Training for the European Qualifying Examination Edition August 2013 ERRATA

MAIN-EXAM QUESTIONS FOR PAPER D Editor:

Pete Pollard

This document only contains major errors.

Our thanks to all those who have given us feedback on these questions.

Good luck at EQE 2014

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Main-Exam Questions SPECIAL QUESTIONS

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EPC: SUBSTANTIVE PATENT LAW

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B4 – Languages; Translations of applications

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C1 – Patentable and non-patentable inventions; Industrial application

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C4 – Exceptions to patentability; Medical uses

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C7 – Priority under Paris Convention, EPC and US/JP national law

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EPC: PROCEDURAL LAW

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H3 – Filing the application; Filing date; Formalities examination

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H7 – Amendments and correction of errors

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H8 – Decision to grant the patent or refuse the application

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H11 – Common provisions governing procedure

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SPECIAL QUESTIONS DEALING WITH LEGAL CHANGES OF 2012 [Incorrect question numbers] 

New policy when EPO acts as IPEA – OJ 2011, 532

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L2-28, L2-29L3-28, L3-29

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EPC: SUBSTANTIVE PATENT LAW B – INTRODUCTION EPC B4 – Languages; Translations of applications (EQE – 6 points)

B4-13 [Updated answer]

The grant of a European patent to an Irish company was mentioned in the European Patent Bulletin on 21 November 2012. The language of the proceedings was English. The company would like to have this patent validated in DE, IS and SK. Today, 26 February 2013, it is noticed that no action has been taken yet. How should the company proceed? Answer EPC (a) For DE, no translation is required - A.65(1) and London Agreement A.1(1). So validation in DE was automatic o No action required (a)(b) For IS, translation of claims into Icelandic is required - Nat Law, Tab IV o patent was granted in English, so no translation of description required - London Agreement A.1(2) and (3) o Last day to file translation is: 21/11/12 + 4m  21/3/13 (Thu) o So the translation may still be filed (b)(c) For SK, complete patent specification has to be translated into Slovak - Nat Law, Tab IV o Last day to file translation is: 21/11/12 + 3m  21/2/13 (Thu) o so today (26/2/13) it is too late o Last day to file translation is also 21/2/13, so today (26/2/13) it is too late o But if surcharge is paid, translation can be filed at latest on: 21/2/13 + 3m  21/5/13 (Tue) o Also SK professional representative has to be appointed to file translation Comment o Based on Question 10 of Paper DI of EQE 2007 [4 points (adapted)]. o Examiners’ report: This question was reasonably well answered. However, some candidates seem not to have brought along the National law relating to the EPC to the Exam and therefore could not obtain many marks for this question.

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C – PATENTABILITY C1 – Patentable and non-patentable inventions; Industrial application C1-08 [Updated answer]

(4.5 points)

An applicant of a European patent application EP1 comes to you one month after having filed a patent application for a gene sequence, describing the nucleic acid sequence and a method for isolating it, but not its function. Two weeks ago, the inventor has presented the content of the application at a conference together with a medical application of the gene sequence. (a) Legal position? (b) Is it possible to file the text of EP1 as a new application EP2, validly invoking priority of the first application and additionally indicating the medical application? Answer EPC (a) For a gene sequence, the industrial applicability must be disclosed in EP application - R.29(3) Appln o So EP1 will be refused - A.90(57(2) - for lack of industrial application - A.57, R.29(3) (a)(b) No o For valid priority – A.87(1) - Bboth EP1 and EP2 must disclose the same invention – G2/98 o EP1 does not give sufficient information for the skilled person to carry it out – T718/96; A.83But industrial applicability must be disclosed in EP application - R.29(3) o So EP1 is not an enabling disclosure - T206/83 - and priority is invalid o and EP2 will not be lacks novel in view of the Conference Comment o GL C-IV(2012) G-III, 4, 5.4: in general it is required that the description of a European patent application should, where this is not self-evident, indicates the way in which the invention is capable of exploitation in industry. In relation to sequences and partial sequences of genes, this general requirement is given specific form in that the industrial application of a sequence or a partial sequence of a gene must be disclosed in the patent application. A mere nucleic acid sequence without indication of a function is not a patentable invention [EU Dir. 98/44/EC, rec. 23]. o G2/98 defined “same invention” narrowly. You could also state that EP1 was missing an essential feature of the invention, which is the industrial applicability of the gene sequence

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C4 – Exceptions to patentability; Medical uses C4-06 [Incorrect number of points]

(22.5 points)

It is discovered that a chemical compound X, well known as a dye, relieves the pain of asthma. What claims are in principle acceptable in a European patent application? Answer EPC following claims are possible: o “Compound X for use as medicament” - A.54(4) o “Compound X for relieve of pain of asthma” - A.54(5) Comment o T128/82: Where a known compound is for the first time proposed and claimed for use in therapy, the fact that a specific use is disclosed in the specification does not in itself call for a restriction of the purposelimited product claim to that use. o If it is later discovered that X is known for a therapeutic use, then if the application has a priority date after the publication of G2/08 in the OJEPO - not known yet in June 2010, the Swiss claim will no longer be accepted by EPO as a fall-back position – G2/08 o Also see GL (2012) C-IV, 4.8.

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C7 – Priority under Paris Convention, EPC and US/JP national law C7-07 [Incorrect G decision citation in answer]

(9 points) A Korean applicant resident in Taiwan has filed a Taiwanese patent application on 20 December 2006. One year later he files an international application claiming priority from his earlier application. The international application is filed in Japanese on 20 December 2007 at the Korean Intellectual Property Office indicating the Japanese Patent Office as International Searching Authority. Later on the applicant enters the regional phase before the EPO as designated Office with an English translation of his international application. (a) Will the EPO recognise the priority claim in the regional phase? (b) Would your answer have been different if the international application was filed on 10 December 2007? Answer (a) Yes o Taiwan is not member of Paris Convention o But priority claim from Taiwanese application in IA will be recognised in international phase because Taiwan is member to WTO - A.8, R.4.10(a) PCT o IA filed after entry into force of EPC2000 o A.87(1)2000 also recognises priority for WTO-only member states o So in EP regional phase, EPO will recognise priority claim of Taiwanese application o Effective date of Euro-PCT application will be 20/12/06 (b) Yes o IA filed before entry into force of EPC2000 o EPO had notified IB that A.87(1) EPC1973 was not compatible with R.4.10 as amended since 1 January 2000 - R.4.10(d) o So in EP regional phase, EPO will not recognise priority claim of Taiwanese application - G2/023 and G3/023 o In regional phase before EPO, effective date of Euro-PCT application will be 10/12/07 Comment o Also see OJ2007, 504 item 2. o Reservation was lifted by EPO on 13/12/07 - see A. 7(1) Revision Act, A.1(1) Transitional Provisions and “Notice concerning withdrawal of PCT reservations” OJ2007, 692

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EPC: PROCEDURAL LAW H – PROCEDURE H3 – Filing the application; Filing date; Formalities examination H3-22 [Answer to b) changed with latest version of Guidelines]

(10.5 points)

Today is 1 January 2012. Applicant X filed a European patent application EP1 in 2008. The search report with the written opinion was dispatched on 21 September 2009. No further communication from the EPO has been received for EP-1. EP-1 is still pending. On 27 October 2009, the applicant validly filed divisional applications DIV-1 and DIV-2, requesting accelerated proceedings for DIV-1. DIV-1 and DIV-2 were filed initially with the same description and claims as EP1. The first Article 94(3) communication for DIV-1 is dated 9 February 2010. The first Article 94(3) communication for DIV-2 is dated 23 February 2010. No non-unity objections have been raised for EP-1, DIV-1 & DIV-2. (a) What is the last date to be able to file a divisional of DIV-1? What is the last date to file a divisional of DIV-2? (b) Would your answer to a) be different if an Article 94(3) communication had been issued for EP-1 on 29 April 2011 (c) Would your answer to a) be different if the Examining Division had indicated non-unity during oral proceedings for DIV-2 on 3 May 2011. This objection was confirmed in the minutes of the oral proceedings, dated 3 June 2011. This is the only non-unity objection raised for EP-1, DIV-1 & DIV-2. Answer EPC o For valid divisional: immediate parent must be pending - A.76, R.36(1), and a period of R.36(1) must still be unexpired o EP-1 and DIV-1 form first divisional family, and EP-1 and DIV-2 form second family (a) o For first family, DIV-1 is earliest application that has received communication from Exam. Div. o So period to file voluntary divisional expires: 9/2/10 + 10d [R.126(2)] => 19/2/10 +24m [R.36(1)(a); R.131(4)] => 19/2/12 (Sun) [R.134(1)] => 20/2/12 (Mon) o As there are no non-unity objections, period of R.36(1)(b) is not available o So last date to file divisional of DIV-1 is 20/2/12 o For second family, DIV-2 is earliest application that has received communication from Exam. Div. o So period to file voluntary divisional expires: 23/2/10 + 10d [R.126(2)] => 5/3/10 +24m [R.36(1)(a); R.131(4)] => 5/3/12 (Mon) o As there are no non-unity objections, period of R.36(1)(b) is not available o So last date to file divisional of DIV-2 is 5/3/12 o There has not yet been communication from Exam. Div. for EP-1. As it is still pending, divisional of EP-1 may still be filed – GL (2012) A-IV, 1.1.1.4 (b)

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21/9/09 SR WO sent

27/10/09 DIV-1 & DIV-2 filed

29/4/11 1st Art.94(3) EP1 9/2/10 1st Art.94(3) DIV-1 23/2/10 1st Art.94(3) DIV-2

o No, there is no difference. o The subsequent communication for EP1 has no effect – GL (2012) A-IV, 1.1.1.4Yes o The subsequent communication for EP1 would trigger the 24m voluntary divisional period again, for both DIV-1 and DIV-2 families – GL (2013) A-IV, 1.1.1.4 o As EP-1 is still pending, the period to file a divisional of DIV-1 and DIV-2 expires: 29/4/11 + 10d [R.126(2)] => 9/5/11 +24m => 9/5/13 (Thu)

(c) 21/9/09 SR WO sent

27/10/09 DIV-1 & DIV-2 filed EP1 9/2/10 1st Art.94(3) DIV-1 23/2/10 1st Art.94(3)

3/5/10 Oral Proc DIV-2 3/6/10 Oral Proc Minutes

o only difference is that R.36(1)(b) period becomes available for DIV-2. It expires on: 3/6/10 + 10d [R.126[2]] => 13/6/10 + 24m [R.36(1)(b); R.131(4)] => 13/6/12 (Wed) o So last date to file divisional of DIV-2 becomes 13/6/12 Comment o Based on Q.3 DI 2003 - 6 points - adapted o The Search report with written opinion does not trigger the R.36(1) periods – OJ 2010, 406; GL (2012) AIV, 1.1.1.2 o The new divisional is to be filed  1 April 2010, so the 24m R.36(1) time limits are applicable - OJ 2009, 296 & 481 o Note that the 24m periods of R.36(1) will be deleted as from 1 April 2014. For more details, see the Decision of the Administrative Council of 16 October 2013 amending Rules 36, 38 and 135 (CA/D 15/13). For divisional filed on or after that date, the only requirement will be that the parent is pending. o But EQE 2014 tests the legal situation on 31/12/13, so you are only expected to know the “old” situation with the 24m periods. (b) In presentations from the EPO in 2010, it was indicated that the subsequent appearance of the A.94(3) communication for EP1 re-triggered the 24 month period of R.36(1)(a). GL (2012) A-IV, 1.1.1.4 stated that the subsequent appearance of the A.94(3) communication would have no effect. GL (2013) A-IV,

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1.1.1.4 is the latest version, and it states that the subsequent appearance of the A.94(3) communication would re-trigger the 24 month period. In earlier presentations from the EPO, it was indicated that the subsequent appearance of the A.94(3) communication for EP1 re-triggered the 24 month period of R.36(1)(a). This has now been changed to the indicated interpretation, and published in the 2012 version of the Guidelines. (c) The time limit runs from notification of the minutes of the oral proceedings - GL (2012) A-IV, 1.1.1.3 (iii) o In earlier notices [OJ2009, 481], the 24m was indicated to run from the initial notification – i.e. the interview, telephone call or oral proceedings. In the 2012 version of the Guidelines, this has been changed to be based on the notification of the minutes. The only strange case is 24m running from the interview if the minutes are notified immediately after the interview. In that case, the 10 days of R.126(2) are irrelevant.

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H7 – Amendments and correction of errors H7-14 [3 days is not a general rule]

(1 point)

The Examining Division intends to grant a European patent and has dispatched the communication under R.71(3) EPC. After paying the fee for grant and publishing and filing the translation of the claims, the applicant finds an obvious error in the description of the patent application. Until when can he submit a request for correction? Answer EPC Requests for correction under R.139, 2nd sentence can only be considered - G12/91: o until the decision to grant a patent or to refuse the application has been handed over to the internal postal service of EPO, for transmittal to the applicant (in written proceedings), o this is 3 days prior to thedate of handing over is printed in the footer of date on the decision – T2573/11 Comment o Also see GL (2012) H-VI, 4.2 o The decision is typically given to the EPO postal service 3-5 working days before the date on the decision. The 3 days indicated in G12/91 was the example in that case – since then, the EPO now indicates on each decision when it is handed over to the postal service. Of course, you only know this after receiving the decision. o The request is certainly in time if it is received by the EPO on the day before the date on which it is handed over to the EPO postal service – T2573/11

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H8 – Decision to grant the patent or refuse the application H8-07 [3 days is not a general rule]

(7.5 points)

During oral proceedings before the Examining Division, an applicant has defended a main request and an alternative set of claims as an auxiliary request. No decision was pronounced at the end of the oral proceedings. A few months later, a communication under R.71(3) EPC is sent to the representative on basis of the auxiliary request and giving reasons why the main request is not considered acceptable, and inviting to file a translation of the claims as attached to the R.71(3) EPC and to pay the fee for grant and publishing. The translation is filed and the fee is paid on the last day of the period. The next day the applicant asks you to challenge the rejection of the main request. Legal situation? Until when can an admissible Notice of Appeal be filed? Answer EPC If applicant does nothing, patent will be granted on basis of set of claims in auxiliary request o applicant cannot file appeal because he is not adversely affected by decision - A.107 - because by filing translation and paying fee for grant and publishing he has implicitly given his approval of text in which Exam. Div. intends to grant patent - R.71(5), last sentence o The main request is no longer at stake, because – GL (2012) C-IV, 1 and C-V, 1.1 and E-IX, 503 - by agreeing unreservedly to version communicated - R.71(5), applicant has elevated auxiliary to his sole request o But appealable decision can be obtained by withdrawing his approval of auxiliary request o Approval of text in which Exam. Div. intends to grant patent is not binding until issue of decision to grant - G7/93 o so approval may be withdrawn up to date on whichup to the day on which decision is handed to postal service – G12/91 o this date of handing over is indicated in the footer of the decision – T2573/11 (c) , i.e. 3 days prior to date stamped on decision - G12/91 o With no approved text - A.113(2) -, application will normally be refused - A.97(2); GL (2012) C-IV, 1 and C-V, 1.1 and E-IX, 5.3 o Fee for grant and publishing will be refunded – R.71a(6) o This decision to refuse will be notified to applicant and applicant may appeal within 2m from notification of decision - A.108 o With the appeal, applicant is allowed to file amendments to re-introduce his main request - A.123(2) Comment o GL (2012) E-IX, 5.3: o If during examination proceedings a main and auxiliary requests have been filed (see E-IX, 3) and none of these is allowable, the reasons for the decision to refuse the application pursuant to Art. 97(2) must not be limited to the main request, but must also comprise the reasons for the non-allowability of each auxiliary request. If one of the requests is allowable, the communication pursuant to Rule 71(3) is to be issued on the basis of the (first) allowable request and must be accompanied by an explanation of the reasons why the higher-ranking requests are not allowable (see C-V, 1.1). o Should the applicant, in response to the communication pursuant to Rule 71(3), maintain higherranking requests which are not allowable, a decision to refuse the application pursuant to Art. 97(2) will normally be issued (see C-V, 4.7 and 4.6.2); the reasons must set out the grounds for the nonallowability of each request which ranks higher than the allowable request. In respect of the allowable request, the decision to refuse must mention that the applicant has failed to give his approval to it o The decision is typically given to the EPO postal service 3-5 working days before the date on the decision. The 3 days indicated in G12/91 was the example in that case – since then, the EPO now indicates on each decision when it is handed over to the postal service. Of course, you only know this after receiving the decision. o The withdrawal is certainly in time if it is received by the EPO on the day before the date on which it is handed over to the EPO postal service – T2573/11

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H8-12

(4.5 points)

After having complied with the Rule .71(3) EPC communication, the applicant of a European patent application wants to submit a separate set of claims for a Contracting State with a national prior right. Until when will the EPO accept such a request? Answer EPC o Requests for amendments after the R.71(3) stage will only be exceptionally allowed - GL (2012) H-II, 2.6 o A request that will be allowed is to amend because of national prior rights - A.139(2) o Applicant may submit an amended claim set solely for the state of the national prior right - R.138 o Once the decision to grant is handed over to EPO’s internal postal service - G12/91 - the application leaves the responsibility of the Examining Division o Examining Division is then no longer required to consider R.137(3)-(5) amendments or R.139 corrections o G12/91: this is 3 days prior to stamped datedate of handing over is indicated in the footer of the on decision to grant – T2573/11 o After that, Examining Division is bound by it and can only amend it to the limited extent provided for in R.140 Comment o GL (2012) H-III, 4.5: If an applicant produces evidence in examination proceedings of the existence of pertinent national rights of earlier date in a particular designated State, it is appropriate to allow the submission of separate claims for the Contracting State in question. o The decision is typically given to the EPO postal service 3-5 working days before the date on the decision. The 3 days indicated in G12/91 was the example in that case – since then, the EPO now indicates on each decision when it is handed over to the postal service. Of course, you only know this after receiving the decision. o The withdrawal is certainly in time if it is received by the EPO on the day before the date on which it is handed over to the EPO postal service – T2573/11

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H11 – Common provisions governing procedure H11-14

(7.5 points)

An Examining Division intends to grant a European patent and therefore despatches the communication under R.71(3) EPC. In the given period, the applicant pays the fees for grant and publishing and files the translation of the claims in the two official languages other than the language of the proceedings. The EPO has not yet despatched the decision to grant the patent pursuant to Art.97(1) EPC. A third party presents observations under Art.115 EPC at this stage. (a) Upon what basis will these observations be considered? Following these observations, the substantive examination is resumed. An interview between the examiner and the applicant takes place and a month later oral proceedings before the Examining Division take place. (b) Could this third party be present: (i) at the interview, and (ii) at the oral proceedings? The oral proceedings are closed by the Examining Division informing the applicant that it intends to grant a European Patent on the basis of the amended claims filed for the oral proceedings. (c) Will further new observations according to Art.115 EPC by the same third party be considered? If so, by what date should they be filed in order to be taken into account? Answer EPC (a) Examination proceedings have not been concluded yet by issuing decision to grant o So, Exam. Div. has to consider observations - A.114, A.115 - GL (2012) H-II, 2.6 and 4.11; GL (2012) E-V, 1.1 and 3; T156/84 (b-i)

No o Third-party is not party to EPO proceedings – A.115, last sentence o Also, interview is instrument covered by A.94(3), so meant for applicant - GL (2012) C-VII, 2.1

(b-ii) No o Third-party is not party to proceedings o and oral proceedings before Exam. Div. are not public - A.116(3) (c) Yes o Examination proceedings have not been concluded yet by issuing decision to grant o So, written proceedings continue o and Exam. Div. has to consider observations - see (a) o As grant is based on amended claims, other requirements, e.g. translation of claims, have to be met => decision to grant cannot be delivered automatically - A.97(1) - GL (2012) E-III, 9 o Last moment to consider observations is 3 days before issue of the date on which decision to grant is handed over to the EPO postal service - G12/91 Comment (a) GL (2012) E-II, 3: o Oral proceedings, particularly in opposition, are held to give the opportunity to finally discuss all matters raised and are normally terminated with a decision announced orally. o The Division is bound by that decision, once announced, and it cannot reopen the proceedings to allow further submissions to be filed or to take into account new facts. o Only if the Division, in the oral proceedings, has not announced a decision, but has decided to continue the proceedings in writing, can further submissions be examined. Such may be the case e.g. when the Examining Division indicates that it intends to grant a patent (or to limit a granted patent in limitation proceedings) on the basis of the documents filed during the oral proceedings. (c) GL (2012) E-II, 9: o Once a decision has been pronounced, submissions of the party or parties cannot be considered any longer and the decision stands, subject to the correction of errors in accordance with R.140. It may only be amended by appeal. o No pronouncement need be made at this point as to the reasons for the decision or the possibility of appeal. However, the Examining or Opposition Division may give a short explanation of the reasons for the decision. o Subsequently the decision in writing containing the reasoning and information as to right of appeal must be notified to the parties without undue delay. The period for appeal will only begin to run from the date of notification of the written decision.

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o Generally speaking it will not be possible to give a decision granting a European patent or maintaining it in amended or limited form in oral proceedings since, in the case of the grant of a patent, the requirements laid down in R.71(3)-(7), and in the case of a patent being maintained in amended or limited form, the requirements of R.82(1) and (2) or R.95(3) must be fulfilled. o The decision is typically given to the EPO postal service 3-5 working days before the date on the decision. The 3 days indicated in G12/91 was the example in that case – since then, the EPO now indicates on each decision when it is handed over to the postal service. Of course, you only know this after receiving the decision. o The observations are certainly in time if received by the EPO on the day before the date on which it is handed over to the EPO postal service – T2573/11

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