Friday, March 15, 2024 Pre-Exam 2024 - our answers to the legal questions (part 1 & part 2)

As the earlier Pre-Exams since 2021, this online EQE Pre-Exam was again held in four parts of 70 minutes each. The questions had to be taken, almost fully, 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 to the EPO text was to the live versions, so to the versions in force on 15 March 2024 (so not the version of 31.10.2023 acc REE/IPEE). The PCT texts were in the version in force on 31 October 2023.

Candidates could access the exam in all languages, English, French and German: the language of the question could be selected. All statements were given in all three languages. 

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 and 2022 Pre-Exam in the Wiseflow EQE Compendium, or the updated versions thereof from our P-book will presumably have appreciated this approach. See our comments with the questions

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 15-03-2024 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)

Diane & Roel

 

Part 1

Question 1

Zlatko filed a European patent application EP-Z in Croatian as a first filing with the European Patent Office on 16 March 2023. EP-Z does not contain any claims.

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

1.1 The period for filing an international patent application validly claiming priority from EP-Z ends on 16 March 2024.

FALSE  - 16/3/23 + 12m -> 16/3/24 (Sat) [R.134(1)] --> 18/3/24              

1.2 The period for filing claims for EP-Z ended on 16 May 2023.

FALSE - no particular time limit for submitting claims of own volition; ultimate period is within 2m from invitation under R. 58 EPC                       

1.3 The period for filing a translation of EP-Z into one of the official languages of the EPO ended on 16 May 2023.

TRUE - 16/3/23 + 2 m  [R.6(1)] -> 16/5/24 (Thu)

FALSE could also be argued in view of R.58 and D 3/19. 

Update 9 April 2024: However, the Examiner's report (published today) provides that " if the translation is not filed in accordance with the period defined by Art. 14(2) and R. 6(1) EPC, there exists also a possibility to remedy a deficiency of filing the translation within the period, R. 57(a) and 58 EPC, GL A-VII 1.4; this period to remedy the deficiency is not the period for filing the translation;", so that the statement was not neutralized.                

1.4 The period for paying the filing fee for EP-Z ended on 17 April 2023.

TRUE- 16/3/23 + 1m [R.131(4)] -> 16/4/23 (Sun) [R.134(1)] -> 17/4/23 (Mon)

Note: that EP-Z contains no claims has no effect on the 1m period of R.38(1) to pay the (basic) filing fee. However, if the application comprises more than 35 pages, the additional fee referred to in R.38(2) ("page fee" which is part of the filing fee) shall be paid within 1m of filing the first set of claims.

              

 

Question 2

Daniel Automotive SE filed a European patent application EP-D in June 2020. Claus is designated as the sole inventor. Last week, Daniel Automotive SE received a communication under Rule 71(3) EPC for EP-D. On 15 March 2024, an error is noted: the inventors of EP-D are actually Claus and Sabrina. Daniel Automotive SE now consults you for advice.

A valid element of your advice for correcting the error before the EPO is that ...

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

 

2.1 … if the request is filed by Daniel Automotive SE, the consent of Claus is required to rectify the designation of the inventor.

FALSE  - GL A-III, 5.5                    

2.2 ... the designation of the inventor may be corrected after EP-D has been granted.

TRUE  - GL A-III, 5.5                     

2.3 ... the applicant need not provide evidence that an error was made.

TRUE  - only needs to be requested by the applicant, no provision for a fee

2.4 ... Sabrina may file an opposition based on the ground of not being mentioned as inventor.

FALSE  - no ground - exhaustive list of Art.100

Note: question reused from an earlier Pre-Exam                          

 

Question 3

Anna-Frieda filed a German national patent application DE-AF in German on 23 May 2022 disclosing a first invention AF1 and a second invention AF2. On 24 April 2023, Anna-Frieda filed a first European patent application EP-AF1 covering the invention AF1 only and claiming priority from DE-AF. On the same day, 24 April 2023, she also filed a second European patent application EP-AF2 covering the invention AF2 only and without claiming any priority. Afterwards, Anna-Frieda noticed that no drawings had been filed for EP-AF1 [R.56!!] and that the wrong claims had been erroneously filed [R.56a, not R.56, not R.58!!] for EP-AF2. On 2 May 2023, Anna-Frieda filed the missing drawings for EP-AF1, together with a certified copy of DE-AF, a letter correctly stating that the missing drawings are identical to those of DE-AF and a request to maintain the filing date of 24 April 2023. On 2 May 2023, Anna-Frieda submitted the correct claims for EP-AF2.

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

 

3.1 The period for making the declaration of priority from DE-AF for EP-AF2 ends on 26 August 2024.

FALSE  - 23/5/22 + 16m [R.52(2)] -> 23/9/2023 (Sat) -> 25/9/2023, not 2024                            

3.2 The filing date of EP-AF2 will be re-dated to 2 May 2023.

TRUE  - R.56a(3); – correct claims received within 2m so redated (priority not claimed at filing so not possible to use “incorporation by reference” to keep the date; was also not requested - R.56a(4))                  

3.3 The filing date of EP-AF1 will be re-dated to 2 May 2023.

FALSE  - R.56(3); as pri was claimed on filing and request to maintain date was duly filed with required documents                         

3.4 On 15 March 2024, Anna-Frieda can file a third EP patent application EP-AF3 validly claiming priority from EP-AF2 regarding the invention AF2.

FALSE  - DE-AF is first application for AF2, not EP-Af2, so priority invalid - Art 87(1)                    

 

Question 4

Manuela filed international application PCT-M in September 2021 without claiming priority. PCT M was searched by the EPO as International Searching Authority in February 2022. The International Searching Authority raised non-unity objections with respect to the subject-matter of the claims, considering claims 20 to 35 to relate to a separate invention with respect to claims 1 to 19. Manuela did not pay any additional fees. The International Searching Authority issued a partial search report covering claims 1 to 19. PCT-M entered the European phase on 15 March 2024 and is referred to in the following as Euro-PCT-M. No amendments have been filed.

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

 

4.1 If Manuela does not pay claims fees by expiry of the period set by Rule  161 EPC, Euro-PCT-M will be deemed to be withdrawn.

FALSE  - effect is " the claim concerned shall be deemed to be abandoned" - R.162(4)

Note: reference to R.161 period may appear incorrect, as it is R.162. But R.162 and 161 periods are the same; it is also a single invitation                         

4.2 Manuela will have an opportunity to amend the claims of Euro-PCT-M before substantive examination of Euro-PCT-M begins.

TRUE  - A response to the R 161(1) communication will be mandatory in view of non-unity objection by EPO as ISA. This may include amendments.. The R.161/162 invitation with a 6m time limit which will be issued after entry (entry is today).                  

4.3 If in the application documents which are to serve as the basis of the substantive examination of Euro-PCT-M an invention is claimed that was not searched by the EPO as the International Searching Authority, Manuela will be invited to pay a further search fee in respect of this invention.

TRUE  - R.164(2)(a)                       

4.4 If Manuela does not comment by 15 March 2024 on the written opinion of the International Searching Authority, Euro-PCT-M will be deemed to be withdrawn.

FALSE - R.161(1) allows 6m to comment and invitation not yet issued               

 

Question 5

Your client Pencilz has noticed that its biggest competitor Rulerz has a granted patent EP-R which covers important subject matter for Pencilz. The mention of the grant of EP-R was published in the European Patent Bulletin on 4 August 2023. Pencilz asked you to file an opposition against EP-R and the notice of opposition was filed on 15 February 2024. No opposition fee was paid. EP-R was opposed on the following grounds: added subject matter and lack of novelty. You also noticed some clarity issues with the granted claims of EP-R, which you also included in the statement of grounds filed with the notice of opposition.

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

5.1 On 15 March 2024, the opposition fee may still be paid.

TRUE - last day is 4/8/2023 + 9m -> 4/5/2024 [Sat) -> 6/5/2024, so can pay today (15/3/24)                          

5.2 Lack of clarity is a ground for opposition.

FALSE - not mentioned in Art 100                         

5.3 The Opposition Division may, of its own motion, examine EP-R for sufficiency of disclosure.

TRUE - GL D-V, 2.2, if prima facie (added: assuming that opposition proceedings become pending by payment of the opposition fee).

Added 2 April 2024 (in view of comments from Juliette and IT made below): FALSE can also be argued, as the opposition fee is not paid so that no admissible opposition is filed (yet), so that is no admissible opposition is filed and hence no own motion possibility (GL D-V, 2.2).

Added 12 April 2024: the "if prima facie" may also be a reason why a candidate to answered FALSE: the OD may only examine new grounds of own motion if they are prima facie relevant (GL D-V, 2.2), and as no facts are given in the question that support insufficiency, this requirement is not fulfilled and the OD may thus not introduce the new ground. 

However, 5.3 was not neutralized.               

5.4 A third-party that has filed observations with the EPO concerning the patentability of EP-R is party to the opposition proceedings.

FALSE - Art. 115                            

 

PART 2

Question 6

A European patent application is refused without holding oral proceedings for lack of novelty in a decision dated 1 February 2024. A request for oral proceedings filed by the applicant at an early stage in the examination procedure has been overlooked by the Examining Division. The applicant files an appeal with arguments explaining why the subject-matter claimed is novel over the prior art.

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

6.1 The statement setting out the grounds of appeal has to be filed within two months of filing the notice of appeal.

FALSE - 4m from notification of decision - Art.108                       

6.2 The appeal fee is to be reimbursed in full because the applicant's request for oral proceedings has been overlooked.

TRUE  - overlooking request for OP = subst proc violation and will result in interlocutory revision, Rule 103(1)(a), GL E-XII, 7.3 & (added 16/3:) GL E-XII, 7.4.1

Failure to hold oral proceedings violates applicant’s right to be heard and is a substantial procedural violation that may give rise to reimbursment of the appeal fee T93/88                      

6.3 If the notice of appeal does not contain the address of the appellant, and the address of the appellant is not given by today, 15 March 2024, the appeal will be rejected as inadmissible.

FALSE  - Requirement of R 99(1)a satisfied if appellant can be identified [T662/09]. EPO sent a decision to refuse to the applicant, so they know who the applicant is.'

Also still time, as notice period expires -Art.108:

1/2/2024 + 2m -> 1/4/2024 -> 2/4/2024 or 1/2/2024 + 10d + 2m -> 11/4/2024               

6.4 If the Examining Division considers the appeal to be admissible and well founded, it shall rectify its decision.

TRUE  - Art.109(1), GL E-XII,  7.1                           

 

Question 7

On 1 June 2021, Matthieu filed a European patent application EP-M1 disclosing and claiming a fork made of copper or zinc. No other materials are mentioned and the kind of handle is not specified. On 1 June 2022, Matthieu filed a European patent application EP-M2 claiming priority from EP-M1 and disclosing and claiming a fork made of metal. The description of EP-M2 mentions that the metal can be copper, zinc, iron or any alloy of these metals. Claim 1 of EP-M2 claims a fork made of metal, claim 2 of EP-M2 claims a fork made of metal with a hollow handle. EP-M1 was published on 1 December 2022 as EP-M1-A1. A company brochure PA-1 published on 5 October 2021 discloses a fork made of copper with a hollow handle.

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

7.1 EP-M1-A1 forms part of the state of the art against the subject-matter of claim 1 of EP-M2 under Article 54(3) EPC.

Problematic. Part of EP-M2 claim 1 is not entitled to priority, because broader than the  sjm not disclosed in EP-M1, while encompassing that, such that there is a partial priority situation - G 1/15, GL F-VI, 1.5

Then, the claim has to be treated as a "generic OR claim", by considering it an OR-claim of "a first conceptual part with priority" OR "a second conceptual part without priority".

I.e., claim 1 benefits from partial priority, EP-M1-A1 is NOT 54(3) vs the first conceptual part that benefits from partial priority (the conceptual part Cu or Zn), so the statement could be considered FALSE.

However, w.r.t. the second conceptual part that does not benefit from partial priority (the conceptual remainder, i.e. metal but not Cu nor Zn), EP-M1-A1 IS 54(3).

For the first conceptual part ("Cu or Zn"), the statement is FALSE. For the second conceptual part ("metal but not Cu nor Zn"), it is TRUE.  But how to combine that into a single TRUE or FALSE? One can (n)either conclude to TRUE (n)or to FALSE. We would consider this a candidate for neutralization.

(Note that EP-M1 is NOT novelty destroying for the claim, as it is not novelty destroying fort either part. However, that is not asked here!!!) 

Note (added 19/3 in view of discussions on the blog): the reference to the publication "EP-M1-A1 forms [...] 54(3)" is somewhat confusing: does it mean to indicate that the application was validly published, which is a prerequisite to be an Art.54(3) - which is our interpretation. Or is it intended to mean "the text of the A1 publication of EP-M1 is 54(3)" whereas it is the content of EP-M1 as filed that determines the prior art effect (even if that would be incomplete or gave errors - GL G-IV, 5.1). This may be another reason to consider neutralization.   

Update 9 April 2024: the Examiner's report (published today) shows that this statement was neutralized. The statement is numbered 7.2 in the Examiner's Report, which provides:

7.2 EP-M1-A1 forms part of the state of the art against the subject-matter of claim 1 of EP-M2 under Article 54(3) EPC.

TRUE and FALSE are accepted as correct answers – G1/15 GL F-VI, 1.5; claim 1 is only partially entitled to priority, i.e. for the part disclosed by EP-M1; for this disclosed part EP-M1-A1 does not form part of the state of the art according to Article 54(3) EPC (Article 89 EPC); EP-M1-A1 is not prior art according to Article 54(3) EPC for the subject-matter of claim 1 in its entirety;        

7.2 PA-1 forms part of the state of the art against EP-M2 under Article 54(3) EPC.

FALSE  - PA-1 is not an EP application so cannot be Art 54(3) prior art                

7.3 PA-1 is novelty-destroying for the subject-matter of claim 1 of EP-M2 under Article 54(2) EPC.

FALSE  - the conceptual Cu part benefits from partial priority and is thus not novelty destroyed.

PA-1 is 54(2) prior art for remaining part of claim 1 not entitled to priority, but that part relates to metals other than Cu or Zn, so not novelty destroyed by disclosure of Cu fork.

As both conceptual parts novel, claim as a whole novel.                         

7.4 PA-1 is novelty-destroying for the subject-matter of claim 2 of EP-M2 under Article 54(2) EPC.

TRUE  - the metal plus handle has no partial, nor full priority. Destroyed by Cu plus handle.              

 

Question 8

On 28 February 2024, Martha, a Polish national resident in Poland, filed with the EPO a reasoned notice of opposition against European patent EP-E in Polish. The mention of the grant of EP-E was published in the European Patent Bulletin on 16 June 2023. The language of the proceedings in the case of EP-E is English. In the notice of opposition, Martha requested oral proceedings.

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

 

8.1 Martha must file the translation of the notice of opposition at the latest on 18 March 2024.

FALSE  - Rule 6(2): latest of

- 28/2/24 + 1m -> 28/3/24 and

- 16/6/23 + 9m -> 16/3/24 (Sat) -> 18.3.24 (Mon),

so 28/3/24.                      

8.2 Martha is not entitled to a reduction of the opposition fee.

TRUE - no such reductions (only until 2014) 

Note: I was told by an expert in exam design that it is a general guidance that negative statements are to be prevented in multiple-choice exams, in view of the high risk that a candidates has the correct understanding and applies it correctly to the facts of the case, concludes "not" entitled, and hence logically answers FALSE, and thus comes with the wrong answer just because of the negative in the statement.                 

8.3 If Martha requested in the notice of opposition to speak and listen in German during oral proceedings, the EPO would provide for interpretation.

TRUE - R.4(1), first sentence, first alternative: German is an official EPO language [Art 14(1)] and may be used instead of language of proceedings [R. 4(1)]. Request to use German received well in advance of 1m before the oral hearing, so EPO responsible for interpretation at EPO's own expense.                 

8.4 Martha will be allowed to speak Polish during oral proceedings if she provides for interpretation into English.

TRUE - R.4(1) second sentence

Question reused from an earlier Pre-Exam (Q.10 of Pre-Exam 2016, with names, language, states changed - see also our book "Pre-Exam - Cases/Exams")                   

 

 

Question 9

Sara, an Italian citizen living in Italy, filed an international application PCT-S1 in French with the EPO on 20 September 2021 without claiming priority. PCT-S1 documents as filed are: PCT request form designating all PCT contracting states, description, claims, drawings and abstract. After filing, Sara noticed that her name was misspelt on the PCT request form, but she could still be identified.

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

 

9.1 Further processing for performing the requirements for entry into the EP regional phase can be validly requested on 19 June 2024.

TRUE - 20/9/21 + 31m -> 20/4/24 [Sat) -> 22/4/24.

If missed, earliest possible loss of rights communication is 23/4/24:

23/4/24 + 2m -> 23/6/24, or 23/4/24 + 10d + 2m -> 2/5/24 + 2m -> 2/7/24.

So can surely do on 19/6/24            

Note (added 17/3): one could also argue TRUE as the missed renewal fee (due on entry in this case) under Rule 159(1)(f)) cannot be remedied with further processing, but needs Rule 51(2). Whether one answers TRUE or FALSE may thus depend on whether one considers the statement to refer to all requirements for entry, or to those for which missing the entry causes a loss of rights (R.160(1)) at the 31m expiry. We decided for TRUE as we considered the latter seemed to us the interpretation that was most likely expected, as there is no loss yet due to non-payment of the renewal by the due date: that loss only occurs at the expiry of the 6m period of R.51(2) (22/4/24 + 6m -> 22/10/24 (Tue)); this is also reflected in the loss-of-rights communication that the EPO sends shortly after missing the 31m period: renewal is not mentioned therein. One would also interpret the statement as merely testing the situation on 19 June 2024, i.e., whether FP is still available then - that would also result in TRUE. 

Update 9 April 2024: The Examiner's report (published today) makes no mention of the missed renewal fee, and hence argues TRUE.

9.2 20 September 2021 is the international filing date of PCT-S1.

TRUE - all requirements of Art. 11 (1)PCT fulfilled.

Also, if the answer would be FALSE, you cannot answer any of the other three statements.                     

9.3 An extension of the time limit for performing the requirements for entry into the EP regional phase can be validly requested on 20 February 2024.

FALSE - not possible for the 31m period. 31m specified in EPC so not under R.132(2); no other provisions either.                             

9.4 Without resorting to a legal remedy, the acts for entry into the EP regional phase shall be performed at the latest on 20 March 2024.

FALSE - 20/9/21 + 31m -> 20/4/24 (Sat) [R.134(1)] -> 22/4/24. You would have wrongly answered TRUE if you wrongly used 30m or if  you did not check the calendar/ dis not use R.134(1).

              

Question 10

Wolfgang intends to file the following patent applications:

(1) a European patent application EP-W;

(2) an international patent application PCT-WC.

PCT-WC will be jointly filed in the name of Wolfgang and Christina.

Christina lives in Berlin; Wolfgang lives in Uruguay and is of Uruguayan nationality. Uruguay is not a PCT member state.

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

 

10.1 PCT-WC may be validly filed with the EPO as receiving Office.

TRUE - Christina lives in Germany which is a PCT state and an EPO contracting state, so EPO is a competent receiving office. R 19.1(a) PCT; R. 157(1) EPC.

Sufficient if 1 applicant has an entitlement to file a PCT - Aret. 9(1);'R.19.2(ii) PCT

PCT-WC must be filed in English, French or German for the EPO to act as rO. R.12.1 PCT; R.157(2) EPC                   

10.2 If Wolfgang moves to Berlin two months after validly filing PCT-WC, the International Bureau will, upon request, record the change of residence in relation to PCT-WC.

TRUE - Rule 92bis PCT; AG-IP 11.018-11.022: the IB will record a change under R.92bis at any time before 30m international phase ends.

Note that the earlier version of this question (in Pre_Exam 2019, said "the EPO will record the change" - and that is FALSE)                            

10.3 PCT-WC can be validly filed with the International Bureau as receiving Office.

TRUE - Christina lives in Berlin. True, IB is a competent rO for any applicant from any PCT contracting state                          

10.4 Wolfgang may validly file EP-W with the EPO.

TRUE - anyone may file an EP application Art 58 EPC

Question from Pre-Exam 2019 reused for the second time )with statement 3 changed from EPO to IB) - also last year (when EPO was maintained). 

 

Please feel invited to comment!

When commenting, 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 15-03-2024 23:22"), whereas using your real name, your initial or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in, not make an account, nor give your email address; you can us post Comment As --> Name or URL: Give your name, nickname or your initials and use them consistently.

 

Diane & Roel

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