Monday, October 14, 2024 Our answers to EPAC 2024 Part 2

 Part 2 was a lot of work. Some questions were challenging/difficult.

We have long answers; maybe a bit overcomplete.

We welcome your comments.

Kind regards,

Jelle, Diane, Tanja

Friday, October 11, 2024 Our answers for EPAC 2024 Part 1

 Dear all.

Here an attempt of us (Jelle, Diane, Tanja) to answer the part 1 questions.

Our impression is that this exam is a significant improvement compared to previous exams. The questions seem well targeted at daily activities of a formalities officers and also cover recent developments.

We hope the results will be much better.

As always there will be some questions where we/you may not interpret the question as intended. You can thus not hold our answers as a truth but it gives a good idea if you clearly passed part 1, or clearly failed or are in the grey zone.

We welcome your comments. Please do not reply as 'anonymous'; it makes it difficult for us to respond. You can use a nickname.

I've finished also part 2, but the other two tutors are occupied and it will take longer before we can post our answers.

Here is part 1:

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Question 1

An international application is published, together with the search report drawn up by the CNIPA, 13 months + 1 day after the filing date (no priority claimed). The application has no more then 38 pages and IS claims.

Which statement reflects all actions the CN applicant needs to take for entry into the EP phase 28 months after the filing date? A request for early processing has been filed.

A.     Complete and file Form 1200 and pay the filing fee and the search fee

B.     Complete and file Form 1200 and pay the filing fee. the search fee and the renewal fee for the third year

C.    Complete and file Form 1200, pay' the filing fee and the search fee and appoint a representative

D.    None of the above statements

Answer: D
No form needed, no appointment needed now.
Needed is: not only filing fee and search fee, but also a translation, request for grant, examination fee, designation fee, specify the documents on which the grant should be based. See R.159(1) EPC, or Euro-PCT 5.2.005

Question 2

A European patent application was filed on 6 February 2023. The search, filing and designation fees were paid within a month of the date of filing.

What is the latest point in time for withdrawing the application, if the applicant wishes to obtain a refund of the designation fee?

A.     Six months after the date of publication of the mention of the European search report

B.     Date of publication of the mention of the European search report

C.    The designation fee was validly paid and can no longer be refunded

D.    Date of the start of substantive examination

Answer: B, see A-X 5.2.2

Question 3

On 10 October 2024, an applicant files a request for entry into the European phase, together with a debit order, according to which the filing fee, the designation fee, the examination fee and the renewal fee for the third year are to be debited from the applicant's deposit account It is specified that the debit order is to be executed on 18 October 2024. On the evening of 10 October 2024, the applicant notices that the renewal fee is not yet due and should not be debited from the deposit account.

What is the latest point in time for revoking the order to debit the renewal fee in Central Fee Payment (CFP)?

A.     10 October 2024

B.     17 October 2024

C.    18 October 2024

D.    A debit order cannot be revoked in part

Answer: B, 17 October 2014; See ADA 13.2

Question 4

The applicant received a communication pursuant to Article 90(3) EPC and Rule 60 EPC, requesting them to file a designation of inventor but missed the time limit for filing a response. After expiry of the time limit, the Receiving Section issued a decision to refuse the European patent application, dated 10 October 2024.

What can the applicant do to remedy the situation?

A.     File a notice of appeal against the decision within four months of notification of the decision

B.     File a request for further processing within two months of notification of the decision

C.    File, within two months of notification of the decision, a request for reestablishment of rights in respect of the time limit for filing the designation of inventor

D.    A, B and C are correct

Answer: B

Appeal is possible, but notice of appeal must be filed within 2 months. Re-establishment is excluded since further processing is allowed

Question 5

Which of the following statements about filing third-party observations is correct?

A.     The person that filed third-party observations will be a party to the proceedings before the EPO, and the applicant is obliged to respond to third-party observations

B.     Third-party observations must be filed in writing and may not be filed anonymously

C.    Third-party observations are considered by the examining division only if they include a statement of the grounds on which they are based, and an official fee is paid

D.    Third-party observations can be filed after the publication of a European patent application and must be filed in an official language of the EPO

Answer: D, see E-VI 3

Question 6

You filed an international patent application on 6June 2024, claiming the priority of a European patent application filed on 7 July 2023. You received a communication dated 25 September 2024 from the EPO acting as International Searching Authority (ISA), stating that the requirement of unity of invention has not been complied with. The ISA identifies three inventions. You are Invited to pay two additional search fees.

Which of the following statements is correct?

A.     You must pay two additional search fees by 25 October 2024

B.     You do not need to file a response to the provisional opinion accompanying the partial search results

C.    If you pay two additional search fees under protest, you must pay two protest fees within the time limit

D.    If you do not pay any additional search fees within the time limit: the international patent application will be deemed to be withdrawn

Answer: B, see applicants guide 7.016

Question 7

An international patent application filed with the EPO as receiving Office on 10 September 2024, claims the priority of a Luxembourg patent application filed on 11 October 2023. No certified copy of the Luxembourg patent application was filed at the time of filing of the international patent application.

Which of the following actions can be taken to file a certified copy of the Luxembourg patent application for this international patent application?

A.     Request the Luxembourg Intellectual Property Office to prepare and send a certified copy of the Luxembourg patent application to the EPO

B.     Submit a valid DAS code (Digital Access Service) to the International Bureau to enable it to obtain a certified copy of the Luxembourg patent application

C.    File an electronic certified copy of the Luxembourg patent application with the EPO

D.    File a certified copy of the Luxembourg patent application with the International Bureau

Answer: D

A,B,C are wrong. The applicant must arrange the certified copy, not Luxembourg. Luxembourg does not participate in the DAS system. The EPO does not accept electronic certified copies of of the Luxembourg patent application.

Question 8

Firm A owns a European patent EP. Firm B filed an opposition against EP requesting its revocation. Firm B argued that the subject-matter of the granted claims was not new in view of document D1.

During the opposition proceedings, firm C filed observations under Art. 115 EPC, arguing that the subject-matter of the granted claims was not new in view of document D2.

Firm A requested maintenance of the patent as granted, or maintenance in amended form, according to auxiliary request 1.

Which of the following statements is correct?

A.     At the end of the opposition proceedings, the opposition division decided to revoke the patent. Firm B is entitled to file an appeal against the opposition division's decision

B.     At the end of the opposition proceedings. the opposition division decided to maintain the patent in amended form according to firm A's auxiliary request 1. Firm A and firm B are entitled to file an appeal against the opposition division's decision

C.    At the end of the opposition proceedings, the opposition division decided to maintain the patent as granted. Firm C is entitled to file an appeal against the opposition division's decision

D.    During the opposition proceedings, firm B withdrew its opposition. At the end of the opposition proceedings, the opposition division decided to maintain the patent as granted. Firm B is entitled to file an appeal against the opposition division's decision

Answer: B

To be allowed to appeal, you must still be a party to the proceedings. (B no longer in option D; C never – 3rd parties are no party to the proceedings) and you must have been adversely effected by the decision – in option A, party B won and is not adversely effected.

Question 9

European patent application EP-X was filed on 1 October 2020, claiming the priority of a Belgian application filed on 16 October 2019. The mention of the grant of European patent EP-X was published on 2 October 2024 The proprietor filed a request for unitary effect and was informed by communication dated 10 October 2024, that unitary effect had been registered for EP-X-CO on the same date

Which of the following statements is correct?

A.     A renewal fee still has to be paid by 31 October 2024 in respect of the 5th year for EP-X

B.     A renewal fee is due on 31 October 2024 in respect of the 5th year for EP-X-CO

C.    A renewal fee is due on 31 October 2024 in respect of the 6th year for EP-X-CO

D.    No renewal fee has to be paid on 31 October 2024

Answer: D

The 5th year started 2 October 2024, i.e. on grant, see GL A-X 5.4 “The obligation to pay renewal fees terminates with the payment of the renewal fee due in respect of the (patent) year in which the mention of the grant of the European patent is published, see Art. 86(2). "Patent years" are calculated as from the application's filing date. The first patent year (Art. 86(1), Art. 141(1)) starts on the filing date and ends on the same date of the following year. For the second and subsequent years, the patent year starts one day after the anniversary of the filing date and ends on the same day as the filing date of the following year.”
The patent application EP-X is at that day a national patent (here: a unitary patent). The fee must be paid for the unitary patent EP-X to the EPO.
When to pay shortly after grant: Renewal fees may fall due in between the date of publication of the mention of the grant of the European patent up to and including the date of the notification of the registration of the unitary effect [R.7(1) UPR]. If so: R.13(5) UPR shifts the due date to the date of the notification and allows renewal fees to be paid within three months of this notification without any additional fee.  
So, no need to pay at the end of October.

A: Not possible to pay fees to the EPO after grant for EP-X

. Thus, no fee needed anymore.

Question 10

A communication under Article 94(3) EPC, setting a four-month time limit for reply is dated 12 September 2024. The applicant receives the letter on 21 September 2024, as evidenced by the postal receipt signed by him.

What is the last day for replying to the communication?

A.     13 January 2025

B.     12 January 2025

C.    22 January 2025

D.    14 January 2025

Answer: D, see R.126(2)

The trigger is the date of 12 September 2024. The delivery took more than 7 days 9 days). 2 days are added to the end of the period. Thus: 12-9-2024 + 4 m (->12-1-25) + 2 days -> 14-1-2025 (Tuesday, EPO open)

Question 11

Which functionalities or services can be accessed directly from MyEPO Portfolio?

A.     A shared area with examiners, European Patent Register, filing via the EPO's on line filing software eOLF

B.     Mailbox, a shared area with examiners, replying to a communication under Article 94(3) EPC

C.    Mailbox, patent search via publication server, a shared area with examiners

D.    Filing via the EPO's Online Filing 2.0, patent search via publication server, Mailbox

Answer: B

EPO’s website: “In MyEPO Portfolio you can receive Mailbox communications from the EPO about your proceedings.  And in European proceedings (EP, UP and Euro-PCT) you can access your digital files, submit requests and replies about applications, and interact online with examiners during a live consultation. Representatives and their support staff can also manage their entry in the list of professional representatives before the EPO.”.

Thus: no online filing, no search

Question 12

In which of the following situations does the EPO recommend using the EPO Contingency Upload Service?

A.     When you submit documents after business hours

B.     When the EPO filing systems are functioning correctly, but you encounter a technical issue at your end

C.    When there is a system outage at the EPO that prevents document submission via the standard filing systems

D.    When the EPO is closed due to an official holiday

Answer: C

EPO website, FAQ: “The Contingency Upload Service offers an alternative method of submitting documents to the EPO in the unlikely event that the other EPO filing tools are not available, or it is not possible to create, or sign-in to an EPO account for making use of the EPO filing tools. It enables the secure electronic transmission of documents to the EPO, although without any of the validations and benefits of the filing tools of the EPO. It allows for the upload of PDF documents including new European patent applications, international applications and/or subsequently filed documents.”

Question 13

Applicant Korhonen is a Finnish national resident in Finland. He filed a European patent application in Finnish and provided an English translation in time. In response to the extended European search report (EESR), Korhonen wishes to file amended claims together with a request for examination.

Which of the following statements is correct?

A.     Korhonen must file the amended claims in Finnish and must then provide a translation into English, in time

B.     Korhonen is allowed to file the amended claims in Finnish if he then provides a translation into any official language of the EPO, in time

C.    Korhonen is allowed to file the amended claims in Finnish if he then provides a translation into English, in time

D.    Korhonen is not allowed to file the amended claims in Finnish

Answer: C

See GL A-VII 3.2 The response including amendments have to be filed within a time limit. An official language of a contracting state (here: Finnish) may then be used by an applicant of such state. The amendments must be translated to the language of proceedings (here: English)

Question 14

Applicants may request processing of their international application under PCT Direct by filing a letter ("PCT Direct letter") containing informal comments, aimed at overcoming objections raised in the search opinion established by the EPO for the priority application.

Which of the following statements is NOT correct?

A.     PCT Direct is available if the priority application is a Belgian application filed in French, which has been searched and the international application is filed in French, using ePCT-Filing

B.     PCT Direct is available if the priority application is an EP application filed in French, which has been searched and the international application is filed in English, using Online Filing 2.0

C.    PCT Direct is available if the priority application is filed with the EPO in English, which has been searched by the EPO and the subsequent application is filed in English, using Online Filing 2.0

D.    PCT Direct is available on condition that amended claims are filed with the PCT Direct letter, in a single PDF document

Answer: D

See Euro-PCT 2.20.001;3.2.026. The EPO must have searched the priority document; comments must be included – amendments are not needed.

Question 15
Mr Linguist filed a European patent application in Dutch and used English as language of the proceedings. When requesting unitary effect on 10 October 2024, Mr.Linguist must provide a translation of the specification.

Mr Linguist would like to obtain immediate registration of the unitary effect. Which of the following statements is correct?

A.     Mr Linguist must provide a translation of the specification into Dutch

B.     Mr Linguist must provide a translation of the specification into an official language of any of the 18 states to which the unitary effect extends

C.    Mr Linguist must provide a translation of the specification into an official language of any of the 24 states that have signed the UPCA

D.    Mr Linguist may provide a translation of the specification into Spanish

Answer: D

See Unitary Patent Guide, par.57 (all EU languages).

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.

Friday, October 13, 2023 Our answers to EPAC 2023, Part 1 - A tough first part!

Dear EPAC candidates,

The exam of 2022 was challenging and the level of knowledge required for yesterday's exam has not dropped. In the opinion of the DeltaPatents tutors, the multiple choice questions were more difficult than the open questions. The 15 questions of part 1 are on balance too difficult and not targeted at an average, skilled patent administrator. There are too few questions which can be safely answered off heart. Too many question are too complicated and need thorough checking. But, there is no time for so much checking. We call upon the committee to start open dialogues on the exams and suggest to arrange, as for the EQE, a tutor meeting where all aspects of the exam can be discussed in an open and cooperative setting between the committee and tutors.

Below are our answers in brief to the multiple choice questions of part 1. Full questions are added to the end of the blog post. Our answers to part 2 can be found here. You may also wish to check our First impressions blog (here).

Please feel invited to post your comments!

Question 1

D

Ms Smith can only be deleted with her consent.

R 21(1) EPC - consent of the wrongly designated inventor (Ms Smith) is needed

Thursday, October 12, 2023 EPAC 2023: First impressions?

To all that sat the EPAC exam today, 12 October 2023: please feel invited to post your first impressions and comments.

Was the first part, with multiple-choice questions in the morning, as expected - topics, difficulty, time, balance EPO : PCT international phase : Euro-PCT?

Was the second part, with open questions in the afternoon, as expected - topics, difficulty, time, balance EPO : PCT international phase : Euro-PCT?

If you also sat EPAC 2022 or used it as part of your preparation: how do the two exams compare?

Did Wiseflow run smoothly? Did you consult the online legal texts for EPC and for PCT? (Some candidates reported very slow loading and time-outs)

Note: our answers to the first part (multiple choice) are given in this blog post; our answers to the second part (open questions) will be given in another blog here.

Friday, April 07, 2023 EPAC 2023: exam dates announced and enrolment is open - and our course offer.

 EPAC 2023

The EPAC 2023 examination will be held online on 12 October 2023. We refer to the EPAC webpages on EPAC dates (here).

To enrol, two steps are needed: the first step is the creation of a personal profile (to be completed by 7 August 2023) and, only after the first step has been completed, the seconds step is the enrolment itself (the candidate’s request for enrolment and payment of prescribed fees must be received by 14 August 2023). Note that the deadlines are strictly enforced. We refer to the EPAC enrolment webpage for details (here).

More information about EPAC is available on the EPAC website from the EPO (here).

DeltaPatents course offer 

​DeltaPatents offers a course covering the EPAC syllabus for candidates that plan to sit EPAC 2023.

DeltaPatents has been offering a similar course to candidates preparing for the national formalities exam in the Netherlands, which also covers the EPC and PCT with essentially the same scope, for many years already. DeltaPatents was therefore able to already provide a course to prepare for EPAC 2022. Our course is now being further developed for EPAC 2023 using the teachings of  the EPAC 2022 course and examination. The course is designed for and directed to paralegals, patent administrators and formalities officers, with at least a couple of years experience. 

The EPAC Training course consists of a series of 13 half-day online sessions, with interactive presentations and homework by which candidates can further develop their knowledge, understanding and skill. Candidates will need to have sufficient time available to make the homework to benefit optimally from the course. By providing the sessions already as of 18 April 2023, participants will have sufficient time to prepare for the exam. By using half-day sessions, the amount of new information per session is kept at a manageable level. By using an online format, participants can take part from all over Europe – or even outside.

See here for details and enrollment to our EPAC training.