DI questions EQE 2013
First impression: some do-able and some really nasty questions. Such as an 8-mark PCT question: tthat will have frightened quite many candidates - we expect many candidates skipped the question without giving any attempt.
We have made a rough solution. Comments are welcome: please add them to the blog via the link below the blog. If posting a comment, please donot use "anonymous" (you may be one of many), but use your name: you can enter a name without signing in (as one of you indicated).
We will underline updates that we will make based on your comments.
Jelle Hoekstra, Pete Pollard, Roel van Woudenberg
Our answers (click "read more"):
DIV1 is divisional from EP1. E The lack of unity was not raised for EP1. So, DIV1 must be filed in R.36(1)(a) time limit, R.36(1)(b) does not apply.
1-2-2011 + 10d +24 m -> 11-2-2013 (not closed).
Tried to file in time. Re-establishment is possible in principle (further processing excluded)
All due care taken.
Within 2 m. from removal of cause of non-compliance; was 20-2-2013, so until 20-4-2013 (EPO closed) -> 22-4-2013. Must also be within 1 year from 1-2-2013 -> 1-2-2014; is OK. Thus 22-4-13:
Complete omitted act –R.136(2): file divisional. Pay RE fee RFees2(1).13.
Make sure to file while EP1 still pending – R.36(1), G1/09.
But unity objection, so also R.36(1)(b) applies.
Notification of minutes trigger it (A-IV 1.1.1.3; OJ 2009, 481 I.(b) / A-IV, 1.1.1.3(iv)): 10 d + 18-11-2011=28-11-2011 + 24 m = 28-11-2013; plenty of time.
But: EP2 must still be pending at the moment DIV2 is filed. Hereto, file DIV2 within time limit set or, to have more time, make sure to respond to minutes within time limit set (may request extension R.132(2) or, if missed, FP) – else EP2 deemed withdrawn Art.94(4). C-VII, 2.5: as a communication was already issued (1/2/2011), the minutes are allowed to set a time limit (not specified in case; probably 4m). Time limit runs from notification of minutes.
Q.3.
a. EPO:
translated claims into DE, EN R.82(2).
Fee for publishing new specification R.82(2), Rfees.2(1), item 8; EUR 70.
All within 3m from invitation.
b. Art.65(1) also applies after amendment, Natlaw table IV
AT: not in London Agreement, <3m of mention of maintenance in amended form: full translation into DE, fee: EUR 180, plus possible page fee
CH; London agreement Art.1(1) (per 1/5/2008), no translation, no fee
NL: London agreement Art.1(2) (per 1/5/2008), not granted in EN, so translation of description into EN/NL required; claims into NL; fee: EUR 25; all <3m
Renewal fee due end of March 2013 in respect of 6th year: Natlaw table VI:
AT: renewal (as from 6th year); EUR 100, last day of March 2013
CH: renewal for 6th year: CHF 100, last day of March 2013
NL: renewal for 6th year: EUR 160, last day of March 2013
However, doc needs to be specified as indication of facts & evidence R.76(2)(c).
Deficiency under R.77(1): not admissible, as not filed before end of opp period, but only 28/12/12.
As opp inadmissible Art.101(1),R.79(1), EPO cannot examine on own motion Art.114(1), R.81(1).
Document will however be added to the file GL D-IV, 3; Art.128
If other admissible opp is pending: EPO may use on own motion, as prima facie novelty-destroying novelty can be brought in after opp period – G10/91
Q.5.
a)
IN competent rO for Mr.S as mr.Surat is resident R.19.1(i)/national R.19.1(ii). But not for Company X– AG-IP Annex B GB / AG-IP Annex C IN.
IN is competent rO for X + Mr.S, as enough to be competent for one applicant –PCT R.19.2.
PCT Art.27(7): IN office may impose national requirements for representation – IN requires no professional agent, no Mr.Surat may be appointed
PCT Art.49: as Mr.Surat entitled to practice before rO=IN he may act before all int.authorities.
R.90.2(a): Mr.S may be appointed
R.90.4(a): by company A and Mr.S signing request, or
R.90.4(b): by company A and Mr.S signing PoA
R.90.2(b): if not appointed , mr.A is considered common repr. As he is only applicant entitled to file with IN office – may then however not do withdrawals R.90bis.5(a)
R.90.3(c): all acts by mrA are then done in relation to all (except withdr if not explicitly appointed)
R.90.4(b): by company A and Mr.S signing PoA.
b2) Yes.
EP attorney may be appointed R.90.1(c) specifically for IPEA.
EP attorney can act before EPO – Art.134(1) EPC.
c ) No.
EPO as (dO or) eO may impose national requirements for representation – PCT Art.27(7).
Mr.S needs professional representation as he is not from an EPC state – Art.133(2) EPC.
This cannot be done by an employee of the other applicant, even though Mr.Wilson hulfills Art.133(3) – R.151(1), GL A-VIII, 1.3
1m expires 11/1/13 + 1m R.40.1(ii), R.80.2 à 11/2/13, Mon
6.1: debit orders allowed for any fee levied by EPO, also by EPO as PCT authority (6.2, HTG-II, 175)
6.2: may be for an individual fee, so for the additional fee of R.40.1(ii) PCT = set by EPO R.40.2(a) = R.158(1) EPC +RFees 2(1).2: 1875 EUR – OJ 2010, 304, Art. 5 and amended Annex C, Part I (OJ 2012, 256)
6.3: date of receipt (duly, so in time) = date of payment if suff funds,
However, not suff funds, as informed by EPO on 22/2
6.4: so not carried out and informed: this is the fax of 25/1 – fax was sent within period of R.40.1(ii) (expiry 11/2)
Replenishment after 11/2/13, so only considered in time if further search fee paid within 1m of fax AND adm.fee 6.6: 30%, is paid in same 1m
1m of fax: 25/1/13 (ADA 6.4) + 1m (ADA 6.5) -> 25/2/13
So replenishment was in time (22/2) and also enough for search fee (1875 < 3000), but no add fee was paid as no debit order was given thereto, even though the amount was enough to also pay the adm fee.
So: ADA 6.7: date of payment = date of replenishement = 22/2: after 11/2, so too late.
Cannot be remedied, as today (26/2) is after 25/2/13: too late to pay administrative fee.
So ISR will not cover both inventions – Art.17(3)(a), last sentence PCT, but only first invention mentioned
We have made a rough solution. Comments are welcome: please add them to the blog via the link below the blog. If posting a comment, please donot use "anonymous" (you may be one of many), but use your name: you can enter a name without signing in (as one of you indicated).
We will underline updates that we will make based on your comments.
Jelle Hoekstra, Pete Pollard, Roel van Woudenberg
Our answers (click "read more"):
Q.1.
Not revoked.
Allowed to have reference to specific passage in US1 – T689/90
(GL H-V 2,5 via F-III, 8); seems specific disclosure
T 737/90 i) Must be available at EPO at filing: ok via
filing certified copy; ii) must get available to public no later than same time
as EP1– OK via opening of file under Art.128
The part required for enablement under Art.83 should be
incorporated in the text, as it is an essential feature (only possible process
to make it, so needed for enablement, even though process not claimed) – F-III
8; was not done.
So, yes valid ground for opposition Art.100(b), but can be
repaired as an amendment; occasioned by ground R.80; no extension of scope
under Art.123(3); so allowed.
Q.2.
A. YesDIV1 is divisional from EP1. E The lack of unity was not raised for EP1. So, DIV1 must be filed in R.36(1)(a) time limit, R.36(1)(b) does not apply.
1-2-2011 + 10d +24 m -> 11-2-2013 (not closed).
Tried to file in time. Re-establishment is possible in principle (further processing excluded)
All due care taken.
Within 2 m. from removal of cause of non-compliance; was 20-2-2013, so until 20-4-2013 (EPO closed) -> 22-4-2013. Must also be within 1 year from 1-2-2013 -> 1-2-2014; is OK. Thus 22-4-13:
Complete omitted act –R.136(2): file divisional. Pay RE fee RFees2(1).13.
Make sure to file while EP1 still pending – R.36(1), G1/09.
B. Yes
R.36(1)(a) period expired, see answer A.But unity objection, so also R.36(1)(b) applies.
Notification of minutes trigger it (A-IV 1.1.1.3; OJ 2009, 481 I.(b) / A-IV, 1.1.1.3(iv)): 10 d + 18-11-2011=28-11-2011 + 24 m = 28-11-2013; plenty of time.
But: EP2 must still be pending at the moment DIV2 is filed. Hereto, file DIV2 within time limit set or, to have more time, make sure to respond to minutes within time limit set (may request extension R.132(2) or, if missed, FP) – else EP2 deemed withdrawn Art.94(4). C-VII, 2.5: as a communication was already issued (1/2/2011), the minutes are allowed to set a time limit (not specified in case; probably 4m). Time limit runs from notification of minutes.
Q.3.
a. EPO:
translated claims into DE, EN R.82(2).
Fee for publishing new specification R.82(2), Rfees.2(1), item 8; EUR 70.
All within 3m from invitation.
b. Art.65(1) also applies after amendment, Natlaw table IV
AT: not in London Agreement, <3m of mention of maintenance in amended form: full translation into DE, fee: EUR 180, plus possible page fee
CH; London agreement Art.1(1) (per 1/5/2008), no translation, no fee
NL: London agreement Art.1(2) (per 1/5/2008), not granted in EN, so translation of description into EN/NL required; claims into NL; fee: EUR 25; all <3m
Renewal fee due end of March 2013 in respect of 6th year: Natlaw table VI:
AT: renewal (as from 6th year); EUR 100, last day of March 2013
CH: renewal for 6th year: CHF 100, last day of March 2013
NL: renewal for 6th year: EUR 160, last day of March 2013
Q.4.
No
Opp.period expired: 21/3/12 + 9m [Art.99(1), R.131(4)] à
21/12/12, Fri: opp timely filedNo
However, doc needs to be specified as indication of facts & evidence R.76(2)(c).
Deficiency under R.77(1): not admissible, as not filed before end of opp period, but only 28/12/12.
As opp inadmissible Art.101(1),R.79(1), EPO cannot examine on own motion Art.114(1), R.81(1).
Document will however be added to the file GL D-IV, 3; Art.128
If other admissible opp is pending: EPO may use on own motion, as prima facie novelty-destroying novelty can be brought in after opp period – G10/91
Q.5.
a)
IN competent rO for Mr.S as mr.Surat is resident R.19.1(i)/national R.19.1(ii). But not for Company X– AG-IP Annex B GB / AG-IP Annex C IN.
IN is competent rO for X + Mr.S, as enough to be competent for one applicant –PCT R.19.2.
PCT Art.27(7): IN office may impose national requirements for representation – IN requires no professional agent, no Mr.Surat may be appointed
PCT Art.49: as Mr.Surat entitled to practice before rO=IN he may act before all int.authorities.
R.90.2(a): Mr.S may be appointed
R.90.4(a): by company A and Mr.S signing request, or
R.90.4(b): by company A and Mr.S signing PoA
R.90.2(b): if not appointed , mr.A is considered common repr. As he is only applicant entitled to file with IN office – may then however not do withdrawals R.90bis.5(a)
R.90.3(c): all acts by mrA are then done in relation to all (except withdr if not explicitly appointed)
b1) IN agent is entitled to practice before IN office
–R.90.1(a)-, so also entitled to act before IPEA – Art.49. Art.49 does not
require that the IN agent actually filed the application.
IN agent may be appointed R.90.1(c) specifically for IPEA.
R.90.4(a): by company A and Mr.S signing the demand, orIN agent may be appointed R.90.1(c) specifically for IPEA.
R.90.4(b): by company A and Mr.S signing PoA.
b2) Yes.
EP attorney may be appointed R.90.1(c) specifically for IPEA.
EP attorney can act before EPO – Art.134(1) EPC.
EPO as (dO or) eO may impose national requirements for representation – PCT Art.27(7).
Mr.S needs professional representation as he is not from an EPC state – Art.133(2) EPC.
This cannot be done by an employee of the other applicant, even though Mr.Wilson hulfills Art.133(3) – R.151(1), GL A-VIII, 1.3
Q.6.
ADA Suppl 3/2009:
Further search fee – invitation Art.17.3(a), R.40 PCT; EPO
as ISA Art.152 EPC, EPO-WIPO-agreement OJ 2010, 304, R.158(1) EPC:ADA Suppl 3/2009:
1m expires 11/1/13 + 1m R.40.1(ii), R.80.2 à 11/2/13, Mon
6.1: debit orders allowed for any fee levied by EPO, also by EPO as PCT authority (6.2, HTG-II, 175)
6.2: may be for an individual fee, so for the additional fee of R.40.1(ii) PCT = set by EPO R.40.2(a) = R.158(1) EPC +RFees 2(1).2: 1875 EUR – OJ 2010, 304, Art. 5 and amended Annex C, Part I (OJ 2012, 256)
6.3: date of receipt (duly, so in time) = date of payment if suff funds,
However, not suff funds, as informed by EPO on 22/2
6.4: so not carried out and informed: this is the fax of 25/1 – fax was sent within period of R.40.1(ii) (expiry 11/2)
Replenishment after 11/2/13, so only considered in time if further search fee paid within 1m of fax AND adm.fee 6.6: 30%, is paid in same 1m
1m of fax: 25/1/13 (ADA 6.4) + 1m (ADA 6.5) -> 25/2/13
So replenishment was in time (22/2) and also enough for search fee (1875 < 3000), but no add fee was paid as no debit order was given thereto, even though the amount was enough to also pay the adm fee.
So: ADA 6.7: date of payment = date of replenishement = 22/2: after 11/2, so too late.
Cannot be remedied, as today (26/2) is after 25/2/13: too late to pay administrative fee.
So ISR will not cover both inventions – Art.17(3)(a), last sentence PCT, but only first invention mentioned
Jelle, Roel, Pete
SHARE:
Thank you for providing solutions.
ReplyDeleteWhat would you say about the awarding of points for a question like Q6? I believe I was more or less in line with your solution until the end, where I missed the part about the debit order not being valid for the 30% fee, so my answer was that the payment was considered in time.
We cannot forecast how the exam committee awards the marks. We can only say that, the marking principle is positive scoring (as long as you don't contradict yourself). if the exam committee expects a 14-step reasoning for a 7-mark question, and you miss out on 2, you probably get 6 marks. But some steps are larger than others and some items require a relatively large number of steps. In this case, the effect of the 30% being paid or not is large (searched or not) - so probably you loose more than 1 mark, as you will also not get the correct conclusion as to which invention(s) will be searched.
DeleteQuestions 1-4 seem very(!) straightforward, should not take more than an hour, which leaves 1 hour for Questions 5 and 6.
ReplyDeleteHow can the very basic Question 2 score the same amount of points as Question 5? Did you (and I) miss something there? Your comments regarding EP1 and EP2 still pending seem not to be necessary since the question gives this information already. This leaves only R36 and restoration time limits to be calculated...
If you really consider Q1-4 very straightforward, you are either very well-trained or overlooked quite a bit.
DeleteOur answers to Q.2 and Q.5 have a similar number of steps, so it does not surprise me that the amount of points is similar.
You must make sure, also in Q.2, to address all relevant items explicitly. If a DI-question asks whether something is possible, you are always expected to discuss until what date/condition/... The case only states that EP1 and EP2 are pending now. A complete answer also requires that you indicate the conditions - so: when pendency ends and when the 24m limit(s) of R.36(1)(a)/(b) expire. In Q.2-B, pendency of EP2 will end in the near future if you donot respond to the minutes, so it is very relevant to discuss pendency!
Thank you for providing these helpful solutions!
ReplyDeletePerhaps you could elaborate on your proposed answer for Q1. T611/89 and T267/91 both say that an invention is sufficiently disclosed if reference is made to another document in the patent specification and the original description, and the skilled person can obtain from this cross-reference the information required to reproduce the invention but not disclosed in so many words in the description itself.
Following that logic, the invention in EP1 is sufficiently disclosed, because US1 is referred to in an allowable way and discloses the necessary method that is required to obtain X.
Is the fact that a sufficiently disclosed patent is not self-contained really a valid grounds of opposition under Art. 100(b) EPC?
We had a discussion between the DeltaPatents tutors on this. We concluded that, if you apply the Guidelines strictly, the EPO considers it a lack of enablement if the patent specification is not self-contained.
DeleteRefer to GL F-III, 8, 5th paragraph: "If matter in the document referred to is essential to satisfy the requirements of Art. 83, the examiner should require the deletion of the above-mentioned expression and that, instead, the matter is expressly incorporated into the description, because the patent specification should, regarding the essential features of the invention, be self-contained, i.e. capable of being understood without reference to any other document. One should also bear in mind that reference documents are not part of the text to be translated pursuant to Art. 65."
F-III, 8 thus stipulates that Art.83 is only satisfied if the referred matter is explicitly included.
Thanks for your reply!
DeleteThe passage of the guidelines that you refer to appears to be directly based on T 0276/99, in which an application was refused by the Examining Division (and subsequently by the Board of Appeal) because the proprietor tried to replace large parts of the description with a reference to the A publication in order to reduce the translation costs under Art. 65.
There seem to be to be two possible ways of interpreting this decision (and the section of the guidlines):
(1) It expressly overrules T611/89 and T267/91 in that it says that a reference alone to another document is not enough for the purposes of sufficiency, in contrast to what is stated in these decisions and in the Case Law book. In this case, the Art. 100(b) ground of opposition is valid.
(2) It adds an addititional requirement to T611/89 and T267/91 that as well as being sufficiently disclosed the application must be self-contained. While this additional requirement would be enough to refuse the application during examination if the applicant does not comply, it would not be a valid ground of opposition if the application is sufficient disclosed following the reasoning of T611/89 and T267/91, and the Art. 100(b) ground of the opposition is not validly raised.
I guess we'll have to wait for 5 months or so to see which view the Examination committee prefer!
Dear anonymous (do you have a name?),
Deletethanks for the reference. I agree that the GL section may well be based on T 276/99.
For other readers of this blog: the headnote of T 276/99 reads:
"(1) The description is an ESSNTIAL part of the patent SPECIFICATION for the purpose of understanding and BEING ABLE TO CARRY OUT the invention (ARTICLE 83 EPC) and for determining the scope of the claims pursuant to Article 69 EPC, and parts of the description CANNOT be replaced by a mere reference to the A-publication (even if this might save on translation costs)." (emphasis added)
See also Case Law Book (2010), II.A.2 b) , http://www.epo.org/law-practice/legal-texts/html/caselaw/2010/e/clr_ii_a_2_b.htm.
Sorry, my name is John! (didn't realise you could enter a name without signing in...).
DeleteI agree with you that on the face of it T 276/99 suggests that the essential material has to be incorporated into the application for sufficiency reasons. However, I think its fair to say that the circumstances in T 276/99 were fairly special (the EPO was never going to allow an applicant to replace the description with a reference to the A publication to avoid translation costs!).
Do you agree T 276/99 appears to contradict the earlier decisions T611/89 and T267/91, which both say that an invention is sufficiently disclosed if reference is made to another document and the skilled person can obtain from this cross-reference the information required to reproduce the invention (with no requirement to incorporate the cross-referenced material in the description)?
Both of these decisions are still mentioned in the Case Law book in the section that you referenced.
I have no idea which case/interpretation is correct, so I'm not suggesting you chage your answer...
Also, see the more recent decision T 0260/03 (http://www.epo.org/law-practice/case-law-appeals/recent/t030260eu1.html#q=611%2F89), "Reasons for the Decision" "3. Sufficiency of disclosure", 1st paragraph, which appears to agree with T611/89 and T267/91.
DeleteDear John,
DeleteGood discussion.
There is some essential differences between Q.1 and T 267/91 and T 611/89:
In Q.1, the referenced feature (process X) is new and inventive. In T 267/91 (reason 2), the referenced feature (measurement method used to determine particle size) is in publicly available prior art. Also, in T 611/89 (reason 3.2), the referenced feature (ammoniakalisch kondensiertes Phenolharz) is a known, from the referenced prior art document and also as commercially available product. Also, in T 260/03. the referenced feature ( drive machine unit which is flat in the direction of the drive shaft of the traction sheave) is known from a prior art patent application.
The situation in the case is different, as the essential, reference feature (process X) as well as the referenced document (US1) were NOT yet known to the public at the filing date.
Thanks for your prompt reply!
DeleteI agree with everything that you say in your previous post, and I hadn't appreciated the differences between Q1 and T 267/91, T 611/89 and T 260/03.
However, I can't see that GL F-III, 8 draws any distinction between essential subject matter in a reference document that was known to the public at the filing date and essential subject matter in a reference document that was not known to the public at the filing date (it just refers to matter in the document referred to that is essential to satisfy the requirements of Art. 83)...
Thanks again for your help :)
This comment has been removed by the author.
DeleteGL F-III, 8 cites:
DeleteSuch incorporation of essential matter or essential features is, however, subject to the restrictions set out in H-V, 2.5.
And the last paragraph of H-V, 2,5 makes this distinction:
Moreover, documents not available to the public on the date of filing of the application can only be considered if (see T 737/90):
(i) a copy of the document was available to the EPO on or before the date of filing of the application; and
(ii) the document was made available to the public no later than on the date of publication of the application under Art. 93 (e.g. by being present in the application dossier and therefore made public under Art. 128(4)).
Interesting discussion - I was also unsure about this point!
DeleteIn terms of incorporating the missing material by reference, I'm not convinced that the requirements of H-V, 2.5 are met, particularly that "the description of the invention as originally filed leaves no doubt to a skilled reader that protection is or may be sought for such features".
There doesn't appear to be any suggestion in US1 that protection may be sought for the method of making X...
Also, I know Visser is far from legal basis, but Visser seperates out the requirements of sufficiency from the requirements of definition of invention/essential features in his discussion of Art. 83. ("referenced document")
Sorry, "US1" should be "EP1" in the above:
DeleteThere doesn't appear to be any suggestion in EP1 that protection may be sought for the method of making X...
Hi Peter,
DeleteT 689/90 relates to the conditions under which features can be introduced by way of amendment into the claims of an application (see headnote 1 of T 689/90). It shall thus be dealt with with care when the referenced feature only relates to a feature needed for enablement, but not included in the claim.
Further, in my opinion, the four rquirements listed in GL H-V, 2.5 that originate from T 689/90, headnote 2 (referring to "such amendments" as defined in headnote 1 - see above) are all satisfied. For (ii)-(iv), you probably agree without further discussion.
In my opinion, for (i), EP1 as filed doesnot leave any doubt (from the application as filed) that protection "is or may be" sought. Firstly, as compound is new, any process to make the compound is also new, and the skilled person would understand that protection "may be" sought for the process as well. Further, if a new compound is claimed, the scope of protection of the claim includes manufacturing the compound (by any method). Lastly, even in opposition, the compound claim could be amended to the process of manufacturing the compound (see GL H-V, 7.2) as disclosed in detail in US1 (in which the T 689/90 requirements would directly apply) - so the patent will not be revoked for lack of enablement.
A3: Should there not be a statement that by not appealing, interlocutary has become final?
ReplyDeleteOther Qs: Here and there there are some statements that could be considered more than needed. Please consider if you really think these neccesssary for full marks, eg
A1: Last sentence about validiy of opposition, realy needed? (question was: can patent be revoked on this ground, not: can patent be revoked in this procedure)
A2: Your statements about pending EP1 and EP2, and steps to keep them pending. Really needed considering that the Q2 literally states that they are pending?
A3: timing for translations and fees needed? Considering that Q3 explitly asks translations, types of fees and amount of fees, but does not mention timings, except 'in 2013'.
A4: Statement about adding to file, and possible use in other opposition, needed? Are we really expected to SPECULATE about a further opposition in which the document may be used?. Might as well speculate then about another Icelandic vulcanic cloud, or a strike at EPO.
I wonder, especially considering the reduced time for D1, whether some of your model answer are not just a little bit wider than expected.
Which statements really get points and which not, will only be clear after the exam committee published the examiner's report in late summer... The exam committee may also expect more than we have mentioned, e.g. a discussion on waiver of PoA in Q.5-b2.
DeleteQ.1: we think it is needed, because you shall be able to do the amendment if the Opp.Div. considers it necessary. If Art.123(3) would prevent you from amending, the patent will be revoked as you cannot overcomethe Art.83 objection.
Q.2: The case only states that EP1 and EP2 are pending NOW. The question is whether divisionals can still be filed (implicit: now or in the future). A complete answer also requires that you indicate the cut-off moment/conditions: when pendency ends and when the 24m limit(s) of R.36(1)(a)/(b) expire. In Q.2-B, pendency of EP2 will end in the near future if you donot respond to the minutes, so it is very relevant to discuss pendency!
Q.3: you are probably correct that a statement that the interlocatory decision has become final by not appealing, and that the EPO will issue a R.82(2) invitation (GL (2012) D-VI, 7.2.3; G1/88 r.6 & r.7; OJ 1989, 393)
Q.4: you shall never speculate. But you shall answer the questsion, which says "Can EP1 be revoked based on the document before the EPO?". We thus included the statement that, as the document is put in the file, it may be used in another admissible opposition.
For Q5b2, I included that a change of common representative was needed under 92bis.1(ii). I construed the question a bit different, concluding that they wished to change from IN agent to EPA. Does this make any sense?
ReplyDeleteThat does not seem to be the question though - do you agree now that you read the question again without the time pressure of the exam?
DeleteYou are correct that you can use R.92bis.1(ii) PCT in case there is a change of representative. However, under b, "the applicants decide to seek professional help" "for the procedure before the EPO as IPEA" - thus, they donot want to change, but rather use a specific agent for this specific procedure.
The exam committee sometimes awards marks for non-expected but reasonable argumentation - as long as the unexpected interpretation of the question seems reasonable and the answer makes clear what the interpreatation was and is consistent. So, I cannot and dare not predict, but there could be some marks for your R.92bis.1 discussion.
Thanks Roel for sharing your opinion, and I agree to your interpretation of the question. We'll see if my argumentation may attract any bonus marks.
DeleteI am confused by the answer on question 4.
ReplyDeleteIs there a legal basis for the need of the identification of the documents used as a requirement for the admissibility of the opposition?
R.76(2)(c) says that the notice of opposition shall contain an indication of the facts and evidence presented. An indication is something different from an identification, and could be something like « a patent granted to us in year 2005»
Interesting, I had the same question mark for this in my answer. Having reviewed the Guidelines and Visser, I'm still a bit confused about legal situation.
DeleteHere's a good headnote: T 448/89
ReplyDelete1. The requirement under Rule 55(c) EPC that the facts presented in support of the grounds be indicated in a notice of opposition is not met if several different subject-matters are described in a document cited as novelty-destroying and it is neither indicated nor readily recognisable which of them is supposed to incorporate all the features of a contested claim.
2. The requirement under Rule 55(c) EPC that the evidence and arguments in support of the facts presented be indicated in the notice of opposition is not met if it is neither indicated nor readily recognisable which of several documents mentioned therein is supposed to prove which fact presented.
Another one: T234/86
You could have easily found them in my book :-)