Friday, March 18, 2022 Pre-Exam 2022: our answers to the legal questions

This was the second online -EQE with the Pre-Exam being held in 4 parts, and with the questions almost fully being taken from the screen (only the description of the application and the prior art in the claims analysis parts were printable).

In the legal as well as the claims analysis parts, the order of the four statements of each of the questions was randomized, i.e., it was different for different candidates. 

Also the order of the questions was randomized in the legal parts (e.g., the sequence shown below was presented to one candidate, while another candidate reported getting what is shown below as Q.2 as the first question,), but not in the claims analysis parts.

During the exam, candidates had access to the EPO Legal Text pages, so including the full EPC Articles and Rules, Guidelines, GL/PCT-EPO, National Law Tables, Case Law, and the Euro-PCT Guide (HTML versions), but not to the PCT Legal Texts on www.wipo.int/pct/en. Access was to the live versions, so to the versions in force on 18 March 2022 (so not the version of 31.10.2021 acc REE/IPEE).

Candidates could access the exam in all languages, English, French and German.

The exam had a mix of topics (common and some less-common), with some surprising absences: no time limits, no remedies, no EP entry, no 71(3) acts, no priority. Entitlement was certainly unexpected for many candidates, as well as some elements of the appeal question and details on (late) fee payment under PCT.

Until 2019, we just provided a list of T and F's for the 4 statements per question, as all candidates had the same order of them in the paper exam. In view of the randomized order, we now also provide the questions and statements. If you check your answers with ours, note that the order of the questions and of the four statements from a single question may be different!!!

Please feel invited to comment!

Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 18-03-2022 22:23"), whereas using your real name or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in or make an account - it is OK to just put your (nick) name at the end of your post.

You mYay also want to check the other blogs: first impressions and claims analysis

Pre-Exam 2022

Part 1&2 - Legal Questions (2x 70 minutes)

Part 1

Question 1

Francesca has filed a European patent application EP-F before the EPO. Francesca did not develop the invention which is the subject of EP-F. In drafting EP-F Francesca used information in Andrew’s laboratory notebook, without Andrew’s consent. EP-F was published in December 2017 and is still pending.

1. Andrew can validly request that EP-F be refused no later than three months after the decision recognising his entitlement to EP-F has become final.
2. Francesca can withdraw EP-F at any time from the date on which Andrew provides evidence to the EPO that he has instituted proceedings against Francesca seeking a decision that Andrew is entitled to the grant of the European patent based on EP-F.
3. Andrew can seek a stay of proceedings if he provides evidence that he has instituted proceedings against Francesca seeking a decision that Andrew is entitled to the grant of the European patent based on EP-F.
4. No renewal fee has to be paid during a stay of proceedings.

Our answers

1. T – Art.61(1)(c) + R.16(1)
2. F – R.15
3. T – R.14(1) 
4. T / F – this is a point under debate as Rule 14 is silent about the due dates for divisionals, but only mentions periods (esp. that of R.51(2)).
   GL A-IV, 2.2.3 “Legal nature and effects of the stay” says “Stay of proceedings implies that the legal status quo existing at the time of the suspension is maintained, i.e. neither the EPO nor the parties can validly perform any legal acts while proceedings are suspended (J 38/92)”. So, as no legal acts can be validly done, no legally valid payments can be done/required.
   GL A-IV, 2.2.4 says “As far as renewal fees are concerned, they continue to fall due during the period of stay.”.
   From combining those two GL paragraphs, it may be considered that renewals that fall due are deferred to the date of resumption as in the case of an interruption under R.142 (GL E-VII, 4; J 902/87 mut.mut.), so that they do not need to be paid during the stay.
   However, some legal texts provide that the renewal fee must be paid during the stay by either F or A, which appears to be at odds with the legal nature of the stay.
   [Update 15 April 2022:] The Examiners' Report provides:
   "FALSE: All periods other than those for the payment of renewal fees, running at the date of the stay of proceedings, shall be interrupted by such stay, Rule 14(4) EPC and Guidelines A-IV, 2.2.4: hence renewal fees must be paid even during such stay."

Question 2

Hans filed an admissible notice of opposition against European patent EP-1, which was granted with two independent claims, namely claim 1 and claim 2 relating respectively to two different parts of the patent. The only ground for opposition that he raised was lack of inventive step in respect of claim 1. The opposition is not filed against the patent as a whole, but only against claim 1. In particular, he argued in the notice of opposition that the subject-matter of claim 1 lacked inventive step over the combination of D1 and D2, both published before the effective date of EP-1. Theresa filed third-party observations during the pending opposition proceedings, arguing that claim 2 lacked novelty over D3, a Japanese patent application published before the effective date of EP-1.

For the following statements, assume that the right to be heard of all parties involved has been respected and no amendments have been filed during the opposition proceedings.

1. After the opposition division has considered Theresa’s third-party observations, the opposition division may revoke EP-1 based on lack of novelty of the subject-matter of claim 2.
2. If the opposition division considers that the subject-matter of claim 2 lacks inventive step over D2 in combination with D3, the opposition division may revoke EP-1 for lack of inventive step of the subject-matter of claim 2 over D2 in combination with D3
3. If the opposition division considers that the subject-matter of claim 1 is not sufficiently disclosed, the opposition division may revoke EP-1 because the subject-matter of claim 1 is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
4. If the opposition division considers that the subject-matter of claim 1 lacks novelty over D1, the opposition division may revoke EP-1 for lack of novelty of the subject-matter of claim 1.

Our answers

1. F – claim 2 not in extent, and extent cannot be broadened – G 9/91
2. F – claim 2 not in extent, and extent cannot be broadened – G 9/91
3. T – Art.114(1), R.81(1) & G 10/91
4. T – Art.114(1), R.81(1 & G 10/91

Question 3

For each of the statements, indicate whether the statement is true (T) or false (F):

A board of appeal …

1. … may exercise any power within the competence of the department which was responsible for the decision appealed.
2. … may decide in a three-member composition without a legally qualified member.
3. ... may base its decision on a fresh ground for opposition only submitted during the appeal proceedings without the consent of the patentee.
4. … may remit a case to the department which was responsible for the decision appealed for further prosecution.

Our answers

1. T – Art.111(1)
2. F – in any type of appeal, at least one legal member needed – see Art.21(2)-(4)
3. F – G 10/91 assuming there is no intervention during the appeal (An interventer may raise a different ground – G 1/94 -, but "if a fresh ground for opposition is raised by the intervener, the case should be remitted to the first instance for further prosecution unless special reasons present themselves for doing otherwise, for example when the patentee himself does not wish the case to be remitted" - G 1/94, reason 13).
4. T – Art.111(1)

Question 4

Company A has filed a European patent application EP-A with the EPO. Company B has negotiated with Company A the transfer of European patent application EP-A to Company B.

1. The transfer of a European patent application becomes effective vis-à-vis the EPO only when it is published in the European Patent Register
2. The transfer of a European patent may be recorded in the European Patent Register during the opposition period.
3. It is possible to validly transfer EP-A from Company A to Company B only for the designated contracting states FR and DE.
4. The transfer of EP-A may be recorded in the European Patent Register at the request of Company B, upon production of documents providing evidence of such transfer and payment of an administration fee.

Our answers

1. F – R.22(3) effective as from date on which transfer requested, evidence provided and fee paid
2. T – R.85
3. T – Art.71
4. T – R.22

Question 5

Roberto and Mario are Brazilian citizens living in São Paolo, Brazil. They are the applicants for European patent application EP1, which has been filed today in Portuguese together with a French translation. EP1 claims the priority of a previous Brazilian application P1.

1. If EP1 is assigned to a British company, the language of the proceedings may be changed to English after registration of the transfer.
2. EP1 will be accorded by the EPO a filing date, only if the content of EP1 does not extend beyond the content of P1 as originally filed.
3. Roberto and Mario are entitled to a reduction of the filing fee.
4. If the French translation had not been filed in due time, EP1 would be deemed not to have been filed.

Our answers

1. F – G 4/08
2. F – Art.80, R.,40; only effect is that priority is not valid for the extra matter
3. F – not Art.14(4) persons
4. F – deemed withdrawn, Art.14(2)

Part 2

Question 6

Roberto and Mario are Brazilian citizens living in São Paolo, Brazil. They are the applicants for European patent application EP1, which has been filed today in Portuguese together with a French translation. EP1 claims the priority of a previous Brazilian application P1. It is assumed now that Roberto and Mario intend to file a divisional application EP1-DIV relating to the pending patent application EP1.

1. EP1-DIV may be validly filed with the EPO at the filing offices in Munich, The Hague and Vienna.
2. EP1-DIV may be validly filed in English.
3. EP1-DIV may be validly filed in Portuguese.
4. EP1-DIV must be filed within 12 months from the filing date of EP1.

Our answers

1. F – Not in Vienna - Art.76, R.36(2)
2. F – R.36(2): PT or FR
3. T – R.36(2)
4. F – R.36(1), any pending

Question 7

The dimethyl fumarate molecule (DMF) is known from the prior art in the following respects:

Document D1 discloses DMF as a biocide for the treatment of clothing, shoes and furniture against mould growth.

Document D2 concerns a patent which discloses DMF for the treatment of the skin disease psoriasis and of multiple sclerosis.

The prior art does not disclose any further disease that can be treated with DMF

1. The subject-matter of the claim “DMF for use as a medicament” in a European patent application filed today is novel over the above-mentioned prior art.
2. The subject-matter of the claim “DMF for use in the treatment of cancer” in a European patent application filed today is novel over the above-mentioned prior art.
3. The following claim wording is allowable in a European patent application filed today: “Use of DMF for the manufacture of a medicament for the treatment of cancer”.
4. The subject-matter of the claim “DMF for use in the treatment of skin diseases” in a European patent application filed today is novel over the above-mentioned prior art.

Our answers

1. F – D2 already shows DMF for a medical treatment
2. T – Art.54(5)
3. F – G 5/83 -> G 2/08, GL G-VI, 7.1
4. F – D2 already shows DMF for treatment of a specific skin disease

Question 8

Jan, a US national and resident of the USA, filed an international application PCT-J with the USPTO on 10 January 2022. On filing, Jan indicated the EPO as one of the designated Offices. The EPO was immediately informed of its designation.

The USPTO charges the late payment fee for a delayed payment of the international filing fee as allowed under the PCT.

1. If the international filing fee is not paid in due time, Jan can validly pay the international filing fee together with the late payment fee within a time limit of one month from the date of the invitation sent by the receiving Office.
2. A consequence of not paying the international filing fee with the late payment fee within the prescribed time limit is that the USPTO will notify the EPO as the designated Office that PCT-J is considered to be withdrawn.
3. Jan must pay the international filing fee to the International Bureau.
4. A consequence of not paying the international filing fee with the late payment fee within the prescribed time limit is that the USPTO will declare that PCT-J is considered to be withdrawn.

Our answers

1. T – R.16bis.1(a) PCT
2. F – 29.1(ii) PCT: IB informs dO
3. F – R.15.1 PCT: competent rO, so USPTO
4. T – Art.14(3) PCT, R.16bis.1(c) PCT; AG-IP 5.195

Question 9

For each of the statements, indicate whether the statement is true (T) or false (F):

1. A Japanese citizen resident in Japan may validly file a European patent application without being represented by a professional representative.
2. The EPO will accord a date of filing to a European patent application filed by an identifiable applicant using EPO Form 1001, even if the description is filed in Chinese.
3. If an international application contains no part which on the face of it appears to be a claim or claims, a date of filing will not be accorded to that international application.
4. If a request for grant is not filed on a form drawn up by the EPO, an application filed together with that request will not be dealt with as a European patent application.

Our answers

1. T – Art.133(2) EPC “other than in filing a European patent application”
2. T – Art.80, R.40; Art.14(2) EPC
3. T – Art.11(1)(iii)(e) PCT
4. F – Art.80, R.40; GL A-II, 4.1.1

Question 10

A communication pursuant to Rule 71(3) EPC has been issued for a European patent application. The applicant has fulfilled all the necessary requirements. The related decision to grant a European patent has been despatched on the basis of the documents (Druckexemplar) transmitted to the applicant with the communication under Rule 71(3) EPC. The mention of the grant of the European patent has been published in the European Patent Bulletin.

However, in the course of the preparation of the publication of the specification of this European patent an error arose, whereby page 2 of the description is missing in the published specification of this European patent. As a result of this error, the published specification of this European patent as a whole does not disclose the claimed invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.

1. If the language of the grant proceedings for this European patent was English, a notice of opposition may be validly filed in German
2. To transfer the status of opponent to a different person during opposition proceedings, it is sufficient to file a declaration including the names, addresses and signatures of both the original opponent and the person wishing to take over the status of opponent.
3. The European patent could be revoked on the basis of an opposition based on the ground of Art. 100(b) EPC because in the published specification of this European patent the invention without page 2 of the description is not disclosed in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art.
4. This error in the published specification of this European patent may be corrected at any time.

Our answers

1. T – R.3(1), DE is off EPO language Art.14(1)
2. F – cannot freely transfer G 2/04
3. F – text of grant is decisive, not of erroneous B1 publ – GL C-V, 10 & H-VI, 6
4. T - GL H-VI, 6

We are looking forward to your comments!

Diane, Roel

(c) DeltaPatents