Friday, October 13, 2023 Our answers to EPAC 2023, Part 2

Here are our answers to the open questions.  Please feel invited to post your comments!

You may also wish to check our First impressions blog (here) and our blog with our answers to the first part (here).

Part 2 seems a fair exam. Good questions, well-targetted to the audience (formalities officers), doable in the 2 hours, although the level of detail is not always clear (e.g., Q.5). Part 2 is incomparable to part 1, which was clearly very (too) tough for the time available with difficult topics tested in multiple-choice form.

One problem in part 2 may have been that access to the EPO legal texts was often very difficult: candidates reported slow loading of pages as well as time-outs. It is not known whether candidates timely filed complaints (on the day of the exam before midnight) in case this happened to them during the exam.

Comments on Q1

Unlike the other questions, there was no indication of whether fee amounts should or should not be mentioned. We included them just in case.

Comments on Q5

There are 2 options to get EP protection in Belgium, Latvia and Malta: classical validation or via the unitary route. It is unreasonable to expect that anyone knows which is the best option to pursue without a full discussion between a patent attorney and the client. 

Further, it is unclear whether renewal fees and court costs need to be taken into account when considering "at the lowest cost" - renewal fees for year 4 are lower with the Unitary patent than with 3 classical validations, but for all years thereafter they are significantly higher, and -presumably- court fees are also significantly higher at the UPC than at these three relatively small countries.

Question 1 (3 points)

On 22 December 2022, Italian company X filed an international patent application PCT-X at the EPO as receiving Office. PCT-X claims priority from European patent application EP-X filed on 11 January 2022. 

The EPO as International Searching Authority issued a search report, together with a negative written opinion (WO-ISA) and transmitted them to the applicant on 11 May 2023. Company X would like to overcome the objections raised in the WO-ISA before deciding on national phase entry.

Question

What acts should be performed before which authority, and by when?

 

Answer

To overcome objections, file a demand for IPE with the EPO as IPEA

-          With arguments and/or Art. 34 amendments addressing the objections raised in the WO-ISA

-          Pay handling fee (107 euros) and fee for preliminary examination (1830 euros)

-          File and pay directly with the IPEA = EPO

-          EPO is only competent IPEA when EPO is rO

Time limit =  later of:

-          11/1/22 (priority) + 22m => 11/11/23 (Sat) =>> 13/11/23 (Mon)

-          11/5/23 (transmittal ISR) + 3m => 11/8/23 (Fri)

So by 13/11/23

Additional Comment

Fees can also be paid later – within 1m from invitation to pay with surcharge

Response/ amendments can also be filed later, but should be filed before IPEA starts to draw up IPER, or can be disregarded.

 

Question 2 (5 points)

A large US company filed an international patent application with the USPTO, without claiming priority. The International Bureau published the application on 16 March 2023, together with the international search report drawn up by the USPTO. The published international patent application comprised 2 pages of bibliographic data, 30 pages of description, 15 claims on 2 pages, and 6 drawings on 4 pages. The claims have not been amended under Article 19 PCT. The US company now wants the supplementary European search at the EPO to start as soon as possible but believes that it has to wait until the end of 31 months from the date of filing.

Question

Please explain whether the supplementary European search can start earlier and list the necessary steps  to ensure the earliest possible start at minimum cost. You should identify the fees due to be paid, but you do not need to specify their amounts.

 Answer

-          No need to wait:

-          File entry form 1200 today and expressly request early processing by ticking box in the form

-          Perform all acts for entry

o    (no translation needed, already in English)

o    Specify in form that proceedings are to be based on application as filed

o    Pay filing fee

§  Including page fee

§  Pages: 1 (abstract) + 30 (descr) + 2 (claims) + 4 (drawings) = 37

§  So 37-35 = 2 page fees

o    Pay search fee for suppl EP search as USPTO=ISA, EPO was not ISA nor SISA

o    File request for examination (written request contained in form 1200)

§  Needs to be done for early processing to be effective as 6m period from publication of ISR has expired:

§  16/3/23 + 6m -> 16/9/23 )(Sat) -18/9/23, so due before today = 12/10/23

o    Complete request by paying examination fee

o    Pay designation fee 

o    Pay renewal fee in respect of third year

§  As IA Filed about 18m before 16/3/23, so about 16/9/21

§  So that first renewal fee due on 30/9/23, i.e., before today

o    Waive Rule 161/162 communication: can be validly waived because no claims fees due and response to R 161(2) communication is not mandatory.

These acts can be performed by US applicant himself, but advise that they should be done by a professional representative, as the US applicant will be obliged to appoint one.

 

Question 3 (5 points)

The applicant filed a US patent application US-A on 23 November 2021. This patent application is currently under examination and a notice of allowance is not expected before 2024.

On 20 November 2022, your law firm validly filed a European patent application EP-A in the applicant's name, claiming priority from US-A.

A communication under Rule 64(1) EPC is issued on 5 September 2023, indicating a lack of unity because application EP-A comprises three inventions: A1, A2 and A3.

Question 3.1

1. What is the deadline for responding to this communication? Show your calculations. 

Answer

-          Time limit is 2m from notification of R 64(1) communication.

-          Deemed notified on 5/09/2023 + 10d à 15/09/2023

-          2m period expires on 15/9/23 + 2m -> 15/11/23 (Wed)

 

Question 3.2

2. What steps need to be taken to receive the final search report for invention A1 only?

Answer

-          No action needed, assuming inv. A1 is the first invention mentioned in the claims.

-          The EPO issues the R 64 communication together with a partial search report, which will have been based on A1, and invitation to pay additional search fees.

-          If no response,  A2 and A3 not searched and the final search report will be issued for A1 only, together with non-unity explanation.

 

Question 3.3

3. What steps need to be taken to receive the final search report covering all three inventions?

Answer

-          Pay 2 further search fees, for inv. A2 and A3

-          by 15/11/23 at the latest

 

Question 3.4

4. What steps need to be taken to enable the applicant to obtain examination of inventions A1 and A3 by the EPO?

Answer

-          In order to get both inventions examined, it will be necessary to file a divisional application.

-          If additional search fee for A3 has been paid in response to R 64 communication, the applicant may choose which invention to pursue in the EP application e.g. Inv A1 and file a divisional directed to inv A3 while the parent is pending.

-          To obtain examination of A1, complete request for examination by paying examination fee

-          Time limit: 6m from publication of the ESR.

 

-          To get inv A3 examined, file divisional directed to A3.

-          Pay filing fee and search fee and also examination fee.

-          If the applicant has paid the additional search fee in response to the R 64 communication, the search fee for the divisional application will be refunded.

 

Question 3.5

The applicant informs your law firm that it wants to accelerate examination of invention A1 by using Form 1009 or Form 1005. 

5. Can you use these forms to accelerate the proceedings? Please explain your answer. 

 Answer

-          Form 1009 = Form to participate in Patent Prosecution Highway

-          The USPTO is a PPH partner of the EPO (OJ 2020, A 115)

-          So when the USPTO has indicated that at least one claim is allowable (corresponding to claim to Inv A1 in EP application), form 1009 can be used to accelerate proceedings.

-          But Form 1009 needs to be submitted before EPO begins substantive examination [ GL E-VIII, 4.3]

 

-          Form 1005 = PACE request form

-          This form can also be used to accelerate proceedings

-          Form 1005 to request PACE examination needs to be submitted after examining division has become responsible.

 

Question 3.6

Following a successful request for accelerated examination, a communication under Article 94(3) EPC is issued on A1, but the applicant needs more time to formulate a response and requests an extension of the time limit.  

6. What effect will this request for an extension of the time limit have on the prosecution of A1?  

 

Answer

-          Application will drop out of PACE examination if extension is request

-          And cannot get back in

 

 4 (8 points)

A large German company filed a German patent application on 10 April 2022 and received a search report for it on 20 October 2022.  

The same company filed a European patent application on 10 June 2022, claiming priority from the German application. The minimum amount of fees were paid on filing. The European application was published yesterday, 11 October 2023, together with the search report.

 

Question 4.1

1. After having analysed the search report issued by the EPO, the applicant wants to maintain its application and obtain a patent. Set out all procedural steps and actions that must be taken to get the first communication under Article 94(3) EPC or Rule 71(3) EPC as soon as possible. Fee amounts need not be specified.

Answer

-          Pay examination fee today

-          (written request for exam must be already on file)

-          Respond to deficiencies mentioned in the search opinion, if any, today

-          File search results of German priority application (utilisation scheme)

-          Request PACE examination, today

 

 

Question 4.2

2. By when must these actions be taken at the latest? Show your calculations.

Answer

-          6m from publication of the European search report.

-          11/10/23 + 6m -> 11/4/24 (Thu)

 

Question 4.3

Let us now assume that the response to the search opinion did not include any amendment or correction of the application, and the first communication from the examining division is a communication under Rule 71(3) EPC sent in December 2023 without any proposed amendment. The applicant confirms that it agrees with the text set out in the communication and files the required translations of the claims.

The applicant would like to have the broadest possible territorial scope of protection.

3. Which fees will you pay if the applicant would like to obtain the grant of the patent as soon as possible? Please also specify the fee amounts.

 

Answer

-          Necessary fees in response to R 71(3) communication:

-          Fee for grant and publishing – EUR 1040

 Other fees needed to allow application to proceed to grant:

-          Designation fee – EUR 660

-          Fees needed to obtain broadest territorial scope:

-          Extension fees:

o    Bosnia-Herzegovina (BA)  - EUR 102

o    Montenegro (ME) (OJ EPO 2010, 10) as EP appl filed before 30.09.2022 – EUR 102

-          Validation fees:

o    Morocco (MA) (OJ EPO 2015, A18) – EUR 240

o    Republic of Moldova (MD) (OJ EPO 2015, A84) – EUR 200

o    Tunisia (TN) (OJ EPO 2017, A84) – EUR 180

o    Cambodia (KH) (OJ EPO 2018, A15) – EUR 180

 

-          No renewal fees need to be paid (not due until 30/4/2024)

 

Question 4.4

4. If, however, the applicant is interested in delaying the grant without incurring any additional expenses, what is the latest date for paying each of the fees listed in your answer to question 3?

Answer

-          Fee for grant and publishing: 4m from notification of the R 71(3) communication: Dec 23 + 4m à April 24

-          Designation, extension, validation fees: 6m from publication of the ESR:

-          11/10/23 + 6m -> 11/4/24 (Thu)

-          Renewal fee for 3^rd year would need to be paid by 30/04/2024

 

 5 (4 points)

Your French employer applied for a European patent in French on 12 October 2021, without claiming any priority; the application as filed contained 10 claims. All fees that fell due before publication of the application with the search report were paid in time. In response to the search opinion, your employer immediately requested examination and filed a set of 20 claims. The application and the amended claims were published on 19 April 2023, together with the search report. 

The EPO examining division has issued a communication under Rule 71(3) EPC dated 12 October 2023; it has not proposed any amendments. Your employer agrees to the text communicated under Rule 71(3) EPC and asks you to "obtain the patent" as soon as possible and at the lowest cost with a view to starting infringement proceedings in Belgium, Latvia and Malta.

Question

What actions will you take to ensure that the European patent takes effect in Belgium, Latvia and Malta? Fee amounts need not be specified.

Answer

-          Respond to R. 71(3) by 12/10/23 + 10d + 4m -> 22/10/23 + 4m à 22/2/24 (Thu):

o    Pay fee for grant and publishing

o    Pay 20-15=5 claims fees.

o    File translations of the claims into English and German

-          Pay designation fee by 19/4/23 + 6m -> 19/10/23 (Thu)

-          Pay renewal fee in respect of third year by 31/10/23 (Tue)

-          Do the above a.s.a.p., so EPO can grant a.s.a.p.

 

There are 2 options to obtain EP patent protection in Belgium, Latvia and Malta

-         Validation: classical or unitary:

o    all 3 BE, LV and MT participate in Unitary patent

o    when comparing Unitary patent with national patents, national patents are likely cheaper, as unitary patent renewal is based on the 4 biggest countries and we only want 3 small ones (cheaper as of year 5)

-          For classical validation, I will:

o    Prepare translations now, so that they can be filed with the national offices upon grant (or within 3m thereafter; national law may even give more time)

o    Translations

o    BE: no translation needed as published in French

o    LV: London Agreement – only need translation of the claims into Latvian,

o    MT: translation of patent into English needed

-        Validation acts required: 

o    Validation in Belgium is automatic

o    For validation in Latvia, I will instruct national attorney (must be appointed because applicant not based in LV) to file translation and pay national fee

o    For validation in Malta, I will instruct agent to file the translation.

 

Alternative option

Unitary patent:

-          unitary patent can be requested via early request to be filed with EPO (or at the latest 1m after the grant)

o    with a translation into English – will be handled upon grant

o    will give unitary protection in all 3 states

Question 6 (5 points)

Your client XYZ was granted a European patent; the language of proceedings was German. XYZ requested validation in Italy, Germany, France and the United Kingdom. During the 9-month opposition period, an opposition to the granted patent was filed, citing Art. 100(a) EPC. During the opposition proceedings, a new set of claims was filed.

The outcome of the opposition proceedings was that XYZ’s patent was maintained in amended form. No appeal was filed by the parties. The opposition division has now issued a communication under Rule 82(2) EPC (Form 2328), setting a 3-month period for response.

 

Q. 6.1

What acts need to be performed in response to the communication under Rule 82(2)?

 

Answer

i)                    Pay fee for printing a new specification

ii)                   Translate new set of claims into French and English

iii)                 If applicable, supply a typed version of any handwritten amendments made during oral proceedings

 

Q. 6.2

What are the consequences if the acts are not performed in time? In this case what steps shall you take to maintain the patent in amended form?

Answer

The above acts may still be validly performed within a 2-month grace period. The Opposition Division will issue an invitation to perform the omitted acts and pay a surcharge. [Rule 82(3)]

Steps:

I will perform the acts i) -iii) and pay the surcharge within 2m of notification of the invitation.

 

Q. 6.3

Let us now imagine that you have received a decision revoking the patent because the required acts were not performed in time. Is any means of redress available?

Answer

Yes, the proprietor may appeal the decision. The appeal will be successful only if it can be shown that the decision to revoke was incorrect.

Re-establishment of rights is also available to the proprietor for missing the 2m grace period of R. 82(3). Such a request will be successful only if it can be demonstrated that the 2m period was missed in spite of all due care.

 

Q. 6.4

The patent maintained in amended form is published as EP-B2. XYZ wants to maintain protection via EP-B2 in Italy, Germany, France and the UK, but also wants to add patent protection in Poland. Explain how this can be achieved.

 

Answer

Germany, France and the UK are group 1 London agreement countries, so no translations are required.

Italy:

Within 3m of publication of EP-B2, submit translation of patent spec into Italian, including a declaration on the last page of the translation that the translation is in complete agreement with the original [ Nat law table IV, 2 – Italy]

To keep EP-B2 in force in each of these countries, make sure that the required maintenance fees are paid on time.

 

Poland

It is not possible to get protection in Poland. The initially granted patent EP-B1 was not validated in Poland and the initial 3m period has expired long ago.

Please feel invited to post your comments!

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