Coffe Brake EQE

Question 1

You represent a Spanish individual who has filed a European patent application in Spanish and satisfied all the requirements for filing. Examination was requested in Spanish at the time of filing the application. The examination and designation fees are due by 7 November 2016 and the applicant asks whether he is entitled to a reduction of 10 percent in the examination fee. What is the correct answer? 1. The applicant is entitled to a reduction of 20 percent in the examination fee under Rule 6(3) EPC and Rules relating to Fees Article 14(1). 2. The applicant is entitled to a reduction in the examination fee under Rule 6(3) EPC and Rules relating to Fees Article 14(1), but the reduction is not 10 percent.

Accepted Answer

The correct answer is 2. The reduction set out in Rules relating to Fees Article 14(1) is 30 percent

Question 2

Is the following statement true or false? When proceedings for grant of a European patent application are stayed following the Institution of entitlement proceedings, renewal fees which fall due during the period of stay can be paid up to the date of resumption of the proceedings for grant. 1. False 2. True

Accepted Answer

The correct answer is 1, False. In the event of stay of proceedings all periods other than those for the payment of renewal fees are interrupted (see Rule 14(4) EPC, implementing Article 61(1) EPC). The application will lapse if the renewal fees are not paid. If the application has lapsed and it is adjudged that the person other than the applicant is entitled to the grant of the European patent, that person may still file a new European patent application in respect of the same invention under Article 61(1)(b) EPC (see G 3/92, headnote).

Question 3

You represent a client whose European patent has been opposed, but the opposition division has decided to maintain the patent in amended form. The invitation with the 3-month time limit under Rule 82(2) EPC was sent on 16 August 2016, but proceedings were interrupted under Rule 142 EPC on 20 October 2016. The problems have been resolved and the proceedings are resumed on 16 January 2017. When does the time limit under Rule 82(2) EPC end? 1. 18 April 2017 2. 26 April 2017

Accepted Answer

The correct answer is 1. The period shall begin again as from the day on which the proceedings are resumed (Rule 142(4) EPC, implementing Article 120 EPC; Guidelines E-VI, 1.5). The new 3-month time limit under Rule 82(2) EPC expires, however, during the Easter holidays of the EPO. The period is thus extended (Rule 134(1) EPC) until 18 April 2017 (Tuesday).

Question 4

You are informed that one of the inventors named in an international application is incorrect. The application names Mr Y, but the correct inventor is Mrs Z. What should you do? 1. Obtain the consent of Mr Y to rectification of the inventor before filing a request at the International Bureau with details of the correct inventor. 2. File a request for rectification at the International Bureau with details of the correct inventor.

Accepted Answer

The correct answer is 2, a request for rectification should be filed at the International Bureau with details of the correct inventor. Under Rule 92bis.1(a)(ii) PCT a change in the person, name or address of an inventor can be corrected provided the request is filed before the end of the 30-month period from the priority date (Rule 92bis.1(b) PCT and PCT Applicant’s Guide International Phase 11.020). In PCT the consent of the person incorrectly designated as inventor is not needed. For a European patent application the consent of the wrongly designated person is required for correction (Rule 21(1) EPC).

Question 5

Your client, A Inc, is a sub-licensee under European patent application EP-1. Can the sub-licence be recorded in the European Patent Register? 1. No, it is not possible to record sub-licences in the European Patent Register. 2. Yes, any sub-licence can be recorded in the European Patent Register. 3. Yes, provided the licensee granting the sub-licence has recorded its licence in the European Patent Register.

Accepted Answer

The correct answer is 3, a sub-licence can be recorded in the European Patent Register only if it is granted by a licensee whose licence is recorded in the register. See Rule 24(b) EPC, implementing Article 73 EPC.

Question 6

Company C has filed a European patent application for an invention which has been displayed at an official international exhibition. The exhibition closed two weeks after the invention was first displayed. Rule 25(d) EPC requires that a suitable certificate is filed within 4 months of filing the European patent application. Three months after filing the application, the applicant has approached the authority responsible for the protection of industrial property at the exhibition and obtained a certificate stating the information required according to Rule 25 EPC. The certificate was filed within the 4-month period together with the authenticated identification of the invention. Will the certificate be accepted by the EPO? 1. No, the certificate was not issued at the exhibition. 2. Yes, the certificate was filed within the specified 4-month period.

Accepted Answer

The correct answer is 1 because the certificate was not issued at the exhibition. Article 55(1)(b), 55(2) and Rule 25(a) EPC require that the certificate is issued at the exhibition, so a certificate obtained after the exhibition is not acceptable.

Question 7

The time limit for paying the examination fee for a European patent application ends on the 18.08.2017. The applicant wishes to pay by bank transfer and wants to make absolutely sure that no additional fees have to be paid even if the payment is delayed due to unforeseen circumstances. What can he do? 1. Nothing. If the payment is received too late by the EPO it will be considered not to have been made 2. Effect the payment no later than the 13.08.2017 3. Effect the payment no later than the 08.08.2017 4. It is sufficient to effect the payment on the last day of payment, that is, 18.08.2017

Accepted Answer

The correct answer is 3. The payment is considered to have been made on the date when it actually is entered into an EPO bank account. [Art. 7(1) RFees]. However, it is considered that the period for valid payment has been observed if payment was effected through a bank in a contracting state not later than ten days before the expiry of the period for payment [Art. 7(3)(b) RFees], that is 08.08.2017 at the latest. If payment is made within the last ten days before expiry of the period, then it is considered that the period was observed if a surcharge of 10 % is paid.

Question 8

A European patent application EP-A was refused in a decision dated 01.06.2017. Today is the 15.07.2017. Is it still possible to file a divisional application from EP-A? 1. Yes 2. No 3. Only if the decision to refuse the application is appealed

Accepted Answer

The correct answer is 1, it is possible to file a divisional application within the 2-month period for filing notice of appeal, even if no appeal is filed [G1/09]. In this case, the application “is thereafter pending within the meaning of rule 36(1) EPC until the expiry of the time limit for filing a notice of appeal. The time limit for filing notice of appeal is 01.06.2017 + 10 days [Rule 126(2) EPC] ? 11.06.2017 + 2 months ? 11.08.2017 (Friday).

Question 9

Most fees for European patent applications cannot be paid before their due date. One exception is the payment of a renewal fee which can be paid up to: 1. 3 months before the due date. 2. 6 months before the due date. 3. 1 year before the due date.

Accepted Answer

The correct answer is 1. Renewal fees for European patent application may be validly paid up to 3 months before the due date. See Rule 51(1) EPC (implementing Article 86(1) EPC).

Question 10

Today is 29 September 2017. Following successful national proceedings for entitlement of European patent application EP-1, the successful party has elected to file a new application under Article 61(1)(b) EPC. EP-1 was filed on 12 September 2012 and the new application, EP-2, was filed 10 August 2017. What is the last day for paying the first renewal fee without surcharge for the new application (i.e., not including the fees for past renewals)? 1. 30 September 2017 2. 2 October 2017

Accepted Answer

The correct answer is 2, the first renewal fee on EP-2 (in respect of the 5th year) must be paid by 2 October 2017 (Monday). According to G 3/92 (Reasons 5.4) the filing date of EP-2 will be the filing date of EP-1, i.e. 12 September 2012. EP-2 was filed in the 5th year. According to Article 86(1) and Rule 51(6) EPC no renewal fee for EP-2 needs to be paid in respect of the year in which it was filed and any preceding year. The renewal fee for the 6th year is due (see Article 86(1) and Rule 51(1) EPC) on 30 September 2017 (Saturday), which is extended (Article 120 and Rule 134(1) EPC) to 2 October 2017 (Monday).

Question 11

You have filed a European patent application EP-1 in February 2017 on behalf of the applicant. In October 2017 you are informed that EP-1 should have claimed priority from United States patent application US-1 filed in March 2016. Is it possible to add the priority declaration to EP-1? 1. No, more than 16 months have elapsed since the filing of US-1 and more than 4 months have elapsed since the filing of EP-1. 2. Yes, EP-1 was filed within 12 months of US-1 so is entitled to claim priority.

Accepted Answer

The correct answer is 1, the time limits for adding a claim to priority have both expired. See Rule 52(3) EPC (implementing Article 88(1) EPC) and Guidelines A-III, 6.5.2.

Question 12

What is the legal effect of failing to file a priority document for a European patent application? 1. None, the priority document can be filed at any time. 2. The European patent application will be deemed withdrawn if a priority document is not filed within 16 months of the earliest priority date (or any additional period permitted by the EPO). 3. The right of priority will be lost if a priority document is not filed within 16 months of the earliest priority date (or any additional period permitted by the EPO).

Accepted Answer

The correct answer is 3, it is the right of priority that is lost if a priority document is not filed in due time. See Rule 53(1) EPC (implementing Article 88(1) EPC), Rule 59 EPC (implementing Article 90(4) EPC), and Article 90(5) EPC.

Question 13

European patent application EP-1 was filed 8 January 2016, but the inventor was not designated. The designation of the inventor is filed 26 May 2017. Will the application be refused? 1. No, the designation of the inventor was filed in due time. 2. Yes, the designation of the inventor was not filed in due time.

Accepted Answer

The correct answer is 1, the designation of the inventor was filed in due time. The designation of the inventor is due within 16 months (Rule 60(1) EPC, implementing Article 90(4) EPC) of the filing date (8 May 2017 (Mon), but the period is deemed to be observed if the information is communicated before completion of the technical preparations for the publication of the European patent application (5 weeks before the end of the 18th month from the filing or priority date, Guidelines A-VI, 1.1 and the Decision of the President, Special Edition No. 3 OJ EPO 2007, D.1).

Question 14

In response to an opposition, the patentee introduces the features of claim 12 as granted into claim 1. Claim 12 was dependent on claim 1 and is phrased as a result to be achieved. The opponent argues that the amendment introduces a lack of clarity. Will the Opposition Division agree with the opponent? 1. Yes. A claim feature may not be phrased as a result to be achieved 2. Perhaps. It depends on whether or not the feature phrased as result to be achieved is considered to be clear. 3. No. since the feature was already in the claims set the amendment does not introduce a lack of clarity.

Accepted Answer

The correct answer is 3. Pursuant to G3/14 the claims may be examined for compliance with the requirements of Article 84 only when the amendment introduces non-compliance with Article 84, and only to the extent that it does. Since claim 1 as amended corresponds to claim 12 as granted, no such non-compliance has been introduced.

Question 15

Why might an opposition be filed even if the European patent has been surrendered, or has lapsed, in all the designated Contracting States (Rule 75 EPC)? 1. Because in the case of surrender or lapse the rights acquired with the patent remain in existence in the period up to surrender or lapse and claims arising from those rights may subsist after the date of grant. 2. There is no reason to oppose a patent that has been surrendered or has lapsed. 3. The effect of surrender or lapse is ex nunc, while the effect of revocation is ex tunc.

Accepted Answer

There are two correct answers, 1 and 3. There are occasions where the difference between lapse/surrender and revocation are important, for example where licence payments depend on the existence of a patent (or application). The two correct answers simply use different terminology for the same situation.

Question 16

In opposition proceedings a patent proprietor has proposed amendments to claims 1, 3 and 4 of its patent to overcome issues of novelty and inventive step. The patent proprietor has also noted a problem with the clarity of claim 2 and has additionally proposed an amendment to this claim. Is the amendment of claim 2 permitted? 1. Yes 2. No

Accepted Answer

The correct answer is 2. Amendment of claim 2 is not permitted because the amendment is not occasioned by a ground for opposition (since clarity is not a ground for opposition as specified by Article 100 EPC). See Rule 80 EPC (implementing Article 101(1) EPC).

Question 17

In the case of an intervention by an assumed infringer in opposition appeal proceedings, what fees are payable by the assumed infringer? 1. The opposition fee. 2. The appeal fe. 3. The opposition fee and the appeal fee 4. The assumed infringer must pay the opposition fee and may choose whether to pay the appeal fee.

Accepted Answer

The correct answer is 1. In the case of an intervention at the appeal stage only the opposition fee is payable. Payment of opposition fee is required by Rule 89(2) EPC (implementing Article 105(1) EPC). The EPO has no provisions for requiring the payment of an appeal fee in such cases, see G3/04, Reasons 11.This means that the intervener can only obtain status as an opponent and not as appellant, if the notice of intervention is filed during appeal proceedings. He will be party to the appeal proceedings as of right.

Question 18

There is a valid intervention under Article 105 EPC during proceedings before the opposition division. At the conclusion of the opposition proceedings the patent is maintained in amended form. Is the assumed infringer permitted to appeal? 1. Yes 2. No

Accepted Answer

The correct answer is 1, the assumed infringer is entitled to file an appeal in this case, because he became a party during opposition proceedings. See, for example, G3/04, Reasons 4, 10 and 11 and Article 105(2) EPC - the assumed infringer acquires the status of an opponent.

Question 19

A patent proprietor requests revocation of its European patent EP-B under Article 105a EPC, which has been validated in Germany, France and Spain. The patent proprietor has an exclusive licensee in Germany. Will the request for revocation be considered to be admissible? 1. No, the patent proprietor must file evidence it is entitled to act on behalf of the exclusive licensee. 2. Yes, the existence of an exclusive licensee has no bearing on the admissibility of the request for revocation.

Accepted Answer

The correct answer is 2. According to Rule 92(2)(c) EPC (implementing Article 105a(1) EPC) such evidence is only required where the requester is not the proprietor in all relevant Contracting States. An exclusive licensee has no corresponding rights.

Question 20

The applicant for European patent application EP-1 has granted an exclusive licence under the application. The exclusive licensee wishes to make its rights known by recording the licence in the European Patent Register. Is it possible to record the exclusive licence? 1. No, licences cannot be recorded in the European Patent Register. 2. Yes, an exclusive licence can be recorded in the European Patent Register at the combined request of both the applicant and the licensee. 3. Yes, an exclusive licence can be recorded in the European Patent Register, but only by the applicant. 4. Yes, an exclusive licence can be recorded in the European Patent Register by either the applicant or the licensee.

Accepted Answer

The correct answer is 2. An exclusive licence can only be recorded in the European Patent Register (Article 127 and Rule 143(1)(w) EPC) if the applicant and the licensee so request. See Rule 24(a) EPC (implementing Article 73 EPC).See also Guidelines E-XIII, 6.1.

Question 21

Todays Question Question 21 A European patent application was filed 13.01.17, not claiming priority. After receiving the EESR, the applicant wishes to proceed as soon as possible with examination and therefore pays the examination fee, responds to the search opinion and files by fax a request for accelerated examination under PACE. Will the EPO start examination as soon as possible? And will examination be accelerated? 1. Yes, examination will start but will not be acceleratedBy a majority vote 2. Examination will not start until the time limit for requesting examination but then it will be accelerated 3. Examination will start early and will be accelerated. 4. No

Accepted Answer

The correct answer is 1. The responsibility for examining the application passes to the Examining Division when a request for examination is filed. The applicant must also respond to the search opinion before a communication from the Examining Division can be issued. However, a request for accelerated proceedings may only be filed online using the dedicated request form. Hence, the filing of the request by fax will not be accepted. See GL C-II, 1 and 3, and GL E-VII, 4. See also Notice of the EPO dated 30 November 2015 concerning ways to expedite the European grant procedure, OJ EPC 2015, A94

Question 22

It is permitted to file observations under Article 115 EPC in respect of a patent undergoing limitation proceedings. However, there is no provision under Article 105b EPC or Rule 95 EPC for examination as to patentability and Article 115 EPC specifically refers to observations concerning patentability. Is there any reason why a third party might nevertheless file observations under Article 115 EPC in respect of a patent undergoing limitation proceedings? 1. Yes, the examining division may be persuaded to consider patentability as part of the limitation proceedings. 2. Yes, patentability can be considered in the broader sense as including issues relating to Articles 84 and 123(2) EPC. 3. No, there is no point in filing observations on patentability because they will not be taken into consideration.

Accepted Answer

The correct answer is 2. According to Guidelines D-X, 4.5 patentability, at least in limitation proceedings, is to be interpreted in a broader sense as including issues under Articles 84 and 123(2) EPC.

Question 23

According to Rule 126(1) EPC a summons to oral proceedings is dispatched by the EPO by registered post (with advice of delivery). The summons specifies a final date for making written submissions in preparation for the oral proceedings. Do the provisions of Rule 126(2) EPC apply to the date for making written submissions? 1. No 2. Yes

Accepted Answer

The correct answer is 1, Rule 126(2) EPC does not apply. This is because it is not the date of posting of the summons that determines the final date for making written submissions. Instead, the final date is set out in the summons (in accordance with Article 116 and Rule 116(1) EPC).

Question 24

In the case of an applicant for a European patent application who is entitled to a fee reduction under Rule 6(3) EPC, does the fee reduction include the additional fee for pages in excess of 35? 1. Yes 2. No

Accepted Answer

The correct answer is 1, the applicant is also entitled to a fee reduction for pages in excess of 35. See Guidelines A-X, 9.2.2.The additional fee is part of the filing fee, Art. 2(1a) RRF.

Question 25

Claim 1 of European patent application EP-1 relates to a water disposable and flushable absorbent article. Claim 1 is amended to specify that each of first and second fibrous assemblies is a wet laid tissue. The only passage in the application as filed mentioning that any of the first or the second fibrous assembly may be a wet laid tissue is the following: “Either the first or the second fibrous assembly may be a wet laid tissue. In this case, the wet laid tissues must have apertures or be provided with fibrils.” Is the amendment to claim 1 likely to be allowable under Article 123(2) EPC? 1. Yes 2. No

Accepted Answer

The correct answer is 2, the amendment is not allowable under Article 123(2) EPC because the first fibrous assembly is disclosed in the application as filed as being a wet laid tissue only in combination with other features not present in the claim. The amendment is therefore an intermediate generalisation of the originally disclosed technical information. See Guidelines H-V, 3.2.1 and T1164/04.

Question 26

Claim 1 of European patent application EP-1 originally defines a polymer blend XY containing, as a filler, graphite, talc, asbestos or silica. The European search report identifies prior art disclosing a polymer blend XY containing asbestos. Is it permissible under Article 123(2) EPC to restrict the list of fillers by simply omitting asbestos, i.e., to claim a polymer blend XY containing, as a filler, graphite, talc or silica? 1. Yes 2. No

Accepted Answer

The correct answer is 1, it is permissible to delete parts of the claimed subject-matter if the corresponding embodiments were originally described, for example, as alternatives in a claim (as here) or as embodiments explicitly set out in the description. In this case, the scope of the original claim could be seen as four alternative claims and the amendment simply excludes one of these alternatives. It is generally not permissible to delete items from more than one list of alternatives. See Guidelines H-V, 3.3.

Question 27

Todays Question Question 27 In which of the following situations must an authorisation be filed: What will be the consequence if an authorisation is not filed in due time? 1. An authorised representative files a new European patent application 2. An employee files an opposition on behalf of their employer 3. A legal practitioner, who is not an employee of the applicant files a new European patent application 4. An authorised representative takes over representation in a previously filed European patent application 5. An authorised representative files an international application with the EPO as receiving office 6. An authorised representative withdraws a priority claim in an international application

Accepted Answer

Previous QuestionQuestion 27 In which of the following situations must an authorisation be filed: What will be the consequence if an authorisation is not filed in due time? 1.An authorised representative files a new European patent application 2.An employee files an opposition on behalf of their employer 3.A legal practitioner, who is not an employee of the applicant files a new European patent application 4.An authorised representative takes over representation in a previously filed European patent application 5.An authorised representative files an international application with the EPO as receiving office 6.An authorised representative withdraws a priority claim in an international application Answer for Question 27 Autorisations are needed for 2, 3, 4 and 6 but not normally for 1 and 5.For the EPO, signed authorisations must be filed on request and it is up to the EPO to request authorisations. See Guidelines A-VIII, 1.5 for detail. Re: 1 and 4: For professional representatives authorisation will only be requested in certain cases, and not normally for newly filed EP applications. The situation in D, where an authorised representative takes over the prosecution of a previously filed European application is one of these special cases where an authorisation is required. See Decision of the President dated 12 July 2007, Special Edition No. 3, OJ EPO 2007, L.1.Re: 2 and 3: Authorisations are required for employees representing their employer Art. 133(3) and for legal practitioners acting in accordance with Art. 134(8) (Guidelines A-VIII, 1.5).Re: 5 and 6: According to Rule 90.(1) a person acting as agent must be appointed. This must be done by all applicants either signing the request or a separate power of attorney (Rule 90.4(a)). Any RO, ISA, SISA or IPEA may waive the requirement of a power of attorney, and the EPO has submitted such a waiver. See PCT Applicant’s Guide, International Phase Introduction, Annex C: EPO. Hence, for filing an international application with the EPO as RO no authorisation is needed. However, Rule 90.4(e) says that a power of attorney is always needed for any notice of withdrawal, including withdrawal of a priority claim. See PCT Applicant’s Guide, International phase, 5.044 and 5.045. In each case, if the authorisation is not filed in due time, any action that must be performed by a representative will be considered not to have been performed. The actual consequence will vary depending on the action. Autorisations are needed for 2, 3, 4 and 6 but not normally for 1 and 5.For the EPO, signed authorisations must be filed on request and it is up to the EPO to request authorisations. See Guidelines A-VIII, 1.5 for detail. Re: 1 and 4: For professional representatives authorisation will only be requested in certain cases, and not normally for newly filed EP applications. The situation in D, where an authorised representative takes over the prosecution of a previously filed European application is one of these special cases where an authorisation is required. See Decision of the President dated 12 July 2007, Special Edition No. 3, OJ EPO 2007, L.1.Re: 2 and 3: Authorisations are required for employees representing their employer Art. 133(3) and for legal practitioners acting in accordance with Art. 134(8) (Guidelines A-VIII, 1.5).Re: 5 and 6: According to Rule 90.(1) a person acting as agent must be appointed. This must be done by all applicants either signing the request or a separate power of attorney (Rule 90.4(a)). Any RO, ISA, SISA or IPEA may waive the requirement of a power of attorney, and the EPO has submitted such a waiver. See PCT Applicant’s Guide, International Phase Introduction, Annex C: EPO. Hence, for filing an international application with the EPO as RO no authorisation is needed. However, Rule 90.4(e) says that a power of attorney is always needed for any notice of withdrawal, including withdrawal of a priority claim. See PCT Applicant’s Guide, International phase, 5.044 and 5.045. In each case, if the authorisation is not filed in due time, any action that must be performed by a representative will be considered not to have been performed. The actual consequence will vary depending on the action. Autorisations are needed for 2, 3, 4 and 6 but not normally for 1 and 5.For the EPO, signed authorisations must be filed on request and it is up to the EPO to request authorisations. See Guidelines A-VIII, 1.5 for detail. Re: 1 and 4: For professional representatives authorisation will only be requested in certain cases, and not normally for newly filed EP applications. The situation in D, where an authorised representative takes over the prosecution of a previously filed European application is one of these special cases where an authorisation is required. See Decision of the President dated 12 July 2007, Special Edition No. 3, OJ EPO 2007, L.1.Re: 2 and 3: Authorisations are required for employees representing their employer Art. 133(3) and for legal practitioners acting in accordance with Art. 134(8) (Guidelines A-VIII, 1.5).Re: 5 and 6: According to Rule 90.(1) a person acting as agent must be appointed. This must be done by all applicants either signing the request or a separate power of attorney (Rule 90.4(a)). Any RO, ISA, SISA or IPEA may waive the requirement of a power of attorney, and the EPO has submitted such a waiver. See PCT Applicant’s Guide, International Phase Introduction, Annex C: EPO. Hence, for filing an international application with the EPO as RO no authorisation is needed. However, Rule 90.4(e) says that a power of attorney is always needed for any notice of withdrawal, including withdrawal of a priority claim. See PCT Applicant’s Guide, International phase, 5.044 and 5.045. In each case, if the authorisation is not filed in due time, any action that must be performed by a representative will be considered not to have been performed. The actual consequence will vary depending on the action.

Question 28

Correction of errors and mistakes in any document filed with the European Patent Office may be corrected on request under Rule 139 EPC. What is the last date in written proceedings prior to grant that such a request can be made? 1. Up to the time the decision to grant has been received by the applicant or its representative. 2. Up to the time the decision to grant has been handed over to the EPO internal postal service. 3. Up to the expiry of the time limit for replying to the communication under Rule 71(3) EPC.

Accepted Answer

The correct answer is 2, up to the time the decision to grant (Rule 71a(1) EPC) is handed over to the EPO's internal postal service. See G12/91 and Guidelines H-VI, 2.1. This date cannot be foreseen, but is noted explicitly in the lower right corner of any decision letter from the EPO.

Question 29

On receipt of the Decision to Grant its European patent application EP-1 under Rule 71a(1) EPC the applicant notices it has made a significant typographical error in claim 1. What action can the applicant take before the EPO to correct the error? 1. None 2. Seek correction under Rule 140 EPC 3. Seek correction under Rule 139 EPC

Accepted Answer

The correct answer is 1, no action can be taken to correct a typographical error at this stage. Correction under Rule 139 EPC is only possible up to the time the decision has been handed over to the EPO's internal postal service (Guidelines H-VI, 2.1). Rule 140 EPC is only available to correct errors in decisions of the EPO, and not to correct errors in documents filed by a patent applicant or proprietor (G1/10). Where appropriate, correction may be possible after grant by way of limitation or opposition proceedings, but any amendment must comply with Article 123(2) and (3) EPC.

Question 30

Company X wishes to file an opposition to European patent EP-B, which was recently granted to its main competitor, company Y. To avoid retaliation, company X would prefer not to file the opposition in its own name. It therefore asks a European Patent Attorney to file the opposition in her own name. Will the EPO accept this? 1. Yes 2. No 3. Only if the patentee does not object

Accepted Answer

The correct answer is 1, it is permissible to file an opposition in one’s own name while acting on behalf of a third party G3/97 and G4/97. The only two situations that might be considered abuse of process would be if the opponent was acting on behalf of the proprietor, company Y, or the opponent was de facto acting as a professional representative without being qualified. Since in this case the attorney is a qualified European Patent Attorney, acting on behalf of company X, this situation does not arise.Company X will not be party to the proceedings so it will be dependent on the representative during opposition proceedings.

Question 31

European patent EP-B is granted with a claim directed to a method of operating a heart pacemaker in dependence upon the required cardiac output while a person is exercising, the pacemaker including a pressure sensing means mounted on a pacing lead and adapted to be implanted in a heart and used to sense the right ventricular systolic pressure, which pressure is used to control the pacer rate. Is it permissible in opposition or opposition appeal proceedings to amend the claim to be directed to a heart pacemaker in order to address problems relating to Article 53(c) EPC? 1. Yes, a change in claim category is permitted. 2. No, a change in claim category would contravene Article 123(3) EPC.

Accepted Answer

The correct answer is 2, a change in claim category from a method of operating a device to the device itself, i.e. deleting the “method features” defining therapeutic operation of the device, would broaden the claim and contravene Article 123(3) EPC (see Guidelines H-IV, 3.7). The features of the pacemaker as defined in the device claim do not depend on the circumstances of its operation, whereas they depended on them under the terms of the prior method claim (“while a person is exercising”). If the original claim contains the claimed features of the device exhaustively, the change of category may be allowable (Guidelines H-V, 7.3). This condition is not fulfilled. Method features relating to how the pacemaker is installed in and interacts with the human body cannot be converted to device features, amongst other things because an “adapted to” type formulation does not confer the same limitation. For example, a “pressure sensing means adapted to sense the right ventricular systolic pressure” is not limited to such use, since it can e.g. be used to sense the left ventricular systolic pressure. See T82/93 (especially Reasons 2.2 and 2.3).

Question 32

The first communication from the Examining Division concerning a European patent application is unexpectedly negative. The applicant decides not to proceed further with the application and asks if there is any possibility of a refund of fees in this situation. 1. Yes 2. No

Accepted Answer

The correct answer is 1. 50 % of the examination fee will be refunded if the patent application is withdrawn after substantive examination has begun but before the expiry of the time limit for replying to the first communication. To get the refund, the applicant must actively withdraw the application before the time limit for reply. [Art. 11(b) RFees]

Question 33

You file an international application for an applicant on 8 November 2017, but do not pay the fees because the applicant wishes to delay the fee payment as long as possible. Fees are due by 8 December 2017, but are not paid until 11 December 2017. What is the most likely outcome? 1. The international application will be considered to be withdrawn. 2. The fees will be accepted as if the fees had been paid within the 1 month period. 3. The applicant will be sent an invitation to pay a late payment fee of 50% of the fees due.

Accepted Answer

The correct answer is 2, the fees will be accepted as if they had been paid within the 1 month period. This is because it is extremely unlikely the receiving office will have issued an invitation to pay the fees originally due together with the late payment fee (Rule 16bis.1 PCT) by 11 December 2017 and any payment made before the issue of the invitation is considered to have been made in due time. See PCT Applicant's Guide International Phase 5.193 and 5.194.

Question 34

Two applicants resident in Germany file an international application with the EPO as receiving office. No agent or common representative is appointed. Following receipt of the international search report, the applicants both agree the international application should be withdrawn, so the applicant first named on Form PCT/RO/101 sends a letter, signed by him, to the EPO as receiving office specifically withdrawing the international application. Will the application be withdrawn? 1. No. 2. Yes.

Accepted Answer

The correct answer is 1, the international application will not be withdrawn. A deemed common representative (as in this case) is not entitled to sign a notice of withdrawal on behalf of the other applicant. See Rule 90.4(c) PCT and PCT Applicant's Guide International Phase 11.048.

Question 35

The applicant for international application PCT-1 wishes to prevent publication of the application. What is the last day for withdrawing the application and preventing publication? 1. The 15th day prior to the date of publication. 2. Any time prior to the date of publication. 3. The end of the day five weeks before the end of the 18th month from the priority or filing date as appropriate.

Accepted Answer

The correct answer is 1. The applicant can prevent publication if the international application is withdrawn before the technical preparations for publication have been completed (Article 21.5 PCT; PCT Applicant's Guide International Phase 11.048 & 11.049) and the technical preparations for publication are deemed completed by the 15th day prior to the date of publication (PCT Applicant's Guide International Phase 9.014).

Question 36

You are the agent for international application PCT-1. Shortly before the end of the international phase the applicant informs you it wishes to continue only with the regional phase before the EPO and additionally that there was an error in the details of the inventor and that the correct inventor is Miss White rather than Mr Black. The applicant asks whether it would be better to wait until entry into the EPO regional phase rather than to rush correction of the inventorship details in the international phase. What is your advice? 1. Inventorship should be corrected if at all possible in the international phase. 2. It would be better to wait until after entry into the EPO regional phase. 3. There is no difference between the two options.

Accepted Answer

The correct answer is 1. Although it should also be possible to correct the inventor's details in the EPO regional phase, this requires the consent of the wrongly-named inventor (Rule 21(1) EPC), while in the international phase no such consent is required (Rule 92bis.1 PCT; PCT Applicant's Guide International Phase 11.018 - 11.020).

Question 37

You are monitoring the progress of an international application and on reviewing details of the international search report you realise that you know of relevant prior art that has not been cited in the search report, but which is likely to be novelty-destroying in respect of at least some of the claims. You believe the international application will enter the national or regional phase in a significant number of countries or regions and it would therefore be time-consuming and costly to file separate observations in respect of each of the national or regional applications. What can you do? 1. File observations on-line using ePCT. 2. Send a letter with your observations to the receiving office or the International Bureau. 3. File observations on-line or by letter. 4. It is not possible to file observations on international applications.

Accepted Answer

The correct answer is 1. It is possible to file observations on-line using ePCT, but submissions made in any other way will not normally be treated as observations. It is up to the individual offices to decide what use to make of the ePCT observations. See PCT Applicant's Guide International Phase 11.109 – 11.117.

Question 38

The EPO as receiving office issues an invitation to the applicant to remedy certain defects in an international application within a time limit of 2 months from the date of invitation. The invitation is dated as being mailed on 22 September 2017 and is received by the applicant on 2 October 2017. What is the final date for responding to the invitation? 1. 22 November 2017 2. 25 November 2017 3. 27 November 2017 4. 2 December 2017

Accepted Answer

The correct answer is 3, 27 November 2017. The invitation was received 10 days after mailing, i.e. 3 days later than the 7 days of Rule 80.6 PCT, so 3 days are added to the mailing date and the invitation is deemed to have been mailed on 25 September 2017. The two-month period ends on 25 November 2017, which is a Saturday. The final date for responding is therefore 27 November 2017 (Monday). (Rule 80.5(i) PCT)

Question 39

International application PCT-1 is filed 31 October 2017 and seeks to claim priority from European patent application EP-1 filed 28 October 2016. Can the claim to priority be restored in the international phase so as to be effective in a subsequent EPO regional phase? 1. No, the 12-month period has expired. 2. Yes, the applicant can request further processing. 3. Yes, the applicant can restore the priority claim provided it can show the date was missed unintentionally. 4. Yes, the applicant can restore the priority date provided it can show, in spite of all due care, it was unable to meet the time limit for claiming priority.

Accepted Answer

The correct answer is 4. Further processing can only be requested before the EPO in the regional phase and is ruled out for the priority period (Article 121(4) EPC). In the international phase the applicant can restore the right of priority (Rule 26bis.3(a) PCT); see PCT Applicant’s Guide International Phase 5.062-5.068. Although the "unintentional" criterion is applicable in some countries, the EPO applies the "all due care" criterion of Rule 26bis.3(a)(i) PCT and will apply this in accordance with its standing practice under Article 122 EPC and Rule 136 EPC – see PCT Applicant’s Guide National Phase, Annex: National Chapter, EP.28 and Euro-PCT Guide 10th edition, 2017, 630 – 636.

Question 40

You receive an email on 31 October 2017 from a United States patent attorney asking you to enter the regional phase before the EPO in respect of international application PCT-1. The international application was filed at the United States Patent and Trademark Office on 14 March 2016 claiming priority from United States patent application US-1 filed 14 March 2015. Can you effect entry into the EPO regional phase? 1. No, the 31-month period has expired. 2. Yes, provided the priority of US-1 is withdrawn. 3. Yes, provided use is made of the provisions for further processing.

Accepted Answer

The correct answer is 3, the EPO regional phase can still be entered provided use is made of further processing. The 31-month period expired on 14 October 2017. Since the 31-mont time limit was not met, the EPO will issue a communication to the applicant under Rule 160(2) EPC and there will be a 2-month period for entry into the EPO regional phase using further processing (Article 121(1) & Rule 135 EPC). On the 31st October, the client is therefore well within the 2-month period for requesting further processing It is not necessary to wait for the communication to be issued, but the further processing fee must still be paid in addition to the other fees and acts for entry into the EPO regional phase. It is only possible to withdraw a priority claim in an international application prior to the expiry of 30 months from the (earliest) priority date (Rule 90bis.1(a) PCT).

Question 41

International patent application PCT-1 is filed 15 March 2015 without any claim to priority and steps are taken to enter the EPO regional phase on 30 September 2017. When should the renewal fee in respect of the third year be paid (without surcharge)? 1. 31 March 2017 2. 30 September 2017 3. 15 October 2017 4. 16 October 2017 5. 31 October 2017 Answer 42

Accepted Answer

The correct answer is 4, 16 October 2017. The renewal fee must be paid within 31 months of the filing date of PCT-1 (Rule 159(1)(g) EPC). 15 October 2017 is a Sunday, so the fee is due by Monday 16 October 2017 under Rule 134(1) EPC (see J1/81 and Guidelines A-X, 5.2.4). Unlike the direct filing of a European patent application, there is no provision for paying the renewal fee within 1 month of entry into the regional phase. Also, in this case the fee is due on the actual date and not at the end of the month during which the 31-month period expires. The correct answer is 4, 16 October 2017. The renewal fee must be paid within 31 months of the filing date of PCT-1 (Rule 159(1)(g) EPC). 15 October 2017 is a Sunday, so the fee is due by Monday 16 October 2017 under Rule 134(1) EPC (see J1/81 and Guidelines A-X, 5.2.4). Unlike the direct filing of a European patent application, there is no provision for paying the renewal fee within 1 month of entry into the regional phase. Also, in this case the fee is due on the actual date and not at the end of the month during which the 31-month period expires.

Question 42

International application PCT-1 was filed by applicant A on 5 January 2015 and the requirements for entry into the European regional phase were completed on 19 July 2017. European patent application EP-1 was filed by applicant B on 19 June 2017 validly claiming priority from Italian patent application IT-1 filed 20 June 2016. PCT-1, EP-1 and IT-1 all relate to the same invention. What is the prior art effect of PCT-1 on EP-1? 1. PCT-1 has no prior art effect on EP-1. 2. PCT-1 will be state of the art according to Article 54(3) EPC. 3. PCT-1 will be state of the art according to Article 54(2) EPC.

Accepted Answer

The correct answer is 2, PCT-1 will be state of the art according to Article 54(3) EPC due to its earlier filing date. See Article 153(5) EPC & Rule 165 EPC.The correct answer is 2, PCT-1 will be state of the art according to Article 54(3) EPC due to its earlier filing date. See Article 153(5) EPC & Rule 165 EPC. The relevant dates are shown in the timeline below.PCT-1 was published promptly 18 months after 05/01/2015 (provided that the applicant of PCT-1 did not request early publication under Article 21(2)(b) PCT), thus promptly after 05/07/2016 (Article 21(2)(a) PCT and Rule 48 PCT), that is on the following Thursday, i.e. on 07/07/2016 (see Applicant’s Guide International Phase 9.013). This is later than the priority date of EP-1 of 17/06/2016. PCT-1 is therefore not comprised in the state of the art in the sense of Article 54(2) EPC for EP-1.

Question 43

International application PCT-1 enters the European regional phase as EP-1 today. Independent claims 1 and 10 of the international application were considered to lack unity in the international phase and only a partial search report was drawn up by the EPO as ISA in respect of the invention of claim 1. The applicant wishes to have the opportunity to protect the invention of claim 10 during the EPO regional phase, but wishes to keep costs to a minimum, at least at the beginning. What can the applicant do? 1. File a divisional application to the invention of independent claim 10 after entry into the EPO regional phase. 2. Pay an additional search fee in respect of the invention of independent claim 10 within 2 months of entry into the EPO regional phase. 3. Pay an additional search fee in respect of the invention of independent claim 10 within 2 months of notification by the EPO.

Accepted Answer

The correct answer is 3, see Rule 164(2) EPC. If the examining division still considers there is lack of unity, it will send a notification (Rule 164(2)(a) EPC. It is possible the EPO may regard the claims as satisfying the requirements of Article 82 EPC and no further search fee may be required. In this case, for answer B, the additional search fee is paid without a legal basis. It will be refunded by the EPO (Guidelines A-X, 10.1.1) but this might take some time.Answer 1 would work, but involves additional costs.

Question 44

In general, oral proceedings must be held if any party to proceedings so requests, except in the case of a request for further oral proceedings before the same department where the parties and the subject of the proceedings are the same. Are there any further situations in which the EPO may refuse a request for oral proceedings? 1. There are no further exceptions. 2. The receiving section may refuse a request for oral proceedings. 3. The opposition division may refuse a request for oral proceedings. 4. The legal division may refuse a request for oral proceedings.

Accepted Answer

The correct answer is 2, the receiving section may refuse a request for oral proceedings. According to Article 116(2) EPC, the receiving section is only required to accede to a request for oral proceedings if it considers this to be expedient or if it intends to refuse a European patent application.

Question 45

Entry into the European phase of an international application can be effected early provided there is an express request for early processing at the time the requirements of Rule 159(1) EPC are complied with. International application PCT-1 was filed 28 months ago with no claim to priority. The application consists of 20 pages, including 16 claims. The international search was carried out by the EPO acting as ISA and the international search report was published with the international application. Which fees must be paid in order to effect early entry into the European phase? 1. The filing fee. 2. The filing fee, the examination fee and the designation fee. 3. The filing fee, the examination fee, the designation fee and the renewal fee. 4. The filing fee, the claims fee, the examination fee, the designation fee and the renewal fee.

Accepted Answer

The correct answer is 3. The claims fee (Euro-PCT Guide 10th edition, 2017; 602) can be paid up to expiry of the period under Rule 162(2) EPC. See Euro-PCT Guide 434 & 447.

Question 46

International application PCT-1 was not filed within the 12 months of its priority application. In practice, the priority period was missed by 25 days. The applicant filed a request for restoration of the priority right at the receiving office and this was granted under the "unintentional" criterion before publication of the international application. The applicant realises this is not sufficient for the EPO to grant restoration of the priority right and asks you to file a request for restoration after entry into the EPO regional phase. By which date must the request for restoration be filed at the EPO? 1. Within 1 month from the expiry of 31 months from the filing date of the priority right to be restored. 2. Within 1 month from the date on which the requirements of Rule 159(1) EPC are satisfied. 3. Within 2 months from the date on which the requirements of Rule 159(1) EPC are satisfied. 4. Within 1 month from the expiry of 31 months from the filing date of the international application.

Accepted Answer

The correct answer is 1, within 1 month from the expiry of 31 months from the filing date of the priority right to be restored. According to Rule 26bis.2(c)(iii) PCT a priority claim shall not be considered void only because the international application has a filing date which is later than the date on which the priority period expired, provided that the filing date is within 2 months of that date. Consequently the 31 month period expires 31 months from the priority date to be restored. A period of 1 month is permitted for filing a request for restoration of priority at the EPO under Rule 49ter.2(b)(i) PCT and Article 22 PCT (see PCT Applicant’s Guide National Phase 6.007 – 6.008). (See also Guidelines E-VIII, 2.3.5.)

Question 47

International application PCT-1 claims priority from Korean utility model application KR-U1. Is a translation of the priority document required on entry into the European regional phase? 1. A translation into the language of the proceedings is required within 2 months of the end of the 31 month period for entering the EPO regional phase. 2. A translation into one of the official EPO languages is required within 2 months of the end of the 31 month period for entering the EPO regional phase. 3. No translation is required unless validity of the priority claim is relevant to patentability. 4. No translation is required if a declaration is submitted that the European patent application is a complete translation of the priority application.

Accepted Answer

The correct answer is 3, no translation is required unless validity of the priority claim is relevant to patentability. See Rule 51bis.1(e)(i) PCT and PCT Applicant’s Guide National Phase 5.010. Answer D is also correct. If the priority claim becomes relevant to patentability, a declaration that the European patent application is a complete translation of the priority application may be made instead. (See Guidelines E-VIII, 2.3.5 and A-III, 6.8.6). Note that a certified copy of the priority document itself must always be provided, except in the cases where the EPO will include a copy of the previous application without such a request (Guidelines A- III, 6.7). This is the case here, since the previous application was a Korean utility model application.

Question 48

A translation of an international application is not filed at the EPO in due time following entry into the EPO regional phase. How can this be remedied? 1. The applicant can request reinstatement of rights under Rule 49.6 PCT. 2. The applicant can file the translation, request further processing and pay the further processing fee under Rule 135 EPC within 2 months of notification by the EPO.

Accepted Answer

The ideal answer is 2, further processing should be requested under Article 121 and Rule 135(1) EPC. Option A can be used but, due to the strict requirements and higher fee, is not appropriate unless the period for requesting further processing has expired(see Guidelines E-VIII, 2.1.2).

Question 49

The applicant for international application PCT-1 is based in Japan. Having regard to the provisions of the EPC and PCT, can the applicant itself comply with the requirements of Rule 159(1) EPC. 1. No, a professional representative must first be appointed. 2. No, a professional representative or an appropriate legal representative must first be appointed. 3. Yes, the applicant can itself comply with the requirements of Rule 159(1) EPC.

Accepted Answer

The correct answer is 3, the applicant can itself comply with the requirements of Rule 159(1) EPC (Euro-PCT Guide 10th edition, 2017, 461). Thereafter, a professional representative or appropriate legal practitioner must be appointed in accordance with Articles 133(2) and 134 EPC, except for the payment of fees (fees may be validly paid by any person, Guidelines A-X, 1).

EQE (Fach) / Coffe Brake EQE (Lektion)