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


Comments

  1. Thank u, i agree with your proposal. I hope u are right. For the renewal fee, i have said False, as is it the only fee that has to be paid during staying of proceedings

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  2. "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."

    I found the wording of your question 9(4) rather strange, but I see now that it is the wording of art. 90(2). I did not consider that the question might have been related to whether or not a filing date would be assigned, so I came to the conclusion that the application would be refused, and was not sure whether immediate refusal was considered 'dealing with the application'.

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    Replies
    1. You do not need the RfG form when filing the application. If you do not file it right-away, you will be invited under R.58

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    2. "not dealt with as an application" effectively means "no filing date accorded"

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  3. Does Rule 14(4) EPC not show that renewal fees must be paid throughout the stay of proceedings? For question 1.4?
    Otherwise I agree with your answers - thank you so much for publishing them.

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    Replies
    1. I agree with you, in principle I thought R14(4) was clear on that. Hope they give both marks in case of doubt!

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    2. A due date is not a period - see e.g., J 4/91, r.3.2: " a "due date" is not a "time limit" which can be "extended"."

      R.14(4) only refers to periods, not to due dates.
      Same situation in R.142, which does not mention due dates either - there, J 902/87. reason 3.6 provided "3.6 Therefore, the only time limit affecting renewal fees that may be suspended is the six-month period for paying the renewal fee together with a penalty fee referred to in Article 86 EPC, and Rule 90(4) EPC has to be interpreted as deferring until the date proceedings are resumed the payment date for renewal fees which have fallen due during the period of the representative's or applicant's incapacity (see in this connection, Gall, Jahresgebühren für die EPA - Münchner Gemeinschaftskommentar, 7. Lieferung, May 1985, pp. 46-47)."
      In other words:
      - the renewals continue to fall due in the dead period, but
      - they are deferred to the date of resumption.
      This is in line with the legal nature of the stay, as mentioned in the Guidelines in GL GL A-IV, 2.2.3 “Legal nature and effects of the stay”:
      “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, if no legal acts can be done, no payments can be done/required.

      But as said, there is no general consensus on the matter. There is also no explicit information in the Guidelines. The thing that comes closest is -in our view- J 902/87 (albeit on a different situation - R.142, not R.14 -- the wording of the provisions is however so similar that we see no reason why the reasoning of J 902/87 would not apply by analogy).

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    3. This was asked as a paper D question in 2019 (Q1)

      https://documents.epo.org/projects/babylon/eponot.nsf/0/E8C2F690932D5366C12583B0002E2C9E/$File/D_2019_EN.pdf

      In the answer they expected candidates to say that the renewal fees should be paid.

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    4. I know. There was a strong debate then as well ;).
      (And old exams are not legal basis)

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    5. Hi Roel, I think there is legal basis that renewal fees must be paid during stay of proceedings.

      J 15/06, which relates to the suspension of proceedings due to entitlement proceedings in respect of EP04019048.0, provides an example of how stays of proceedings are applied by the Legal Division. It dates from back when EPC1973 was in force, with Rule 13(5) EPC1973 corresponding to Rule 14(4) EPC2000. See, for example, the communication from the Legal Division dated 10.11.2005 in case EP04019048.0, in which the Legal Division informed the parties about the stay of proceedings pursuant to Rule 14(4) EPC2000 and pointed out that the period for paying renewal fees is not suspended in a stay of proceedings under Rule 14(4).

      So I am pretty sure that renewal fee must be paid.

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    6. This is taken verbatim from the EPO pre-eqe course.

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    7. Hi Asim, interesting point, but I cannot find a reference to renewals in the decision:

      https://www.epo.org/law-practice/case-law-appeals/recent/j060015eu1.html

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    8. The cited text does not refer to the J-decision, but rather to a letter sent by the Legal Division on 10.11.2005 (available here: https://register.epo.org/application?tab=doclist&number=EP04019048&lng=en) But of course, such a letter is not legal basis.

      It should be noted that R. 13(5) EPC-1973 is phrased somewhat differently than R. 14(4) EPC-2000:

      "(5) The time limits in force at the date of suspension other than time limits for payment of renewal fees shall be interrupted by such suspension." (R. 13(5) EPC-1973)

      versus

      "(4) 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." (R. 14(4) EPC-2000)

      Regarding the reference to R. 142, it is interesting to note that in the letter sent on 03.02.2006 (in the same dossier referenced above), about non-payment of the renewal fee, it is explicitly noted that there is (only?) an exception for interruptions in accordance with R. 90(1) EPC-1973 (= R. 142 EPC-2000). Again, such a letter is not proper legal basis, but one may asume it to reflect the position of the EPO. I don't know what more recent letters of this kind look like.

      By the way, I answered that the renewal fees should be paid, but I now think that Roel's interpretation is the one that makes the most sense. But I think this may be too subtle for the pre-EQE (so that neutralising the statement is warranted).

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    9. Hi Roel, sorry, I did not mean that J 15/06 mentions that renewal fees have to be paid during the stay, I quoted from the EPO pre-eqe course, and the sentence is a bit misleading. As Gerben said, and I agree that the letter from the Legal Division in J 15/06 is the only basis, which cannot really be a "legal" basis. It merely gives us an idea of EPO's stance on such situations.

      Having said that, the EPO pre-eqe course supports the fact that renewal fee must be paid during stay of the proceedings because the legal nature of the stay of the proceedings is different to that of interruption. They mention that during the stay of the proceedings at least one party is interested in pursuing the application and nothing prevents them from paying the renewal fee, while the legal nature of interruption is that something "blocks" the legal acts to be performed (due to something "bad" happening).

      I have a feeling that the EPO will report F as an answer to this question and it will be heavily appealed :)

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    10. I checked the Guidelines and the Case law book and again, but could not find decisions or GL section that clarifies what happens with the renewals that fall due during the period of stay. So, it still seems that the interruption situation is most close - also there the renewals continue to fall due and also there the due dates for renewals are not mentioned in the provisions, so that I see no reason why the effect (deferred to date of resumption) would not be the same. Especially also as a requirement of a payment in the period of stay seems at conflict with the legal nature of the stay that is mentions ambiguously in the Guidelines, based on case law (see above).

      However, I also found the EPC2000 equivalent of the letter that Asim referred to above for an EPC1973 case:
      https://register.epo.org/application?documentId=E267WP2K9347679&number=EP16762126&lng=en&npl=false.
      That letter does indicate under item 3.2 on page 2 that
      "3.2 Renewal fes must also be paid if they fall due during the period of staying".
      The interpretation of the absence of the term due date in R.14(4) given in the letter from the Legal Division is thus different from the interpretation that the Board gave with respect to the absence of the term due date in R.142(4).
      It leaves some questions if that interpretation is correct: if the nature of the stay 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 (GL A-IV, 2.2.3), how can there be a loss of rights due to a missed act (non-payment)? Who will the EPO send the loss-of-rights to if a renewal that falls due during the stay is not paid (together with the additional fee) - the possibly not-entitled applicant on record or the -possibly not entitled - third party that challenged the entitlement? And when will they send it? If both pay, who will get it refunded, and when? And if the payment duty continues to exist, why then does an automatic debit order cease to be effective on the day on which a stay of the proceedings under Rule 14 takes effect?

      NB: sometime the argument is raised that the situation is different than under R.142 because there the applicant is legally incapable to act. But payments can be done by anyone...

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    11. Hi Roel, along this discussion, I suddenly realized that I was myself involved in an EP application in the very beginning of my training in which the proceedings were stayed. EP2206517. See the Communication from the Legal Division dated 03.11.2017 and 09.01.2018. Both letters mention that renewal fees must be paid. I know it does not add anything more to the previous letter I indicated but it is fairly recent from only a few years ago and as you can see all renewal fees were timely paid.

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    12. I now see that you also found a fairly recent one. It does leave a lot of open questions.

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  4. "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."
    "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"

    Both are false. Can someone explain why? Claim 2 is an independent claim, therefore the whole patent cannot be revoked only by attacking claim 2.
    Claim 1 (independent claim and different part of patent, see question) would need to be successfully attacked as well, right?
    Actually, if that was the case the other questions should be false as well...

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    Replies
    1. Good point.
      They may revoke EP-1 if the proprietor does not file amended claims directed to claim 2 only. (They must maintain in amended form if the proprietor files amended claims directed to claim 2 only).

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    2. I considered what Fabricio said as well, but found it strange if they would test the same concept 4 times.

      When looking further for answers, I noted that the question explicitly states to assume that no amendments are filed by the proprietor, meaning the whole patent can indeed be revoked based solely on claim 1 not meeting the EPC requirements. (but not claim 2, since it is outside of the extent of the opposition in this case)

      - Armin

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    3. Indeed, the last sentence of the question, which usually just says "For each of the statements, indicate whether the statement is true (T) or false (F):", comprised:

      "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"

      Note that this provides "have been filed", but does not relate to future acts, i.e., possible amendments filed in response to the TPO are not strictly speaking excluded. See however my citation of D 2/21, reason 5, in another comment to this blog.

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    4. How likely is it that these two statements would be neutralized (both T and F) in view of "possible amendments filed in response to the TPO"? Thanks.

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    5. @Roel, somewhat related to my other comment here: the question also stated that the right to be heard was respected. Wouldn't that mean that the proprietor did have the opportunity to file amendments in response to the TPO, but simply did not do so?

      I would say that, if I am to assume the right to be heard is satisfied *and* there were no amendments filed, then there are no future acts either.

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    6. Maybe in extension to that: I'm wondering if the cited decision above (G9/91) might not also provide grounds for those questions to be answered true. In Paragraph 16 of said decision it is stated:

      "The Enlarged Board does not consider that there is sufficient justification for changing this practice insofar as it concerns the proceedings before the Opposition Division. It is obviously aimed at avoiding the maintenance of European patents which are invalid. Thus, an Opposition Division may, in application of Article 114(1) EPC, of its own motion raise a ground for opposition not covered by the statement pursuant to Rule 55(c) EPC or consider such a ground raised by the opponent (or referred to by a third party under Article 115 EPC) after the expiry of the time limit laid down in Article 99(1) EPC. [... This] should only take place before the Opposition Division in cases where, prima facie, there are clear reasons to believe that such grounds are relevant and would in whole or in part prejudice the maintenance of the European patent. "

      This explicitly refers to new grounds due to third party intervention which were not anonymously sent in. So while I do agree that new grounds cannot be raised by the opposition division on its own, when this is prompted by third party submissions and deemed prima facie relevant (there is no information to the contrary), shouldn't it also be possible to answer questions as true or am I missing something here?

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    7. Jens, I agree with you that when you actually read the decision G 9/91, the answer to these questions is not clear. Also, in G 9/91, the TPO was filed after decision of the OD and only during appeal proceedings while in the question it specially mentions that the TPO was submitted in pending opposition proceedings, i.e, first instance proceedings.

      So I’m very curious to see the EPO report.

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    8. Regarding question 2.1 to 2.4, can the OD revoke a patent based on one single independent claim being unallowable when the patent discloses two independent claims (and there is no objections raised against the second independent claim)? Why would questions 2.3 and 2.4 be true if claim 2 is not objected and is allowable?

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    9. Further to what I said above, the guideline states in G. D.IV.7.2.1 "If the patent can be maintained in the amended form, the opposition division tries to obtain the patent proprietor's approval of the text in which the patent can be maintained and gives the opponent an opportunity to comment on it. An interlocutory decision can then be delivered.

      If these requirements have still not been met and no oral proceedings are being held, a communication under Art. 101(1) must be issued. This also applies when it has been established in principle that the patent can be maintained in a particular form but a complete text expressly approved by the patent proprietor is not yet available"

      This clearly suggests that the OD can consider that the patent should be maintained in an amended form and get the proprietor to approve the amendments. In the case of questions 2.3 and 2.4, given that claim 2 is allowable, it is likely that the OD would not revoke the patent but recommend its maintenance in an amended form.

      I look forwards to your comments on this.

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    10. IMHO even if it suggests that the OD can consider maintaining an amended patent, it cannot do so if not requested or agreed to by the proprietor. The emphasis is on "CAN". The OD can also consider revoking the patent since claim 1 is not patentable and the proprietor has not requested to remove claim 1 from the patent. So wouldn't the answer be TRUE, since the OD clearly CAN revoke the patent?

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    11. I wouldn't have thought so. IMHO the questions reads "Can the OD revoke a partly valid patent"?

      The question does not suggest that the patent is invalid in its entirety. Furthermore, the patent does not suggest any formality inconsistency to remedy. Therefore, purely on the grounds of patentability, part of the patent is valid and therefore, cannot be revoked.

      Delete
    12. If I understood correctly, a lot of you are reasoning that a patent cannot be revoked if it has two independent claims and one meets the requirements of the EPC and the other does not. This is incorrect.

      A patent can be revoked even if one single claim (dependent or independent) does not meet the requirements of the EPC provided there are no other claim requests on file that remedy the objection. It does NOT matter if there are two independent claims and one is the problem and another one is okay. If there is no claim set AS A WHOLE on file that meets the requirements of the EPC, the patent can be revoked.

      Delete
    13. "A patent can be revoked even if one single claim (dependent or independent) does not meet the requirements of the EPC provided there are no other claim requests on file that remedy the objection."

      I have to disagree with this one. Is there any legal basis for that statement?

      Based on D.IV.7.2.1 cited above, the OD will issue an interlocutory decision if they believe that the patent can be maintained in an amended form, whether or not there is claim requests on file, giving an opportunity to the proprietor to approve or reject the proposed amendments.

      IMHO, if those statements are true, the first two statements of the question must be true too.

      The guidelines states that:
      "Once proceedings for examining the opposition(s) have been initiated because an admissible opposition has been filed (although it may have been withdrawn in the interim), there may be reason to believe that other grounds exist which, prima facie, in whole or in part prejudice the maintenance of the European patent. If that is the case, these grounds will generally be examined by the opposition division of its own motion pursuant to Rule 81(1). Such other grounds may result from facts emerging from the search report or the examination procedure, the examiner's personal knowledge or observations presented by third parties pursuant to Art. 115 (see also E‑VI, 3). Such grounds may also have been put forward in another opposition which has been rejected as inadmissible, or in another opposition deemed not to have been filed. They may also be any grounds submitted belatedly (see E‑VI, 1.1 and E‑VI, 2). Under Art. 114(1), such prejudicial grounds put forward in an opposition which has been withdrawn will also generally be examined by the opposition division of its own motion. In carrying out such examination the opposition division will, however, take the interests of procedural expediency into account (see E‑VI, 1.2). If the decision is to be based on grounds to be taken into account pursuant to Art. 114(1) or Rule 81(1), the parties must be given the opportunity to comment (see E‑X, 1)".

      I do believe that as the maintenance of the patent is only partly prejudiced in all the statements, the patent cannot be revoked without giving the proprietor a further opportunity to amend it.

      However, if you do believe that a partly valid patent may be revoked, this should also apply to the first two statements, as the OD could do so on their own motion.

      I am curious to hear people's opinions on this.

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    14. @nonymous 21 March 2022 at 00:12

      Te he OD decides on requests from the proprietor. If the proprietor does not file a request to maintain the patent in amended form, so only keep to his request to reject the opposition. while one of the claims does not comply with the EPO, the patent will be revoked.

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    15. This comment has been removed by the author.

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    16. Hi Anonymous, ditto what Roel stated.

      Further, the guidelines can be a bit misleading if you do not have practice of real opposition proceedings.

      In real life, the Proprietor has many claim requests with amendments, if it happens that during the oral proceedings the OD after long discussions on each claim request thinks that at least one claim (dependent or independent) does not meet the requirements of the EPC, they simply ask a question "Mr/Mrs Proprietor, how do you wish to proceed". The Proprietor then either submits another amendment with a new claim request or simply says, we have no further comments. This leads to the Patent being revoked.

      Thus, yes, the OD cannot revoke a Patent unless the right to be heard and all rightful opportunities to amend have been given to the Proprietor as you quoted from the Guidelines. But when there is no amended claim request it can be revoked based on any one claim with any objection.

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    17. In my opinion answer 2.4 should be considered F as the Guidlines also state that "in the unusual case where an opposition is limited to only a certain part of the patent, the opposition division has to limit its examination to the part opposed." (see Part D-V. 2.1). If I consider answer 2.4 in view of this part of the guidlines than it would not be possible to revoke the complete patent, but rather only the part which relates to claim 1 as the question clearly states that the two independent claims relate to two different parts of the application. Thus, in my understanding, the applicant did not have to file an amended set of claims as the whole part relating to claim 2 was not part of the opposition proceedings in the first place. And since claim 2 also does not relate to claim 1 in any way, it cannot be revoked.

      Kind regards,
      Tina

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    18. Decision T 0809/21 published 13.07.2022 indicates that the OD can not (simply) revoke the patent if claim 1 is invalid. The model answer may be obsolete.

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  5. For question 1.4 (about the renewal fees), I also put F (which I understood to be clear from the wording of R. 14 (4)).
    Concerning question 3.3 (new ground of opposition), I wonder whether this question might be neutralized? For the special case of intervention (which is not excluded by the question), the answer is T, but for all other cases it is F). The question acutally reminded me of question 8.4 of last year's pre-exam.
    Kind regards, Anna

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    Replies
    1. I donot expect so, as the question is silent about intervention.

      See our blog post "On the interpretation of Pre-Exam Questions and on Pre-Exam appeals" of 9 Feb 2022

      http://pre-exam.blogspot.com/2022/02/on-interpretation-of-pre-exam-questions.html

      "D 2/21, reason 5: “However, if a statement is logical and makes sense, so that, using common sense, it is clear what answer was expected, candidates cannot rely on exceptions to the rule or explore alternative interpretations with a view to showing that a different answer might also be conceivable in specific instances (see e.g. D 5/16, point 33 of the Reasons). It follows that in the case of a pre-examination, the review requested by the appellant does not concern the question of whether the evaluation of the assessment of the respective statement stricto sensu, i.e. the appellant's assessment of the statement concerned as "True" or "False", is correct. It is rather a question of the correct interpretation or the general understanding of the statement concerned, including the facts underlying the pre-examination question and the conclusion to be drawn therefrom as to whether the statement concerned is clearly to be assessed as "True" or "False". […]”"

      together with Rule 22(3) IPREE:

      "Candidates shall accept the facts given in the examination paper and limit themselves to those facts."

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    2. Hi, do you think it matters in view of the last sentence above that the circumstances of the question were not limited to any specific facts? The question just read 'A board of appeal can...' so surely any circumstance in which the board of appeal can consider fresh grounds is enough to render the answer not unambiguously false?

      I didn't find it at all clear which answer was expected, especially since, as the other commenter noted, the exam has previously drawn attention to the special case of intervening parties raising new grounds.

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    3. My citatation of G 2/21 is because of the wording:

      "if a statement is logical and makes sense, so that, using common sense, it is clear what answer was expected"

      "candidates cannot rely on exceptions to the rule or explore alternative interpretations with a view to ..."

      "f the correct interpretation or the general understanding of the statement concerned"

      and the fact that the Q does not refer to interruption, and there are also no facts (like proceedings for infringement being instituted) that hint to that.

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    4. By the way, even though an intervener may raise new grounds in his/her notice of intervention, the Board will -in principle- not base its patantability decision on it: they will in principle decide to remit it to the Opposition Division. See G 1/94, reason 13:

      13. As explained by the Enlarged Board of Appeal in its opinion in case G 10/91 (OJ EPO 1993, 420), the purpose of the appeal procedure inter partes is mainly to give the losing party the possibility of challenging the decision of the Opposition Division on its merits, and it is not in conformity with this purpose to consider grounds for opposition on which such decision has not been based. The raising of new grounds for opposition by an assumed infringer, intervening in appeal proceedings, certainly does not fit with this basic concept of the appeal procedure. However, the purpose of intervention is to allow the assumed infringer to defend himself against the patentee's action. Therefore, to prevent him from making use of all available means of attacking the patent, which he is accused of infringing, including the raising of new grounds for opposition under Article 100 EPC not relied upon by the proper opponent, would run contrary to this purpose of intervention. Furthermore, this would involve the risk of conflicting decisions on the validity of European patents in the EPO and national courts, such decisions being based on different facts and grounds. Therefore, the Enlarged Board takes the view that intervention under Article 105 EPC in pending appeal proceedings may be based on any ground for opposition under Article 100 EPC. However, in application of what has been stated by the Enlarged Board in case G 10/91 for the exceptional situation of the introduction of new grounds in ordinary appeal proceedings, 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.

      So the answer would not really flip in case of an intervention on a new ground.

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    5. Dear Roel, the reasoning based on G 1/94 makes sense to me. However, the question does not refer to a "patentability" decision, but only to a "decision". So, in case new grounds are filed in a notice of intervention, the BoA decides to remit the case back to the Opposition Division - i.e. also the remittal is a "decision", right?

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  6. 9.3 - but Art 11(2)(a) states that the applicant will be invited to file the required correction. The application might be re-dated or the claims might be incorporated by reference. Or is this reading into the question facts that aren't stated?

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    1. You would have a point if the question said "initially". As it does not, I think you are considering an exception that was clearly not expected - see my citation of D 2/21, reason 5 above.

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  7. I found the phrasing of question 2 (opposition) to be a bit confusing. Prior to the statements, it said to "assume that the right to be heard of all parties involved has been respected".

    To me, it therefore seemed that the opposition division did in fact discuss each of the objections mentioned in every statement, *including* those relating to claim 2, even though the extent of opposition does not include claim 2. Of course, that would be very strange if they cannot revoke EP-1 based on any deficiencies in claim 2.

    The fact that the right to be heard is respected then also implied to me that the proprietor and opponent got to have their say regarding those 'objections' to claim 2.

    Should I instead have assumed that the right to be heard is respected regardless of what and how much would have been said about claim 2, because the extent of opposition does not cover it and they cannot revoke EP-1 based thereon anyway?

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    Replies
    1. As far as I understand it, I agree with your last statement. I believe the gist of G9/91 is that an opposition is not a request for re-examination, but rather a dispute between parties. If the opponent does not attack claim 2, then claim 2 is not part of the opposition proceedings and hence any opinion of the OD regarding claim 2 is not relevant. As TPO do not lead to the third party becoming party to the opposition proceedings, such TPO are also irrelevant for the outcome of the opposition proceedings.

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  8. Regarding question 8.4: "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."

    The german version of Article 14(3)a) PCT is as follows:
    "Stellt das Anmeldeamt fest, daß die gemäß Artikel 3 Absatz 4 Ziffer iv vorgeschriebenen Gebühren nicht oder die gemäß Artikel 4 Absatz 2 vorgeschriebene Gebühr für keinen Bestimmungsstaat innerhalb der vorgeschriebenen Fristen eingezahlt worden sind, so gilt die internationale Anmeldung als zurückgenommen und wird vom Anmeldeamt für zurückgenommen erklärt."

    The latter part sais, that when the respective fees are not paid then the international application is deemed withdrawn whereas the Receiving Office declares it (the international application) to be withdrawn.

    This is -in my opinion- different from the english version of the PCT, which prompted me to answer the question (in german) differently than suggested here - as the wording of the question is that the USPTO (receiving office) declares that the international application is deemed withdrawn.

    I am not sure whether you can follow my train of thought, but I see a (linguistic) difference in "declares to be deemed withdrawn" and "declares to be withdrawn" which probably led me to the wrong answer.

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    1. Can you clarify your point? Do you consider the PCT Rules to be wrong as the EN and DE version are not (literally) exactly the same?

      This is the English version of Art.`4(3) PCT:
      "(3)(a) If the receiving Office finds that, within the prescribed time limits, the fees prescribed under Article 3(4)(iv) have not been paid, or no fee prescribed under Article 4(2) has been paid in respect of any of the designated States, the international application shall be considered withdrawn and the receiving Office shall so declare
      (b) If the receiving Office finds that the fee prescribed under Article 4(2) has been paid in respect of one or more (but less than all) designated States within the prescribed time limit, the designation of those States in respect of which it has not been paid within the prescribed time limit shall be considered withdrawn and the receiving Office shall so declare."

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    2. In my understanding, the DE and EN versions of the statements 8.3 and 8.4 are the same:

      8.3:
      Die Nichtentrichtung der internationale Anmeldegebühr zusammen mit der Gebühr für verspätete Zahlung innerhalb der vorgeschriebenen Fristen hat zur Folge, dass das USPTO das EPA als Bestimmungsamt davon unterrichtet, dass PCT-J als zurückgenommen gilt.

      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.

      8.4:
      Die Nichtentrichtung der internationale Anmeldegebühr zusammen mit der Gebühr für verspätete Zahlung innerhalb der vorgeschriebenen Fristen hat zur Folge, dass das USPTO erklärt, dass PCT-J als zurückgenommen gilt.

      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.

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    3. Thank you for your response. Please excuse my late reply.

      In the exam I got hung up on the different wording of question 8.4 compared to the wording in the German PCT. The translation of Article 14(3)a) PCT is as follows:
      "If the receiving Office finds that the fees prescribed under Article 3(4)(iv) have not been paid or that the fee prescribed under Article 4(2) has not been paid within the prescribed time limits in respect of any designated State, the international application shall be deemed to be withdrawn and shall be declared withdrawn by the receiving Office."

      Hereby, there is a difference to the English version of the respective PCT Article, as the wording of the last part in the english version is "[...] the international application shall be considered withdrawn and the receiving Office shall so declare". Compared to the German version: "[...] the international application shall be deemed to be withdrawn and shall be declared withdrawn by the receiving Office" (German). Thus, in the english version it says that it shall be declared that the application is deemed withdrawn and in the German version it says that it shall be declared withdrawn, which is in my view a linguistic difference which lead me offtrack.

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    4. It is interesting that the English legal texts use the wording "the application shall be deemed/considered to be withdrawn" (see also, e.g., Art. 14(2) EPC) where the German texts use "so gilt die Anmeldung als zurückgenommen" which (for me as a non-native speaker of either languages) may appear to have a slightly different meaning. I am not a native speaker, but in view of this consistent use throughout the PCT as well as the EPC, that would tell me that they have the same meaning: deemed withdrawal by the act of law, and not an active withdrawal by the applicant.

      I noted that GL/PCT-EPO General part indicates “PCT/RO/117 Notification that international application considered to be withdrawn” while the Allgemeiner Teil, 6 indicates "CT/RO/117 Mitteilung, dass die internationale Anmeldung als zurückgenommen gilt". Those names are also used on the PCT website https://www.wipo.int/pct/en/forms/ro/index.htm and https://www.wipo.int/pct/de/forms/ro/index.htm, and in the forms itself.
      See https://www.wipo.int/export/sites/www/pct/en/forms/ro/editable/ed_ro117.pdf and https://www.wipo.int/export/sites/www/pct/de/forms/ro/editable/ed_ro117.pdf

      Alse see GL/PCT-EPO A-II, 4.5 “Failure to pay the missing amount with the late payment fee within the one month time limit set in the invitation (Form PCT/RO/133) will result in the international application being considered withdrawn. The RO/EP will so declare (Form PCT/RO/117).” Vs “Versäumt es der Anmelder, den fehlenden Betrag und die Gebühr für verspätete Zahlung innerhalb der in der Aufforderung (Formblatt PCT/RO/133) gesetzten Einmonatsfrist zu zahlen, so gilt die internationale Anmeldung als zurückgenommen, und das RO/EP erklärt dies mit dem Formblatt PCT/RO/117.”
      Also see Euro-PCT Guide 2.25.026: “If the applicant fails to pay the prescribed fees together with the late payment fee within one month of the date of the invitation, the international application will be considered withdrawn and the receiving Office will so declare.” Vs “Entrichtet der Anmelder nicht innerhalb eines Monats nach dem Datum der Aufforderung die vorgeschriebenen Gebühren sowie die Gebühr für verspätete Zahlung, so gilt die internationale Anmeldung als zurückgenommen und wird vom Anmeldeamt für zurückgenommen erklärt.”

      So in view of those legal texts, I do not share your opinion that the English and German version would not mean the same - on the contrary, they use the standard wording from the GL/PCT-EPO as well as the applicable form.

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  9. Dear,

    Many thanks for providing your answers. I also had troubles with Question 2 - all four statements and especially 3 and 4 in your order. I was expecting to have something saying that it was "prima facie" relevant, to satisfy the case where the OD may examine fresh ground (GL and G10/91). I was so unsure that I put one false and one true to have at least one correct (and seems to me that prima facie for Ground Art100 (b)is more difficult to have than for novelty). Very difficult question! But at least I will remember the number of that G decision.

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  10. The Results letters are now available in MyEQE.
    (Examiner's Report not yet on the Compendium pages)

    Congrats to all that passed!

    Please feel invited to post any comments on your results (was it more or less as expected, what do you conclude from it, ...) to our new blog post:

    http://pre-exam.blogspot.com/2022/04/pre-exam-2022-congratulations-to-all.html

    ReplyDelete
  11. Regarding Q6.1 (EP1-DIV may be validly filed with the EPO at the filing offices in Munich, The Hague and Vienna) the question, as formulated, or the use of the verb "may" according to my interpretation also made possible the possible deposit in Vienna:the sub-office in Vienna or a competent national authority "may" forward a European divisional application filed with that office to one of the EPO filing offices) filing in Vienna would not render the filing of the patent application null and void. The result of filing the divisional application in the Vienna office would result in the documentation sent to one of the competent offices (Munich, The Hague, or Berlin) and the divisional application would be officially and regularly filed. This can justify the use of verb “may” instead of “must”, as for example used in the same question Q6.4 (EP1-DIV must be filed within 12 months from the filing date of EP1.)

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    1. Your answer seems to rely on GL A-1.3.1 Where and how to file a divisional application?, which says:
      "A divisional application must be filed by delivery by hand, by postal services or by fax with the EPO in Munich, The Hague or Berlin. It may also be filed using the EPO Online Filing software, the EPO case management system or the EPO Web-Form Filing service (see A‑II, 1.2.2).
      The filing of a European divisional application with a national authority has no effect in law; the authority may however, as a service, forward the European divisional application to the EPO. If a competent national authority chooses to forward the application, it is not deemed received until the documents have reached the EPO."
      and from which you applied the second paragraph to the Vienna office.
      But is not the second paragraph there in view of Art.75(1)(b) which mentions national offices, whereas Art.75 (nor Rule 35(2) and -here applicable- Rule 36(2)) does not mention Vienna at all?

      According to your argumentation, the statement: “EP1-DIV may be validly filed with a patent law firm in an EPC state” would also be TRUE, as such a firm will probably file it with the EPO in your behalf so as so safeguard your interest.

      On the other hand, the use of "informal" terms, deviating from the terms used in the law, and the lack of a legal consequence in the question may be tricky - see g.g., D 3/19 cited om our blog post https://pre-exam.blogspot.com/2020/07/d-319-term-must-in-statement-41-of-pre.html

      Note that the statement 6.1 ("EP1-DIV may be validly filed with the EPO at the FILING OFFICES in Munich, The Hague and VIENNA") is already false because Vienna is not a FILING office.

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    2. My answer refers to several texts found (Academic material and Official Journal EPO).
      In details, Mrs. Alison Bimelow in the Special edition No. 3, OJ EPO 2007, A.1 says “Patent applications filed with the Vienna sub-office are forwarded to one of the filing offices and will only be accorded a filing date on receipt by the latter” (https://www.epo.org/law-practice/legal-texts/official-journal/2016/etc/se4/p4.html).

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    3. But... Art.1(2) of the decision of the President explicitly says "The EPO's sub-office in Vienna is NOT A FILING OFFICE for the purposes of Article 75(1)(a) EPC and Rule 35(1) EPC.". (How) dd you consider that?

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    4. NB: note that the the decision of the President dated 12 July 2007 concerning the designation of the EPO filing offices (Special edition No. 3, OJ EPO 2007, A.1) that you cited was superseded by OJ 2017, A11 per 1 April 2017.

      The latter however has the same wording for Art.1(1) & (2):

      Article 1 - Filing offices of the European Patent Office
      (1) For the purposes of Article 75(1)(a) EPC and Rule 35(1) EPC, the European Patent Office (EPO) has filing offices at its headquarters (Isar) and PschorrHöfe buildings in Munich, its branch at The Hague and its Berlin sub-office.
      (2) The EPO's sub-office in Vienna is not a filing office for the purposes of Article 75(1)(a) EPC and Rule 35(1) EPC. Patent applications filed with the Vienna sub-office are forwarded to one of the filing offices and will only be accorded a filing date on receipt by the latter.

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    5. It is interesting that the Decision of the President does not refer to Rule 36(2).

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    6. The examination question does not mention to interpret the request according to the purpose of Articles 75 (1) (a) and Rule 35 (1) of the CPC: the use of the verb "May" (or "Koennen" in German and not "Muessen") opened the possibility to interpret in a real case what would have happened: in practice what would have happened with a filing made in Vienna?
      This is probably the purpose of the need for a decision by the President of the EPO, to clarify in practice what happens today with a deposit in Vienna.

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    7. That is true, it is informal language and legal consequences are not mentioned either in the statement. See also my comment above and my reference to D 3/19 cited om our blog post https://pre-exam.blogspot.com/2020/07/d-319-term-must-in-statement-41-of-pre.html.

      However, whether the phrasing of the question is OK or not does not on the question being 100% unambiguous and excluding special situations: see our blog post "On the interpretation of Pre-Exam Questions and on Pre-Exam appeals (Blog Post)" in the right column to this blog: "D 2/21, reason 5: “However, if a statement is logical and makes sense, so that, using common sense, it is clear what answer was expected, candidates cannot rely on exceptions to the rule or explore alternative interpretations with a view to showing that a different answer might also be conceivable in specific instances.""

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  12. For Question 8, it is still unclear to me what the legal basis is for the stated fact that "The EPO was immediately informed of its designation" [i.e. shortly after the filing of the PCT application] I'm not even sure if that is actually true in real life.

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    Replies
    1. Is it relevant? How would that affect your answer?

      Note Rule 22(3) IPREE: "Candidates shall accept the facts given in the examination paper and limit themselves to those facts."

      Delete
    2. AG-IP 9.002 and PCT Rule 47.1(a-bis)

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    3. Dear Roel, thank you for your reply. Having passed the EQE in 2015, I agree that candidates should not doubt the stated facts during the exam. However, in my view the EQE should (aim to) only specify facts patterns that are consistent with the EPO's actual practice. An incorrect statement of fact can still distract candidates. At any rate, AG-IP 9.002 mentions notifications to the applicant, rO and ISA, but *not* to designated offices. PCT Rule 47.1(a-bis) refers to Rule 93bis which specifies "such communication shall be effected only upon request by the Office concerned and at the time specified by that Office". I don't know if the EPO as designated office has made a relevant request under PCT Rule 93bis and can't find any information about this, nor, for that matter, for other designated offices.

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    4. PCT Rule 29: If the receiving Office declares, under Article 14(1)(b) and Rule 26.5 (failure to correct certain defects), or under Article 14(3)(a) (failure to pay the prescribed fees under Rule 27.1(a)), or under Article 14(4) (later finding of non-compliance with the requirements listed in items (i) to (iii) of Article 11(1)), or under Rule 12.3(d) or 12.4(d) (failure to furnish a required translation or, where applicable, to pay a late furnishing fee), or under Rule 92.4(g)(i) (failure to furnish the original of a document), that the international application is considered withdrawn:
      (i) ...
      (ii) the receiving Office shall promptly notify both the applicant and the International Bureau of the said declaration, and the International Bureau shall in turn notify each designated Office which has already been notified of its designation;
      (iii)-(v) ...

      +

      It is explicitly given, as a fact, in the case statement of Question 8 the EPO was already notified - so no need to consider Rule 93bis :

      "On filing, Jan indicated the EPO as one of
      the designated Offices. The EPO was immediately informed of its designation."

      NB: the heading of AG-IP 9.002 is misleading as it says "... When are designated Offices notified?", whereas the latter is not covered by 9.002

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    5. Dear Roel, the kind people at WIPO now confirmed that "The International Bureau does not routinely provide information to the designated Offices prior to publication of the international application concerning their designation." I just want to share this in case any candidate or tutor is puzzled by this aspect of Question 8.

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    6. Thx Peter.

      Nonetheless, Rule 22(3) IPREE imposes that "Candidates shall accept the facts given in the examination paper and limit themselves to those facts.".

      It happens occasionally that the facts are deviating a bit from real life. E.g., DII 2012 contained "As we are interested in having a positive IPER, we have contacted the examiner at the EPO, who has agreed to give us a personal interview, tomorrow, at the EPO premises", while the EPO at that time only allowed such interview by phone. It had no effect on the answering nor on the answer, as long as one relied on the strict provision of Rule 22(3) IPREE and was not distracted by the discrepancy.

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