Pre-Exam 2019: our answers to the legal part
This year's legal part
addressed several topics that were to be expected (such as time limits, time
limit differences PCT-EPC, filing date requirements, languages, …) as well as several less
standard topics which well-prepared candidates would have been able to find in
their EPC/ reference materials/ Guidelines (who can speak at oral proc,
transfers, inventors, recording changes). Some usual topics, such as divisionals and EP-entry, were
missing. Partial priority was not tested.
Remarks (extended 5 March 2019):
1.1: note that the statement is directed to getting a filing date - validity of priority is only tested in 1.2
1.2: as IT-P was in both names, prority right only belong to P & G together, so need to file EP-P in both names
1.3: Art.14(2) alows any person to file in any language
1.4: R.6(3) + R.6(4)(b) + declaration R.6(6)
2.1: Art.133(1)&(3): EP attorney may always speak
2-2: Art.133(2); although it may be possible to let her make submissions as an accompanying person, under your responsibility and at the ODs discretion, that would have required an announcement in advance
3.3: Pedro is employed in Portugal so it is tempting to say he is entitled to speak as an employee (provided he brings an authorization), but that is only allowed if the priorietor would have his principle place of business in PT; the proprietors however has its headquarters in the US, so Pedro cannot speak (unless as an accompanying person, but see above) - Art.133(3)
2.4: R.4(4); GL (2017) E-V, 2; Sarah was announced in due time as accompanying person, indicating the matter she would address
3.1: positive search opinion so no R.70a; no prio so no R.70b; if examination fee paid early, R.70(2) but that is from Receiving Section. So, if no Art.54(3) prior rights found in top-up search, no deficiencies and can expect R.71(3).
Note: you first get a letter from the examining division informing you about the intended start of examination (at least 2m in advance), but that is not a communication providing a time limit for response.
3.2: no claims fees to be paid, but renewal fee falls due on 31/1 and needs to be paid (R.51(1), R.71a(4))
3.3: R.21(1); GL (2017) A-III, 5.6
3.4: no such provision in PCT or EPC
4.1: R.6(1) EPC - see also Pre-Exam 2014, 8.2 and Pre-Exam 2017, 4.3 (Note: but if missed, R.58 provides for invitation)
4.2: 25/2 + 1m -> 25/3; 26/3 (or later) + 10d + 2m -> 5/6/19
4.3: R.135(2): R.58 (checking R.57(c)) excluded from FP
4.4: R.40(1)(c) + 40(2) (note that also R.40(3), 1st sentence (certified copy) need to be fulfilled later)
5.1: Art.58 is not limited to EPC residents/nationals only, contrary to Art. 9 PCT
5.2-3: as Werner is resident in a PCT State, W and A can together file PCT-AW whereever Werner can file it - R.18.3 & R.19.2
5.4: recording of changes is done by the IB - PCT R.92bis.1
5.4: note that one could file the request to record the change at the rO, but ther IB will still do the recordal. Further, the case does not specify that the EPO was the rO, it could also be the DE office or the IB.
6.1: Art.71, Art.59, GL (2017) A-II, 2
6.2: also need to show (signed) documents showing the evidence of the transfer - R.22(3) & R.22(1)
6.3: once evidence has been produced and adminstrative fee paid - R.22(3)
6.4: R.85
7.1: Art.60(2), Art.54(1)-(3)
7.2: Art.60(2), assuming that it is too late to still file a new application claiming priority from EP-X and that no such application will be filed (or that the priority right was also not withdrawn) - Art.89, Art.87(3)
7.3: Art.60(3)
7.4: Art.56, second sentence, excludes Art.54(3)
8.1-2: PCT does not use R.126(2) EPC, but R.80.6 PCT (here, was timely received)
8.3: R.126(2) EPC gives a legal fiction; the 10 days are not a time limit as no act needs to be done within those 10 days
8.4: 10/6/19 is Whit Monday, so time limit expires on 11/6/19 (R.134(1) EPC)
9.1: RFees 11(a) as in force since 1/7/2016: withdrawal before assuming responsibility is before substantive examination has begun; also GL (2017) A-VI, 2.5
9.2: validly paid, no legal basis for a refund
9.3: RFees 11(b) as in force since 1/7/2016: withdrawal before expiry of the time limit for replying to the first invitation
9.4: Rule 103(1)(b)
10.1: during any pending proceedings - GL (2017) E-VI, 3
10.2: not a party
10.3: R.80; GL (2017) H-II, 3.3
10.4: ground was substantiated, indication of facts and evidence given (D1, D2 mentioned); can be invited after oppo period to file a copy; GL (2017) D-IV, 1.2.2.1 (v)
Our answers to the claims analysis parts are here; first impressions are here.
Your feedback and comments are welcome!
The DeltaPatents Team
Overall, the legal part was -in our
opinion- more difficult than in the previous years, and we expect fewer
candidates to score 45 marks or more from the legal part; however, 40 marks for
the legal part seems well within reach for well-prepared candidates.
Our answers to the legal part:
1 T F T F
2 T F F T
3 T F F F
4 T T F T
5 T T T F
6 T F F T
7 T F F F
8 F F T F
9 T F T T
10 T F T F
Remarks (extended 5 March 2019):
1.1: note that the statement is directed to getting a filing date - validity of priority is only tested in 1.2
1.2: as IT-P was in both names, prority right only belong to P & G together, so need to file EP-P in both names
1.3: Art.14(2) alows any person to file in any language
1.4: R.6(3) + R.6(4)(b) + declaration R.6(6)
2.1: Art.133(1)&(3): EP attorney may always speak
2-2: Art.133(2); although it may be possible to let her make submissions as an accompanying person, under your responsibility and at the ODs discretion, that would have required an announcement in advance
3.3: Pedro is employed in Portugal so it is tempting to say he is entitled to speak as an employee (provided he brings an authorization), but that is only allowed if the priorietor would have his principle place of business in PT; the proprietors however has its headquarters in the US, so Pedro cannot speak (unless as an accompanying person, but see above) - Art.133(3)
2.4: R.4(4); GL (2017) E-V, 2; Sarah was announced in due time as accompanying person, indicating the matter she would address
3.1: positive search opinion so no R.70a; no prio so no R.70b; if examination fee paid early, R.70(2) but that is from Receiving Section. So, if no Art.54(3) prior rights found in top-up search, no deficiencies and can expect R.71(3).
Note: you first get a letter from the examining division informing you about the intended start of examination (at least 2m in advance), but that is not a communication providing a time limit for response.
3.2: no claims fees to be paid, but renewal fee falls due on 31/1 and needs to be paid (R.51(1), R.71a(4))
3.3: R.21(1); GL (2017) A-III, 5.6
3.4: no such provision in PCT or EPC
4.1: R.6(1) EPC - see also Pre-Exam 2014, 8.2 and Pre-Exam 2017, 4.3 (Note: but if missed, R.58 provides for invitation)
4.2: 25/2 + 1m -> 25/3; 26/3 (or later) + 10d + 2m -> 5/6/19
4.3: R.135(2): R.58 (checking R.57(c)) excluded from FP
4.4: R.40(1)(c) + 40(2) (note that also R.40(3), 1st sentence (certified copy) need to be fulfilled later)
5.1: Art.58 is not limited to EPC residents/nationals only, contrary to Art. 9 PCT
5.2-3: as Werner is resident in a PCT State, W and A can together file PCT-AW whereever Werner can file it - R.18.3 & R.19.2
5.4: recording of changes is done by the IB - PCT R.92bis.1
5.4: note that one could file the request to record the change at the rO, but ther IB will still do the recordal. Further, the case does not specify that the EPO was the rO, it could also be the DE office or the IB.
6.1: Art.71, Art.59, GL (2017) A-II, 2
6.2: also need to show (signed) documents showing the evidence of the transfer - R.22(3) & R.22(1)
6.3: once evidence has been produced and adminstrative fee paid - R.22(3)
6.4: R.85
7.1: Art.60(2), Art.54(1)-(3)
7.2: Art.60(2), assuming that it is too late to still file a new application claiming priority from EP-X and that no such application will be filed (or that the priority right was also not withdrawn) - Art.89, Art.87(3)
7.3: Art.60(3)
7.4: Art.56, second sentence, excludes Art.54(3)
8.1-2: PCT does not use R.126(2) EPC, but R.80.6 PCT (here, was timely received)
8.3: R.126(2) EPC gives a legal fiction; the 10 days are not a time limit as no act needs to be done within those 10 days
8.4: 10/6/19 is Whit Monday, so time limit expires on 11/6/19 (R.134(1) EPC)
9.1: RFees 11(a) as in force since 1/7/2016: withdrawal before assuming responsibility is before substantive examination has begun; also GL (2017) A-VI, 2.5
9.2: validly paid, no legal basis for a refund
9.3: RFees 11(b) as in force since 1/7/2016: withdrawal before expiry of the time limit for replying to the first invitation
9.4: Rule 103(1)(b)
10.1: during any pending proceedings - GL (2017) E-VI, 3
10.2: not a party
10.3: R.80; GL (2017) H-II, 3.3
10.4: ground was substantiated, indication of facts and evidence given (D1, D2 mentioned); can be invited after oppo period to file a copy; GL (2017) D-IV, 1.2.2.1 (v)
Our answers to the claims analysis parts are here; first impressions are here.
Your feedback and comments are welcome!
The DeltaPatents Team
SHARE:
Thanks Roel. I got 42. Made a few silly errors like 2.4, 3.2 and 5.4. However, for 1.1 - do you think this could be referring to reference to priority. I thought it was a very confusing first question.
ReplyDeleteThe question says "a copy of IT-P is attached", so you can use that - you donot need filing by reference: you can just file IT-P as descrioption, claims and drawings, indicate EP is wanted and give your own contact details or the email address from Peitro as information allowing to contact the applicant.
DeleteIf you propose filing by reference here, you have a problem in that the filing date of IT-P is not known, which is needed to satisfy R.40(2)/
If i have a copy of IT-P (no filing by reference) why i can't be sure that EP-P can validly claim priority?
DeleteS.
Dear S,
Deletebecause you cannot see whether the application and/or the priority right were transferred. Further, "a copy of IT-P" could mean just a copy of the description, claims, and drawings, but not of the bibliographic data.
Thanks Roel! Really nice to know already how I (probably) scored to calm my nerves ;). Three different answers here, I mist the renewal fee in 3.2 and assumed that for 3.1 you first would get a R.70a or something (but that is not send by the examining division I guess?). And one stupid mistake where I wrote down the opposite of what I meant.
ReplyDelete3.1: you donot get a R.70a because the search opinion was positive
DeleteHi, thanks for the answers!
ReplyDeleteRegarding 3.2: I believe the question is ambiguous, as it is unclear whether it is asking if more fees are due in response to R71(3), or if more fees are due on the date 31 January.
Anyone else agree / think its worthy of appeal? Would be interested to hear your thoughts.
RP
agreed. 3.2 was not clear for the exact reasoning you gave. I thought they referred to fees to R71(3) specifically and renewals fees are a separate payment to be made. Not part of R71(3).
DeleteAgreed. I thought the question was related to R71 (3) answer.
DeleteThe question was not limited to the R.71(3) acts - if was merely asking whether there could be anything more to pay than just the R.71(3) acts after you got a R.71(3). So, you were expected to consider which other payments could still be outstanding if you get/respind to a R.71(3) -- R.71a's paragraphs could have helped you, and R.51(1) by itself as well.
DeleteRegarding 5.4, it seems it can go either way. Specifically, in PCT-AP-Guide 11.018, it states "the applicant or the receiving office should ask the IB to record the change." Here, EPO could receive the request and ask the IB to do it (this could be a broad meaning of "record"; you receive a request, you "record" it (save the email, forward the email); and then send it to the IB. I assume the EPO is the RO because Werner is DE resident and office can't be based on Antonia (when filed because she is an Argentinian). Given the time pressure, I did not have time to see that "F" is a better answer, but one cannot say "T" is wrong because it is possible if Antonia or Werner request it.
ReplyDeleteI agree with you Gregory. I think 5.4 is dubious and I went to the AG-IP 11.018. It wasn't clear from there but it did say rO and IB can receive request. I just wondered why the EPO would not record the transfer since it will have to record it again upon EP entry. Seems a bit bizarre in my view for the EPO not to record it if they can also accept the request.
DeleteLooking at 5.4 again, if you read Rule 92bis.1, it states "the IB shall...record changes." Thus, Delta is correct, but a reasonable person reading AG-IP Guide 11.018 would assume the RO can pass it to the IB for recordation. For feature reference, when we are confused about the interpretation of a rule and we refer to the AG-IP for reference, should we assume the rule is correct over the AG-IP? As the rule is law and AP-IP is guidance. Can one argue the rule leaves open the possibility of a RO forwarding the request to the IB as the section 11.018 states?
DeleteBut EPO=rO is not stated in the question. The IB or the DPMA could be the rO. Passing on a request for a change is also not the same as recording a change.
DeleteI think this question is definitely appealable. Too many assumptions needed to be made for this question.
DeleteI think the question is at least dubious. As we probably all found out it can be filed with the rO or the IB and the IB passes the information on (when recorded). What is the point in finding out who records the information?
DeleteTerese
Sorry, no assumptions needed... the IB records the changes, not the rO, also not if the applicant files the request for the recording of the change at the rO! See R.92bis.1(a).
DeleteDear Roel and all Delta team, thank you very much for your opinion relating to 5.4 question. Just wondering are all of you straightforward got for 5.4 question F without any doubts? I as well "some" others got wrong answer because of AG-IP, for sure if I would not under time pressure I would go in detail, but I thought I have found clear answer in AG-IO 11.018, which were under paragraph CHANGES CONCERNING THE APPLICANT, INVENTOR, AGENT OR COMMON REPRESENTATIVE.
DeleteAG-IP should not lead you to wrong answer. It also says that the IB records the change, after a request from/via the applicant por the rO.
DeleteAG-IP 11.018 reads: "...should ask the International Bureau to record the change. If so requested, the International Bureau records the change and ..."
see https://www.wipo.int/pct/en/guide/ip11.html#_changes_applicant
Yippee! I have the same. Except 3.1 I thought you would first get a R.70(2)comm. (Invitation to indicate wish to proceed.) But indeed, that is not from the examining division. It was one of the two questions I corrected later. Thanks for the quick results!
ReplyDeleteI overthought this as well and answered F, because of the communication regarding wish to proceed. But as you write, that communication comes from the receiving station, not the examining division...
DeleteThis seems to me to be a poorly worded question? I assumed the trap was in thinking "favourable opinion leads to 71(3) grant", which would give the answer "true". When in fact the trap was in where the communication comes from.
DeleteI don't mind being caught out by questions, but I find it really frustrating when people will get marks for blatantly wrong reasoning. Just me?
I will never believe anybody when the say they don't set trick questions if this comes out to be "true" based on the R70a communication coming from the receiving division. As it's just a non-point and would only come up if you needed to appeal something surely?
but this question has been tested twice in previous exams. I don't think it will be successful in appeal.
DeleteI think 2.3 and 5.4 have a better chance.
@Anonymous26 February 2019 at 11:28
DeleteYou can expect a 71(3) from the examining division because the search opinion was positive (so no R.70(1) or 70(2) from the receiving section) and because no prio was claimed (so no R.70b).
By the way, what you will get first is a letter from the examining division informing you when the examination will start - that was introduced when RFees was amended in 2016 - OJ 2016, A48 & A49; information letter “Expected start of examination” (F2919). I considered that F2919 not to be a communication (to which you need to respond within a time limit), but just a letter giving information (to which you donot need to respond, it just inmforms you about an intention). This form F2919 may have led you to the opposite answer.
By the way, statement 3.1 does NOT ask what the first communication is that can be expected from the EPO. It asks explicitly what the first communication is that you can expect from the examining division.
Thanks a lot for the answers Roel. Now we can breath!
ReplyDeleteuntil claim analysis comes along. I think it is a lot more tricky than people thought. 11.2, 13.3, 13.4, 16.1, 17.1, 19.1, 19.3 and 19.4. I see answers of both T/F for these questions
DeleteJJ
I agree, claim analysis could include some unexpected issues.
DeleteI thought the r71.3 communication will be sent under art 97.1. And the 1st communication under art 94.3 shall be a communication under rule 71.1 or rule 71.2. Or so I
ReplyDeleteMiss something?
You missed that the EPO send a favourable search opinion. So, if the 54(3) popup search at the start of examination does not give any new prior rights, there is no deficiencies that can mjustify a 71(1)/(2), and you can expect a 71(3).
DeleteBy the way, Art.97 is DECISION to grant, not the INTENTION to grant of R.71(3). Only after the applciant has responded to the INTENTION to grant, the DECISION to grant will (formally) be taken.
Thx Roel, much appreciated! Still in doubt about question 4.4 though; isn't there also the requirement of filing "an indication that a European patent is sought" and "contact info"? I would at least say that the question is ambiguous... Francis Ryckaert
ReplyDeleteI agree, the statement is only part of the requirement to obtain a filing date.
DeleteHi Anonymous. For 4.4, the question asks what the reference must contain, not what the applicant must do. 2018 Guidelines provide the exact wording of the question, which made me think this is what the question setter was thinking of. Hence "TRUE".
DeleteSee the second list on this page: https://www.epo.org/law-practice/legal-texts/html/guidelines/e/a_ii_4_1.htm
G/L(2018) A.II,4.1
Hi David, I'd rather say that the question asks about the requirements for a valid filing: "To validly file a European patent application,..."
DeleteIn my opinion, 4.4 is directed to the specific requirements for a filing by reference, and you were to check whether "wherein the reference contains ..." is complete.
DeleteBy the way, one may argue that the list is not complete, as the applicant also needs to file a certified copy of the Previously filed application under Rule 40(3), 1st sentence - within a 2m time limit of doing the acts of R.40(1)(c) and 40(2).
The last comment is on question 3.1
ReplyDeleteThis comment has been removed by the author.
ReplyDeleteFor 3.1 - the question has appeared in previous exams. I think 1.1, 3.2 (renewal fees payment - is the question asking any other fees relating to R71(3) or any other fees relating to end of January 2020) and 5.4 (EPO to record change) are quite ambiguous. I see both answers T/F for these questions.
ReplyDelete5.4 - I still do not understand why EPO would not record the request? They have to record it later as when the IB records transfers, it will be effected on all designated states. See AG-IP 11.018. Of course, the EPO can seek evidence but that is a different issue. I think 5.4 is T or at least dubious.
Roel - is 5.4 a tricky one for Delta patents
5.4 also doesn't make sense to me. I think the answer should be T.
DeleteYou can request change at the EPO so you should be able to record at the EPO too? Is there something that I've missed here.
PCT Rule 92bis.1(a): "The International Bureau shall, on the request of the applicant or the receiving Office, record changes in the following indications appearing in the request or demand: ..."
DeleteSo, no ambiguity: the IB records the changes, not the rO.
note that the wording "record a change" or "recordal" has a specific legal meaning. it is not just someone making a note somewherem but is is the legal act of including / correcting / changing somethiing in the official records/ file.
DeleteRoel, I see your point. I think you have the right answer. However, just for argument's sake (and training for the main exam), is "record" defined in the PCT or can we find that definition? I don't think it is unreasonable that the RO sends the document to the IB for recordation, and this is interpreted as the "RO recording the change" because they made a record of it? If you use your strict legal definition, I understand, but we need a basis for that (and a pre-exam level basis). I just think the AP-Guide is a little unclear or at least says the RO can receive the document. Additionally, the question says "upon request"; so the RO requests that the IB record something. Just like me going to the bank, I don't "deposit money in the account", but I give it to my bank and they "deposit it". So, in a sense, I deposited money in my account (even the bank performed the act) just like the RO "recorded" something with the IB. Okay, a long way of saying the question could be true. Now that I have a full day to think about it, I would pick you answer based on R.92bis 1(a).
DeleteHi Gregory, I donot know whether that term is explicitly defined in the PCT. But it is not needed to file any generally accepted legal term... Further, R.92bis.1 makes it very clear that RECORDing is done by the IB, although the REQUEST to do so can be made by/through the IB or the rO. So, even if you are not aware of the exact meaning of RECORDing, R.92bis.1 itself already provides for the difference between the recordal itself and the request for the recordal.
DeleteHi Roel!
ReplyDeleteThanks for posting the answers!
I only have one comment regarding 4.1.
R6(2) translation shall be filed in 2 months (and not MUST). As far as I know, shall = may and not must.
In 2014, it was a ‘shall’. And in 2017 the question had a ‘must’.
Don’t you think the answer should be false?
One may submit in 2 months but may also wait for the invitation without any legal consequences.
Thanks!
I understand in English law, "shall" is not interpreted as "may". In fact it means "has a duty to", or "is legally required to".
DeleteIn this light, the question is less ambiguous as it can be read as "according to the rules..". And so the backstop of an invitation to file missing parts isn't relevant because you're asked what do the rules say.
I'm guaranteeing that the EQE think like this, but that approach does take away the ambiguity!
Thanks David!
DeleteWell, in general the use of shall is being avoided these days. Check out this credible source for definitions:https://www.faa.gov/about/initiatives/plain_language/articles/mandatory/
What do you think?
I agree with you here. He must not do it within 2m, can wait for the invitation to correct (R.58).
Deletesorry, I'm #not# guaranteeing that the EQE think like this...
DeleteI disagree with the interpretation of the word "must" in this question.
DeleteTo me, "must" implies that it has to be done, else a negative result (deemed withdrawn, rejected) will definitely result.
In the case of this question, the translations *should* be filed within 2 months, but the consequence of not filing them isn't a negative one - instead the translations *must* be filed within 2 months of notification of the communication pursuant to Rule 58 EPC indicating the deficiency of having not yet filed the translation.
As such, I answered this question as false.
I understand this is how it has been analysed in previous years, but still disagree with the language used.
Thanks for getting the answers out so quick. I got identical answers except for 3.1. So that's put my mind at rest!
ReplyDeleteI think that the sufficient information for filing date, the recordal of change of address at IB and the "must file a translation within 2 months" questions are going to be the "debateable" answers?
Hi Liam, why would you consider those debatable?
DeleteNote that the "translation must/shall be filed within 2m" was already twice in the exam before. The R.58 remedy period was also raised then, but Rule 6(1) is clear enough on its own - so, I would not expect that to be succesfully debatable this year either.
Hi Roel,
DeleteLooking at the comments on the blogs, these 3 seem to be some of the more hotly contested answers. That was more my point I got all 3 in line with you, but do think if the intention was to question these legal aspects in a black/white true/false setting, they could have been more carefully worded, do you not agree? More specifically:
1.1) "sufficient information for filing date" - you would have to use the priority document as the description, or file by reference to it. Whilst this is implied from the information, I don't think it was explicit, the client may want information adding, etc. You have to make an assumption to land at the answer. After all, you could file a European patent, in Pietro's name, filing his email text as the patent and be accorded a date? Silly but you see my point? Once you make one assumption you could assume all sorts.
5.4) "recordal of change of address at IB" I think the wording of the question was ambiguous, the 'request' to record could be at the request of the IB to update the EPO perhaps? I went for the R92bis literal wording, and I've not checked the Applicant's Guide section people are referring to as implying something else, but the wording of this question feels off to me.
4.1) "must file a translation within 2 months" I agree Rule 6(1) is clear enough on its own but still, the use of "must" without a qualifier "... or it will result in the application being withdrawn" being added to this question would have tested the same legal principle but given a clearer indication of the answer (false, due to R58 remedy). Must to avoid a further communication. Must to me implies a negative consequence, when really there isn't one from a R58 communication (other than your patent agent's fees for reporting...!)
Hi Liam,
DeleteI am sorry, I donot quite agree.
I donot think one needs to make any assumptions for 1.1. All the afcts that you need are present. Note that 1.1 does not require to validly claim priority, it just requires to get a date.
For 5.4, see my comment above: record/recordal has a specific legal meaning. The rO does not at all do the recordal, it may just be the mailbox to get a document to the IB, but it will always be the IB that does the recordal / records the change.
As you may have grasped from my earlier comments at the earlier pre-exams on the "shall/must" w.r.t the translation, I largely share your view. It is in particular unlucky that candidates that know the system better (=know about R.58) are worse of than those that donot know that missing the 2m period is not at all a problem... but as the question was on the exam already twice in substantially the same wording, I think it is clear what was expected.
For 5.4 - I still think the wording is quite confusing. I understand your point Roel but it doesn't sit easily with me. Request/record -- AG-IP threw me off a bit admittedly.
DeleteJ
1.1. - Again someone can easily see this question as referenced to priority.
DeleteI see a point for this line of argument.
J
"AG-IP 11.018. What should be done where there is a change in the person, name, residence, nationality or address of the applicant, or in the person, name or address of the inventor, agent or common representative? Where there is a change in the person, name, residence, nationality or address of the applicant, or in the person, name or address of the inventor, agent or common representative, the applicant or the receiving Office should ask the International Bureau to record the change. If so requested, the International Bureau records the change and notifies all Offices and PCT Authorities interested in the change accordingly. Any such recording is free of charge."
DeleteI guess we will have to agree to disagree re: 1.1, I still don't see *all* facts present, the description to use is still an assumption. One we would probably all make in practice, but one nonetheless. 5.4 I think you're correct but it was a trickily worded question, and really unnecessarily so in my mind (what is the point of this exam after all? What skills are we testing?) Finally for 4.1, trying to question spot and remember old questions leads to bad practice in the exams. As I answered that question I did think "oh I wish I'd bough the past papers/mark schemes in". That shouldn't be relied upon to justify the poor/ambiguous wording of the question.
DeleteI don't think 1.1 or 5.4 would work on appeal, but could see 4.1 perhaps.
I think the previous papers have already explained their answers for 4.1. So I would agree with Delta that 4.1 is True.
DeleteEPO are not going to change 4.1 otherwise they would contradict themselves in earlier years which is not a good precedent. People who have studied hard including past exams would pick up on this point.
Never too late to admit that you made an error in the past, also not when yoh made it multiple times. Better to admit late, then not at all. It improves your credibility and shows your willingness and ability to learn from your mistakes.
DeleteI tell this to my kids when they are surprised that I admit I was wrong. Bbut it holds universally doesn't it?
JN
Hi JN,
DeleteI donot agree that there was an error: when you are legally strict, the translation shall/must be filed within 2m. Rule 6(1) gives this requirement, which you shall/must fullfil.
If you miss that 2m, there is a deficiency. Rule 58 provides for an invitation to remedy this deficiency. Legally, it does NOT relax the requirement, but it gives you the chance to recover from a deficient state.
So, there is no doubt that the legal requirement is that he must/shall file the translation within 2m of the filing of the application. Even though there is no immediately loss-of-rights if you donot do so (due to R.58 first giving you a chance to recover).
It is unfortunate, as in the earlier two exams which had very similar questions, that a candidates that knows well how the system works in practice (i.e., knows that there will be a risk-less R.58 invitation of the 2m yoo literally for practical purposes) may be worse of than a less-knowledgable candidate that just applies R.6(1) and is ignorant about R.58 and as such as less risk to go wrong. One may argue that the statement could have been phrased differently to be robust for R.58 (e.g., with "...to prevent the application to become deemed to be withdrawn upon the expiry of these two months."), but the statement is correct as it is.
With the two earlier exams using substantially the same wording and having consistent answers, why would you take the risk of answring this exam based on a different interpretation?
Hi
ReplyDeleteFor 3.2, in addition to the renewal fee falling due on 31 January 2020, we figured out that the designation fee is also due that day because the application + search report would have published on Wednesday 31 July 2019, so six months after is 31 January 2020 [R.39(1) EPC; R71a(3) EPC].
S/R was realised in Aug 2018 (as stated in question) so designation fee would be due in Feb 2020.
ReplyDeleteThe question states a Communication from the Ex. Div. It depends on whether Communications are issues by the Examining Division or not. I made the same mistake.
DeleteReply to Anonymous 10:27 comment: S/R sent to the applicant in August 2018 (check the year - this is only 7 months after filing). The S/R would have remained non-public until publication 31 July 2019 (i.e. first Wednesday after 18 months from filing date). So designation fee due 31 Jan 2020.
DeleteHi Anon 10.42 - I get your point but it would be a very unfair question for a pre-EQE paper if that is there intention.
DeleteHi Anon 11:04. I agree. I think they deliberately made the dates work out to be suitable for both renewal fee and designation fee so that either route would lead to the answer False. Sadly, I didn't think of either in the heat of the exam itself...!
DeleteRenewal fee gets you to the right answer already, no need to go the the trouble of the designation fee under R.71a(3) (for which you anyhow donot have all the information)
DeleteHi Roel,
ReplyDeletein question 7.2 EP-X is withdrawn but its priority could still be validly claimed by a future application of company X? in this case the invention belongs to X.
Art.60(2) EPC
Delete@ Anonymous 26 February 2019 at 10:32
DeleteYes, you are right, if EP-X is withdrawn without being oublished and a new EP-X2 is filed validfly claiming priority from it, the right on the 9same) invention belong to company X provided that EP-X2 gets published (Art.89 and Art.60(2)). But there is no such further fact in the case.
Thank you Roel,
DeleteI was struggling on this and lead on T by the wording "the right to a EP Patent" not to EP-X granted.
There is not such further fact that a future EP-X2 filing or publication, you are right, but "the right" to obtain a EP patent for the invention still belongs to X even if EP-X is withdrawn.
Stefano
Hi Stefano,
DeleteI agree that (if EP-X was not filed more than 12 months ago; no such info in the question) the right to a EP patent on the invention can be "revived" for company X is he filed a new EP application EP-X2 within 12m from EP-X's filing, also after EP-X was withdrawm withiut being published.
Strictly speaking, the information that it no longer possible to claim prioroty from EP-X is missing from the question to answer 7.2 without any reserves.
Hi Roel, got it thank you.
DeleteS.
Hi Roel,
ReplyDeleteThanks for your answers. In relation to Q 1.1, what are your thoughts on Italy's security provisions preventing an EP application being filed?
Thanks again.
Italian application IT-P was filed on 23 Feb 2018. The italian competent goverment department could secretate the application (for national interest) within 90 days (3months) form the filing date .
DeleteBut in 25 feb 2019 an italian national is authorized to extend his application abroad (Art. 198 C.P.I. Italian patent law)
Stefano
I donot believe that the Italy security provisions can invalidate a EP application. The EPO will just accept the application. You will probably violate Italian law, maybe even be imprisoned or fiercely fined, but nothing prevents the filing of an EP application.
DeleteI answered 'F' based on the Italian security rules. Nat Law, II, says "Yes, if priority of an application filed in Italy over 90 days previously is claimed *and such application has not been made subject to the official secrets regulations* or if the applicant has requested and obtained authorisation from the UIBM for filing abroad" (my emphasis)
DeleteYou know that you are claiming priority to an IT app, >90 days ago, but you don't know that it has *not* been made subject to the official secrets regs.
If it has, and you go ahead and file at the EPO, I guess you or your clients are in trouble. Art. 76(2) EPC acknowledges this, and I would be a bit surprised if the takeaway message was meant to be "as far as the EPO are concerned, you can get your client in trouble with Natl laws as much as you like...".
Hi David,
DeleteI substantailly agree with Anonymous 26 February 2019 at 13:22. OK for the EPC.
Similar provisions apply in PCT, where you may e.g. find it explicit to be an applicant;s responsibility in the Annex to the US.
See footnote 3 in https://www.wipo.int/export/sites/www/pct/guide/en/gdvol1/annexes/annexb1/ax_b_us.pdf
DeleteIn other words, the EPC and the PCT allow the national law of their contracing/member states to impose such requirements, but it has no influence on the procedure before the EPC nor the international authorities.
Thanks Roel - although 3.2 and 5.4 are not sitting comfortable with me. 3.2 - Are they referring to fees relating to R71(3) or other fees also. I get the point about designation fees needed to be paid but its a bit too much to have to work out when the search report will be published for a pre-EQE paper (I'm not sure how you can work out when the S/R is published).
ReplyDeleteFor 5.4 - same as above. Record/request. If you look at AG-IP, it can mislead you to thinking that it can be recorded at EPO. Again, a lot of assumptions needed in this question.
3,2: you need to sort out which fees they refer to. Could be R.71(3), 71(4), 71a(3), 71a(4), 51(1) ...
DeleteFirst things to check is 71(4) and 51(1). First renewal 51(1) needs to be paid on 31/1/20. That gives F. So no need to check e.g. 71a(3).
NB: SR was draw up in Aug 18, EP-Z filed 30 Jan 18, so EP-Z will be publish with SR in 30 Jan 18 + 18m --> asap after 30 Jul 19, so early Aug 2019. Thus, designation fee needs to be paid before early Aug 19 + 6m -> earlyFeb 20, so if the designation fee is not yet paid ny that time, it still needs to be paid and R.71a(3) may be applicable.
I don't agree with 1.1 and 1.2.
ReplyDeleteI think 1.1 should be F because Pietro is not entitled to claim priority as a sole applicant.
I think 1.2 should be T because the 12m period is extended to Monday, and priority can be claimed provided that either the EP is filed jointly in P's and G's names, or a transfer of priority right from G to P is effected by Monday.
- CG
Dear CG, 1.1 does not ask whether priority will be valid of you file it today in Pietro's name alone (indeed, it is not -- as tested in 1.2). It just asks whether you can file an application today which gets today as the date of filing.
DeleteAnd w.r.t. 1.2, "the information above" says that it is to be filed in the nsame of Pietro alone. As there is no information that priority was transferred from Pietro and Gianna jointly yo Pietro alone, you can not be sure that EP-P can validly claim priority from IT-P.
(Note: you could by the way file EP-P today while giving your own contact details, and then check whether the applicants need to be Pietro and Gianna together, or just Pietro before you submit the applicant(s) info to the EPO. However, that goes against the wish of the client: he wants to file it in his name only.)
w.r.t. 1.2: Also, you cannot, from the information given, be sure that IT-P is the first application, right?
DeleteThanks Roel.
DeleteBut question 1.1 says "file... in Pietro's name". It would seem dubious to interpret "file" to include "invalidly file".
Indeed, if you think 1.2 is F on the basis that the priority claim would be invalid, why then should 1.1 be T?
Filing in both names would in practice be the most likely thing a patent attorney would do in this case - Gianna can always drop out/transfer later. This might go against Pietro's wish a bit, but if the alternative is to lose priority entirely, I don't think "on the basis of the information given above" means we should completely give up on protecting the client's interest.
It'll be interesting to see the official answers!
- CG
Hi CG, I didnot imply that it was an "invalid filing"! It is would be a valid filing!! It is just that it's priority (if any) would not be valid. But 1.1 was not directed to validity of priority, only to validly of the filing and thus a filing date!
DeleteThanks Roel. My answers are totally the same as yours. :)
ReplyDeleteI found question 10.4 to be ambiguous because the GL require that at least one ground of opposition must be substantiated. So if D2 is missing, one may consider that the sole ground (lack of inventive step) is not substantiated.
ReplyDeleteThis question is similar to Q 6.3 from 2017:
Q: "If the opposition is not admissible because the facts and evidence filed in the
notice of opposition do not support the grounds for opposition, a valid option for
the opponent is to file additional, more relevant documents later in the
proceedings."
Official answer: "F
R.76(2)(c): facts and evidence in support of the opposition, i.e. adequate substantiation, are required for admissibility
GL (2017) D-IV, 1.2.2.1 (v)
If not admissible, opposition proceedings terminated - GL (2017) D-IV, 4"
Q10 states that the opposition is admissible, which is a difference to Q 6.3 from 2017. However, this makes the wording of question Q10.4 somewhat confusing, already purely on a grammatical basis.
No, tehre is a big difference: here, lack of inventive step was substantiated (combi D1 and D2) and D1 was already identified, i.e. an INDICATION of the facts and evidence was given with the notice of opposition to support the ground LACK OF INV STEP - hence, it is admissible. In 2017, 6.3, there was no such link.
DeleteDear Roel,
Deletemany thanks for your quick response. I agree with your point about the "indication" as required by the EPC. In my opinion, however, there are good arguments for both T and F. The question merely states that "Hans raised an objection of lack of inventive step of claim 1 over the combination of two prior art documents, D1 and D2".
Does this really unambiguously imply that his arguments were substantiated? The wwording "Hans filed an admissible appeal" may have been intented to indicate this but is confusing in view of the wording of Q 10.4.
Thanks!
Sebastian
Hi Sebastian,
Delete"substantiated" just means that a reasoning was given which can be understood. Not that the reasoning is necessarily correct.
Further, as this is the only attack made, it must have been substantiated sufficiently well, otherwise the opposition would not have been admissble.
On 13.3 abs 13.4, claims I3 and I4 both state “the” first and second layer.
ReplyDeleteIsn’t the presence of “the” ensures that claim I2 cannot be neglected. ( I3 and I4 have dependency problems).
In such a case where I2 is considered, only 2 layers are present making it novel over D2( 3 layers).
What do you think?
Please post your claims analysis questions to our claims analysis blog post.
Deletehttps://pre-exam.blogspot.com/2019/02/pre-exam-2019-our-answers-to-claims.html
Thanks - for question 10.3 (different claims for different states if maintained in amended form after opposition proceedings), was this True because the patent could have changed priprieter for certain states (and so 'could' contain different claims, or is it more generic than that? i.e. you could always after Opposition proceedings maintain different amended claims for different states? I couldn't find a legal basis for the more general case.
ReplyDeleteCould the claims have even been different before the opposition in the interpretation of the question?
It is more generic: see the opeming words of Rule 80.
DeleteSee also GL (2017) H-II, 3.3 "Amendments occasioned by national rights":
"Apart from the above (H-II, 3.1 and H-II 3.2), amendments occasioned by
national rights of earlier date are admissible pursuant to Rule 138 (see also
G-IV, 6; H-II, 3.5, and H-III, 4.4)"
Hi Roel,
ReplyDeleteThanks for the swift publication. For 3.1 I somehow reasoned no examination was requested, so there would be no 71(3) communication. Where do I go wrong?
cheers Vincent
Hi Vincent,
DeleteThe question is not what you need to do to get into the examination phase. The question was just what kind of first communuication you can expect to get from the examining division (you probably considered 71(1) or 71(3)) in view of the search results and opinion.
Rgrds, Roel
"1.2 ...., you can be sure ..."
ReplyDeleteCan you ever be sure?
The question does not indicate WHAT description and claims Pietro wants to file, it only says that he wants to file a EP application in his name claiming priority from IT-P. It does not say what will be in EP-P. Already reason to not be sure. Also not sure whether it will be filed in time. Also not whether he can alone claim priority from IT-P from him and Gianna.
From info given, you cannot be sure, at least for the following reasons:
Delete- EP-P cannot be in his name only if IT-P filed with Gianna: IT-P needs to be in both names, or IT-P (or at least its priority right) must have been transfered under the relevant national law (probably IT) before today;
and also:
- it does not indicate which claims EP-P will have, so cannot know whwther they are possibly broader or different from the disclosure in IT-P;
- it does not indicate whether IT-P was the first application for the subject-matter of EP-P - but that may be indicated on the copy of IT-P that as attached to the mail if it comprises the official front page.
And, to quite David H 2 March 2019 at 12:20 (see below):
Delete"Irrespective of who the applicants are, you don't know that IT-P was the first filing, or that it hasn't been withdrawn leaving no rights outstanding (not sure if that is possible in IT, it may be a UK thing)."
Indeed, if the priority right would have been withdrawn (Art.87(4)), also then not possible.
Hi Roel, thanks for your answers.
ReplyDeleteI still take the view that 4.1 is false. Note that Q8.2 of 2014 recites „shall“, and that Q4.3 of 2017 recites „[a]ccording to the provisions of the EPC, Adrien must file...”. In my opinion, these two questions are more closely related to the actual wording of R.6(1) EPC than this year’s question 4.1 which asks whether the applicant, Didier, “must file a translation ... within two months”. From the applicant’s perspective, however, this ought to be answered in the negative: Didier must not file the translation within two months, because of the R58 invitation and the additional time that comes with it.
Hi all, as mentioned previously my doubts on 4.1, I think there is another reason for stating 4.1 false. Lets check 14(2) as general provision and 14(4) as special provision. Given that Dutch applicant filed in Dutch (he is allowed to do so under 14(4)), he followed 14(4) and thus he shall comply with rule 6(2), not 6(1),the 6(2) being consequence of 14(4). There is no relief from this and no indication that 14(2) shall prevail,as we shall follow the principle Lex specialis derogat generali. If we are told to be strict with interpretation, as 'shall' is ment to be 'must' and R58 is out of game, the applicant shall file the translation within one month. So 4.1 is F.
DeleteJust minor correction, Didier has.residence in Belgium, files in Dutch. That makes no difference for application of Art 14(4)
DeleteI take my assumption on 14(4) back, obviously this no way to go. I did not check properly. No need to respond, thanks.
DeleteI'm with Roel and the rest of delta patents. 4.1 is F. There is already questions on this in previous exams so I don't think they will change it.
ReplyDeleteCorrection 4.1 is True. So I agree with Delta Patents
DeleteI totally agree with Delta Patents 4.1 answer. I don't think this is at all dubious given that this question has come up twice before.
ReplyDeleteIt was also dubious twice before.
DeleteHi Roel, thank you for your answers! I have a question concerning statement 9.1: A.11(a)RFees states that the examination fee should be fully refunded if the application is withdrawn before "substantive examination has begun". Statement 9.1 suggests that the examination fee is refunded, when the application is withdrawn before the "examination division has assumed responsibility for it". (The wording appears to have its origin in A. 10b RFees of EPC 1973). Thus, the question arrises whether the begin of substantive examination is identical to the point where the examination division assumes responsibility. It seems that this is not necessarlily always the case (see Case Law BoA, IV, B, 2.1). Therefore, the statement of 9.1 appears to be false. Am I missing something? Thanks in advance. Cheers, Lukas
ReplyDeleteThey can not start before they assumed responsibility. So, as ,ong as they are not responsible, a full refund will be made.
DeleteAfter they became responsible, you will receive a letter informing them of an intended start of the examination, which is at least 2 months in the future. So, they cannot start by surprise, also not after they became responsible.
By the way, no need to refer all the way back to Art.10b RFees 1093 - it was also in RFees 11 - the change from "have become responsible" to "have started" is from 2016 - OJ 2016, A48 & A49.
They also introduced that letter informing you about the start around that time - see https://www.epo.org/service-support/faq/procedure-law/information-letter-F2919.html
Hi all,
ReplyDeleteRegarding question 7.1, in my opinion we don't have enough information to determine to who the right to a European patent belongs as we do not know if the application EP-X was published before the application EP-Y, see the annotated EPC, Art. 60(2) EPC, point 2, second paragraph first sentence. The first part of question 7.1 however firmly states: "The right to a European patent on the invention belongs to company X". Therefore, in my opinion the corect answer is false.
David
Hi David,
DeleteIndeed our answer to 7.1 assumes that EP-X was not withdrawn before being published. The latter is strictly speaking possible with the wording of 7.1.
We considered the statement to mean:
"The right to a European patent on the invention belongs to Company X _if a EP patent is granted base on EP-X_, even if a European patent based on EP-Y was granted befofre the grant of the European patent based on EP-X", or
"The right to a European patent on the invention belongs to Company X if a European patent bsed on EP-Y was granted befofre the grant of the European patent based on EP-X" (with the word "even" deleted).
In the context of the "even if"-part of the original statement, it seems to be an overly strict (even though legaly correct) reading of the complete statement to doubt that the requirement of "not withdrawn before publ" was not fulfiled.
By the way, even with that strict reading, why would the answer be F. There would then not be enough facts to conclusively decide on T or F.
See also my comment to anotehr question: the question states "No other patent applications have been filed by Company X or Company Y", but the question also seems to assume "No other patent applications _will be_ filed by Company X or Company Y, also no applications claiming priorirty from EP-X or EP-Y or divisionals"
Hello,
ReplyDeleteRegarding question 3.1, what about a rule 70(2) communication?
Cheers
Comes from the Receiving section. Bit of a devious question really.
DeleteA Rule 70(2) communication comes from the receicing section.
DeleteBut there is nothing in the question that suggests you will get a Rule 70(2) communication: you only receive that if you paid the examination fee early, but there is no such fact in the question.
By the way, if EP-Z would have claimed priority and the search results of that would not yet have been filed under Rule 141, what you will get from the Examining Division is not directly a R.71(3), but a Rule 70b(1) communication inviting you to file those search results. (This is however not a communication from the Examining division proper, as referred to in RFees 11)
Hi Roel,
ReplyDeleteI agree with the answers, expect for 6.1. You cannot have two different sole applicants for the same application. They are forced to act as joint applicants during proceedings for safeguarding the unitary aspect (see Art. 118 EPC) and will remain so until the ending of the proceedings. They can indeed designate different countries, but this does not imply that they become a sole applicant for their respective designated countries.
Cheers,
Bram.
Hi Bram,
DeleteGL (2017) A-II, 2, second paragraph:
"The application may be in the name of one person or several persons may
be named as joint applicants. The application may also be filed by two or
more applicants designating different contracting states. It may arise that a
first applicant designates one group of contracting states and a second
designates a different group of contracting states, while both applicants
jointly designate a third group of contracting states. If the applicants for a
patent are not the same for different contracting states they will be
regarded as joint applicants in proceedings before the EPO (see A-III, 4.2.1
and 11.1 as to when and under what circumstances the matter dealt with in
this paragraph need be considered during the formalities examination)"
Art. 59 and Art. 118
So, applicants may designate different states, which means they are the applicant for those states only that they werfe designated for, whereas procedurally they are considered joint applicant in view of the unitairy character of the proceedings before the EPO.
Note that it may be more clear if you look at the PCT Request form and rules ("applicant for ...")
Further, Art. 71 provides (see also GKL (2017) E-XIV, 3:
"A European patent application may be transferred for one or more of the
designated contracting states."
Hi Roel,
DeleteIndeed, you're right, I made a mistake. Thanks for the reply!
Have a nice day,
Bram.
Hi Roel,
ReplyDeleteI would like to provide my reasoning why 2.3 should be TRUE. According to T621/98 the patent proprietor is a party to the proceedings and therefore allowed to participate at the discussion. The patent proprietor is no accompanying person. Therefore, G4/95 or G2/94 do not apply. As a general rule, Pedro as employee can represent and make oral submissions provided he brings an authorisation letter to the oral proceedings.
What do you think?
With best regards,
Lukas
You would be correct if the patent proprietor was from an EPC state, but he is not. So mandatory representation applies.
DeleteOh yes, I missed that =) thanks
DeleteHi Roel,
DeleteFirst of all thank you for your thorough explanations and your efforts. I am happy to know that I safely pass. As others, my doubts still goes to 4.1, but I understand why it should be kept T.
As to 2.3, I assumed that, since the US company has "place of business" in Portugal, there is no need for mandatory representation. In Visser in relation to 133(2), there is an explanation that it is generally accepted that "a place of business" in the sense of having legal presence in a contracting state, suffices; a company need not have its headquarters in a contracting state. Thus I assumed that the employee Pedro can represent in opposition proceedings. Moreover, the information that US company has "research center" in Portugal might suggest that the place of business is quite important.
Thank you for your opinion on this.
Michal
My reasoning was the same and i went with T
DeleteThis comment has been removed by the author.
DeleteFurther, Hokestra also states a patent proprietor can always speak in opposition. And there is an office (research center) in the EPC contracting state.
DeleteWe don’t see why the PT research center should qualify as a principal place of business of the US-headquartered company. It is not the principle place of business = headquarter /Sitz / siege (see below for a discussion).
DeleteIt could be that the research center is a seperate legal entity with its principle place of business in PT and that Piedro is employed by that PT legal entity. But then Piedro is an employee of that PT company (which he could act for, if authorized), and not of the US company. Employees cannot represent economically connected companies. So, Piedro would not be allowed to speal on behalf of the US company - and the PT company is not a party so also not on helaf of that in these oral proceedings.
Further, you (Michal) seem to refer to Visser, notes to Art.133(2), reading: “From a comparison of the French, German and English texts of Art.133(2) it appears that the adjective ‘principle’ in the English text is incorrect. It is generally accepted that ‘a place of business’ in the sense of having legal presence in a contracting state, suffices; a company need not have its headquarters in a contracting state.”
In this paragraph, Visser says “it appears”, so he draws his personal opinion as to the incorrectness of the Article in English. However, one may challenge his opinion: does “siège” = “Sitz” not also mean _principle_ place of business? Also, Art.177(1) EPC says all texts are equally authentic, so you should be able to reply on the English text when you sit your exam.
Visser also states that it is “general accepted”. That may, or may not be true. The relevant point is how you could know this (if it is true) when you sit the exam. The answer to that is that it should be clear from the EQE syllabus as defined in the REE and IPREE. I could not find any support in any of the documents listed in Rule 10(4)(a) and 22(1) IPREE; neither the GL nor the Case law Book discuss the meaning of the term. The English versions of the Guidelines as well as the Case Law Book do not give any indication that “principle place of business” can, or maybe even should, be interpreted differently than “headquarters”. So, although we appreciate and recognize the point that you raised could maybe be valid, we consider that there is no legal basis in the EQE syllabus that requires, or even allows, to interpret the term “principle place of business” in Art.133(2)EPC other than “headquarters (at least not in the English version)”. By the way, Visser implicitly indicates that “principle place of business” means “headquarters” (last sentence of the paragraph).
For completeness, Art. 133(2) EPC reads as follows in the three languages:
EN: 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 Implementing Regulations may permit other exceptions.
FR: Les personnes physiques et morales qui n'ont ni leur domicile ni leur siège dans un Etat contractant doivent être représentées par un mandataire agréé, et agir par son entremise, dans toute procédure instituée par la présente convention, sauf pour le dépôt d'une demande de brevet européen ; d'autres exceptions peuvent être prévues par le règlement d'exécution.
DE: Natürliche oder juristische Personen, die weder Wohnsitz noch Sitz in einem Vertragsstaat haben, müssen in jedem durch dieses Übereinkommen geschaffenen Verfahren durch einen zugelassenen Vertreter vertreten sein und Handlungen mit Ausnahme der Einreichung einer europäischen Patentanmeldung durch ihn vornehmen; in der Ausführungsordnung können weitere Ausnahmen zugelassen werden.
Thank you Roel. The question 2 states: "The patent proprietor has its headquaters in the USA and HAS a research centre in Portugal. Thus implicitly he HAS place of business in Portugal.
DeleteVisser states on page 345, literally: "From a comparison of the French, German and English texts of Art 133(2) it appears that the adjective "principal" in the English text is incorrect. It is generally accepted that "a place of business" in the sense of having legal presence in a contracting state, suffices; a company need not have its headquarters in a contracting state."
So is it explanation in Visser incorrect? If so, this question is really problematic.
Michal
Visser is not in the IPREE as part of the syllabus... Answering must be based on the syllabus as defined in the IPREE... Answering based on information from other sources, whether that information is correct or not, may not always lead to the correct answer... You cannot blame it to the question if such an other source leads to a different answer.
DeleteIn the previous post, I gave our reasoning - we may be wrong (although we think we are correct), but if we would be wrong, where in any of the EQE sylabus as defined in Rule 22(1) IPREE can it be found that the word "principle" has to be ignored in the Article?
By the way, I also use references books, and not only the authentic sources defined in the IPREE: even though any reference book will have some errors in it, you make much less errors when using those reference books then when trying to sort it all out with all authentic sources!
DeleteFor Question 2.3, Pedro is not the proprietor but an employee. So, whether or not the USA company must be represented by a professional representative under Art.133(2) is besides the point. Even if the proprietor may speak, that does not mean that Pedro may speak. For Art.133(3) in principle the same question occurs (is Pedro an employee of a legal person having 'their ... principal place of business in a Contracting State'. However, under R.152(2) employees need an authorization in any case and the question does not say that such authorization (from the USA company) is present. I guess that the Exam committee considers that a research center in Portugal in any case does not make the USA company qualifying under Art.133(3).
DeleteHi Peter, I domot exactly get your point. Art.132(2) and 133(3) both have the same "company should be from a contracting state" requirement - to be allowed to do without professional representative and to be allowed to let an employee act on behalf of the company. The latter could be considered to be a logical consequence from the first (if a EP attorney is needed, an employee cannot talk; if a company can talk, it can act via either the "director" (the one that can by law represent the company) or by an employee that is authorized by that director).
DeleteThe most important question here is what is principal place of business. It is generally understood that headquarter is not the same as principle place of business. The question could be worded differently. Guidelines give us no information what shall we conclude on this definition. I did not find yet any decision ruling on this as well. Assuming that the research centre can be a place where main business is done, there is no need to disqualify it as a principal place of business.
DeleteI will cite Module 1.3 of EPO online course, page 5/6: "A party having his place of business in a contracting state (the headquarters NEED NOT BE IN A CONTRACTING STATE) may be represented by an employee (Article 133(3) EPC, with no restrictions regarding the employee's nationality. The parties themselves may also act directly before the EPO, even if they are represented by an employee (Article 133(3) EPC), a professional representative (Article 134(1) EPC) or a legal practicioner (Article 134(8) EPC).
The appointment of the employee is not excluded in any way here.
Now from what EPO has introduced in his own online course, which shall be more trusted source rather than Visser, I am curious to see how this will end. Although I bet that the intended answer is false, maybe there is more of us with similar thoughts on this.
Michal
Dear Roel, dear Michal: the EPO online course quote sheds new light on it. My guess was that expected reasoning is the research centre in Portugal does not make the USA company company "in" an EPC state under Article 133(3), so that Pedro may not act as employee under Article 133(3) and hence also may not speak.
DeleteAn additional reason why Pedro may not speak is that, even if he is an employee entitled to act under Article 133(3), he still must file an authorization before he may speak (or refer to a general authorization), because that is always required for all employees acting under Article 133(3).
Dear Peter, the authorization can be introduced on the same day attending the oral proceedings. The questions 2.3 is worded "As a general rule, Pedro will be allowed..." There is no indication on all particularities that has to be accomplished, such as filing authorization. It don't think this was asked.
DeleteMichal
hello Michal, in that case following Visser (or Module 1.3 of EPO online course) and not overthinking should lead to "true". I'm curious what the final answer, after possible appeals, will be.
DeleteWhat did the EPO online course give as legal basis to read the Article like that?
DeleteWhat did the EPO online course give as the legal basis to delete "principle"?
The EPO online course is not listed in the set of documents for the pre-examination in the implementing rules for the exam. So, the course material itself cannot be legal basis.
I donot think we can finally settle this as long as there is no real legal basis, of a type that the pre-exam candidate could be expected to find - Guidelines, Case law.
DeleteIn my understanding, "principle place of business", "Sitz" and "siege" all have the same meaning: the single address where the company is registered. That may not always be the same where the physical headquarters are (for tax reasons, some comanies are registered at some specific states whereas they do not run their business from there), but normally is the case.
In this question, where headquarters are mentioned and a research center, it must be the headquarter place. If it can be both places, that must be clear from a EQE-recognized legal source -- if an interpretation is based on ignoring a word in Art.133(3) (the word "principle"), there must be a clear legal reference for being allowed to do so in my view. Maybe that reference exists, but I am not aware of it. If anyone is, please drop a comment on this blog.
Sorry to post my response out of this chain. See below please. Thanks. Michal
DeleteThe Examiner's Report does not mention Portugal at all, nor the terms "research centre" or"employee"! And do not dwell on whegther the research centre is a "(principle)" place or business or not. Strange that they donot appear in the motivation for the answer - are not all facts in the question to be taken into account?
DeleteExaminer's Report says:
QUESTION 2
The representative is allowed to make oral submissions, Article 133(2) EPC, see also
Guidelines, E-III, 8.5 and G4/95.
Submissions by a person who is not qualified under Article 133 and 134 EPC cannot be
made as of right: among others, the request should be filed sufficiently in advance of the
oral proceedings. Thus, as a general rule, neither Jane nor Pedro will be allowed to speak.
Sarah would be allowed to make submissions in Portuguese for instance, if the parties and
the European patent office agree to use this language (Rule 4(4) EPC), or if the patent
proprietor provides for interpretation into the language of proceedings (Rule 4(1) EPC).
2.1 – TRUE
2.2 – FALSE
2.3 – FALSE
2.4 – TRUE
I think they looked for interpretation of Guidelines, but the first check to be made was Art 133 and 134 EPC. After the discussion here, I am convinced that there is high chance of success in appealing 2.3 for those who did not pass. Obviously, there will be less people who will need to appeal, but if any question has chance to be neutralized, this is the one.
DeleteGeneral rule, in my point of view, was linked to Art 133 and 134 check. But the committee wanted to see our interpretation of what is in Guidelines, which, nevertheless, mentioned the Art 133 and 134 in the beginning anyway... As a general rule, Pedro may speak since he is employee who is entitled to act on behalf of the applicant as the Art 133 and 134 conditions are fulfilled. Assuming that we were told ONLY that headquarters are in US, the US company means that the company is incorporated in US, and we know that Pedro is working in research centre in Portugal, which belong to said US company, there is no reason to exclude the research centre from being principal place of business. I think the committee just overlooked this.. If they wanted to be 2.3 false, they should have said that the US company has main business in US. Then it would be super clear..
I saw discussion on legal blog. Contrary to what you say, there seems no reason to believe the research centre is principal place of business. It is just research centre, so place of business, but not **principle** place, not the "seat" of the company. Principle place is in US.
DeleteHow do you know that principle place is in US?? You assume that headquarters = principal place? This is questioned even in online course materials, Visser, etc. If Guidelines give us no indication on this, we must count with any possibility given by the question at hand. We knew very little to conclude that the principal place of business is in US, or to disqualify the research centre. I believe that research centre is substantial element, it can be even worth bilions on investments, and it usually is. There are many companies which are incorporated outside, have their headquarters at the same place, but have principal place of business somewhere else. Why then they did not say something else, like branch office, subsidiary, etc. It would be so straightforward then..
DeleteHi Michal,
DeleteWhy would, with the facts given, the headquasters not be the principle palce of business? There is nothiong else that could be, and I think hardly anyobe wpuld have doubted it before having seen this discussion or before having read commentaries which are not in the EQE syllabus. I think there cannot be any doubt in this question.
I could agree that it is a bit unfortunate that the English version of the question does not use the words from Art.133(3), i.e. the word "principle place of business", and that the legal status of the resarch centre is not given (own legal entity or a site under the legal entity of the US-company -which you probably call a bracnh office?), but with the words "headquarters" and "research centre" the hierarchy and legal status is -in my view- sufficiently clear.
By the way, in the three languages, the papers uses "the headquarters" & "its research centre" (EN), "seinen Hauptsitz" & "beim Forschungszentrum" (DE) and " son siège" & "au centre de recherche" (FR), to be compared with the legal terms from Art.133(3) "principle place of business", "Sitz" and "siège": the DE (more or less) and FR (exactly) version used the term from the law, whereas the EN version used the less legal headquarters.
Michal: do you agree that the DE and FR version leave no room for a different interpretation than that the company has its principle place of business / Sitz/ siège in the US and that the PT research centre does not qualify as a substantial place of business - such that Pedro cannot act?
---------------------
Hi Anonymous 14 March 2019 at 09:22:
I was also a bit surpirsed that the words "employed" and "the research centre in Portugal" do not appear in the Examiner's Report. With these facts in the question, all candidates would have considered whether they are relevant and if so how. I therefore also expected a comment as to their (ir)relevance and/or as to the (non-)difference between Jane and Pedro for 2.2 and 2.3. The reference to "persons not qualified under Art. 133 or Art. 134" is quite general, and it unfortunately does not indicate explicitly and specifically why Jane and Pedro are not qualified. Probably this was considered clear enough as such.
Hi Roel,
DeleteThank you for your response. I can comment only on English version, but see that French and German version can be interpreted as "company seat", right?
Assuming that it is allowed to have principal place of business in other state that its headquarters, I still cannot be fully convinced with the interpretation provided by the committee. Given different reasons, the headquarters need not be considered as principal place of business, but administrative units only (for tax and other similar purposes, etc.). But I understand why the committee did not pay particular attention to this wording, they focused on what is in the Guidelines as condition for allowing the person to speak, and whether we can interpret it correctly. If you do a little search, you may find that there is a distinction between "headquarter" and "principle place of business", even for example when we talk about US companies. The lawyers and tax attorneys are aware of this..
In many cases, the physical location of the company is also its headquarters, though the headquarters could also just be an office location for board members and executives to meet and keep their offices. In my point of view, research centre CAN be considered the company's primary place of business, as most of its funds and assets are located there.. I do not think it is a matter of hierarchy, as you wrote, but a matter of finding where real business is made, rather than all the paperwork. The research centre is usually seen as place where majority of the employees work, where most of the investments goes and business is made.. It does not have to be true always, but we do not have enough information to conclude that is not so, since we do not know it from the wording of the question.
Thus, I don't think we can reach an unequivocal conclusion, I would just be more happy to see more accurate wording. The wording could be "headquarters and main business in US" and it would be perfectly accurate. Then we would need not to think about Art 133 and 134 and focus on interpretation of Guidelines in this respect.
Hi Michal,
DeleteWhat a strange situation... one of the terms for applying Art.133 seems to have different meanings in the different language versions of the EPC and not even a single, well-established situation (as you and others indicated, "principle place of business" does not need to be the same as "seat" - I tried to get a clear picture but drowned in all different types of definitions, different and even conflicting main rules, case law from varios jurisdictions deciding in various directions).
That a term is not uniquely well-established is not so uncommon, also not in the EPC context. But that is usually solved by either an EPO Notice in the OJ, or Case Law, or a clear explanation in the Guidelines - and often a combination of a few (e.g., the term "evident abuse" requirement of Art.55(1)(a) -roughly said: requiring intent to harm and a relationship-, or the term "legal practitioner" of Art.134(8) - basically an Advocat, but anyone that somehow practices law such as national patent attorneys-). In view of the (likely) difference between the meaning of "principle place of business", "Sitz" and "siège", as well as the maybe not even unique meaning of any of the three terms themselves, clarification in the Guidelines seems very welcome. (But too late for this exam.)
By the way, I assume that the exams and their answers are checked in every language version for correctness and efficiency by EPO lawyers, maybe from the same group that draft the Guidelines. If so, there is probably a unique definition and understanding of the three language versions of the terms (so, of "principle place of business", "Sitz" and "siège" one-by-one) among the EPO lawyers, as well as a common understanding of the meaning in view of Art.177 EPC. But we still donot know then what it is. I would appreciate it if the Guidelines could have a section that briefly explains what "principle place of business", "Sitz" and "siège means in the context of Art.133, Art. 134 and Art.14(4), and what the differences are -if any- with "headquarters", "statutory seat", "Hauptsitz", "PO box registered companies" and alike - it may be very relevant for real life and the information is not at all readily available, nor can a conclusive answer be found!
(continues in the next comment, can have at most 4096 characters per comment)
Coming to your last paragraph: I donot think that "main business" location needs to equate with "principle place of business" location, as the EN and FR version hint me that the term "principle place of business" is rather a specific legal term that means more-or-less the same as "seat" or place of registration. So "princple place of business" does not need to mean the same as "place where the company ahs its largest business volume", which you suggest with "headquarters and main business in US". I donot understand why the EN version does not simply use the term from the law (which is then uniquely defined in the context of that law, even if we donot know exactly what it means), whereas the FR and DE version do (except for the subtlety Hauptsitz vs Sitz in the DE version). It suggests to me that no complications were expected to be present, nor to be seen in the wording used.
DeleteApart from that I agree with you that we can reach an unequivocal conclusion on the meaning of the terms in Art.133(3) in the three versions and what would be the exact effect on the question/answer.
And I also agree that we can reach an unequivocal conclusion on whether "headquarters" is unambiguousy the same as "principle place of business" - however, even if there could be expections, I cannot see why the Portugese research center would be the (a?) principle place of business of a company that has its headquarters in the US. A "research centre" cannot really be seen the "principle place of business" for a company with its HQ somewhere else in my view (at least not for a normal company, it could be for a company whos business is to execute, commercially research for others; but that is an exotic siutation so should not be assumed in an EQE question).
I could not quickly find EP-based case law, but here is a few from the US - which shows headquarters is the likely principle place of business, but not necessarily.
DeleteTo me, in the context of the Q, it confirms that:
1) there is just a SINGLE principle place of business, and the term does not equate to any place of business; it is more like (bit maybe also no the same) as seat;
2) the headquarters, and not the PT search centre, should be considered the (single) principle place of business.
E.g.:
https://www.robinskaplan.com/resources/articles/u-s-supreme-court-defines-principal-place-of-business-for-diversity-jurisdiction:
We conclude that "principal place of business" is best read as referring to the place where a corporation's officers direct, control, and coordinate the corporation's activities. It is the place that Courts of Appeals have called the corporation's "nerve center." And in practice it should normally be the place where the corporation maintains its headquarters-provided that the headquarters is the actual center of direction, control, and coordination, i.e., the "nerve center," and not simply an office where the corporation holds its board meetings (for example, attended by directors and officers who have traveled there for the occasion).
https://info.legalzoom.com/principal-place-business-vs-state-corporation-21139.html
"Determining a principal place of business is a simple matter for some corporations. For large or dispersed corporations, however, the determination might involve ambiguity. If a corporation is headquartered in San Diego, with most of its factories in Houston, it is not intuitively obvious which city should be selected as the corporation's principal place of business. However, most states require a corporation to select its corporate headquarters as its principal place of business and to file the address with the state Secretary of State."
Hi Roel, thank you your explanations, I really appreciate that! That is what came strange to me, that they did not use the precise legal term instead, wondering why.. In the context of 2.2 and 2.3, I thought their intention was to test Art 133 and 134, because both question really tested the same. Therefore, I looked at the meaning of headquarters in Visser, then in online course materials (I know they are not in syllabus, but Guidelines do not help!), and both suggested that headquarters are not equivalents with principal place of business. Assuming that they wanted to test this in more complexity, and given limited time to respond, I concluded that they wanted to test that employee (in general) is allowed to speak. To me, research centre may really be center of company business. Research is the core of science oriented companies, isnt it? Your proposal to amend the Guidelines is a way to go! Thank you again. Michal
DeleteGood proposal. But it does not help for answering this exam if only a future version of the Guidelines gives the legal background needed to answer the question. Or?
DeleteJ
Hi everybody,
DeleteIs anyone planning to file an appeal for 2.2 and 2.3?
Best Regards,
T
Hi all,
ReplyDeletei appreciate DeltaPatents' prompt issuing of their solutions and replying to our questions.
Does anyone know (approx.) when/where/how the official results from the secretariat are going to be published?
Thanks a lot,
Lazaros
Unfortunately I cannot provide the reference, but there is a diference between incorporation and principal place of business. Fox example, what is now discussed is UK incorporated companies having principal place of business in other EU state. UK-incorporated companies that have their central administration or principal place of business in another EU member state which applies the "real seat" principle (for example Germany) should consider this issue as part of their Brexit planning. This might give some light into this. Incorporation vs headquarters vs principal place of business.
ReplyDeleteMichal
Thx for the info. How a simple term from Art.133(3) can turn out to be terribly complex...
DeleteHi, I'm not sure about 1.2. Pietro doesn't say that Gianna should be left out.
ReplyDeleteIrrespective of who the applicants are, you don't know that IT-P was the first filing, or that it hasn't been withdrawn leaving no rights outstanding (not sure if that is possible in IT, it may be a UK thing).
DeleteThe results are out!
ReplyDeleteSee https://pre-exam.blogspot.com/2019/03/pre-exam-2019-results-are-out.html for pass rate and links to to results file as well as examiner's report
Does anybody intend to file appeal?
ReplyDeleteI think the people who intends to file an appeal should create a whatsapp group or sth like that to share ideas.
DeleteWhy not share your ideas on this blog?
DeleteOr on the results blog that DeltaPatents also created and where I saw some useful comments already?
If on the blog, then also people that donot intend to appeal can contribute with suggestions.
I have ideas and argumentation relating 3.1, so if somebody is ready to file an appeal I could share with opinion draft
ReplyDeletePlease share.
DeletePlease do share.
DeleteAs it is stated that Pre-Exam questions should be TRUE or FALSE, there shouldn’t be TRUE, but….therefore for answering 3.1 questions there could be situation when the applicant desires to make amendments to the claims/description in response to the search opinion (Guidelines B-XI, 8;
ReplyDelete“There is, however, no requirement for the applicant to respond to the European or supplementary European search report where this was drawn up before 1 April 2010, where it is not accompanied by a search opinion (see B XI, 1.1 for applications for which a search opinion is prepared) or where the search opinion was positive (see B XI, 3.9). However, in these cases, the applicant may still respond to the search report according to Rule 137(2) if he so wishes. In such cases, the applicant is encouraged to respond to the search report before the application enters the examination stage (see C II, 1)”
Rule 137(2) EPC) of his own volition. Therefore there is no straightforward answer TRUE for 3.1, but could be as well FALSE.
Rule 137(2) provides the applicant with the right to do voluntary amendments to the description, claims and drawings. It is not clear that filing, for example, a broader claim set will result in a R.71(3) communication. Further, the applicant can also have an interest in amending the claims to a broader scope or adding new independent claims (which may or may not be within the searched scope) in February 2019, where the technical preparations for publication had still not ended, because such an amended claim set would be the set that is published (R.68(4) EPC).
The answer to 3.1 could equally be FALSE, because new claims or amended claims would not be an uncommon reaction. Such new and amended claims may be objectionable under Art.123(2), Art.54, Art.56 or the Examination Division may consider such claims to relate to unsearched subject-matter, resulting in the issuance of an Art.94(3) EPC communication. It is not just theoretical consideration, because R.137(2) EPC allows the applicant amendment of own volition, as the time for technical preparations has not expired, and because R.68(4) EPC explicitly refers to both new and amended claims filed under R.137(2). It is a legitimate reaction of an applicant studying the cited documents and the favourable opinion in August 2018 to prepare broader claims.