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).
