Friday, March 17, 2023 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