Monday, 26 February 2018

Pre-Exam 2018: our answers to the legal part

As in the last two years, the legal questions were a mix of questions addressing standard topics, e.g. time limits, prior art, amendments, opposition, translations, EP-entry, and questions addressing topics that candidates are less familiar with such as late-filed claims, late-filed missing drawings, oral proceedings and interlocutory revision. Also, a question testing whether a patent gives the unconditional right to produce and/or sell or not was again part of the pre-exam.
Well-prepared candidates having good knowledge of the EPC and PCT and knowing their material  well (reference books, Guidelines, PCT Applicants' Guide, Euro-PCT Guide) for fast look-up should have been able to answer most of the statements correctly, provided they had their material updated to the legal status of 31 October 2017.
I expect that, as the previous two years, many candidates needed 1,5-2 hours for the legal part and the full 4 hours for the whole paper.

Our answers for the legal questions of the Pre-Exam 2018 (paper available here: English, French, and German):
1: F F F F
2: F T F T
3: T T F T
4: T F T T
5: F F T F
6: F T T F
7: F F F T
8: T T F F
9: F T F F
10: F F T F

A few remarks:
Question 9 and 10 may be considered difficult for candidates at pre-exam level, in that they do not relate to standard topics. The answers could however be found in the Guidelines, e.g. Guidelines (Nov 2016) E-II is directed to oral proceedings. The rest was at the expected level, maybe less difficult than the last three years.

Some important topics were checked twice, e.g. the 10-day Rule of R.126(2) EPC in 4.1 and 9.1, and what right a patent really gives in 7.2 and 7.3.

Surprisingly, there was no "real PCT" in this year's exam - the only PCT that was in it related to entry into the EP phase which is largely dominated by the EPC and not the PCT.

We look forward to your comments!

Note: the claims analysis questions are discussed in a seperate blog post here; general impressions are discussed here.

(c) DeltaPatents 2018

113 comments:

  1. Overlooked the word "auxiliary" in 9.3, otherwise same. Thanks for getting these up so quickly (really helps with my anxiety levels!). Hope the claim part goes up soon...

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  2. This is very helpful, thank you. In line with what you said here, questions 9 and 10 were where I slipped a couple of times. Overall though, I agree that the legal part could have been a lot worse. Looking forward to your claims answers!

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  3. Could examining division not consider them during eg limitation or revocation proceedings as they will still be placed on file and ED has responsibility?
    Otherwise all the same. Cheers Roel!

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    1. Yes, they could in limitation, as far as they relate to Art.123(2) and Art.84 (but with G 3/14 restrictions), but not as far as they relate to Art.52-57 - R.95(2). However, that is not the scope of the case AND subject to another condition of which it is not known whether that will ever be satisfied (i.e., the proprietor filing an admissible request for limitation): as the question ahs all the facts ypu need to answer (Rule 22(3) IPREE), speculative actions/events in the future shall not be taken into account when answering if the question can be well-answered without.

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    2. I did uh and ah about it for a long time - my initial reaction was also 'True' and then I changed to 'False' when I thought about the limitation aspect and the emphatic "cannot" in the statement - whilst I still think that technically the answer should be false, I can also see that probably this was overthinking it slightly and that the mark scheme answer will be true...

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  4. I've got the same except for 4.4 (but after re-reading the question, I agree with you that 4.4 should be true)

    -Flora

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  5. Regarding Q 3.4:
    Opposition Period has lapsed - so is it really a new ground for opposition?

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    1. Please clarify your question. A new ground is a ground that was not initially raised, but is introduced during the opposition proceedings.

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    2. Roel, thank you for the definition of "new ground". To my (mis-)understanding, new grounds were additional grounds permitted in opposition proceedings. However, according to your definition, it means that "new grounds" are not permitted if not prima facie relevant?
      - Tim

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    3. On top of it, they used "fresh ground" in the English version,and "new" in the French and German one... I found it pretty confusing to be honest.

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    4. See Guidelines (Nov 2016) D-V, 2 for an extensive discussion about "Late filed submissions", and D-V, 2.1 for examples in opposition proceedings.

      Not submitted in due time, but later, is late-filed / new / fresh or any other suitable synonym. See Art. 114(2) EPC and the Enlarged Board decisions G 9/91 and G 10/91.

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    5. Even though I answered correctly in the end, I tend to agree that "fresh ground" was more confusing than it could have been. In particular because there is no mention anywhere in the Guidelines of the term. (Though, apparently, the above mentioned decisions of the EBoA do use it.)

      As such, I did not find it at all straightforward to consider 'fresh' as being a synonym for 'new', let alone for 'late-filed'... In common language, it appears that 'new' and 'fresh' could have a similar meaning, but not necessarily so; while neither of them is similar to 'late-filed'.

      I ended up assuming that 'fresh ground' was meant as "a not previously covered ground, independently of whether or not such ground will in fact be accepted into the proceedings", which apparently lead to the right answer.

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    6. The term "fresh ground" is widely used by pratitioners and in case law. Indeed as such it is not mentioned in the Guidelines, but it is in the Case Law Book and thus unambiguosuly defined in the EQE syllabus.

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    7. The term "fresh ground" was introduced by G 10/91, see e.g. headnote 3, and used later on by G 1/95, see e.g. headnote, and several T-decisions.

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  6. Regarding question 6.3 - she doesn't have to be represented by a professional attorney, she could also be represented by an attorney (Art. 134 (8)), no?

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    1. She has to be represented by a professional representative (Art 134(2). That professional representative can be a person registered as a European Patent Attorney or a legal practitioner qualified in a member state

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    2. I beg to differ. Art. 134 (2) defines who a professional representative is, namely a person who has passed the EQE. Art. 134 (8) states that "representation [...] may also undetaken, in the same way as a professional representative ...". That is, Art. 134 (8) defines who else may represent. By no means Art. 134 (8) contains a different definition for "professional representative" than Art. 134 (2). Professional representatives are "European patent attorneys". The term is not some generic term for anyone who may represent before the EPO.

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    3. I beg to differ. Art. 134(2) clearly defines who a professional representative is - namely someone who has passed the EQE. Art. 134(8) defines who else may represent before the EPO - i.e. "in the same way as a professional representative". However, Art. 134(8) does not extend the definition of a professional representative. A "professional representative" is what you call a European patent attorney - it's however not some generic term used to describe anyone who may represent before the EPO.

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    4. In my opinion this answer is difficult and confusing, also in view of EPO material. While I aggree that from 134(7) EPC it seems that professional representative is different from legal practioniser, the EPO PCT guide summarises both listed professional representatives and legal practionisers under the term professional representative as used in Article 133(2).
      I know that in the end probably the EPC should count, but I find this question highly confusing in view of this material to which also the GL point when it comes to representation before the EPO as DO/EO.
      Personally, my feeling was that the people drafting the exam probably literally recited Article 133(2)EPC and therefore want to hear „true“, but this question seems appealable to me...
      How does Delta Patents see this question?

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    5. https://www.epo.org/applying/international/guide-for-applicants/html/e/ga_e_iii_1.html

      This is the link to the EPO PCT guide section.

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    6. As the statement uses the literal wording of Article 133(2), "Natural or legal persons not having their residence or principal place of business in a Contracting State shall be represented by a professional representative and act through him in all proceedings established by this Convention, other than in filing a European patent application", the answer to statement 6.3 is True. Also see Guidelines (Nov 2016) E-VIII, 1.1.

      I agree that the EPO material is confusing. The Euro-PCT Guide names both EP attorneys as well as national lawyers qualified for patent matters as types of professional representatives, whereas Art. 134(8) almost explicitly says that lawyers are not professional representatives, as they can just "act in the same way as ..."
      However, a statement that matches the wording of an article, where the article if read in isolation does not give any clarity issue, can in my view not be considered ambiguous or otherwise wrong (althlough maybe unlucky), so that an appeal (which oine of you suggested) has no chance in my opinion.

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    7. I think question 6.3 is a particularly good candidate for a successful appeal: The question cannot be answered simply by "yes" or "no", but rather by "yes, if" or "no, if".

      However, if I had to decide, I'd say that "FALSE" is the correct answer:

      1. Art. 134 (8) EPC clearly states that a legal practitioner is not a professional represenative, but that he can take the same actions as a professional representative: "Representation (...) may also be undertaken, IN THE SAME WAY AS by a professional representative, by any legal practitioner (...).

      2. The context of Questions 6.1 - 6.4 is entry to the European phase. Entry and the first formal steps of the procedure may be performed by Juana herself without the need of representation. So, for THIS part of the procedure, Juana does not need a representative.

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    8. See my comment just above.

      But I agree that, when read in the context of EP-entry, the Euro-PCT Guide (which has the status of a Notice of the EPO according to the GL/PCT-EPO (Nov 2016) General, 1 [second par]) can be considered to provide details on the term _professional representative_ in the context of EP entry, and it gives the word professiinal repsentative two meanings -- making the answer to the question depend on which meaning you use:

      It says:

      459 Applicants having neither their residence nor their principal place of business within the territory of one of the EPC contracting states ("non-resident applicants") _must be represented by a professional representative_ and act through him in all proceedings established by the EPC.[ 30 ] In such cases a professional representative must be appointed in due time.

      460 Two categories of _professional representative_ have the right to practise before the EPO:
      – any _professional representative entered in the directory of professional representatives maintained by the EPO_, and
      – any _legal practitioner who is qualified to practise in patent matters_ in one of the EPC contracting states and has his place of business in that state.

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  7. I had the same thought regarding Flora's comment on 4.4. It should be true as the proceedings are no longer pending before the Examining Division.

    Chris

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  8. According to Visser 4.4 is indeed false. See R114 comment with reference to OJ 2017 A86 p4. "If an observation is received close to or after issue of the R71(3) communication is regarded relevant, the EPO will continue examination.."

    Bjoern

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    1. 4.4 referred to the decision to grant, not the R71(3) communication.

      - Mark

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    2. But we are much further in the procedure! We are no longer at 71(3) stage, but we already got the decision. So it is no longer in the competence of the ExamDiv.

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    3. "...the decision to grant has been NOTIFIED...". Is there anywhere in the legal texts a reference to the word "notify"? As far as I understood a decision is issued by the Examining Division and sent to the postal service of the EPO. Only after this date the observation can not be considered by the ED. Thus, where is there a link to the legal texts establishing that when an applicant is notified about a grant it means that the grant was either published or at least sent to the postal service of the EPO?

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    4. What about R.126(2), your favourite rule for 10-day legal fiction for notication?

      Your understanding is wrong - check G 12/91 and Guidelines (Nov 2016) E-V, 3.

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  9. What's the legal basis for why the examining division can't refuse on the basis of new prior art after you withdraw your request for oral proceedings in q10 - I got that wrong and in hindsight I assume it's a113epc?
    Bob

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    1. Indeed. Art.113 EPC
      Also see Guidelines (Nov 2016) E-II, 8.3.3.1, esp the last sentence: "If the applicant and/or patentee decides not to attend the oral proceedings, he is thereby choosing not to make use of the opportunity to comment at the oral proceedings on any of the objections, but to rely on the arguments as set out in the written submissions. The decision may be given orally in his absence. The procedural principles require that the party to the proceedings is not taken by surprise by the decision." and in 8.3.3.3: "Oral proceedings give the applicant an opportunity to exercise his rights under Art. 113(1). In examination proceedings, when an applicant files amended claims before oral proceedings which he subsequently does not attend, he may expect a decision based on objections which might arise against such claims in his absence. A decision can be taken based on facts and arguments presented earlier in the proceedings and/or based on new arguments which may be expected to be raised (see OJ EPO 2008, 471).", which says that new ARGUMENTS may be used in his absence (e.g., a better argumentation as to what is implicitly disclosed to further substantiate an existing novelty objection), but NOT new FACTS (the results from the new sesrch).

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  10. This comment has been removed by the author.

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  11. Only European applications can become prior art under 54(3). This is a national FR application

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  12. Re. Q 6.2. The proposed answer is T, i.e. FP is a valid option to file a translation of PCT-J. In isolation, I agree.

    However, the applicant in entering the EP regional phase prior to the 31 month deadline (?/8/15 +31m = ?/3/18) must provide this translation on filing. Therefore the use of FP will violate the “wish of the applicant to enter the European phase today, 26/2/18”, which leads to an answer of F.

    Accordingly, is it because it is merely a ‘wish’ of the applicant to enter today that your proposed answer is T?

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    1. No. It is because she wishes to enter today, but it is not known whether all requirements can be fulfilled today. In particular, it is not known whether the translation is available today. And if it is not, then it is a (legally) valid option to file it using FP.

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    2. “but it is not known whether all requirements can be fulfilled today. In particular, it is not known whether the translation is available”. How is this quotation directly and unambiguously derivable from the facts provided in the question?

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    3. It does not need to. I just mentioned it to indicate that the word "wish" is not "just a wish" but leaves the option open that in one or more statement the wish is not / cannot be fulfilled.
      It is not needed to know whether the trabslation is in time. You just need to answer whether it is a (legally) valid option to file the translation later and -if so- how.

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    4. Anonymous:
      I feel that you're reading far too much into the context of the question here here. Flipping the question around makes this obvious - it would be absurd to say that the applicant can NOT request further processing for the filing of the translation. I appreciate that she may not get early processing if she enters today without filing the required translation but the question simply asks whether it is a "valid" option (rather than the most expedient option). The answer "true" simply has to be correct. I believe the chances of appeal if you answered "false" are incredibly slim because it is clearly a valid option to use further processing according to the rules and articles of the EPC.
      - Leo

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  13. Hi Roel,
    I don't understand why 4.4 should be T.

    GL E-VI,3 state:" Observations by third parties received after the decision to grant/refuse the application has been pronounced in oral proceedings or issued in written proceedings (see G 12/91) will be included in the file without taking note of their content. Observations by third parties received once proceedings are no longer pending (e.g. after publication of the mention of the grant) will be neither taken into account nor made available for file inspection."
    So since application is still pending and the observations are included into the file it is not like if they are not taken in consideration at all.
    What do you think?

    thanks, Stefano

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    1. From what you cited (albeit from the 2017-Guidelines, i.e., not the one that was in force on 31 Oct 2017...):

      "will be neither taken into account"

      So, not considered at all.

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    2. However, in the present case, the application was still pending, so it is the first sentence that would apply. As such, they would be "included in the file without taking note of their content"; i.e. still not considered by the examining devision, but with a somewhat different basis.

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    3. In Visser, 15-11-2017 - Art 115.4 "There is no provision in the EPC defining circumstances during pending proceedings wherein the information filed under Art 115 should not be taken into account". BUT C-V 6.1 states: "the examining division may resume the examination procedure at any time up to the moment the decision to grant is handed over to the EPO's internal postal service for transmittal to the applicant".

      So can the examining division consider the TPO without resuming the examination? The application is after all, still pending.

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    4. GL (Nov 2016) E-V, 3 and G 12/91.
      Application still pending but no more active proceedings after handover pof the decision to the EPO internal post. So cannot reopen.

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    5. Right, thanks Roel, GL E-V,3 (Guidelines november 2016)..

      I found that misleading.
      If I got it right, the GL say that after the decision of the intention to grant (the case of the question), third part observations will be included in the file (and then made available to inspections), whitout taking any note of their content, then just partially considered.

      After the pub. of mention of grant, it will be not take note about the content of the observations as well, neither made them available to inspections, then just in this case not considered at all.

      What informations the question want me to provide?

      thank you,
      Stefano

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    6. Hi Stefano, please read the references I mentioned, they give the answer, and directly lead you to T: the examining divison will not consider them as they are no longer handling the case - it got out of their competence when they handed over the decision to the EPO internal post, which then sends it to the applicant, who will then receive it. So, you just need to provide T to 4.4

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    7. got it, thank you Roel
      Stefano

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    8. What about if the applicant files some amendements, to the text intended to grant by ED, on the basis of third part observations just transmitted? It is still possible at this stage.

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    9. I'm still unsure about this one. I think the case law mentioned in the guidelines gives examples of communications by the parties themselves.

      http://www.epo.org/law-practice/legal-texts/official-journal/2017/10/a86.html states:

      " 4.2 All observations meeting the formal requirements will be considered by the examining or opposition division, which will then comment on their relevance in its next substantive communication to the parties to the proceedings. However, no communication will be issued where observations are received after the examining division has issued a communication under Rule 71(3) EPC and does not regard them as relevant."

      So does this mean, observations received after the 71(3) are not regarded as relevant, or that no communication will be issued if after the 71(3) AND are not regarded as relevant?

      If the latter, then we have clearly "All observations meeting the formal requirements will be considered by the examining or opposition division", and therefore the answer is false. Perhaps the answer is false either way, as the first sentences says they will be considered, and perhaps not communicated if not relevant.

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    10. Im my opinion the statement is bad formulated. It shoud use the same wording of GL E-V,3 (2016).

      The wording "considered" is ambiguous and never used by GL, what is considered? the communication about.. or the content about..? "Take note about their content" as GL recite, is much more clear, and answer would clearly be T.
      You have consider them when you receive it, at least to be aware that they are Third part observations and for include them in the file.


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    11. Considering Anonymous' question regarding applicant filed amendments, this then ties in with question 4.2. If the applicant can still in principle, appeal the decision to grant, not because they disapprove the text but because they have become aware of new prior art, then of course the examination division CAN consider the observations.

      The answer must surely be false?

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    12. @Flannel: no, such an appeal is not admissible.

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  14. I just want to comment to thank Delta Patents. I mostly self studied using your pre exam book since the patent attorney in my company quit and I was left without a supervisor before the test, but looks like I got 44 out of 50 if your model solution holds up in the end. I can still fail miserably on the claims part, but, couldn't have done it without the pre exam book. The EPO explanations are usually quite sterile and your expanded reasoning really helped. Great job putting that book out.

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  15. I’m curious as to why 5.2 should not be True, as I had wrote - can anyone comment?

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    1. 29/7/15 + 31m [R.131(4) EPC] -> 28/2/18 (Wed)

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    2. I had assumed this would ‘roll-over’ to the 1st of March, but having checked again I can’t find any provisions for this. Seems consistent with Q4.1, 2013. Thanks.

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    3. Please read Rule 131(4) EPC, especailly after the semi-colon.

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    4. Perfect, cheers Roel!

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  16. Is there anyone having different opinion on question 3.1?
    I know it is simple and easy.. mere validity of the priority is not a objection under Art 100 EPC but you could also think that validity of priority direclty affect the novelty and in this way, prority should be considered. This is clearly mentioned in Visser.

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    1. Indeed, the valid ground of opposition could be lack of novelty due to priority not being valid. So, the ground is lack of novelty.
      However, priority _as such_ -as asked in 3.1- is not a ground of opposition: the exhaustive list of grounds is in Art.100 EPC.

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  17. Why is 7.4 true? In my opinion the fee for the fourth patent year runs out march 2018 so that the fees have to be paid to the epo.

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    1. Fees are payable in advance for the coming year. Therefore, the last fee payable to the EPO was the March 2017 fee (which covers up to March 2018, and covers the year in which the mention of grant was published). The 2018 renewal covers March 2018-2019, therefore is after the 'grant year' and fees payable directly to national institutions in countries where validated.

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  18. I was thinking about Q4.1. Oct 22nd 2017 is sunday.

    AFAIK in all previous questions ref. the 10days-rule, if - at all - the *end* of the 10day-fiction was on a week-end; thus having no further consequence as the 10days-rule is a simple fiction (R126 (2): "shall be deemed to be delivered").

    BUT: In my opinion, here the case here is different and this might also be a reason why the 10day rule is tested twice!?:
    Here the *start day* is on a Sunday.

    Rule 126 (2) reads: "... on the tenth day following its handover to the postal service provider..." - The day of handover cannot be on a Sunday and the day of handover does not refer to a fiction but - at least in my wildest phantasies :-) - to the real day of handover.

    So has the start day (=day of handover) of the 10day-fiction to be shifted to the next possible day (Monday)? Should Q4.1 therefore be F instead of T?

    IMHO, handling it differently (not shifting the start day) would shorten effectively the time limit for the applicant by one day due to the epo dating the handover (probably by epo's mistake) on a Sunday. Or does this question learn us that the epo indeed works 7/7 for us? :-)

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    1. Rule 22(3) IPREE says that you must accept the facts as they are. If it says send on Sunday, then it was send on Sunday. Which is possible as some post offices -at least in NL- are open on Sundays, so registered mail can be handed over to the mail provider. Donot know whether it says sonewhere in an OJ EPO that printed date is date of handing over to mail provider (G 12/91 is about internal mail service), but what else can it be / it is commonly accepted to be so.
      What is your basis that the sending day would rollon to Monday if it is specified to be Sunday? Just an assimption? No assumptions needed: Rule 22(3) IPREE

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    2. First of all, thank you for your quick reply.
      Please consider:
      Q4.1 does *not give any explicit handover date*. It only says: "the communication is dated 22 October 2017".

      There is *no* indication in Q4 that this is to be taken as date of handover.

      R22(3) IPREE also says: (3) [...] Whether and to what extent those facts are used shall be the responsibility of each candidate. "

      So there remains room to define the "extent those facts are used."

      The handover is IMHO still impossible on a Sunday as this would not only require the post office to be opened but also require the EPOs mail service to work on a Sunday.

      Neither in G 12/91 nor in the GL (at least I) could find any hint on this issue. Particularly I have not found an example in the GL concerning the time limit calculation in the case of an (impossible) starting date.

      G12/91 says (in ref. to an opposition): "If the decision cannot be despatched on that date as
      intended, the EPO postal service returns it to the Opposition Division's formalities officer for the date to be
      changed accordingly."

      No this apparently did not happen in the present case.

      Moreover, we can probably be sure that a question having such a special feature has this feature by purpose and not by chance.

      So: Any other idea about a decision or the like in regard to this situation?


      Thanks to all,
      Michael


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    3. Hi Michael,
      I agree with you that special features are usually by purpose in an exam question, but is it a special feature that was designed in as such? I have been tutoring for many years and no candidate ever addressed the effect of having a date stamped in a communication that is a weekend day or an EPO holiday. We all use the date stamped, without checking whether day of the week it is (unless the date is obviously wrong as in the 2019 example somewhere above). So if you happened to check it and saw it is a Sunday, you were probably the only one (which in itself is by the way not a real argument why it would be wrong)...
      Theoretically, an EPO post department employee could send a registered letter on a Sunday (some post offices allow it as someone posted above) - we all work on Sundays every once in a while, why not an EPO employee? So no direct reason to doubt the fact. Further, the G 12/91 reason only says that it may be passed back to the opposition division if they cannot send it on the indicated date, but it does not say what happens if they do dispatch it on that date.
      By the way, it says nowhere in the Rules or the Guidelines that the date stamped in a communication is the date of handover to the postal service provider, but it is - we use it in daily life every day when we receive a communication and calculate the time limit using the 10 days for notification. So, there is no such indication needed in the question - it is well-establoshed and well-known practice.

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  19. It is an interesting note that the issue date is a Sunday. However, I think that already assuming the delivery by post service is an assumption. This is not stated in the text of the question. Electronic delivery, which I should be possible on a Sunday an which would also give rise to the 10 day fiction is not excluded. Therefore I believe that here there was no hint to doubt the issue date being October 22.

    Nevertheless I see your point, and I am wondering, even though it was not the question what would happen if the date of the communication is obviously wrong e.g. 2019 instead of 2018. What would be the legal consequence and what is the legal basis for it.

    What does Delta Patents think of the above mentioned comments and the theoretic scenario mentioned above.

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    1. Thanks again for your opinion. Though immediate electronic delivery would in principle be possible, it would still require Oct 22nd to be an EPO working day which contradicts the attached calenda (ref. shaded Saturdays and Sundays).

      Very interested about Delta's opinion...

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    2. I largely agree with "Anonymous 27 February 2018 at 21:12", but I also understand "Anonymous (Micahel) 27 February 2018 at 22:06".

      First of all, it never ever says in a question when the handover to the postal services was: the date mentioned on the communication is the date used for the 10-day rule. I couldnot find a legal reference for this, but it is e.g. stated very explicitly like that in Visser under the notification rules.
      I donot think any complication to "22 October 2017" was intended, because there is no furter information that you could use if you want to be able to answer 4.1.
      So, I think it is expected to calculate as 22/10/17 + 10d + 4m -> 1/11/17 + 4m -> 1/3/18, so T for 4.1

      Is the date would be obviously wrong, e.g. 2019, as one of you asked, then you cannot rely on it and misuse it to your advangtage: good faith, or the principle of legitimate expectations, applies to the EPO as well as to applicants and proprietors. I domot think it would apply in this case, as it is not so obviously wrong, and good faith also allows the applicant to rely on information given by the EPO if he is in good faith - and it is for sure not bad faith that you donot check whether the date on the communication is really the date on which it was dispatched (also for a working day, you cannot know).

      Further, I believe that the pre-exam questions always present all facts that are needed clearly and complete (apart from a few accidents that happpened as we know from appeals in the past, but they intention there was also to have it all well-defined; we are all humans, so make mistakes...), and also that no obscure interpretation or deeply hidden reason from a G-decision is needed: there would be clear hints in a question for example in the form of statements that draw your attentioin to it (e.g., "the applicant wonders whether the facts that the communication is dated on a Sunday has special consequences")

      What remains is why the date was choosen so and not simply Fri 20 Oct of Mon 23 Oc 2017...

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    3. Thanks again for your replies! One last note: IMHO, the principle of legitimate expectations applied to this case would favor the time shift of the handover day from Sunday to Monday. Moreover, without time shift - could this give rise to problems of e.g. the right to be heard / equal chances, if an applicant's effectively usable time limit is shortened due to a mistake by the EPO?

      I dont have Visser, but would suppose as this case seems to be mentioned neither in the GL nor elsewhere that it is simply not discussed. Btw, AFAIK the GL systematically refer (correctly) to the handover date, not to the printed date.

      So EPO's solution and, if ever, results of appeals soon will tell us probably more on the question intent or accident ...
      Best greetings,
      Michael




      Delete
    4. I'm hesistant to share this, as I don't have any legal basis for it, but after bringing this issue up to my boss: he 'suspects' that the EPO routinely post-dates their communications (i.e. they stamp the communication with a date 3 days from now) in order to allow for some leeway in their internal affairs (e.g. to allow some time for any possible delays between finalizing it and handing it over to the internal post/external post/etc.). Apparently, since switching over to the electronic mailbox, we sometimes receive communications even before the date that they bear...

      As to why Friday the 20th or Monday the 23rd weren't chosen: the 10-day rule ends on November 1, a holiday. Seems reasonable that they wanted to test if you can properly deal with the 10-day period ending on a non-working day (i.e. not extend this period)?

      Delete
    5. Dear Ki,
      Thx for your last observation, that could very well be the reason indeed, 1 Nov is All Saints' Day on which the EPO in Munich is closed.
      Regards, Roel

      Delete
    6. Yes, indeed, very interesting point. But then the question would be designed very, very badly....
      Michael

      Delete
  20. It is only my impression or it seems that this last pre-examination was not made with the same care and attention of past years? e.g. Legal Part with 3 euro-pct questions and this "odd" Sunday date, Claim Analysis much more confusing.

    ReplyDelete
    Replies
    1. Dear Anonymous 28 February 2018 at 10:24
      I donot agree with your first impression: I think it is designed with great care and attention, I donot see any unambiguities in it.
      The legal questions were, in my view, comparable or maybe even a bit less difficult than in 2016-2017. There was no real PCT in it, only Euro-PCT, which should not really give more problems than direct EP tpics. I would expect a well-prepared candidate to score over 40 for the legal part, and over 45 is also well achievable - as some candidates alrady reported to me assuming our answers are correct.
      The claims analysis part was however also in my view more difficult than any earlier exam, especially as it was very mechanical which many candidates and esp chemists (as some reported to me) found very difficult - the earlier exams had easier understandable subject-matter. And yes, it was confusing in the sense of jumping between differnt embodiments of different prior arts in successive statements addresing different claims, but we had that also in the last few pre-exams, so that something one could expect and prepare for. Whether the tottal time available was enough is hard to judge, but I expect that everyone would have needed a considerable amount (20-30 minutes maybe) for the claims part of this exam than than in 2015-2017. It took me quite a bit more time, and it was hard work to stay well focussed, than the last few years, but experienced tutors do such a paper in so much less time than a candidate that is is hard to draw conclusions from how much time it took me myself. Part of the extra time needed for the claims may have been compensable by the less difficult legal part, but only if candidates were flexible enough to change their planned time schedule 9e.g. from 2h + 2h to 1.5h to 2,5 h). Opinions would be welcome.

      Delete
    2. Dear Roel,
      I agree with your comments on the level of quality of the preexam. It took me about 1h 15min to finish the legal questions and according to your model solution I scored 46/50.
      But as a chemist I must admit that the mechanical claims analysis part was quite challenging. In the past pre-exams I could at least make an educated guess on which features of the claim are supposed to correspond to the features of invention/prior art. Well, this time I was quite in doubt for a long time, e.g. on the presence of the biasing means in the prior art, if there's only 1 magnet on each "blade" of the impeller, and so on. All that wasn't so clear to me and I had to make a decision during the exam. Sometimes this decision was just not correct. And I needed the full 4 h to go through the questions once. Thanks to the speed in the legal questions, I answered all questions.
      Anyways, I still scored 30 in the claims analysis according to your solution which allows me the pass. Although I've been much better in the previous exams that I practised at home.
      I don't quite understand why chemists have to deal with the mechanical stuff so much. EPO could prepare a chemical pre-exam, for example with a product-by-claim and different prior art on polymerizations. I suppose that would be a lot of fun for the mechanical engineers, too. However, I must admit that software engineers probably have the same challenges with mechanical inventions as I did.

      Delete
    3. For me it takes about 1h 15 min for legal questions which was the same duration for all previous pre-exams solved for exercising purposes as well as this exam. Usually I score 42-46 pts, which was the case at this exam as well (42 pts).
      For the previous pre-exams it took me about 1h 15 Min to finish the claim analysis taking a few educated guesses and another 30 Min to go through the claim analysis in order to check all references and be pretty certain to have backing in the description for my answers. I have to confess that I usually don’t change a lot of answers on the second run but at least I am certain on my answers and am also certain that I would not change any answers having more time. So I usually was finished in about 3 hours, scoring around 40 pts on the claim analysis part.
      At this pre-exam the claim part took forever. I was finished with my first "educated guess run” after 2 hours, leaving about 30 minutes for checking my references in a second run. As the combination of different sets of claims and embodiments was so confusing it was almost impossible to go through it again leaving me with wrongly changing two answers just because of a mix-up of embodiments. I do not remember if I changed any other answers and did not finish my second run. So I and was left with a lot of educated guesses shot from the hip leaving me with indifferent feelings.
      According to your solutions I scored 42 pts at the second part so my educated guesses seemed to be pretty accurate for this exam as well. Nonetheless the amount of sets of claims and embodiments were unnecessary and confusing as I already complained at another part of your blog.

      Delete
    4. Dear Roel,
      I meant care and attention to fit the entry level of the candidates (it is not the main examination) and to the 4 hours in which they have to perform it (even who sat the exam not in his language).
      Just comparing drawings from last year they were objectively much more clear and explanatory, this year I personally found them very confusing.

      Delete
  21. I have to agree with the previous comments. For me the legal part took around 1h30 minutes, around the same as the previous exams, and according to your answers I have all of these correct. But the first attempt at the claims part left me with only 15 minutes at the end of the exam to check my answers. I found it difficult to keep track of the different documents. I deal with mechanical subject-matter fairly frequently and I found parts of the analysis challenging - so I can certainly see that this could be more of a disadvantage for chemical/bio people.

    The format of the claims analysis questions was the same as in all the previous exams - I think it is just the sheer volume of material which is new here.

    - Anon123

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    Replies
    1. Hi Roel, in your opinion for this examination it could be more helpful start with the claim analysis part? I was undecided at the begin.

      Delete
    2. Double post. I answered it below

      Delete
  22. Dear Roel.

    This topic is also being extensively discussed in the "first impression" blog. I got a high mark in the legal questions but not so high on the claim analysis because I had to guess the last few questions. I am now borderline according to your solutions. Claim analysis was confusing, complex but the biggest issue is timing. It is unfortunate that the claim analysis this year was so complex and time-pressured that many capable candidates who are borderline may end up failing, not because they couldnt do it but because they had to rush and guess.

    Do you think this is something that could be challenged or that the exam board may lower the pass mark this year? I should think the point of the pre-EQE is to test whether the candidate possess the basic skills & knowledge. They should not be rushing through the last 3/4 questions and rely on luck. I suspect many borderline candidates will feel very aggrieved by this paper.

    ReplyDelete
    Replies
    1. The exams are all tested with guinea pigs, as the exam committees explained at the Tutor meeting one-and-a-halve years ago. At that occcasion, it was also said in the past that the pre-exam (unline the main exam papers) did not intend to check the candidates under high time pressure, also not in view of the language disadvantage for non-native speakers. I donot know how they test whether the exam is too long or not; may be difficult as the tests are -as far as I recall from what was said- done with experienced attorneys and examiners. The last three exams were, as we experience when we do them with candidates in our courses, well comparable in difficulty and time needed (with some variation of course). This one seems to be different: more difficult i the claims part and more time needed. It can only be challenged if it really goes against the exam regulations. The exam committee has no discretion in deciding on pass/fail as the marking scheme is fixed with 5/3/1/0/0 for 4/3/2/1/0 correct per questions, and the pass level is fixed to 70 as well in the IPREE. I think they exam committee can only influence the pass rates by considering both answers correct for some statements - but it would be strange if they do that for questions where the answer is unambiguously true or false. The Supervisory board tsets the pass level in the IPREE as they did after the 2013 pre-exam when they increased it from 50 to 70 for the 2014 exams and later, but it goes against standard legal principles to do that retroactively and to change that for an exam that was already held. I think they also approve the exam papers prior to the exam (it probably says in the REE whether they do or not, I didnot check that), which presumably makes it less likely that they would derate it afterward. I find it difficult to say whether the exam was unfair as some you say on this blog or not - it depends on the exam, on the intented pass rate, on many factors. It also does not just depend on a higher difficulty level of the claims part: that can be partly compensated for by a lower difficulty level of the legal part. We will need to wait and see what the results are, and whether the pre-exam committee, examinatio board and/or supervisory board felt a need to interfere in the normal way of proceedings.
      From what I heard about possible scores (based on our answers) and time used / time shortage (for most, guessing Q.19 and 20 rather than answering them), it may well be that the average score may be in a range of 5-10 marks lower, which could reduce the pass rate from 75-80% (2015-2017) down to maybe even something like 65%.

      Delete
    2. Thank you for your comments. I'm glad you think the timing for pre-EQE exam should be manageable. I do think in this case, the committee have got this paper wrong in terms of timing. Even if they want to increase the difficulty level, it should not be changed so drastically that the majority of candidates could not physically finish the paper within time. It would be great if we can give some feedback to the committee but we wait and see.

      Delete
    3. I sat the pre-exam last year (which from these comments was clearly shorter than 2018's) and I found it more time pressured than the full EQEs (which I sat this year). Not to imply that the EQEs aren't time pressured, but take paper C: A novelty attack might be worth 10 marks (or 10% of the exam). Therefore you can take 33 minutes on it. Picking the right attack is key, so you can justify 15min reading and thinking before committing to novel or not (and if not novel the document will be relevant to inventive step elsewhere, so this time isn't wasted), and then 18min of writing. In the pre-exam it seems deceptively simple, no writing just pick true or false. But for one statement you only have 3min to do all of the reading and thinking.

      So I think, if they are aiming for the pre-exam to be less time pressured than the main exam, they need to trim the claims section. But then I guess they would need to make the questions "harder" to compensate for a shorter exam, and this would be tough without introducing arguable answers... I'm glad I'm not an examiner...

      Delete
  23. Hi Roel, in your opinion for this examination it could be more helpful start with the claim analysis part? I was undecided at the begin

    ReplyDelete
    Replies
    1. It depends most on personal preference. In our pre-exam courses, we advise candidates to check for themselves in their preparation which order works best, and how much time they need on average for each part. Then, decide which part to do first in the exam and how much time to allocate for that part, for the rest, and how to sue the remaining part (review or use to work longer on one of the parts). And be prepared to be flexible in the exam: some exams need a bit more time for the legal / claims part than others. In the last few years, many candidates needed about the same time for each part, sometimes asymmetric by 15-30 min in one or the other direction, quite stable over the last 3 papers. I didnot spot any correlation between order of parts and asymmetry - the choice where to start first was (where consciously made) based on personal preferences due to the different characteristicsof both parts.

      What made you be undecided for this paper?

      Delete
    2. I was undecided because I took a look to the claim analysis part and I saw a pretty long description and 4 prior art documents. So I was very undecided if start to deal straight with claim analysis with a fresh mind, or to deal as soon as possible with legal part in order to gain time. Finally i starded with legal part but it took me 2 hour full.

      Delete
  24. It does feel like the committee is trying to reduce its numbers entering the profession with this paper by making the claim analysis much harder and almost impossible to finish on time.

    ReplyDelete
  25. Hi Roel,

    My question is regarding 5.3. Initially, I marked it as "T" but after giving it a thought I finally marked it as "F". My reason for doing so was that according to Rule 159 EPC, the applicant shall perform the following acts within thirty-one months from the date of filing of the application or, if priority has been claimed, from the priority date. Since the 31 month period expires on 28th Feb, according to the provision the applicant still has time to pay the filing fee until 28th Feb (may be on 27th Feb or 28th Feb). What is the legal basis for saying that the filing fee must be paid on 26th Feb?

    ReplyDelete
    Replies
    1. You seem to have misunderstood the question or the requirements for early entry: entry on 26 Feb 2018 is early entry (as 31m limit expies on 28 Feb), so the filing fee must be paid on 26 Feb if we validly want to enter on that date - see OJ 2013, 156 and Euro-PCT Guide (2017) 428-429 (http://www.epo.org/applying/international/guide-for-applicants/html/e/ga_e_i_8.html)

      EPG (2017) 427 An applicant can request the EPO as designated or elected Office to commence processing the Euro-PCT application at any time before expiry of the 31-month time limit.

      428 For this purpose, the applicant must file an express request for early processing, which is not included in Form 1200. Moreover, he must fulfil the requirements for entry into the European phase as if the 31-month time limit provided for in Rule 159(1) EPC expired on the date he requests early processing.

      429 This means that, for an application to be processed early, the following requirements must be complied with: payment of the filing fee (see point 534), including any page fees (see points 537 ff), filing of the translation (where applicable, see point 509), specification of the application documents (see point 473), payment of the search fee (where applicable, see point 582). [...]

      Delete
    2. Thank you very much for clarifying. This is the only one that I got wrong, in the legal part so am pinching myself for changing my answer in the last minute. But I am glad that now I have an explanation for for why it should have been "T".

      Delete
  26. Hi Roel,

    With respect to 10.2:
    The time limit for filing request according to R116(2) were not expired, as it was filed on the last day of the time limit, i.e. on 23. Feb 2018 thus 'false' is correct. If I understood it correct, the question and the answer are strange. But if the request would be filed on 24. Feb. 2018 then the Rule 116(2) would be applied and documents which meet the requirements of the Convention presented after that date need not be considered, unless admitted on the grounds that the subject of the proceedings has changed. Since the subject of the proceedings has not been changed by the EPO, the amendments has not to be considered under R116(2) in conjunction with R116(1) S.4, 2nd alternative. But it could be regarded by the EPO und R116(1) S.4, 1st alternative as prima facie relevant (E III 8.6)?

    @Roel: Is that correct.

    Heck

    ReplyDelete
    Replies
    1. Yes, correct, filed in time as on last day of the period set by the examining division, so statament is already FALSE due to sepnd part of the sentence.

      Note if would be differnt if the period is set by the opposition division or the BoA, as in that case, "in time" means within the 9m opposition time limit or within the time limit to file the grounds, andwhat is filed in those time limits sets the factual and legal framework for the proceedings - exceptions: any later submission is at the discretion of the oppo division (see GL (2016) E-II, 8.6/ Board and oppo division may get things in at own motion.

      Why do you consider the question and the answer strange?

      NB: you refer to E III 8.6, but that is from the Nov 2017 Guidelines - at the exam, the November 2016 Guidelines was the relevant version as that was the version in force on 31 Oct 2017. The Nov 2017 had a new chapter I inserted and later chapters renumbered in Part E.

      Delete
    2. Hi Roel,

      thank you for your answer. Sorry, in the exam, I have used Gl 2016 of course.

      Rule 116(1), facts and evidence and (2), amendments can be filed till the date indicated in the summons. According to E II (GL 2016) this holds also for the opposition proceedings:

      "Rule 116(1), being an implementation of Art. 114(2) as a further development on the existing jurisprudence regarding facts or evidence not filed in due time, makes it clear that the examining or opposition division has a discretion to disregard new facts or evidence for the reason that they have not been filed before the date indicated in the summons under Rule 116, unless they have to be admitted because the subject of the proceedings has changed."

      "Rule 116(1) imposes on the parties in submitting new facts and evidence. Here the division also has the discretion to disregard amendments because they are filed too late before the oral proceedings."

      "In exercising this discretion, the division will in the first place have to consider the relevance of the late-filed facts or evidence (see E‑VI, 2) or the allowability of the late-filed amendments, on a prima facie basis. If these facts or evidence are not relevant or if these amendments are clearly not allowable, they will not be admitted. Before admitting these submissions, the division will next consider procedural expediency, the possibility of abuse of the procedure (e.g. one of the parties is obviously protracting the proceedings) and the question whether the parties can reasonably be expected to familiarise themselves in the time available with the new facts or evidence or the proposed amendments."

      It seems to be strange since the prima facie relevance has to be regarded by the opposition division irrespective whether or not facts and evidence have not been filed before the date indicated in the summons under Rule 116(1) since at least for the facts and evidence A114(2) has to be applied for all facts and evidence submitted after the 9 months period, and for this the opposition devision has to analyze (only) whether the facts and evidence are prima facie relevant. (R116(1) "New facts and evidence presented after that date need not be considered" = prima facie relevant?)
      If we do not consider the "unless admitted on the grounds that the subject of the proceedings has changed."
      In case of amendments, the amendments has to be accepted in any case if filed before the date indicated in the summons under R116(2). When they are filed after this time limit, the opposition division still has to consider the amendments and has to accept these if these are prima facie relevant.

      Pursuant to G 6/95 R116(1) (R71a(1) EPÜ1973) cannot be applied to the board of appeal. Does it also holds for R116(2), i.e. amendments? For the appeal Art. 12(4) and 13(3) RPBA should be applied for evidence, facts and amendments filed after the deadline for the grounds of appeal or after oral proceedings have been arranged?

      So the question contains merely the fact that the amendments have been filed on time. This holds also for the opposition procedure. If someone would consider the appeal proceedings the question could not be answered "since it is not clear whether the board would accept it or not (A13 (3) RPBA "Amendments sought to be made after oral proceedings have been arranged shall not be admitted if they raise issues which the Board or the other party or parties cannot reasonably be expected to deal with without adjournment of the oral proceedings.")

      Heck

      Delete
    3. The question was about a situation with the examining division, so I donot want to expand too much on similar situations before the opposition division or in appeal. But, as I started about it and you continued on it, let me briefly comment.

      As said, if the period is set in summons for oral proceedings before the opposition division or the BoA, as in that case, "in time" means within the 9m opposition time limit or within the time limit to file the grounds, andwhat is filed in those time limits sets the factual and legal framework for the proceedings - exceptions: any later submission is at the discretion of the oppo division (see GL (2016) E-II, 8.6/ Board and oppo division may get things in at own motion.

      GL (2016) E-V, 2.1, 2nd sentence gives the general rule: "According to these decisions, in principle, the opposition is to be examined to the extent and on the grounds submitted during the period for opposition." as well as the general rule of exceptions: "Under Art. 114(1) the Opposition Division may go beyond this framework if prima facie maintenance of the patent is prejudiced. The principles developed by the Enlarged Board with respect to new grounds also apply to late-filed facts and evidence (see T 1002/92). Therefore late-filed facts and evidence are to be admitted into the proceedings only if they are prima facie relevant, i.e. if they would change the envisaged decision, see E-V, 2."

      GL (2016) E-V, 2.2 "Examples concerning oral proceedings in opposition procedure" is a sub-paragraph of 2 "Late filed submissions" shows example types a), b), and c), which are lated-field submissions, as weither explicitly stated or clear from their need for prima facie relevance.

      The part you refer to with ""Rule 116(1), being an implementation of Art. 114(2) as a further development on the [...]" is GL (2016) E-II, 8.6 is from the general part on oral proceedings. It refers to other parts for oral proceedings in opposition. See E-II, 8.6, 1st sentences: "With respect to facts and evidence not submitted in due time or arguments presented at a late stage in the proceedings in general, see E-V, 2. Concerning facts and evidence not filed within the opposition period, see D-IV, 1.2.2.1(v)."

      Delete
  27. Hi all,

    Don't you think the answer to question 10.1 is "True" since the Notice from the European Patent Office concerning non-attendance at oral proceedings before the examining division, OJ EPO 2008, 471, clearly states :

    "The oral proceedings give the applicant the opportunity to present its comments, in accordance with Article 113(1) EPC. If the applicant decides not to attend the oral proceedings he chooses not to make use of the opportunity to comment at the oral proceedings on any of the objections, but relies on the arguments as set out in the written submissions."

    No pain, no gain, no 113?

    Thanks / Ant1

    ReplyDelete
    Replies
    1. Hi Ant1,
      A Notice can never overrule an EPC Article. It also does not: the right to be heard of Art.113 is respected also if the party doesnot show up.
      GL (2016) E-II, 8.3.3.3 indicate: "The decision can be taken based on facts and arguments presented earlier in the proceedings and/or based on new arguments which may be expected to be raised (see OJ EPO 2008, 471).". So, the decision can be based on new arguments based on existing facts (e.g., a better invetive step argumentation in respect of the same combination of prior art documents), but NOT on new facts - which is the case here: new search results = facts that the applicant cannot foresee.

      Delete
  28. The Examiner's Report is available. A link is on our blog post https://pre-exam.blogspot.nl/2018/03/pre-exam-2018-results-are-out.html

    Our answers to the legal questions would have attracted full marks.

    ReplyDelete
  29. ** POLL **

    We are currently scheduling our courses for next EQE. And, as part of that, we want to POLL whether there is sufficient interest in two new Pre-Exam focused courses.

    We are considering to start two very intense courses, each of one block, for candidates already having some legal knowledge and some claims analysis experience, such as resitters, but who need more knowledge and practice to be successful at the Pre-Exam. Questions/Cases and a thorough discussion of the Answers, organized per key topic, will get the candidate to a higher level, and show the candidate where to improve further. We consider to offer:

    a) a 5-DAY LEGAL course (1 block)
    Thematically organized along key topics of the EPC and the PCT, largely Q&A-based and also including some lecturing on key topics, as well as a discussion of a legal part of one or two pre-exams ;

    b) a 4-DAY CLAIMS ANALYSIS course (1 block)
    Thematically organized along the claims analysis topics tested in the Pre-Exam, and also including some lecturing to introduce themes, and lots of practice with small cases as well as (part of) the pre-exams.

    Please send us an email at training@deltapatents.com if you would be interested to participate in one of these courses or both. With sufficient interest, we can develop the courses and organize the courses in autumn. It is a POLL, so there is no obligation on you if you say are interested.

    Of course we will continue to organize our 12-day Pre-Exam Integrated course (4 blocks of 3 days interactive sessions from June to January) and its Distance Learning version (2-/3-weekly 1,5-hour video conference sessions from mid April to January) for full pre-exam syllabus coverage, and our Pre-Exam Methodology courses (1-day Legal; 2-day claims analysis) for final exam preparation. These courses target first time sitters as well as resitters that need to acquire a lot of knowledge and that want to distribute their study time over a longer period.

    For our existing courses for Pre-Exam and Main Exam preparation, see https://www.deltapatents.com/eqe-pre-exam.html and the brochures and links therein.

    The DeltaPatents team

    ReplyDelete
  30. Can you please help me to understand why the answer oft he examiners report to question 13.1 is False:

    „13.1 – False: The dependency of claim II.3 is not correct (Article 84 EPC).
    Claim II.3 should be dependent only on claim II.1. The application does not
    disclose an embodiment with both a detector operable to detect a flap moving
    and one detecting a level of a liquid and thus, claim II.3 that covers this
    possibility when depending on claim II.2 is unsupported.“

    Somehow, the question was only is the dependency of claim II.3 correct? And not is claim II.3 supported by the description (Art. 84 EPC)?

    In my opinion a claim „according to any of the preceding claims, further comprising…“ should be dependent, as Rule 43(4) EPC defines: Any claim which includes all the features of any other claim (dependent claim) shall contain, if possible at the beginning, a reference to the other claim and then state the additional features.

    Indeed an embodiment with both a detector operable to detect a flap moving
    and one detecting a level of a liquid is not discribed in the description given in the Pre-EQE.
    Of course Art 84 EPC requires that the claims shall be supported by the description.
    Somehow that does not mean that it is not supported, as the claims itself can be the support for an amendment. In real life the applicant could still include this emodiment with 2 detectors into the description on the basis of claims II.2 and II.3 and then this embodiment would be supported by the description.

    But as mentioned above I thought the question is only is dependency correct and not ist he claim supported by the description.

    Can you please comment on this, I´m missing only 1 mark to pass…

    ReplyDelete
    Replies
    1. I had exactly the same interpretation (based on R. 43(3) and R.43(4)) of the question in the exam. I am also one of them with 69 points.

      Delete
    2. [014] says it is an alternative detector, so cannot have both detectors from II.2 and II.3.
      So, the dependency is not correct.

      Also, claim 2 as far as dependent on claim 1 and 2 has two times "a detector", so the dependency is incorrect for this reason too.

      Checking dependencies without checking which embodiments are meant to be covered is like doing calculations without knowing what the numbers mean. You are over-thinking from an over-formalistic mindset, and not showing that you understand what clainms are for, or rather, showing that you do not understand what claims are for. You probably lost more marks by reading a Rule rather than understanding a Rule- am I right?

      Delete
  31. F‑IV, 3.5 Arrangement of claims

    All dependent claims referring back to a single previous claim and those referring back to several previous claims must be grouped together to the extent and in the most appropriate way possible. The arrangement must therefore be one which enables the association of related claims to be readily determined and their meaning in association to be readily construed. The examiner should object if the arrangement of claims is such as to create obscurity in the definition of the subject-matter to be protected. In general, however, when the corresponding independent claim is allowable, the examiner should not concern himself unduly with the subject-matter of dependent claims, provided he is satisfied that they are truly dependent and thus in no way extend the scope of protection of the invention defined in the corresponding independent claim.

    Claim II.3 does not extend the scope of protection right?

    ReplyDelete
    Replies
    1. No it does not, but that is not at all relevant in this question. The question was not whether the claim is a dependent claim, but whether the dependency was correct. It is not, as -to cite from your citation- it "create[s] obscurity in the definition of the subject-matter to be protected". So, one condition failed - as a result of the reference to claim 2, which has the effect of the obscurity.

      Delete
    2. What is the obscurity? That "a detector" is mentioned in claim II.2 and as well in claim II.3?

      Delete
  32. The claims itself can also count as support for amendment.


    F‑IV, 6.6 Support for dependent claims
    Support for dependent claims
    Where certain subject-matter is clearly disclosed in a claim of the application as filed, but is not mentioned anywhere in the description, it is permissible to amend the description so that it includes this subject-matter. Where the claim is dependent, it may suffice if it is mentioned in the description that the claim sets out a particular embodiment of the invention (see F‑II, 4.5).

    The statement of 13.1 is not: Is dependent claim II.3 supported by the description?

    ReplyDelete

  33. I am still wondering about 5.3.

    If the filing fee is not paid within 31m period, the Euro-PCT is considered to be "deemed to be withdrawn", R.159(1)(c). A standard remedy is to "request further processing, pay the further processing fee and complete the omitted act". If (and when in this case) the request for further processing is granted, the PCT-E must be treated "as if the non-observance of the time limit had never happened", Art 121(3). Therefore, the applicant can pay the filing fee later than 26 Feb and still validly enter the EP phase.

    To conclude, the filing fee is not a step that "must be taken to enter the European phase today" but rather a step that should be taken. Therefore I would argue the correct answer is False.

    This is also a procedure that EPO allows in practice. Therefore, there is clear discrepancy between this pre-EQE answer and how EPO acts in practice.

    What do you think?

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    1. Valid entry today = valid entry on 26 Feb = EARLY entry!

      For early entry to be effective, you need to pay the filing fee today. if not, it is not an early entry that is validly executed today. See e.g. Euro-PCT Guide (2017) 429

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    2. I agree, but a request for further processing for early entry and paying the filing fee, would result in a valid entry of the EP phase of 26 Feb 2018. Or where does it says that the further processing only applies as of the end of the 31 months period?

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    3. You can only do FP is there was a loss of rights. There is no loss of rights if you miss early entry, as the loss only occurs if you miss the normal limit.
      (NB: there could be a loss AFTER an effective early entry before the 31m limit, as the first eample in OJ 2013, 156 shows for a situation wtih the examination fee for which the time limit to pay it expired after early entry but before 31m - that loss occurs at the end of the time limit to pay the examination fee)

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  34. No, you can also ask FP for the failure to observe a time limit, and there are no such things as "early entry" or "normal entry" in the EPC, there is only entry into the European phase. Surely I have a right to request further processing for observing that I missed the time limit of 26 Feb 2018 to pay the filing fee?

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    1. A self-imposed time limit (date of early entry) is not a time limits vis-a-vis the EPO.
      There is surely no right to request FP for early entry.

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