Tuesday, 26 February 2013

Pre-Exam 2013: answers to legal questions

The legal part of Pre-Exam 2013 was a bit more difficult than the very first Pre-Exam of 2012, but -in our view- candidates who were well-prepared should not have had any difficulty to score at least 35-40 marks on the legal part.
The questions covered a nice variety of EPC and PCT topics, with time limit questions being a bit over-represented. For each topic, questions addressed multiple aspects.

Our answers to the legal questions:

1: T, F, F, F;
2: T, T, F, F;
3: T, F, F, T;
4: F, T, T, F;
5: T, T, F, T;
6: F, T, F, F;
7: F, T, T, F;
8: F, F, F, T;
9: T, F, T, F;
10: F, F, T, F

Detailed remarks (click "

Remarks to specific questions:

2.1 is a bit tricky: candidates who checked the calender carefully wil have seen that the EPO in The Hague is closed on 30 April and the EPO in Munich and Berlin is closed on 1 May. However, this does NOT shift the due date (it is not an extension of a period under R.134(1)) - the fact that the EPO is closed does however allow the applicant to pay the renewal fee without additional fee until 2 May.

3: statement 3.2 kind of gave away the answer to statement 3.2, and 3.4 for 3.3.

3.2: the time limit for paying the additional fee expires on 22 April 2013 (11/2/13 + 10d + 2m --> 21/4/13 (Sunday) --> 22/4/13), thus the answer is F. However, you would also have concluded that the answer is F is you -wrongly- did not use the 10-day rule for notification - you would then have gotten your marks despite a completely wrong reasoning...

4.4: we assume the statement is to be read as "Company X can validly claim priority from EP-I only if it was the applicant of EP-I as the date of filing of EP-I". If you interpreted it as "date of filing of EP-II", you would have answered T.

6.3 is a bit a strange duck in between the other statements in question 6, as 6.3 does not relate to the specific case, but is a "theoretical" statement relating to direct EP applications. Some candidates may have overlooked this and may have been confused, as PCT-1 in the specific case did not claim priority.

If your answers were different, you may find it useful to know some legal basis:

1.1, 1.2, 1.4: effective date is filing date of earlier application only if the earlier application was in respect of the same subject-matter - Art.87(1).
1.3: but for X, US-1 was not the first application from thids applicant for X (which is EP-1), so priority not valid for X in 1.3

2.1: R.51(1): due on last day of the month
2.2: R.51(2)
2.3: R.135(2)
2.4: R.51(1): only 3m in advance

3.1: R.64(1) EPC
3.2: 11/2/13 + 10d + 2m --> 21/4/13 (Sunday)[R.134(1)] --> 22/4/13
3.3: PCT R.40.1
3.4: 11/2/13 + 1m --> 11/3/13

4.1: 29/2/12 + 12m [Art.87(1)] --> 28/2/13, Thu
4.2: 29/2/12 + 16m [R.52(2)] --> 29/6/13, Sat --> 1/7/13
4.3: Art.87(1)
4.4: Art.87(1) 'or successor in title'

5.1: R.36(2)
5.2: R.51(3)
5.3: G 1/09
5.4: R.36(2)

6.1, 6.2: AG-NP 6.002, AG National Chapter EP.05
6.3: E.g., GL (2012) H-VI 4.2.1
6.4: no such restriction in the legal provisions

7.1: R.76(2)(c), R.83, GL (2012) D-IV
7.2: 16/5/12 + 9m [Art.99(1)] --> 16/2/13, Sat --> 18/2/13
7.3: R.6(2)
7.4: Art.133(2)

8.1: GL (2012) H-IV 2.3.5
8.2: but also be in PCT-Q as filed
8.3: Art.85 EPC
8.4: Art.123(2): application as filed

9.1: Art.100, GL (2012) D-III, 5
9.2: Art.54(2) no exceptions for applicant/patentee
9.3: Art.100(a), Art.52/54, R.76(2)(c)
9.4: Art.54(2)

10.1: Art.108: 2m from notification
10.2: Art.108: 4m from notification
10.3: Art.109(1)
10.4: R.103(1) 'if such ...'

Any different opinions are welcome! Please post your opinions as comments to this blog, so everybody can from the discussion.
If posting a comment, please donot use "anonymous" (you may be one of many), but use your name: you can enter a name without signing in. Better to discuss with persons by name, than to discuss with multiple "anonymous"es ;-).

Jelle, Pete, Roel


  1. This comment has been removed by the author.

  2. Re. Question 6: the notes to R159a on page 691 of the latest edition of Visser state: “Art 14(2) allows correction of a translation of a direct European application filed in a language other than English, German and French. There is no legal basis, neither in the EPC nor in the PCT, allowing such a correction for a Euro-PCT application in the European phase”.

    1. But also read the next sentence in Visser: “However, ...”.

      PCT AG-NP 6.002-6.003 as well as PCT Applicant’s Guide EP National Chapter EP.05 explicitly consider it allowable.
      We consider Art.153(2) EPC and Art.14(2) EPC legal basis for this correction.

  3. Question 5.1: Divisional applications may also be filed online (OJ 2009, 182; EPO Guidelines Part A-IV, 1.3.1). Accordingly, the answer to Q5.1 could also be F. Or maybe I just overthought the matter.

    1. Not overthought, but wrongly thought:
      Also if you use online filing as the method of filing, you need to file directly with the EPO in Berlin, Munich or The hague - R.36(2), last sentence.
      Online filing can also be used when filing with many national offices - however, that is not allowed for a divisional.
      So, the answer shall be True.

    2. Alright, thanks. I think I just misunderstood the GL which sound a bit like referring to an alternative, but I see that online-filing using EPO Software automaticially means that it is filed with EPO Berlin, Munich or The Hague.

    3. I am sorry, but using Online Filing does NOT automatically mean filing directly with the EPO.
      See e.g. Nat.Law Table II, column 5.
      See also http://www.epo.org/applying/online-services/online-filing.html, and especially pages "Features & benefits" and "Online Filing in national offices".

      The second sentence of GL (2012) A-IV,1.3.1 is a bit misleading. It adds another method (online) to the methods of the first sentence (by delivery by hand, by post or by fax). The following sentence however makes explicit that "The filing of a European divisional application with a national authority has no effect in law", in line with R.36(2) EPC.

  4. Question 5.4: Is the answer really true?. If the parent application is filed in an non- admissible EPO language, e.g. Italian, then an English translation may be filed for the parent application. Therefore the language of the "parent proceedings" would be English. The the divisional application can be filed in Italian again. The divisional application can than be translated into French and providing an additional translation for the parent application into French as well (R. 36.2). Then the language of the "divisional proceedings" would be French, which is not the language of the proceedings of the parent application. I this correct? This may be a very rare and expansive case and not the rule.

    1. R.36(2) explicitly staties that the translation of the divisional needs to be in the language of proceedings of the earlier aplication. The l.o.p. is thus always the same for patent and any divisional thereof.

  5. Question 2.1 should be False because we were asked not to be too smart!

    1. You need however to apply the EPC correctly and shall not risk loosing a client's right.

      It is important to realize that the due date of R.51(2) is April 30 and does not extend to a day the EPO is open, because the 6m period of R.51(2) (to pay with additional fee) runs from that date. The 6m period thus expires on October 31 (de-ultim-ad-ultimo; J4/91). if you would wrongly have concluded that the due date is May 2, you would wrongly have concluded that the 6m period expires Sep 2 - which may result in a too late payment without further remedy (RE does not work for not applying the law correctly) and you would loose the application.

  6. Ad Question 2.1:

    J1/81 II states, if the time limit for payment expires on a day declared to be a public holiday in Munich, where the Office is located, the time limit is extended under Rule 85(1) EPC irrespective of whether it would, in fact, have been possible to effect payment either in Munich or at any other place where it could validly have been made.

    Reason 6. The wording of Rule 85(1) leaves no doubt that it is applicable to all time limits whether for "receipt of documents" in the strict sense of "documents" or for forms of payment. The provision refers to the expiry of "a time limit" without any qualification.

    Thus, I would assume that R.134(1)applies to fees as well and theat the period is extended to - i.e. is due on - the next working day.

  7. ... or, what would also be consistent with J1/81, extension of a time limit within the meaning of R. 134(1) does not mean shifting the due date, regardless the due date concerns payment of a fee or filing documents.

  8. Question 2.1 again
    According to the Guidelines A_X_5.1.1, the due date for renewal fees is:
    - an exception for the general meaning for a "due date";
    - is the last day of the period for renewal fees payment (usually a due date is the first day on which payment of a fee may be validly effected)
    The last day of the period here using R.134(1) EPC is May 2.
    So congratulations Roel, you pass with a mark of 98/100.

    1. J1/81 says that R.134(1) applies for any period: not just for filing documents, but also for fee payments. So, for example, for the 1m period of R.38 to pay the filing and search fee – as was the case in J1/81. And R.134(1) does apply to the 6-m period of R.51(2) and the 4m-period of R.51(3).
      But, unfortunately, R.134(1) does not apply for R.51(1),, as R.51(1) does not specify a “period”, but just a due date – see also the first sentence of GL A-X 5.2.4.
      J4/91 is very explicit on this in r.3.2 (r.85 EPC1973 corresponds to R.134 EPC2000) – read until the last few words:
      3.2 In the present case it is sufficient to examine whether the Legal Advice, as it mentions in passing, does indeed apply to the additional period under Article 86(2) EPC. In this case the period does not begin with the expiry of an earlier period, as it does in the above-mentioned Rules; it is a "period of grace" ("Schonfrist" - "délai de grâce") which runs from the due date of Rule 37(1) EPC. If this due date falls on a Saturday or Sunday, a payment actually received on the following working day is not subject to an additional fee. According to the generally held and correct interpretation, Rule 85(1) EPC applies here mutatis mutandis, even though, if interpreted strictly in line with its wording, it does not fit the circumstances of this case: a "due date" is not a "time limit" which can be "extended". As mentioned above, Rule 85 EPC is applicable to payments actually made in circumstances involving weekends/public holidays, postal strikes or dislocation of the proper functioning of the EPO, but this does not mean that the due date is "postponed".