Pre-Exam 2023 (part 1 & 2): our answers to the legal questions

This was the third online -EQE with the Pre-Exam being held in four parts, and with the questions almost fully being taken from the screen (only the description of the application and the prior-art documents in the claims analysis parts were printable; also no calendars were provided).

Our answers to the legal part are given below. We have numbered the questions and statements for easy reference in the discussion.

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), as well as to some of the PCT Legal Texts, esp. PAT Articles and Rules and the PCT Applicant’s Guide in the new eGuide format (as on www.wipo.int/pct/en). Access was to the live versions, so to the versions in force on 17 March 2023 (so not the version of 31.10.2022 acc REE/IPEE).

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

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.

In view of the randomized order, we provide the questions and statement together with our answers. 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!!!

This year’s exam reused quite some questions from earlier Pre-Exams, with essentially just names of persons and dates adapted. Well-prepared candidates that practiced all old exams from the Compendium, including the 2019 Pre-Exam in rhe Wiseflow EQE Compendium, or the updated versions thereof from our P-book will presumably have appreciated this approach.  It also had a strange side-effect: it led to one statement of which candidates may not have understood why it was the way it was, as it hinted/related to a legal provision that was in force from 1/4/2010 until 31/3/2014 and hence the topics of a statement in Pre-Exam 2014…

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 17-03-2023 20:23"), 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 may also want to check the other blogs: first impressions and claims analysis (part 3 & part 4 - added 18/3)

Diane & Roel

 

Pre-Exam 2023

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

Question 1

You are a professional representative before the EPO. Today, 6 March 2023 you have received an email from your client, Alvar, a national of Finland. He wants you to file a European patent application EP-A in his name, claiming priority from FI-A, a Finnish patent application. FI-A was jointly filed in the name of Alvar and Aino on 4 March 2022. A copy of FI-A is attached to the email. No other document or information is sent with the email.

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

1.1. Alvar as a natural person is not entitled to a reduction of the filing fee.

F – Assuming the statement related to the filing fee for EP-A when that is filed in the name of only Alvar - R.6(3)-(7): he is entitled if he files it in Finnish and files a declaration                             

1.2. On the basis of the information given above, you can file today, 6 March 2023, a European patent application EP-A in Alvar's name at the EPO and it will be accorded 6 March 2023 as the date of filing.

T – R.40(1)                    

1.3. You can validly file EP-A in Finnish.

T – Art.14(2)

1.4. On the basis of the information given above, you can be sure that EP-A can validly claim priority from FI-A.

F – do not know if pri was transferred to Alvar only

NB: substantially the same Q as in another very recent pre-exam (2019,Q.1)       

NB: confusing that "Today" is not the day of the exam, as is the usual case at the EQE questions.                 

Question 2

Paula is resident in Romania and has no EPO mailbox for electronic notification. On 13 February 2023, Paula filed the European patent application EP-P as a first filing. The EPO noticed that the drawings mentioned in the description were missing. In a communication dated 22 February 2023, the EPO invited Paula to file the missing drawings.

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

2.1. If Paula ignores an invitation by the EPO to file missing parts of the description or missing drawings, EP-P will be deemed to be withdrawn.

F – references thereto deemed deleted – R.56(4)   -, application stays alive                           

2.2. Paula may validly file the missing drawings for EP-P on 6 June 2023, provided she pays the fee for further processing.

F – excluded                     

2.3. If applicants are not invited by the EPO to file missing parts of the description or missing drawings, they may validly file them within two months of the date of filing.

T – R.56(2)                         

2.4. If Paula files the missing drawings on 3 May 2023, EP-P will receive 3 May 2023 as its date of filing.

T – R.56(2), no pri so no R.56(3) possible

NB: substantially the same Q as in an earlier pre-exam (2018, Q.2)                           

Question 3

Saïd intends to file the following patent applications in French language:

(1) a European patent application EP-S

(2) an international patent application PCT-SE.

PCT-SE will be jointly filed in the name of Saïd and Eric. Eric lives in Paris. Saïd lives in Lebanon and is of Lebanese nationality. Lebanon is not a PCT member state.

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

3.1. If, two months after validly filing PCT-SE, Saïd moves to Paris, the EPO will, upon request, record the change of residence in relation to PCT-SE.

F – you can file the request for the recordal with the EPO if the EPO as used as rO (not given in the Q; could also be FR or IB), but IB does the recordal --- see also  Pre-Exam 2019 statement 5.4   

3.2. PCT-SE can be validly filed with the International Bureau as receiving Office.

T – Eric Paris, IB always possible if at least one from a PCT state                         

3.3. Saïd can validly file EP-S with the EPO.

T – Art.58, Art.133(2)                    

3.4. PCT-SE can be validly filed with the EPO as receiving Office.

T – Eric Paris

NB: substantially the same Q as in another very recent Pre-Exam (2019, Q.5)     

NB:Although French national security restrictions apply, the PCT application is still a valid application if a French resident does not use INPI as RO for first PCT filing - there is no penalties in PCT, but there may be penalties under French law. See https://pctlegal.wipo.int/eGuide/view-doc.xhtml?doc-code=IB&doc-lang=en#RO: "It is the responsibility of the applicant or the applicant’s agent to comply with any applicable national security provisions before filing an international application with the International Bureau as receiving Office.              

 

Question 4

In 2020, company A was interested in exploiting a new medical device it had developed, and, for this purpose, details of the device were disclosed in confidence to company B. Unknown to company A, company B filed a European patent application EP-B with an effective filing date of 6 June 2021. Made aware of the publication of EP-B, company A sought before a national court to be recognised as entitled to the grant of a European patent for the invention disclosed in EP-B. By a final decision of the national court dated 10 January 2023, it has been adjudged that company A is entitled to the grant of a European patent for the invention disclosed in EP-B. This final decision is recognised by all contracting states designated in the application EP-B.

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

4.1. If EP-B is still pending and has not yet been granted, a request that company B must withdraw EP-B, filed by company A at the EPO, will be allowed.

F – no such option in Art.61(1), no other legal basis either

NB: no stay requested; EPO not yet informed of outcome, so will still assume                     

4.2. If EP-B is still pending and has not yet been granted, company A may prosecute EP-B as its own application in place of company B.

T – after informing EPO Art. 61(1)(a); GL A-IV, 2.4                                     

4.3. If EP-B is still pending and has not yet been granted, company A may validly request that EP-B be refused.

T – after informing EPO Art. 61(1)(c); GL A-IV, 2.6                       

4.4. If EP-B has been deemed to be withdrawn and is thus no longer pending, company A may still file a new European patent application EP-A in respect of the same invention, wherein EP-A shall be deemed to have been filed on 6 June 2021.

T – after informing EPO Art. 61(1)(b), G 3/92; ; GL A-IV, 2.5             

 

Question 5

On 31 January 2022, Susanne, a German national living in Germany, filed a PCT application PCT-S in German, validly claiming priority from her European patent application EP-S, filed on 29 January 2021 in German. PCT-S contains claim 1 as originally disclosed in EP-S and claim 2 directed to an improved embodiment that was not disclosed in EP-S. PCT-S was published in German on 7 August 2022. Susanne sold PCT-S to Ian, a British national. The international search report issued by the EPO as International Searching Authority states that claim 1 is not novel over the prior art and the subject-matter of claim 2 is novel and involves an inventive step. Ian wants to enter the regional phase before the EPO for PCT-S. Today is 6 March 2023.

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

5.1. When entering the regional phase before the EPO, Ian can file an English translation of PCT-S so that the language of the proceedings of the regional phase of PCT-S will be English.

F – G 4/08                         

5.2. Withdrawing the priority claim of EP-S will affect the effective date of claim 2.

F – prio for for claim 2 not valid as subject-matter not in EP-S, so no effect of withdrawal of pri on its effective date (Claim 1 has valid pri (same subject-matter & 29/1/2021 after R.134(1)) and claim 2 has not (31/1/2022))                          

5.3. Today, 6 March 2023, Ian can withdraw the priority claim of PCT-S in the international phase so that the time limit for entering the regional phase before the EPO for PCT-S expires on 2 September 2024.

T – can withdraw until 29/1/2021 + 30m R.90bis.3 -> 29/7/2023 (Sat) -> 31/7/23;  then EP-entry time limit becomes  31/1/22 + 31m R.156(1) EPC -> 31/8/24 (Sat) -> 2/9/24

But one could also answer:

F – because we weren’t told that Ian has been recorded to IB as new applicant

NB: It has never been necessary that a calendar of the next year was needed!                     

5.4. The time limit for entering the regional phase before the EPO for PCT-S claiming priority from EP-S ends on 31 July 2023.

F – 29/1/2021 + 31 -> 29/8/2023 (Tue)  (incorrectly using 30m would lead to T)                 

 

Question 6

European patent application EP-P was filed as a first filing on 2 December 2019 and was published on 13 June 2021. On 28 November 2021, you received the first communication from the examining division under Article 94(3) EPC regarding EP-P. European patent application EP-D was filed with the EPO on 8 December 2022 as a divisional application of EP-P. Today, 6 March 2023, EP-P is still pending. Some of the claims of EP-D contain subject-matter that was not originally disclosed in EP-P. The renewal fees for EP-D have not yet been paid.

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

6.1. The renewal fees, already fallen due, may be validly paid for EP-D on 11 April 2023 without an additional fee.

T – 8/12/22 + 4m R.51(3) -> 8/4/23 (Sat) -> 11/4/23 (Tue, as 10/4 is Easter Monday)                        

6.2. In the present case EP-P will be regarded as prior art under Article 54(2) EPC against EP-D.

F – Art.76(1)                      

6.3. At present, EP-D is deemed to have 8 December 2022 as its date of filing.

F – Art. 76(1): 2 Dec 2019                           

6.4. An EP divisional application cannot be validly filed after 24 months from the issuance of the first communication under Article 94(3) EPC in respect of EP-P and therefore EP-D was not validly filed as a divisional application.

F – you can only go wrong here if you have a really old legal text (there was a rule to this effect between 1/4/2010 and 31/3/2014)

NB: substantially the same Q as in an earlier pre-exam (2014, Q.2) – at the time of that exam, the rule with a 24m time limit was in force.                          

 

Question 7

A company having its principal place of business in France files an international patent application at the French national patent office. The language of this international patent application is English. As a receiving Office, the French national patent office accepts international patent applications filed in French only. The International Searching Authority for this international patent application is the European Patent Office, which accepts the following languages for international search: English, French and German.

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

7.1. The search fee is collected by the International Searching Authority for its own benefit.

F – rO – PCT Rule 16.1(b)                            

7.2. The international patent application will be considered to have been received by the French national patent office on behalf of the International Bureau as receiving Office.

T – R.19.4(a)(ii) wrong language               

7.3. The international patent application will be transmitted to the International Bureau.

T – R.19.4(b)                     

7.4. A translation is required by the European Patent Office for the international search.

F – EPO as ISA accepts English – last sentence of  case statement of the question itself - see also EPO-WIPO Agreement or Euro-PCT Guide 3.1.015               

 

Question 8

A European patent application, EP-A, was filed in English on 2 September 2021 claiming priority from a Swedish national patent application, SE-A, which was filed on 2 September 2020. EP-A was published on 9 March 2022. EP-A is pending.

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

8.1. The European examination proceedings are in progress. Third-party observations written in English are filed today and explain why a scientific journal article published in Swedish on 10 August 2020 is novelty-destroying for the claimed subject-matter of EP-A. The third-party observations are filed anonymously at the European Patent Office, together with a copy of the Swedish publication.
In view of this, the third-party observations are validly filed.

T – GL E-VI, 3 and R.3(3) – evidence may be in any language                        

8.2. Third-party observations must cite prior art documents.

F – can be e.g. Art.123(2) or Art.84                         

8.3. The decision to grant a patent based on EP-A has already been sent to the applicant. Third-party observations are received by the EPO just before the publication of the mention of the grant. They cite a new document destroying the novelty of the allowed claims.
In view of this, the examining division will consider them and resume the examination proceedings.

F – only considered ad resumed R.71a(2) if filed before the decision to grant (EPO Form 2006A) has been handed over to the EPO postal service - GL E-VI, 3                        

8.4. A patent based on EP-A has been granted. The mention of the grant was published on 1 March 2023. Third-party observations are validly filed today.
In view of this, the person filing the third-party observations will be a party to the opposition proceedings if opposition proceedings start.

F – Art.115, also G 2/19                

Question 9

When filing a European patent application with 14 claims, the applicant also submits a request for examination by filing the written request and paying the examination fee. The European Patent Bulletin mentions the publication of the European search report on 20 January 2023. The European search opinion states that claim 1 lacks novelty. The applicant receives an invitation under Rule 70(2) and Rule 70a(2) EPC dated 13 February 2023 setting a time limit of six months running from the publication of the European search report.

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

9.1. The applicant can validly file a request for accelerated examination before timely filing of a valid reply to the invitation.

F – Ex Div must be responsible, only after reply                 

9.2. If the applicant omits in his timely reply to the European search opinion to indicate that he wishes to proceed further with the application, the application is deemed to be withdrawn.

F – response = indication                            

9.3. The application shall be deemed to be withdrawn if the applicant files a reply to the invitation on 14 August 2023.

T – 20/1/23 + 6m -> 20/7/23 (you would wrongly answer F if you do 6m from 13/2/2023 or 10d+6m from 13/2/2023)                           

9.4. If the applicant validly replies to the invitation and files three additional claims, he must pay the claims fees for two claims within one month of filing the claims.

F – R.45(1) or R.71(4) not now                  

 

Question 10

Applicant Andrew names Berta as sole inventor in his European patent application EP-A.

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

10.1. The EPO informs Berta in a communication about her designation as inventor in the European patent application EP-A.

F – not anymore – R.19 as amended per 1/4/2021; was done before that time                    

10.2. Berta can pay any fees to the EPO.

T – anyone can pay – GL2022/GL2023 A-X, 1                      

10.3. Berta can waive her right to be mentioned as inventor in the published European patent application EP-A

T – R.20(1)                         

10.4. If Carla was incorrectly designated as inventor in the European patent application EP-A, there is no way to request rectification of the incorrect designation.

F – R.21              

 

We look forward to your comments!

(c) DeltaPatents

Comments

  1. Thanks for giving your answers already on the day of the exam!

    ReplyDelete
  2. Thanks for your answers!

    Regarding Q3:
    Isn't there a provision in French national law, that French residents have to file their PCT applications (without priority) with the INPI?
    Thanks for your for
    comments!

    ReplyDelete
    Replies
    1. I have not checked the French law, but the PCT Applicants Guide (Annex B for France) says the following:
      Does national legislation restrict the filing of international applications with foreign Offices?
      Intellectual Property Code, Article L 614-18
      Yes
      Filing restrictions apply to:
      Applications by natural or legal persons having a residence or principal place of business in France
      Unless the priority of an earlier application filed in France is claimed

      Delete
    2. Yes, I also saw that during the exam. What is the legal consequence of a violation against the Intellectual Property Code, Article L 614-18?

      Is the application still validly filed? Although it cannot be filed with the EPO/IB under national law?

      Any French trainees here?

      Delete
  3. F***** epic you guys post your answers the day of the exam. That alone is worthy of spending more money on your site :).
    Thanks so much!

    ReplyDelete
  4. Thank you! My answers are exactly the same except for 9.2. I hope 48 points in the first part will carry me through the claim analysis…

    ReplyDelete
    Replies
    1. I have the same doubt for 9.2, the applicant fails to reply in due time to the invitation to indicate whether he wishes to proceed further with the application, the application shall be deemed to be withdrawn. I believe this complies with Rule 70(3) EPC.

      Delete
    2. GL C-II, 1.1 Confirmation of the intention to proceed further with the appliIcation:
      "In these cases, the applicant's response to the search opinion is interpreted as the confirmation required by Rule 70(2), _even where not explicitly expressed as such_."

      Delete
    3. I am also unsure about 9.2. It does not make sense to me that any reply leads to continuing the application. What if the applicant replies and mentions that he wishes to withdraw?

      Delete
    4. not any reply!
      And no one replies to say that he doesn’t want to continue …

      Delete
    5. The Examiner's Report provides (statement 9."2 in its version):

      "9.2 If the applicant omits in his timely reply to the European search opinion to indicate that he wishes to proceed further with the application, the application is deemed to be withdrawn.
      FALSE: The applicant's response to the search opinion is interpreted as the confirmation required by Rule 70(2) EPC, even where not explicitly expressed as such, Guidelines C-II 1.1."

      Delete
  5. regarding question 7.3, R.19.4 PCT says that the international application will be transmitted unless prescriptions concerning national security prevent the international application from being so transmitted. As a consequence it doesn't seem that one can assert that the application will be or won't be transmitted in this case since we have no information on the content of the application or on a French priority claimed.

    ReplyDelete
    Replies
    1. I was also thinking about this. However, I guess the point is that if it is not written in the question, we are not supposed to assume that the application concerns national security

      Delete
    2. In my point of view, national defense requirements cannot be seen as exceptions but as imperative requirements and they are indeed assessed in each case by the French Office for French nationals or resident.
      We can't rely on the fact that there is no information in the question regarding the type of invention to say that the answer "True" is "logical".
      One could also say that since the applicant is a French resident, the national defense will mandatory check the requirements and that the application won't be transmitted with 100% likelihood, rendering the affirmation "the application will be transmitted" false in a purely logical point of view.

      Delete
    3. It will be transmitted sooner or later to IB. If not, it wont be a international patent application any longer...

      Delete
    4. Also, the question does not state if a french patent application has been claimed or not..

      Delete
    5. The anonymous answer just above confirms my point of view: the international will or won't be transmitted. What happens after tranmission or absence of transmission is not part of the question

      Delete
    6. The Examiner's Report provides (to 7.1 in its version):

      "7.1 The international patent application will be transmitted to the
      International Bureau.
      TRUE: The international patent application is not in a language accepted by the French national patent office, therefore the French national patent office will transmit the international patent application to the International Bureau (Rule 19.4 (b) PCT)"

      Delete
  6. Thanks for the answers. I'll get either 46 or 48/50, depending on the correct answer of 5.3. My mistake was 7.1 about the ISA getting the search fee to their own benefit, which I indicated as True.

    ReplyDelete
    Replies
    1. This may have been due to the German wording which (now that I see the English wording) appears not unambigous. At least this was why I answered „True“ here. In particular: In German the question reads: „Die Internationale Recherchebehörde „erhebt“ die Recherchegebühr zu ihren eigenen Gunsten“. However, in this context „erhebt“ does not necessarily mean „to collect“ which would mean that the payment has to be made to the ISA. Instead „erheben“ also means „to charge money“, „to demand as payment“ or even „set the amount of the payment“. In German „als Zahlung verlangen, einfordern“ or „[behördlich] feststellen“ as it is apparent from the Duden dictionary. So therefore, a candidate may understand the question in a way that the International Searching Authority may itself chose / set the amount of money the applicant has to pay (to the receiving office) for the international search (rather than that the amount is chosen / set by the RO) AND the International Searching Authority benefits („zu ihren eigenen Gunsten“) from the payment (The ISA receives the money in the end via the RO).

      Delete
    2. The PCT does not agree with your interpretation:
      Rule 16.1(b) reads in German:
      “Die Recherchengebühr wird vom Anmeldeamt erhoben. Die genannte Gebühr ist in der von diesem Amt vorgeschriebenen Währung (“vorgeschriebene Währung”) zu zahlen.”

      Delete
    3. In other words: One could understand the German question in a way in which it asks: „Who is responsible of setting the amount of money to be paid and who does finally receive the money paid by the applicant?“

      Delete
    4. @ Roel: Well fair. If the legal text uses this wording in German it‘s hard to counter argue. At least I tried ;)

      Delete
    5. Also see GL/PCT-EPO A-III 4.3:
      “Die internationale Recherchengebühr wird vom RO/EP zugunsten des EPA als Internationaler Recherchenbehörde (ISA/EP) erhoben; ihr Betrag wird vom EPA festgesetzt.”

      https://www.epo.org/law-practice/legal-texts/html/guidelinespct/d/a_iii_4_3.htm

      Delete
    6. I also answer true because it is not specified that the applicant pays the fee to the ISA. In the end, the ISA collects the fee (from the IB) for its own benefit

      Delete
    7. I filed a form for this because it’s a tricky question too…
      At the end it will be paid to the ISA for its own profit but do we consider the fact that is goes first to RO?

      Delete
    8. Of course, that is what the statement is testing. Statement very clear.

      Delete
    9. PCT Rule 16.1(a): "Each International Searching Authority may require that the applicant pay a fee (“search fee”) for its own benefit" -- the ISA determines the amount.
      BUT:
      PCT Rule 16.1(b): "(b) The search fee shall be COLLECTED by the receiving Office." -- it is the rO that collects it, i.e. you need to pay it to to the rO (and then the rO passes it on to the ISA together with the search copy).

      Delete
    10. But the ISA still collects it eventually. True they do not collect it from the applicant but they eventually recieve (which is another word for collect) the fee albiet via the IB. Yes the PCT Rule says the fee is collected by the rO but the question does not specify where the ISA collects it from hence the ambiguitity. Personally I didn't know whether to choose T/F because of this.

      Delete
  7. They get it to their own benefit it’s just that they aren’t the ones paid by the applicant

    ReplyDelete
  8. Regarding question 9.3, assuming the applicant files a reply to the invitation on August 2023 (omitted act has been completed) together with a request for further processing, (20/1/23 + 6m -> 20/7/23, 14/8/23 is either between expiry of the unobserved time limit and notification of the communication concerning either the failure to observe a time limit or a loss of rights or within two months of the communication concerning either the failure to observe a time limit or a loss of rights), then the legal consequences of the failure to observe the time limit shall be deemed not to have ensued.
    Can the answer be False is one argued based on the above?

    ReplyDelete
    Replies
    1. Not really in my view, as it is deemed withdrawn as soon as time limit is missed. You propose to remedy this. Also the statement does not refer to further processing - it only said that you filed the response on 14 August 2023.

      Delete
  9. Regarding 1.2, why the priority date of 4 March 2022 cannot be accorded as the date of filing? (4/3/2022 + 12 months -> 4/3/2023 Saturday, the due date extends to 6/3/2023, Monday)

    ReplyDelete
    Replies
    1. The problem is in the ownership: we do not know whether the priority right was transferred from the two earlier joint applications Alvar and Aino to Alvar alone or not - may be in the CRISPR situation.

      Delete
  10. Regarding Q6.2 and Q6.3 the question mentions "EP-D contain subject-matter that was not originally disclosed in EP-P."
    Doesn't this imply that EP-D contains subject matter which extends beyond EP-P?

    ReplyDelete
    Replies
    1. Hi Roel.
      My doubt is that if EP-D contains subject matter which extends beyond EP-P (which in my opinion is implied in Q6), then EP-D would not get the priority date from EP-P, according to Art. 76(1), even if EP-P is still pending.
      Or am I missing something here?

      Delete
    2. I do not understand why you have doubts. Doesn’t it simply _mean_ that the divisional is extending beyond the parent as filed?

      Delete
    3. NB: There is no priority in this case: EP-P was filed as first filing.

      Delete
    4. I think I saw that that's the matter of the objection under Art. 76(1) EPC but EP-D would still get the effect of "deemed to be filed" on the filing date of EP-P. Check the caselaw.

      Delete
    5. Since EP-D's subject matter extends beyond EP-P, hence no priority on thic case, EP-D's filing date would be 8 December 2022.
      Wouldn't it?

      Delete
    6. No, a divisional can only the the filing date of the parent as its filing date, so 2 December 2019 - it can never get the date on which the divisional itself is filed as filing date: also none of its extending subject-matter can get that later date: it simply is not allowed to be there and needs to be removed.
      Art.76(1), explained in detailed in Guidelines.

      Delete
    7. GL C-IX, 1.4:
      “However, under Art. 76(1), the subject-matter may not extend beyond the content of the parent application as filed. If a divisional application as filed contains subject-matter additional to that contained in the parent application as filed, it can be amended later in order that its subject-matter no longer extends beyond the earlier content, even at a time when the earlier application is no longer pending (see G 1/05). If the applicant is unwilling to remedy the defect by removal of that additional subject-matter, the divisional application must be refused under Art. 97(2) due to non-compliance with Art. 76(1).

      It cannot be converted into an independent application taking its own filing date. Moreover, a further divisional application for this additional subject-matter should also be refused under Art. 97(2) due to non-compliance with Art. 76(1).”

      Delete
    8. Agreed, the content of the application is checked way after its filling.. it has the priority date of the first application first

      Delete
    9. First, thank you very much for all your very helpful explanations! I am getting into the question because this part is also confusing for me... Art76(1) provides that the divisional application may only be filed for elements which do not extend beyond the contents of the earlier application as filed and IF this requirement is satisfied (not the case here), the divisional application shall be deemed to have been filed on the filing date of the earlier application and shall enjoy the right of priority. I find this wording confusing because if this requirement is not met, the divisional application is not deemed to be filed on the filing date of the earlier application and therefore in this case with added contents. If the applicant is unwilling to remedy the defect by removal and even if the sanction is that it is rejected, it still has a filing date? Is it the same as the earlier application anyway?

      Delete
    10. In the guidelines it is mentioned that is actually has the filling date UNTIL further examination where it can be rejected .
      No matter what, it never has the new filling date.

      Delete
    11. I know the interpretation is far stretched, but in 9.3 the question states “a reply”. So actually, an earlier reply could have been filed in time and a second reply could have been filed on the referred date. In that case the answer would be false.

      Delete
    12. I don’t think they discussing 9.3, it’s about divisionnary

      Delete
    13. &Jorge: that is not quite what the Guidelines say. Also note the “in so far as” in Art.76(1) - the valid part has the date of the parent (and any valid pri) and the extending part has no effective date attributed to it - it is simply not allowed to be there

      Delete
    14. @CD: you may find the wording of Art.76(1) confusing, but the interpretation of that is well-established and unambigious - and well-documented in the Guidelines (See my comment just above directed to Jorge).

      Delete
  11. Our answers to the claims analysis parts are available in two separate blogs:

    http://pre-exam.blogspot.com/2023/03/pre-exam-2023-part-3-cleaning-utensils.html
    &
    http://pre-exam.blogspot.com/2023/03/pre-exam-2023-part-4-erasable-inks-our.html

    We look forward to your comments! Have a nice weekend!

    ReplyDelete
  12. Surely there is a strong argument for neutralizing Q5.3. Firstly, it is difficult to guarantee that the answer could be true because we weren’t told that Ian has been recorded to IB as new applicant so False seems to be a strong option. Secondly, calendars/knowledge of holidays in 2024 was required. I wasted a lot of time attempting to compute whether the the date in 2024 was a open/closed day at an EPO office. I know many others who had the same issue.

    Were we supposed to have 2024 calendars to hand? I understood that we would only need calendars for 2023 at the latest.

    ReplyDelete
    Replies
    1. I was also VERY surprised. When the Pre-Exam papers came with calendars, they never had calendars for the year after the exam - only that of the year of the exam as well as one or two years before; neither did paper D. Also, no 2024 EPO closure dates have been published yet (and probably not even decided, as the President's decisions always come in the 4th quarter).

      So it came very unexpected that you needed the 2024 calendar for a time limit, and it is -in my view- a very legitimate expectation that you did not need it.

      It would have been appropriate if the "Notice from the Examination Board for the European qualifying examination (EQE)" dd 21 Nov 2021 would have indicated for which years you need to bring calendars.

      Sidenotes:
      1. the Notice says that you can find need closure dates in the OJ, so closure dates for 2024 would not need to be considered - even the Saturday and Sun day closures are always formally part of that decision of the President (e.g., for 2022, OJ 2021, A85 says in item 2: "In 2022, as hitherto, the EPO's filing offices in Munich, The Hague and Berlin will be closed for the receipt of documents on every Saturday and Sunday. The other closing days in 2022 are listed below.")!

      2. As also others said earlier (in the context of the Pre-Exam and/or paper D), the closure dates of 2023 are in the OJ 2022, A107 which was only published on 30.11.2022, i.e., after 31.10.2022. The required use of that is difficult to reconcile with Rule 22(1) IPREE which specifies:
      "(1) Candidates are expected to be familiar with at least the following documents in the versions valid as at 31 October of the year prior to the pre-examination or the examination: [..]
      (n) the content of the Official Journal of the EPO".

      3. It is quite artificial that the exam puts you in a situation where you cannot easily test whether a day is a Saturday or Sunday - which in real life is trivial. It seems thus in all stakeholders' benefit to again provide calendars with the Pre-Exam and with Paper D that at least indicates the Saturdays and Sundays. It would also need to have the closure days in the year of the exam and later - at least as long as those closure dates have not yet been published on 31.10.2022 before the exam acc Rule 22(1)(n) IPREE.

      Delete
    2. The Examiner's Report indicates that the statement was neutralized in view of the need to use a calendar of 2024 to answer it:

      "5.3 Today, 6 March 2023, Ian can withdraw the priority claim of PCT-S in the international phase so that the time limit for entering the regional phase before the EPO for PCT-S expires on 2 September 2024.
      TRUE: The priority claim of PCT-S can be withdrawn in the international phase until 29 January 2021 + 30 months (Rule 90bis.3 PCT) -> 29 July 2023 (Saturday) -> 31 July 2023. The time limit for entry into EP-phase becomes 31 January 2022 + 31 months (Rule 159(1) EPC) -> 31 August 2024 (Saturday) -> 2 September 2024.
      This statement has been neutralised, because the calendar for 2024 was not made available to the candidates."

      (Note that no calendars were made available at all, in line with the notice on that... I assume that what is meant that candidates could not have expected to bring a 2024 calendar, but only those of 2021/2022/2023).

      Delete
  13. If you are interested whether an AI would have passed this Pre-Exam: we have asked ChatGPT to give its answers: see:
    http://pre-exam.blogspot.com/2023/03/chatgtp-4-finds-pre-exam-legal-part.html
    and
    http://pre-exam.blogspot.com/2023/03/chatgtp-4s-attempt-at-parts-3-4-of-pre.html

    Sander, Nico, Roel

    ReplyDelete
  14. Q.1: how do we know that Aino is also a natural person and that he or she is also from Finland?

    ReplyDelete
    Replies
    1. It is not relevant, as he is not an applicant of EP-A.

      Who is/are the applicants of the priority application, FI-A, is not relevant for a reduction of the filing fee of the subsequent European application -- it is also not relevant therefor whether priority is claimed or not.

      (It would have been "nice" if the information would have been there, so that you could go wrong bu using it wrongly... but as said, it is not needed for the correct answer)

      Delete
  15. Statement 8.1: the "The European examination proceedings are in progress." is part of the statement. But how can we conclude that that is True or False? Same for the rest. If only the last sentence would need to be assessed for True/False, then the previous sentences should not have been part of the statement.

    ReplyDelete
    Replies
    1. I suggest to read the blog post "On the interpretation of Pre-Exam Questions and on Pre-Exam appeals (Blog Post)" in the right column of this blog
      (https://pre-exam.blogspot.com/2022/02/on-interpretation-of-pre-exam-questions.html) and especially:

      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". […]”

      Delete
  16. I find these three questions unclear:

    3.1. If, two months after validly filing PCT-SE, Saïd moves to Paris, the EPO will, upon request, record the change of residence in relation to PCT-SE.


    3.1 does nor provide information who is rO, hence it is not clear if EPO is rO. If the request is sent to rO, according to Rule 92bis.1.(a) "The International Bureau shall, on the request of the applicant or the receiving Office, record changes" Hence, efficiently rO as EPo will request IB to record the change, Applicant's guide "11.018A. Where should requests for change be sent?
    While Rule 92bis provides for the possibility, at the choice of the applicant, to send requests for change to the receiving Office or the International Bureau"

    7.1. The search fee is collected by the International Searching Authority for its own benefit.
    is unclear due to the word "collected", the fee is paid to rO, but Rule 16.1 says it is accrued to the benefit of ISA. Is accrued equated with collected?
    Rule 16.1
    (ii) The “search fee” is fixed by, and accrues to the benefit of, the International Searching Authority for the carrying out of the international search and the establishment of the international search report and the written opinion of the International Searching Authority.

    10.4 is unclear as to who is Carla, because it is not mentions in the question

    ReplyDelete
    Replies
    1. 7.1: No unclarity - the PCT itself answers it:
      Rule 16.1(b): "The search fee shall be collected by the receiving Office. The said fee shall be payable in the currency prescribed by that Office (“prescribed currency”)."

      Delete
    2. 10.4: Indeed, that was also the intention. Because Clara is not know, she is the wrongly designated inventor. See also the earlier Pre-Exam that we refer to in the post.

      Delete
    3. 3.1: we also mentioned that in our post: " if the EPO is used as rO (not given in the Q; could also be FR or IB)".

      But whoever is the rO, the IB does the recordal, so the answer is anyhow F irrespective as to who the (competent) rO was.

      See also Pre-Exam 2019 statement 5.4, which has the same issue with the recordal statement (unfortunately, that was not "repaired" in this re-used version) - and where the Examiner's Report said "Only the IB can record the residence change upon the applicant’s request, Rule 92bis.1.(a) (i)PCT." (see also our P-book).

      Delete
    4. 3,1 (continued): you can send your request for recordal to the rO, but the actual recording is always done by the IB and not by the rO.

      Delete
    5. Thank you, Roel!

      Delete
  17. The Examiner's Report is out!

    In the legal part, all answers are the same as ours (except that the statements in the Examiner's Report are in a different order than in our version - the questions were however in the same order).

    Also, (only) one statement has been neutralized: 5.3 (same number in Examiner;s Report as ion our version).
    The Examiner's Report indicates: "This statement has been neutralised, because the calendar for 2024 was not made available to the candidates".
    (Note that no calendars were made available at all... I assume that what is meant that candidates could not have expected to bring a 2024 calendar, but only those of 2021/2022/2023).

    ReplyDelete
  18. I have just been informed by several candidates that the results are out!

    Congratulations to all that passed! 🥂🍾💐

    ReplyDelete
  19. Hello Roel,
    I am very interested in appealing the solutions of the Examiner related to the questions Delta Patents have identified as neutralizable. These would account for at leat 10 points! I would like to communicate with you privately.

    Please post here your email address so that others would also connect privately with you.

    I hope other people would join the appeal before the expiry of the one-month appeal period, to divide the costs, because i wont be able to cover them on my own.

    Thank You and kind regards,
    Bernard

    ReplyDelete
  20. Today, candidates received the following email from the EQE secretariat:

    “Subject: EQE 2023 Pre-examination - Communication from the Examination Board

    Dear candidate,

    We would like to inform you that after the release of the pre-examination results on 10 May 2023, we have encountered some discrepancies between the results communicated and what was to be expected in view of the Examiners’ Report. Upon conducting a thorough investigation, we have successfully identified the source of the issue, which is of a technical nature. Please be informed that the problem has been solved.

    As a consequence, the results have been recalculated and must be re-issued. Therefore, the decision of the Examination Board concerning your result of the pre-examination 2023 communicated to you on 10 May 2023 is hereby revoked. A new decision based on the correct result is now available in myEQE.

    Best regards / Mit freundlichen Grüßen / Sincères salutations

    The Examination Secretariat
    on behalf of the Examination Board”

    ReplyDelete
    Replies
    1. My score is unchanged, same marks and pass.

      Did some candidates now fail while they originally received a pass decision?

      Delete
    2. Please post any further comments to this email to:
      http://pre-exam.blogspot.com/2023/05/pre-exam-2023-results-and-examiners.html
      so that the commenta re not scattered over various posts.

      Delete

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