which clearly excludes the application).

      Summarizing, the German exam and the Guidelines in this regard are at least different from the English versions.

      Therefore, while I agree with Roel opinion that the English statement 9.1 is true, the German statement 9.1 is wrong (to my German native speaker assessment). Please let me have your thoughts on this.

      Delete
    11. The language of proceedings of T 60/89 was English and is the authentic text. The German text is not - a T-decision is not an EPC Art or Rule for which the three language versions are equally authentic - it is just the decision in the language of proceedings that is.

      The Guidelines provide the interpretation of the case law that the first instance divisions of the EPO are instructed to use, and to which the first instance decisions are effectively bound - if they deviate, they cannot do that in silence. And the EQE, being a fit to practice test, tests whether you know -and show- how to apply this established interpretation (and not any deviating interpretation, whether justified or not, and whether academically interesting or not) - in the context of the EQE, conflicting case law or conflicting interpretations do not exist if the Guidelines are absolutely clear.

      So, the Guidelines interpretation is what you shall use in the exam - see also the explicit reference in Rule 22(1)(m) IPREE.

      As the statements in each of the three languages is consistent with the Guidelines in the corresponding language, the situation is to me fully clear, consistent and unambiguous within the boundary conditions and scope of the EQE.

      [Note: In a real-life case in second instance,i.e. before the Boards of Appeal, who are NOT bound to the Guidelines, conflicting case law can be of valuable use sometimes...]

      Delete
    12. Thank you Roel for your quick and clarifying answer. If I do not pass the pre-exam (e.g. due to wrongly answering question 9,1) I will register for one of your training courses.

      Delete
  3. I also do not get, why so you get question 4.2 as false? Mr. Kurz seems to be entitled for the reduction, as he is a Czech citizen, and czech is an accepted non-official language, I assume, and he is a natural person

    ReplyDelete
    Replies
    1. But no fee reduction anymore in the opposition fee since 1 April 2014 - amended R.6 and RFees 14, as well documented in the OJ, in the Guidelines of November 2014 and in the most recent editions of the reference books of Jelle Hoekstra ("References to the EPC") and Derk Visser '("The annotated EPC").

      So, yes, he is an Art.14(4) person, and even a natural person, but the fee reduction is only applicable for the filing fee and the examination fee nowadays!

      Delete
    2. We need the preliminary claim analysis results!

      Delete
    3. We need A NAME to be able to discuss and communicate with you -- see the post:

      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 26-02-2014 23:59"), whereas using your real name or a pseudonym is more personal, more interesting and makes a more attractive conversation.

      And note that we offer our provisional comments on a completely voluntary basis, and at the fastest possible speed that we can combine with our normal patent attorney activities. There is nothing that an Anonymous person can impose on us as what we _need_ to do.

      Delete
    4. We highly appreciate your efforts. Thanks!

      Delete
    5. I think that's a good time to say thanks!

      I really appreciate you taking the time to provide us with your comments and answers to the exam. And that in such a quick way. I never expected to have answers (and comments regarding the reasons) at the day after the exam.

      Delete
    6. You''re welcome!

      (And invited to enrol to our main exam courses ;-))

      Delete
  4. Regarding Q1:3, I could only find that if the epo has NOT been notified that the previous representative 's authorisation has been terminated, then the new representative needs to submit an authorisation. (Comments to R. 151(1) in visser and q cited OJ. Could you please give basis for the answer F in this case.
    Thanks!

    ReplyDelete
    Replies
    1. Sorry, R152(1) of course.

      Delete
    2. My arguments are not rock-solid, but I based it on the below -- I expect there can be quite some discussion on this issue... Any good arguments in favour or against are highly welcome and appreciated!

      Guidelines (2014) A-VIII, 1.5 seem to only allow the new representative or the applicant to sign & file the authorization.

      Also, A-VIII, 3.2, last sentence seems -in my view- to exclude the former repr to validly sign the new authorization: "With the exception of the authorisation of a representative, the documents may be signed by an appointed representative instead of the applicant."

      Delete
    3. I think the answer is True.
      OJ 2007, SE3, L.1. Authorisation is required if the professional representative replaces another one whose authorisation has not yet terminated.
      Thus, if A informs the EPO, it has terminated and B does not need to file it.

      Delete
    4. Very true. But when I could not get an explicit confirmation from PJ 2007, SE3, L.1 that the old representative can sign - and concluded from A-VIII, 3.2, last sentence that he cannot do.
      The situation would already be fully well defined in there would be an original authorization that allows also sub-authorization, to which form 1003 even has a box.

      Let's see to which conclusive conclusion we come tomorrow. Good night ;-)

      Delete
    5. See also T267-08

      Delete
    6. No unfortunately the answer is False:signature is needed if the the two reps are not from the same association. I don-t have the Visser book with me now, to give the reference.

      Delete
    7. Following T 0641/11, it would appear that the correct answer is TRUE. In the present case A, the former representative, informed the EPO of the change of representative, i.e. A laid down representation for the ePA. Hence, according to OJ 2007, SE3, L.1 A1(2), the new representative is not obliged to file a signed authorization.

      Delete
    8. I was thinking about this for a long time, in particular since A informed the EPO. But I couldn't find any detailed information in the EPC or guidelines and Kley stated with reference to OJ 2007 SE3 that for a change of representative authorisation is needed. So in the end I went with F :-/

      Delete
    9. The decisive question is who needs to inform the EPO about the change of representative, i.e. if it is enough that the former representative informs the EPO or whether it must be the applicant. The OJ is not clear on this point:

      (2) If the European Patent Office is informed of a change of representative involving professional representatives who are not members of the same asso- ciation, without being notified that the previous representative's authorisation has terminated, the new representative must file, together with the notification of his appointment, an individual authorisa- tion (original and one copy) or a refer- ence to a general authorisation already on file.

      Delete
    10. We will need to see what the Exam Committee concludes, as it seems very difficult to get a full consensus among all who contributed to this subject on the blog (thx Fredrik, Jelle, Christoph, Ton, Ela).

      For convenience of any further discussion, let me just cite OJ 2007 - SE3 - L1, Art. 1, introducing a sub-numbering for further reference by any of you, as well as any other candidate or tutor that wishes to continue the discussion on this subject:

      Article 1 - Professional representatives

      (1) (1a) A professional representative whose name appears on the list maintained by the European Patent Office and who identifies himself as such shall be required to file a signed authorisation only in the circumstances set out in paragraphs (2) and (3) below.
      (1b) Any individual authorisation submitted shall be placed on file even if it has not been requested. It shall not however be checked for deficiencies.
      (1c) General authorisations shall be checked and registered as hitherto (Rule 152(4) EPC).

      (2) (2a) (2a.1) If the European Patent Office is informed of a change of representative involving professional representatives
      (2a.2) who are not members of the same association,
      (2a.3) without being notified that the previous representative's authorisation has terminated,
      (2a.4) the new representative must file, together with the notification of his appointment, an individual authorisation (original and one copy) or a reference to a general authorisation already on file.
      (2a.5) If he does not, he shall be requested to do so within a period to be specified by the European Patent Office.
      (2a.6) If the European Patent Office is informed before the end of the specified period that the previous representative's authorisation has terminated, such request may be disregarded.
      (2a.7) The European Patent Office shall send the previous representative a copy of the individual authorisation or notify him of the number of the general authorisation and the name of the new representative, and inform him that the subsequent proceedings will be conducted with the new representative.

      (3) The European Patent Office may require that an authorisation be produced if the circumstances of a particular case necessitate this, particularly in case of doubt as to the professional representative's entitlement to act.

      In my view, the clauses 2a.3 & 2a.6 only relate to a termination of the earlier appointment/authorization, which has the effect that their can be no confusion.

      So the answer to 1.3 is in my view clearly False, and would only be True of the statement would have read:
      "If the inventor, after validly appointing Mr. A, want to appoint a different professional representatove before the EPO, Mr. B, from another association, then mr. B need not provide a signed authorisation, if Mr. A informs the EPO that Mr. A's aithorization has terminated."

      Delete
    11. exactly, the termination of the previous authorization is not mentioned and therefore a signed authorization is needed in this case!
      Since the question is "need NOT", the answer would be "False"

      Delete
    12. I agree with that the exact wording "terminated" is not mentioned. However, if you inform of a "change", wouldn't that implicitly mean that the first one is terminated? I.e., you change from a first representative to a second. Any thoughts?
      What would happen if you informed of a change without explicitly mentioning the termination?

      Delete
    13. No - not implied, as you can have multiple representatives - see R.152(10).

      Delete
    14. I'm with Fredrik at this point. Mr. A informed the EPO on the change of representatives (Vertreterwechsel in the German version). This clearly implies a change means to apoint a new representative instead and not in addition to the previous representative A. Informing on such change allows no other reading other than that A laid down representation.
      But I guess we will have to wait Exam Committee's oppinion on this...

      Delete
    15. Oops, I did not recognize that termination is _indeed_ an effect of the "change of representative"...

      I agree that the answer should be True. All arguments have been given by Fredrik and Christoph including the explicit use of the word "change" from the case, as well as Jelle who used the words "replaces".

      Issue solved. Answer unambiguous True.

      Thanks for the discussion!!!

      Delete
    16. Hmm. I would imagine if Mr A informs the EPO of a *change* of representative, he is at least implicitly informing them of the termination of his own authorization, in which case the answer would be True.

      However, arguably, the wording of (2a.1) + (2a.3), taken litteraly would lead to the opposite conclusion: the EPO may be informed of a change without being informed of a termination. I guess the idea when drafting was that the person informing the EPO of a change in 2a.1 was not the currently appointed representative, but rather the 'wannabee' new representative.

      Especially as the intention is clearly to limit requests of authorizations to cases where an ambiguity arises, the question boils down to: if Mr. A informs the EPO of a change of representative, is he unambiguously informing them of a termination of his authorization? I guess to me, however I see it, the answer still is T. I would admit, however, that the wording of the decision says otherwise.

      Either way, certainly not an adequate pre-exam question imho, as even with the most relevant sources at hand and discussed, there is debate on the matter...

      Delete
    17. It makes sense that you can have more than one representative. But in this case it is stated a change. I'm very curious to see the exam committees report.

      Delete
    18. Hi Fredrik,

      I think your comment 'crossed' my comment of 11:29 above. I changed the post to correct the answer to True.

      Br, Roel

      Delete
    19. I still think that there is some ambiguity: in view of (3) above ("EPO may require..."), then it is not possible to guarantee that "Mr. B need not provide a signed authorisation". Mr. B may need to provide an authorisation - if requested by the EPO.

      I think the only disambiguity here is that the wording of this pre-exam question is poor.

      Delete
    20. The wording of Spec. ed 3 of OJ 2007, 128 Art. 1(2):

      "If the European Patent Office is informed of a change of representative involving professional representatives who are not members of the same association, without being notified that the previous representative's authorisation has terminated, the new representative must file, together with the notification of his appointment, an individual authorisation(original and one copy) or a reference to a general authorisation already on file..."

      If supposing that this is the correct legal basis for answering this question. It think it would be very unfortunate if in the question "change" implies a termination, which apparently is not the case in the OJ paragraph above, as they mention a change without termination.

      I am looking forward to see the Exam commitees explanation on this...

      Delete
    21. I still do not agree with "true". Why does (2a.3) explicitly state that a "notification" is necessary? Even if the change implies a termination - the EPO is only "informed" about the change - and a termination, respectively, - but it is not "notified"! See also the wording of Visser for R152(2), Section 1.

      Delete
    22. Hi Manuel,

      In the EPC context, the word "notification" has only a special meaning in the context of letters FROM the EPO TO a party or its representative. For letters TO the EPO, the word notification has no special legal meaning - so informing the EPO is the same as notifying the EPO.

      Delete
  5. Well this makes me feel better! For 1.3 I have true based on R152(1) 1.1 in Visser wherein it is stated that if the epo is informed that the previous representation is terminated then they may disregard the requirement that the new representative file an authoriza

    ReplyDelete
  6. Regarding Q.5.4 : "on" february 27, you could properly enter into EP phase without paying renewal fee (you have to pay it before the end of the 31th months, ie march 2).

    ReplyDelete
    Replies
    1. I do agree with that...

      Delete
    2. Not in my view, as then the entry is not done "on" Feb 27, but only once the renewal fee is paid -- see the example cited in my original post: OJ 2013, 156, example 5, item 22:

      22. Example 5: renewal fee

      Date of filing: 3.1.2011
      Request for early processing: 1.3.2013

      Pursuant to Rule 51(1) EPC, the renewal fee is due on 31.1.2013. Payment of the renewal fee (without additional fee) is, therefore, a necessary requirement for the request for early processing filed on 1.3.2013 to be effective. If the renewal fee is not paid on the date early processing is requested, the request for early processing will be effective (only) as from the date on which the renewal fee is paid and all further requirements necessary on the latter date have been complied with.

      Delete
    3. my development was the following, if you don't pay the renewal fees before the end of the 31th months, you still have the possibility to do it with +50% of fee? so it is not a requirement to validly entering in EP phase.

      but maybe i am wrong...

      Delete

    4. "How to get a European patent Guide for applicants, Part 2: PCT procedure before the EPO (Euro-PCT Guide)" (January 2014), 435:

      This means that, for an application to be processed early, the following requirements must be complied with: payment of the filing fee (see point 540), filing of the translation (where applicable, see point 515), specification of the application documents (see point 479), payment of the search fee (where applicable, see point 585). Which further requirements must be complied with depends on the date on which early processing is requested, i.e. on whether the time limits for paying the designation fee (Rule 39(1) EPC) and the renewal fee (Rule 51(1) EPC) and for filing the request for examination and paying the examination fee (Rule 70(1) EPC) have already expired at that date (see points 554, 605 ff and 590 ff). The term “necessary requirements” is used to refer to the requirements that must be complied with for a request for early processing for the application concerned to be effective.

      So, if the "on 27 Feb" in statement 5.4 is interpreted as an early entry becoming effective on 27 February, the renewal fee needs to be paid on 27 February

      Delete
    5. Interpretation should not be part of the exam questions24 February 2015 at 14:43

      As you state, IF "on 27 february" is to be interpreted to mean an early entry...

      Delete
    6. I had no doubt myself about this when reading the statement the first time. Also, I see no reason why it would say "on 27 Feb" is this is not meant to be interpreted as an early entry on that date.
      But, it is indeed quite "hidden" in the statement, and it could have been made more explicit by a wording like "for validly entering the European phase _early_ with PCT-M on 27 Feb 2015".
      The difference could be between how experienced tutors and candidates read certain phrases, with different levels of risk of over- or under-interpreting words - which may again be different for the EPO and epi members of the exam committees.
      (When designing questions for our proprietary material, we also experience that it is quite a challenge to find the correct balance so that a questions is clear and unambiguous without giving away the answer already - the feedback from our candidates helps us to improve our Q&A books where any such unclarity arises, and we can clarify the question for a next edition of the books if apporpriate - the exam committee however does not have this opportunity ;-))

      Delete
  7. Re Q2.2: is a request for a term extension considered as a REPLY to the Art 94 communication? If not, wouldn't the correct answer to this question be "false"?

    ReplyDelete
    Replies
    1. It is not considered the same, but the time limit for requesting the extension is the same (R.132(2)).
      Here: 15-1-15 + 10 d = 25-1-15; + 4 m. = 25-5-15 (Whitsun Monday) -> 26-5-15. So: True

      Delete
    2. By the way, what is a bit strange is that, if you wrongly answered T for 2.1, you would also have come to the correct date for 2.2, but without needing to rely on R.134...

      Delete
    3. Hello,
      I would like to know the legal basis for answering false to Q 4.4.
      Many thanks

      Delete
    4. R.4(1): any party of a Contracting State may use an official language of a Contracting State "if he provides for interpretation into the language of proceedings".
      So, the notification is not sufficient. The translation must also be provided.

      Delete
    5. Hi Anon,

      I think the basis for 4.4 is R.4(1), specifically the penultimate sentence "Any party may use an official language of a Contracting State, if he provides for interpretation into the language of the proceedings".

      Therefore it is not sufficient just to give one month notice because Mr Kurz also has to provide a translator at the oral proceedings. Hence the answer is "False".

      Delete
    6. Just realised that the 1 month is only sufficient if another EPO language is used and not applicable for languages of a CS that are non-official language of the EPO...

      Delete
    7. Hi Ela,

      I donot understand which statement this 1month remark of you relates to.

      Maybe to a non-asked subject relating to Q.4?
      If so: yes, Mr. Kurz can file his notice of opposition in Czech, as he is entitled to do so under Art.14(4), provided he files a translation into an official EPO language within 1 m -R.6(2)-, or, if the opposition period is still running at the 1m expiry, until the end of the 9m opposition period.

      BR, Roel

      Delete
    8. Hi Ela,

      I donot understand which statement this 1month remark of you relates to.

      Maybe to a non-asked subject relating to Q.4?
      If so: yes, Mr. Kurz can file his notice of opposition in Czech, as he is entitled to do so under Art.14(4), provided he files a translation into an official EPO language within 1 m -R.6(2)-, or, if the opposition period is still running at the 1m expiry, until the end of the 9m opposition period.

      BR, Roel

      Delete
    9. Hi Roel,

      sorry to have been unspecific. My comment related to Q4.4.

      R. 4(1) states that a language other than the language of proceedings may be used in OP if notice is given at least 1 m prior to proceedings. When reading this statement I concluded that 4.4 was true and didn't notice that it only related to other official EPO languages and hence did not apply to Czech...

      Delete
    10. I understood the question as "is the one month is enough" and not "is filing the request as such is enough". So I replied with "True" though I new that an interpreter has to be provided by Mr. Kuz :-(

      Delete
    11. @Ton: I did the same thing and felt stupid 5 minutes after the exam when discussing that with a colleague.. Let´s put that one on the honest mistakes list.

      Delete
    12. @Ton and Linus: Yep, I did exactly the same: thought that "sufficient" refers to "one month" and answered "True". Oh well...

      Delete
    13. The statement would have used a word relating to the time aspect in that case, such as "timely", "at the latest on" or "by"...
      The words "it is sufficient to" is in a legal context to be interpreted as "it is enough to " or "it is only needed to". An earlier example is in Pre-Exam 2012, statement 10.4.

      Delete
    14. The statement would have used a word relating to the time aspect in that case, such as "timely", "at the latest on" or "by"...
      The words "it is sufficient to" is in a legal context to be interpreted as "it is enough to " or "it is only needed to". An earlier example is in Pre-Exam 2012, statement 10.4.

      Delete
  8. Your (provisional) answers to the Claim Analysis of Pre-Exam 2015 coming soon :)

    ReplyDelete
    Replies
    1. Yes, we are working on it. But experience shows that it requires some more care and caution, as one can easily interpret statements or claims wrongly in the claims part, whereas one can be confident about the correctness of legal answers if the answer is positively and explicitly confirmed/ supported by a legal reference.

      You can expect our claims analysis answers later today (Tuesday 24 Feb).

      Delete
  9. Re. Q5.2

    Again a question I didn't find easy. I figures that because more than one FP fee (at least for examination fee and designation fee) is required the answer had to be false, because "at least one" FP fee would not be sufficient...

    ReplyDelete
    Replies
    1. My understanding is that until all acts required under R159(1) are completed, the application does not enter the EP regional phase; thus if you complete all but one act, you can then later complete that act with just one FP fee?

      Delete
    2. Not easy maybe but this is in fact a standard topic, that is often tested and well-documented.

      So it should not have imposed any problem if you are well-prepared. See e.g. question L4-30 from our Q&A book "Basic Legal Questions for Pre-Exam and Paper D" (edition May 2014 for EQE2015 preparation).
      Also see How to Get a European Patent - Part 2 (Euro-PCT Guide) (Jan 2014), par. 521, 527, 538, 551-552, 559, 589, 603, 604, and the loss-of-rights form 1205N that the EPO sends if you missed entry (which we provide in our Basic Legal courses and Pre-Exam legal courses as Additional Handout).
      Also see EP National Chapter to PCT Applicant's Guide on the PCT website.

      Delete
  10. I agree with you Ela... filing search examination designation fee...

    ReplyDelete
    Replies
    1. yes, 50% FP fee for those, plus a flat-rate EUR 250 FP fee for the missing written request for examination - see the information given on the loss-of-rights form 1205N that the EPO sends for all PCT applications that did not enter at all or that missed one or more acts for entry required under R.159(1), and see How to Get a European Patent - Part 2 (Euro-PCT Guide) (Jan 2014), 604:

      604 If, exceptionally, the applicant neither filed the request for examination nor paid the examination fee in due time, further processing must be requested in respect of _both omissions_, i.e. in respect of filing the request for examination and payment of the examination fee. It follows that the applicant must file the request for examination and pay the examination fee itself together with two fees for further processing: the flat fee for further processing in respect of the request

      Delete
    2. Sorry, I still don't get it...

      You agree that there are several FP fees that have to be paid.

      At least one FP fee imho means that with the payment of one FP fee it will be possible to enter the European phase on 27 March. But since more than one FP fee is required, payment of one FP fee cannot be sufficient?

      Delete
    3. I disagree. At least one = one or more.

      Delete
    4. Entry on 27 March 2015 means that at that date, ALL mandatory acts for entry are completed. It does not necessarily mean that NONE of the acts was done.

      So the number of FP fees depends on which acts were done in time, and which were not.
      If all acts fort entry but one were in time, PCT-M did not yet enter, and one FP fee is needed. If multiple acts were not done, multiple FP fees will be needed.

      Delete
    5. It is possible that all of the acts except one act was completed within 31m (by 2 March 2015). Therefore only one FP fee would be due for the single remaining act performed on 27 March 2015 to validly enter the EP phase (complete entry). "At least one" covers the possibly of multiple acts being performed after 2 March 2015.

      Delete
    6. Ok, I always considered that none of the acts were performed.

      But nevertheless, say all acts but the payment of filing fee were completed. Then the applicant could also request RoR instead of FP (even if FP might be the more sensible option, the option would still be open to him). And then the answer that at least one FP fee has to be paid would be false again...

      Imho, there is a lot of room for interpretation and the information is not sufficient to clearly answer this question...

      Delete
    7. Ela, I do not think so : RoR is excluded for periods which allow for FP - R. 136(3) -
      So, definitely, you would have to pay one or more FP fees (or, said otherwise, at least one FP fee).

      Delete
    8. @leonbeyr, I usually would agree with you, but this is a PCT speciality.

      Check the guide for applicants II, 553:
      "The applicant may also request re-instatement of rights if the application is deemed withdrawn because the filing fee was not paid in due time."

      Delete
    9. I agree with Ela. Visser states that this scenario is an exception to R136(3) as PCT R.49.6(d)(I) trumps the EPC. Therefore either FP or RoR may be pursued.

      Delete
    10. I agree with Ela. Also, if you fulfilled all acts under R159 except paying the annual fees then you habe to pay 50% extra but notwendig auch FP fee.

      Delete
    11. In my opinion, you would not be expected to consider RE for entry -- with the information given, it is very unlikely that you would have the intend to enter and still not enter in time while exercising all due care.

      Further, according to the HTG-II guide, RE is not available for all missed acts for entry: only for translation [HTG-II (2014), 522] and filing fee of R.159(1)(c) [HTG-II (2014), 553] -- but not for, e.g., the designation fee [HTG-II (2014), 560] and the examination fee and the written request for examination.
      It will be very hard to argue all due care if you did perform the last three acts (for which RE is not available - so, either in time, or at least one FP fee), but did not pay the filing fee...

      Delete
    12. RE is almost always very unlikely, but it is still possible. Accordingly the statement is not factually correct "at least one further processing fee must be paid". If there is any exception, however remote, then asserting that at least one FP fee is compulsory is incorrect.

      It may be "very hard to argue", but the term "must" is legally incorrect. And this exam is meant to be a test of legal proficiency to a degree.

      If trainees can think of these exceptions during an exam, then they "must" surely have been considered when setting the exam?!

      Delete
    13. I agree with Jake.

      While it is unlikely, unusual and might be more difficult to opt for RE instead of FP, the option is there.

      I agree also with Roel, that it is only available for some of the missing acts. But then again, we don't know which act(s) were omitted, and if it was one, two , several or all.

      Taking all this into account, imho the statement that "must pay at least one FP fee" cannot be correct.

      Delete
    14. ok, you guys win: I had missed the possible exceptions allowing the entry with NO FP fee, and I guess they rule out the use of the term 'MUST'. Roel, I think your last post is consistent with this, although implicitly: you do say 'you are not expected to consider RE' and 'it will be very hard to argue'.... However, still, you did not write that FP is the only option, which would be the meaning of MUST.

      .... now I just hope the Examination Committee disagrees with me, since I had another opinion yesterday ;-)

      Delete
    15. Hi Leonbeyr,

      OK, if you want I can be more explicit: I consider this question to only have facts that support FP as remedy, so RE is not an option.

      And if using FP for entry on 27 March, at least one FP fee needs to be paid, depending on what the applicant already did and paid (see above).

      Regards, Roel

      Delete
    16. The presentation of this question may lead down the route of FP, but questions are often leading to check whether candidates can spot an exception or an anomaly. In this case, there is a possible exception whereby no FP is required (the acts not covered by RE were timely performed, but not all acts sufficient for entry - despite all due care). Accordingly, the answer to this question SHOULD be false. However, I suspect that the committee probably take Roel's viewpoint that considering RE was not the intention of the question such that marks will only be awarded for True. They will possibly make a judgement as to how many candidates have entered "true" due to consideration of RE; and how many candidates have entered "true" for incorrect reasons (e.g. thinking that at least two or more FP fees are required). To avoid rewarding candidates for incorrect answers the will quite possibly stick to "False" being the correct answer. Even although "False" is legally incorrect.

      Delete
  11. When do you plan to publish the claims part ? Can't wait to calculate my provisional note... (42 ? 69 ? 71 ? 98 ?)

    ReplyDelete
    Replies
    1. Sorry, didn't read the previous comment about this.

      Delete
    2. Me, too. Since I noticed that one can easily and stupidly loose pairs of points (2 points/wrong "T" or "F"), 70 points are not so easily guaranteed any more!!!

      Delete
  12. hi, in question 2.2, i respectfully disagree with you... i will say False.
    why...
    15-1-15 + 10 d = 25-1-15; + 4 m. = 25-5-15 (Whitsun Monday) -> 26-5-15. So: indeed you have the possibility to reply until the 26 may 2016 (4 months delay)
    BUT
    you can also require an extension of time that bring the delay to reply at the 94(3) from 26 may 2016 to 25 july 2015.

    the question was, without resorting to a legal remedy (a request of prolongation in not a legal remedy) the reply "MUST" be filed....

    the term "MUST" in a obligation without any exception, or there is a possibility to not file the answer at this date if you ask a prolongation of time...

    So answer for me is False

    ReplyDelete
    Replies
    1. I would agree. Also see T 861/03, which I understand to support that a request for a term extension is NOT a reply to the Art. 94(3) communication:

      3.2. Somit ist der Eingang einer Antwort im Sinne des Artikels 96 (3) EPÜ eine Voraussetzung für die Anwendung des Artikels 97 (1) EPÜ im Anschluß an einen Bescheid nach Artikel 96 (2) EPÜ. Darüber hinaus ist die Passage "Unterläßt es der Anmelder, auf eine Aufforderung nach Absatz 1 oder 2 rechtzeitig zu antworten" in Artikel 96 (3) EPÜ im Lichte des Zwecks zu verstehen, den die Aufforderung gemäß Artikel 96 (2) verfolgt, nämlich dem Anmelder Gelegenheit zur Ausübung seines Rechts auf rechtliches Gehör nach Artikel 113 (1) EPÜ zu geben. In der Entscheidung J 37/89 (ABl. EPA 1993, 201) legte die Juristische Beschwerdekammer den Artikel 96 (3) EPÜ so aus, daß ein Anmelder, der lediglich einen - später abgelehnten - Antrag auf Fristverlängerung stellt, im Sinne des betreffenden Absatzes "zu antworten unterläßt", was dazu führt, daß die Anmeldung als zurückgenommen gelten muß (siehe insbesondere Punkt 3.3 der Entscheidungsgründe), während in der Entscheidung T 160/92 (ABl. EPA 1995, 35) befunden wurde, daß ein Antwortschreiben auf einen Bescheid der Prüfungsabteilung, das vom Anmelder fristgerecht eingereicht wurde und in dem er auf wesentliche Punkte dieses Bescheids einging, sehr wohl eine Erwiderung im Sinne des Artikels 96 (3) EPÜ darstellte und daher dem Eintritt der Rücknahmefiktion entgegenstand (siehe insbesondere Leitsatz 3 und Punkt 3.5 der Entscheidungsgründe). In beiden Entscheidungen wurde auch die Auffassung vertreten, daß ein Antwortschreiben nicht (in der Sache) vollständig oder überzeugend sein muß, damit es als Antwort im Sinne des Artikel 96 (3) EPÜ gewertet wird.

      Delete
    2. In my opinion, you can require an extension to respond to the objections raised in the notification. However, to respond to the notification itself, you have until 26 may 2015. So I would say the answer is True.

      Delete
    3. For me,
      if you ask for a prologation, to still answer to a 94(3) notification.

      Certainly , this is not the original delay of 94(3)notification but it is still the 94(3) notification that you replay...
      Moreover, the question don't not disclose that the delay must to be the original one of 4 months...

      but i can be wrong.

      Delete
    4. I would say that there is always a (small) possibility that the prolongation is denied, which would then require for FP to be applied, right? So to be 100% sure that no remedies are required, you would have to file by May 26.

      Delete
    5. An extension from 4 to 6 months for responding to an office action is always allowed - it is only in theory that it could be refused.

      See GL (2014) E-VII, 1.6: For any communication raising a matter of substance, a request for extension, even if filed without reasons, should normally be allowed if the total period set does not thereby exceed six months.

      Delete
    6. This comment has been removed by the author.

      Delete
    7. the prolongation up to 6 month can not be denied DIR. E.VII.1.6 "Il convient en principe de faire droit a une requête en prolongation de délai, même présentée sans motifs, si le délai total ne dépasse pas 6 mois".

      it can be denied a prolongation up to 6 months

      Delete
    8. @ Arthur and loeidos
      I fully agree. It comes down to the interpretation of the term "reply".
      - If "reply" means ANY kind of reply then the answer is TRUE.
      - If "reply" is JUST a reply to the objections raised in the communication then the answer is false, since a request for extension is not a "legal remedy".

      Delete
    9. Roel van Woudenberg, what is your opinion on the arguments of Ioeidos and I,

      the question 2.2 is true or false?

      Delete
    10. @Peter Mayer

      as said Ioeidos, an extension of time is not considered as a reply (T 861/03, which I understand to support that a request for a term extension is NOT a reply to the Art. 94(3) communication)

      so if i do an extension of time ,i MUST NOT reply before the 26-5-15, so the possibility exist so the answer 2.2 must to be false

      Delete
    11. I think some of you try to read more complication in 2.2 than was intended. I agree that the words "Without a legal remedy" could better have read "Without any further action" or something alike, as I agree that requesting an extension of a time limit is not using a legal remedy, but rather preventing that a legal remedy (further processing in this case) will be needed.
      However, I would consider the intended meaning of 2.2 sufficiently clear in the context of the complete question and all 4 statements to accept that 2.2 "should" be read as checking when the original time limit expired.

      Delete
    12. Certainly not direct and unambiguous ;)

      Delete
    13. In French, the question is more clear for me "sans avoir utilisé un moyen de recours"

      A prolongation is not a legal remedy or in French "a moyen de recours"

      if i read the question in regard of the statement 2.4, it indicate me that i have a possibility to reply with a prolongation,

      so following my opinion, the statement 2.2 is about the possibility to reply after the 26/5/2015 without a legal remedy..

      with a prolongation we can ...so the statement should be false


      the question is in anyway very ambiguous....
      in the original time limit bu if without a legal remedy i can

      it is possible.

      Delete
    14. Interesting observation!

      I am not fluent in French.... ;-)

      Can "moyen de recours" be translated as a "legal recourse", rather than a "legal remedy"?

      And to the English native speakers: is "legal recourse" indeed different than "legal remedy" and could a R.132-extension be considered a "legal recourse" but not a "legal remedy"?

      Delete
    15. Hi Roel

      Truly i don't know if "moyen de recours" can be translated as a "legal recourse", rather than a "legal remedy". by google translate....both can be translate by "recours juridique"

      but for me, a "moyen de recours", is that you try to change a decision already acted, like doing an appeal or ask for A121 or A122.
      A prolongation request is not for me a attempt to change a decision or restore a right.

      so a prolongation for me, is neither a "legal remedy" or a "legal recourse" but an legal arrangement (dispositif juridique in French)

      Roel or some-else, i am interested by your opinion on this matter

      Delete
  13. Shouldnt 1.1 be False - The question specifically states "..to help him prosecute the application" - Yes, you dont need a representative for filing but you do need one for prosecution?

    ReplyDelete
    Replies
    1. No

      It is a key principle that an applicant can do it all himself unless he is not an EPC state resident - Art.133(1)

      Note: see post: please use your name or a nick name...

      Delete
  14. 10.3 - A "dispute" opens the door for an adverse effect, therefore she should be allowed to appeal?

    ReplyDelete
    Replies
    1. No - she was not a party to the proceedings - Art.107.

      Delete
    2. an appeal can be only done by a party.
      Mrs X was not a party... she can only become a party if she do an opposition
      so she could not be allowed to appeal

      Delete
    3. In Visser's comments on Art.107, it states that "A 'party' is confined to the parties entered in the Register in the first instance proceedings", which I took in the exam to mean that an inventor is a party in respect of this article, and hence that she could file an appeal.

      However, I cannot find proper legal basis for this. So it seems likely that the answer is that she could not file an appeal.

      Delete
    4. Laurence, I am using the same reference.. Roel, can you please comment?

      Delete
    5. "Party to the proceedings" is a standard legal term, not EPC specific - it means the natural/ legal persons that participate in legal proceedings and that have a right for continued proceedings as long as they do not withdrawn from it and the proceedings have not come to a conclusion.
      By the way, the EPO is not considered a party (but rather the authority who conduct the proceedings with parties).

      Likewise for the term "party-as-of-right" - also not EPC specific - it means a "party by law", i.e. someone who can participate in the proceedings, but only because his legal presence cannot be denied, and not without an independent party status - so, if there are no other parties then parties-as-of-rights, proceedings will not continue further.

      Delete
  15. Dont get why she isnt adversely affected?

    ReplyDelete
    Replies
    1. She may be, but as she is not a party, she does not get a right to appeal from that.

      See Art.107 EPC: Any party to proceedings adversely affected by a decision may appeal. Any other parties to the proceedings shall be parties to the appeal proceedings as of right.

      Delete
  16. Q.10.3: In my view the question could be understood that it is to decide whether the appeal can be "effective" inserted. However, effectiveness and admissibility are different points. From my perspective the inventor, in Timely payment of the appeal fee, will be inserted effectively appeal. The answer would be true. However, the conditions would be missing under Article 107 of the "admissibility" of the complaint. In my opinion, but not to the admissibility was asked, but the principle effectively inserting of an appeal.

    ReplyDelete
    Replies
    1. I get your point, and have at this moment nothing to add, except that I do not think that you are expected to think so deep...
      I tend to agree that admissibility is only assesed after the filing, and that the legal provisions consider an appeal filed by a person not entitled thereto inadmissible.
      It also means that you will not get your appeal fee back if you file it as non-entitled person.

      But on the other hand, 10.3 uses the wording "can validly file"and not just "will it be considered filed"? I expect that, at Pre-Exam level, you are considered to read this "validly" as "effectively" to use your words - i.e., filed, and admissible, but not necessarily allowable.

      Any other comments to this from other candidates?

      Delete
    2. My interpretation was along these lines as well Roel.

      Otherwise couldn't anyone always "validly" an appeal just by paying the prescribed fee? So for me this question only made any sense if "validly filed" means that the appeal would be admissible.

      Delete
  17. I found this years paper a great deal more time consuming than the practice papers I've done, I've completed past papers in about 2.5 hours, but needed the full four hours including review time to complete this paper. Q 1 was a nasty one to start with. Assuming your answers are correct, I don't need to move mountains in the claims analysis. Which is nice.

    Given some of the earlier comments, I think it likely that the pass rate will drop this year. Which is not nice.

    ReplyDelete
    Replies
    1. Hi Lord,

      Thx for your cmment.

      I expect the pass rate to be between 75 and 80% from the paper itself, the discussions on the blog and from what candidates told / mailed me so far about scores and errors.

      Which corresponds to a doubling of the failure rate - which was 10-13% in 2014 and -if corrected to the current 70 mark pass level- also in 2012 and 2013.

      The Exam Committee presumably did not make it deliberately more difficult, as they said at the meeting with the tutors in October in Munich that they were satisfied with the level of difficulty.

      Delete
    2. Thanks for this assessment and information.

      I am surprised to read that they did not intent to make it more difficult. I and all colleagues I spoke wit had the impression that indeed that must have been their intention. If it truly was not, than the drafting of the exam was poorly done. We were actually considering if they intentionally added some issues we discussed here (e.g. cardboard) to make it a bit tricky, but I don't think that they have intended to have this amount of ambiguity. And I am not sure if they were aware of it to start with.

      I'll be interesting to see how the committee will deal with this and also how many appeal will be filed, i.e. how many actually fail because of the ambiguous questions.

      Delete
  18. Just a little question regarding Q6.3:

    A.28.3) PCT states that the amendments shall be in accordance with the national law of the designated State in all respect not provided for in this Treaty and the Regulations.

    Further A.6 PCT states that Claims shall be fully supported by the description.

    Therefore I wonder if False may be an option for the answer as the amendment might be allowable under Article 123(2) but not allowable according to above PCT.

    Thanks for your feedback & best regards,

    Phil

    ReplyDelete
    Replies
    1. The last sentence of the "case" of the question reads: "Your client want to enter the European phase and he wants to file amended claims".
      So, the scope of the question is -only- amendments on entry of, or shortly after, entry in the European phase.
      As amendments are examined under substantive patent law after entry, so that the EPC applies - PCT Art.27(5) gives the full freedom to the national law for substantive conditions of patentability.
      PCT Art.28 essentially emphasizes this. In the context of PCT Art.28, the designated office / national law is the EPO / EPC.

      Delete
    2. Thanks for the quick answer.
      However I'm still surprised. A27(5) relates to patentability and prior art definition on what I agree, and this is up to each Contracting State. To the contrary A28 and A6 define what possible amendments for the national phase entry should respect and, thus, the amendment should only be based on description, not the drawing.
      It probably depends on how one reeds the question...

      Delete
    3. PCT Art.28(1) gives the procedural right to do an amendment on / shortly after entry.

      PCT Art.28(2) suggests a substantive requirement, but is in my view a bit more subtle: "...unless the national law of the dO permits them to go beyond the said disclosure", which is further referenced to in Art.28(3) and 28(4).

      Article 6 relates to the (substantive) requirements to claims in the international phase.

      Delete
  19. This comment has been removed by the author.

    ReplyDelete
    Replies
    1. Q2.4 of 2014 is related to divisonal applications and, thus, different with respect to prior art determination.

      Delete
  20. Peter Mayer24 February 2015 at 14:34
    I do not agree with 8.3 being True.
    To me this is a very similar question to 2.4 of the pre exam 2014. In that case the base application could not be state of the art for the application claiming priority weather or not new matter was added. In the reasons C-IX, 1.4 and G 1/05, Nr 11.1 was cited.

    ReplyDelete
    Replies
    1. Pre-Exam 2014, 2.4 related to a different situation:

      there, the filing date of the divisional EP-D is the filing date of the parent EP-P, so that all (valid) subject matter has the same effective date for EP-D as for EP-P, and EP-P is not prior art against EP-D – Art.54(2)/(3).

      Here, claim 3 of EP-C does not benefit from priority from DE-C, and thus has the filing date of EP-C as effective date, which is after the publication of DE-C.

      Delete
    2. I see... yes you are right. thanks!

      Delete
    3. You're welcome. These types of discussion and clarification is the reason why we have these blogs!

      Delete
  21. Will part 2 published soon ?

    ReplyDelete
  22. Our provisional claims analysis answers are now also available on a seperate blog thread!

    Please post your comments relating to those to the separate blog.

    ReplyDelete
  23. Thanks a lot for the answers!

    Can you please explain why you said that the answer of Q6.1 is false? Is that due to the fact that the part: "which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept. Nor may they relate to subject-matter not searched in accordance with Rule 62a or Rule 63" of R. 137 (5) is missing? The first part "Amended claims may not relate to unsearched subject-matter" is the same as in Q6.1.

    ReplyDelete
    Replies
    1. Correct, but that is not a requirement of Art.123(2) which forbids extension of subject-matter by amendments, but another requirement imposed on amendments.

      Note: Pre-Exam 2012, 15.4 was basically the same question, so the answer should also be consistent

      Delete
  24. Question 1 point 1.
    I have an issue with this question as there is a country San Marino in Europe but it is also a city in California USA. There is no indication in the question whether it's referring to the country in Europe or city in the US. The person could have been a resident of either.
    The answer depends entirely on which San Marino you chose.

    ReplyDelete
    Replies
    1. You are expected to use a reasonable reading in view of the EPC context, and not consider clearly not intended scenarios.

      If you dream up these kind of complications in your main exam next year, you will not score than 25-30 marks for any of the papers.

      Delete
  25. Regarding 6.3, the example of helical springs in GL (2014) H-IV, 2.5 was cited. But what about H-V, 6?

    "Care should be taken when amendments are based on details which
    may only be derived from the schematic drawings of the original
    application (see also H-IV, 2.5). The manner in which a particular
    feature is depicted in the drawings may be accidental. In such cases,
    the skilled person must be able to clearly and unmistakably recognise
    from the drawings, in the context of the whole description, that the
    added feature is the deliberate result of the technical considerations
    directed to the solution of the technical problem involved."

    Isn't the context of the whole description also to be taken into account?

    ReplyDelete
    Replies
    1. Correct.

      But the "only" thing H-V, 6 says -and emphasizes- is that you have to be _careful_ when amendments are based on drawings.
      There is quite some case law on amendments based on drawings, where aspects as ""drawings are usually schematic", "but if the drawing is to scale ...", "description and drawings appear to be conflicting", ...
      So, an amendment based _only_ on the drawings _may_ be allowable under Art.123(2), as the statement reads.

      Delete
    2. I see your point. But when I considered this in the exam, it emphasized to me amendments which are "based on details", i.e. details which support embodiments already disclosed in the description. An amendment which is based *only* on a drawing would thus lack any support in the description. At least for me this seems strange. I have never in practice drafted an amendment which is based only/solely on a drawing. The features of the drawings are also always described in the description, so they must be taken into account. In any case, thanks for your time responding to all these questions - as you can probably tell, many of us are hovering around the 70 mark and are looking for any kind of reassurance! (I also considered that cardboard must contain wood fibres.) Marc

      Delete
  26. Hi, I just check my answers and for Q.6.2, I answered "yes " because I was thinking of "selection invention" (G-VI-8 ii). Don t you think this would be a good reason for answering True to Q6.2? Thanks, Leon

    ReplyDelete
    Replies
    1. No, if the amendment is a selection invention that would be novel and inventive over PCT-N as filed, it would not be directly and unambiguously derivable from PCT-N as filed, and would thus violate Art.123(2).

      Delete
    2. No, if the amendment is a selection invention that would be novel and inventive over PCT-N as filed, it would not be directly and unambiguously derivable from PCT-N as filed, and would thus violate Art.123(2).

      Delete
    3. Yep, I did not read the question correctly and did not take the phrase "over the disclosure of PCT-N" in account..... thanks anyway, Leon

      Delete
  27. regarding question 9.1:
    In the EPA Guidelines there are two different important points mentioned:
    a) "at the filing date" for A.83, R.42: see F-II-4.1, 2. sentence
    b) "one day before the filing date" for A.56: see G-VII-4., last sentence
    Thus, to my mind there is a delta of one day regarding the state of knowledge
    (d.h. der "Wissensstand" ist unterschiedlich).

    ReplyDelete
    Replies
    1. 9.1 is not about dates, but about level of skill.

      Delete
  28. regarding question 5.2:
    Wouldn't it also be possible to use reinstatement of right (Wiedereinsetzung, A.122 EPC) according to R.49.6 PCT (A.150(2) EPC: PCT overtaking EPC and thus allowing also reinstatement of rights, although further processing is allowed as well), if "all due care" can be shown,
    as well as requesting a decision according to R.112(2)?
    In both cases no further processing fee would be required.
    This lead me to choose "false".

    ReplyDelete
    Replies
    1. Please read the earlier comments and discussion before posting a question that was already extensively discussed.

      And do not post anonymously - subscribe your comment with a name or nickname, to make taking to one another easier!

      Delete