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

Question 2

A

New representative Y requests a change of representative, files a response to the extended European search report with the EPO by 12 October 2023 at the latest and files in good time an authorisation signed by the applicant.

Time limit to respond to the negative search opinion is 6 months from publication of the EESR: 12/04/2023 + 6m = 12/10/2023.

As far as the EPO knows, X is still the representative, so Y must also file authorisation to be validly appointed.

Question 3

C

Missed time limit for filing the EP application within the priority period can be remedied by requesting re-establishment of rights.

Art. 122, R 136(1) EPC: possible within 2m from expiry of the 12m priority period.

Question 4

B

In order for Hassan to be able to act before the EPO acting as the International Searching Authority, he needs to submit a power of attorney signed by Greta.

Incorrect, because EPO as ISA has waived the requirement to submit a power of attorney.

Hassan is qualified to act before the rO and may therefore represent Greta before all international authorities. As he is the agent of record, there is no unexpected change and the waiver applies.

Question 5

D

A natural person resident in the USA and of Swiss nationality files a European patent application in Italian

Is entitled to a reduction of the filing fee under Rule 6 EPC because:

Swiss national is from an EPC contracting state.

Italian is an official language of CH = admissible non-EPO language, so an application filed in Italian qualifies for the fee reduction, as long as the applicant also satisfies the requirement of R 6(4)

Natural person is entitled to the reduction.

Question 6

D

Mr Van Holland needs to file an English translation of EP-div together with a request for re-establishment of rights.

The initial time limit for filing the translation into English is 2m from filing of the divisional R. 36(2) EPC.

If this is not done, an invitation to file the translation is issued under R 58. This was not done, so the receiving section issued a loss of rights communication.

Further processing is ruled out for missing the 2m time limit of R. 58, so re-establishment must be requested.

Question 7

C

The renewal fee for the fourth year must be paid separately in each state where the patent is validated. The renewal fee for the fourth year can be validly paid without any additional fee until 8 January 2024 at the latest.

The renewal fee falls due after grant and must therefore be paid to the national offices.

The renewal fee falls due within 2m of publication of grant in the European Patent Bulletin (8/11/2023), so may be validly paid within that 2m period  = 8/01/2024 - Art. 141(2) EPC.

Question 8

B

If a party files an appeal, the patent proprietor will not be invited to pay the fee for publishing a new specification, file translations of the claims or file a formally compliant version of the amended paragraph while the appeal proceedings are still pending.

This is a question which we answered, mainly by eliminating the incorrect options. Guidelines D-VI, 7.2.3 supports the answer.

A is incorrect because only the amended paragraph needs to be formally compliant, not the whole description.

C is incorrect, because the invitation is not issued together with the interlocutory decision. It is issued under R 82(2), which occurs after the interlocutory decision is final and can no longer be appealed.

D is incorrect because the applicable time limit is 3 months, not 4.

Question 9

D

the time limit under the PCT for filing a request for rectification of an obvious error is 26 months - R. 91.2 PCT

Question 10

C   (D may also be argued - see note)

Appointment of a professional representative, payment of two fees for further processing (EUR 290, code 122) and payment of four fees for further processing (late payment of a fee – 50% of the relevant fee) 

FP fees:

2 procedural acts missed:  translation and written request for examination = 2 * flat fee

4 fees missed = 4 * missing fee + 50% FP fee

The 31m period has expired, so missing acts and further processing must be performed by a professional representative - Guidelines E-IX, 2.3.1

Note: there has been debate within DeltaPatents whether answer D might also be considered correct in view of Rule 163(5) and/or Rule 50(3) EPC and Euro-PCT Guide 5.3.015. The latter says
"5.3.015 Where applicants have failed to appoint a professional representative as required, they will be invited by the EPO to do so within a time limit of two months. Until the EPO is informed of a (valid) appointment, any procedural step taken by such applicants will be deemed not to have been taken. If the deficiency is not corrected in time, the application will be refused."  and which cites Rule 163(5)&(6) in the margin and 
Euro-PCT Guide 5.3.016, which says "5.3.016 The refusal may be remedied by a request for further processing. The request will be granted if within two months of notification of the refusal a professional representative is appointed and the fee for further processing is paid." 
The loss-of-rights letter referred to in the question is not an invitation under Rule 163(5), so it appears that such invitation will be issued separately, so that D is also a correct answer.

Question 11

What communication under Rules 161/162 EPC will be received in the regional phase?

B

Form 1226BB offering the opportunity to comment and file amendments.

The EPO was ISA and had a negative opinion, so a response is required upon entry or form 1226AA would be issued.

In this case, the A 19 amendments filed in the international phase are considered to be a response. 

Question 12

C

The applicant can choose the Austrian Patent Office as ISA and the EPO as IPEA.

Annex C - MX  (here) and Annex E - EP (here)

Question 13

A

Yes, the time limit for adding the priority claim expires on 3 November 2023

Time limit for adding a missing priority claim under the PCT is:

Later of 16m from earliest priority / 4 months from PCT filing – R 26bis.1(a) PCT

4m period: 20/6/2023 + 4m à 20/10/2023

16m period 3/7/2022 + 16m à 3/11/2023

Question 14

D - none of the above

Remedies are not available to the opponent for missing time limits to file a response during opposition, so B and C incorrect.

An extension for extra time might have been granted, but only if submitted before the 4m period expired (expired on 11 Oct), so A also incorrect.

Question 15

B

The renewal fees for the third and fourth years can be validly paid without any additional fee on 12 October 2023 at the latest.

12 Oct is the date of resumption.

The renewal fees fell due during the interruption and could not be paid.

Due date is deferred until date proceedings are resumed – Guidelines E-VIII, 1.5

EPAC 2023 – part 1

Question 1

A European patent was granted to a German company on 4 January 2023. No opposition was filed. Mr Li and Ms Smith were designated as inventors. On 12 October 2023, the patent proprietor notices that Ms Smith was erroneously designated as inventor and that Mr Li is the sole inventor.  Which of the following statements is correct?

Responses

A.     Ms Smith will be deleted as inventor if the patent proprietor requests this in writing.

B.     Ms Smith can no longer be deleted as inventor because no proceedings are pending before the EPO.

C.      The patent proprietor can request that Ms Smith be deleted as inventor but needs Mr Li's consent for this.

D.     Ms Smith can only be deleted as inventor with her consent. 

Answer: D

Ms Smith can only be deleted with her consent.

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

Doesn't matter that patent has been granted - rectification of incorrect designation of inventor will also be recorded in the European Patent Bulletin - R. 21 (2).

Question 2

On 10 October 2021, European patent attorney X filed European patent application EP-A with the EPO on the applicant's behalf. 

Application EP-A was published on 12 April 2023, together with the extended European search report. 

On 6 October 2023, the applicant contacts a new European patent attorney Y to replace X as representative and issues Y with its instructions to reply to the extended European search report. The applicant did not inform X that he would be replaced. 

What are the steps necessary to validly appoint representative Y and to avoid any loss of rights for European patent application EP-A? 

Responses

A.     New representative Y requests a change of representative, files a response to the extended European search report with the EPO by 12 October 2023 at the latest and files in good time an authorisation signed by the applicant.

B.     New representative Y requests a change of representative and files a response to the extended European search report with the EPO by 12 October 2023 at the latest.

C.      New representative Y requests a change of representative and files a response to the extended European search report with the EPO by 23 October 2023 at the latest.

D.     New representative Y requests a change of representative, files a response to the extended European search report with the EPO by 23 October 2023 at the latest and files in good time an authorisation signed by the applicant.

Answer: A

Time limit to respond to the negative search opinion is 6 months from publication of the EESR [R. 70a(1); R 70(1) EPC]: 12/04/2023 + 6m = 12/10/2023.

In general it is not necessary for a European patent attorney to file authorisation.

In this case, an exception applies because as far as the EPO knows, X is still the representative, so Y must also file authorisation to be validly appointed.

Question 3

EP-1 is a regular European patent application (Euro-direct application).  

Which one of the following missed time limits can be remedied for EP-1 before the EPO by requesting re-establishment of rights? 

Responses

A.     time limit for paying the designation fee 

B.     time limit for requesting examination

C.      time limit for filing the application within the priority period

D.     time limit for paying the fee for re-establishment of rights

Answer: C

[Art. 122(4) EPC] Re-establishment is ruled out for the time limit for requesting RE, so D is incorrect.

[R. 136(3)] RE also ruled out for time limit for which further processing is available.

FP is available for missing the time limit to pay the designation fee and for completing the request for examination by paying the exam fee, so A and B are incorrect. 

Missed time limit for filing the EP application within the priority period can be remedied by requesting re-establishment of rights.

Art. 122, R 136(1) EPC: possible within 2m from expiry of the 12m priority period.

 

Question 4

Last week Greta validly filed the international patent application PCT-G with the German Patent and Trademark Office (DPMA) and appointed Hassan to represent her. Hassan is entitled to act before the DPMA but he is not a European patent attorney. Greta and Hassan are resident in Germany. 

Which of the following statements is not correct?

Responses

A.     Hassan can represent Greta before the EPO acting as the International Searching Authority for PCT-G.

B.     In order for Hassan to be able to act before the EPO acting as the International Searching Authority, he needs to submit a power of attorney signed by Greta.

C.      According to the provisions of the PCT, it is mandatory that the demand for international preliminary examination is signed by Greta or Hassan.

D.     According to the provisions of the PCT, an international application can only be withdrawn by the applicant or an agent appointed by a power of attorney.

Answer: B

No need to supply PoA because  EPO as ISA has waived the requirement [AG-IP Annex D-EP] and Hassan is agent of record, so no unexpected change.

A: Hassan is entitled to act before the rO and so may represent Greta before all international authorities  [Art. 49 PCT] 

C: Yes, the demand must be signed [R. 53.8 PCT]. This can be done by the applicant (Greta) or by the agent (Hassan) - EPG(2023) 4.1.053-055]

D: The applicant may withdraw [R. 90bis.5]. The notice of withdrawal may also be signed by an agent who has been appointed and authorized, because although offices may waive the requirement to file a PoA, the waiver never applies to withdrawals [R. 90.4(e)]  

Question 5

In which of the following cases is the applicant entitled to a reduction of the filing fee under Rule 6 EPC? A declaration of such entitlement has been made by crossing the relevant box on Form 1001.  

Responses

A.     A Spanish European patent attorney files a European patent application in Spanish for a natural person who is resident in Andorra and of Andorran nationality. 

B.     A firm whose principal place of business is in Germany and a natural person who is resident in Germany and of Dutch nationality jointly file a European patent application in Dutch. The German firm employs 200 people with an annual turnover of EUR 60 million.

C.      A natural person resident in the USA and of Belgian nationality files a European patent application in French

D.     A natural person resident in the USA and of Swiss nationality files a European patent application in Italian.

Answer: D

A natural person (resident in the USA) and of Swiss nationality is entitled to a reduction of the filing fee under Rule 6 EPC because:

Swiss national is from an EPC contracting state.

Italian is an official language of CH = admissible non-EPO language, so an application filed in Italian qualifies for the fee reduction, as long as the applicant also satisfies the requirement of R 6(4)

Natural person is entitled to the reduction [R 6(4)].

A: incorrect because Andorra is not an EPC state

B: German company makes too much money to be an SME. Dutch natural person satisfies requirements of R 6(4), but all applicants must be "small".

C: French is an official language of the EPO [Art. 14(1) EPC] Reduction would be available to BE national only if filed in Dutch = admissible non-EPO language.

Question 6

Mr Van Holland is a Dutch citizen resident in the Netherlands. He filed a European patent application EP-parent in Dutch, together with a translation into English. While EP-parent was pending, Mr Van Holland filed a divisional application EP-div in Dutch and requested examination in Dutch. He paid all fees due for EP-div. He has not filed an English translation of EP-div. The Receiving Section has now issued a noting of loss of rights. 

Which of the following statements is correct?

Responses

A.     The deficiency cannot be remedied.

B.     Mr Van Holland can remedy the deficiency by filing an English translation of EP-div within two months of notification of the communication under Rule 112(1) EPC.

C.      Mr Van Holland needs to file an English translation of EP-div together with a request for further processing.

D.     Mr Van Holland needs to file an English translation of EP-div together with a request for re-establishment of rights.

Answer: D

The initial time limit for filing the translation into English is 2m from filing of the divisional [R. 36(2) EPC]

If this is not done, an invitation to file the translation is issued under R 58. No translation sumbitted, so the receiving section issued a loss of rights communication.

Further processing is ruled out for missing the 2m time limit of R. 58, so re-establishment must be requested.

Question 7

On 16 November 2020, you filed a European patent application EP-A, which did not claim priority. Today, 12 October 2023, you receive a communication from the EPO entitled "Decision to grant a European patent pursuant to Article 97(1) EPC". This communication states that the mention of the grant will be published in the European Patent Bulletin on 8 November 2023. 

You wish to validate the patent in only two contracting states to the EPC.  

Which of the following statements is correct? 

Responses

A.     The renewal fee for the fourth year must be paid centrally to the EPO. The due date is 16 November 2023.

B.     The renewal fee for the fourth year must be paid centrally to the EPO. The due date is 30 November 2023.

C.      The renewal fee for the fourth year must be paid separately in each state where the patent is validated. The renewal fee for the fourth year can be validly paid without any additional fee until 8 January 2024 at the latest.

D.     The renewal fee for the fourth year must be paid separately in each state where the patent is validated. The renewal fee for the fourth year can be validly paid without any additional fee until 16 January 2024 at the latest.

Answer: C

The renewal fee falls due on 30 Nov. 2023. This is after grant and must therefore be paid to the national offices.

The renewal fee falls due within 2m of publication of grant in the European Patent Bulletin (8/11/2023), so may be validly paid within that 2m period  = 8/01/2024 - Art. 141(2) EPC.

Question 8

During oral proceedings, the opposition division decided to maintain the patent in amended form on the basis of a request in which the description contains a paragraph with handwritten amendments. 

Which of the following statements is correct?

Responses

A.     Upon request the patent proprietor must pay the fee for publishing a new specification, file translations of the claims and file a formally compliant version of the entire description.

B.     If a party files an appeal, the patent proprietor will not be invited to pay the fee for publishing a new specification, file translations of the claims or file a formally compliant version of the amended paragraph while the appeal proceedings are still pending.

C.      Together with the interlocutory decision, the patent proprietor will receive an invitation to pay the fee for publishing a new specification, file translations of the claims and file a formally compliant version of the amended paragraph. 

D.     If no appeal is filed, the patent proprietor must, upon request, pay the fee for publishing a new specification, file translations of the claims and file a typed version of the amended paragraph within four months.

Answer: B

In the case of maintenance in amended form, the opposition division issues an interlocutory decision, which can be appealed. If no appeal is filed, the OD then issues a communication under R 82(2), which invites the proprietor to pay the publishing fee, translate the claims and file a compliant version of any amendments.

A is incorrect because only the amended paragraph would need to be filed in compliant version.

C is incorrect because the invitation is issued after the interlocutory decision has been notified and the 2m period for filing an appeal has expired.

D is incorrect because the time limit would be 3 months.

Question 9

Under the PCT, what is the time limit for filing a request for rectification of an obvious mistake made in the international application?

Responses

A.     18 months from the earliest priority date

B.     30 months from the earliest priority date

C.      22 months from the earliest priority date

D.     26 months from the earliest priority date

Answer: D

the time limit under the PCT for filing a request for rectification of an obvious error is 26 months - R. 91.2 PCT

Question 10

A Japanese applicant filed an international application PCT-X in Japanese with the Japanese Patent Office (JPO) on 8 February 2022, claiming priority from an earlier national Japanese application filed on 19 February 2021, and indicating the JPO as ISA. The international publication comprises 34 pages, including 22 claims. No amendments under Article 19 PCT or Article 34 PCT were filed during the international phase. 

Today, 12 October 2023, the applicant received a noting of loss of rights. An excerpt from that communication is shown below.

Besides performing all missing acts, what has to be done within the time limit set in that communication for PCT-X to enter the European phase? 

Responses

A.     Payment of three fees for further processing (EUR 290 each, code 122) and payment of five fees for further processing (late payment of a fee – 50% of the relevant fee)

B.     Appointment of a professional representative, payment of claims fees, payment of three fees for further processing (EUR 290, code 122) and payment of five fees for further processing (late payment of a fee – 50% of the relevant fee)

C.      Appointment of a professional representative, payment of two fees for further processing (EUR 290, code 122) and payment of four fees for further processing (late payment of a fee – 50% of the relevant fee)

D.     Payment of two fees for further processing (EUR 290, code 122) and payment of four fees for further processing (late payment of a fee – 50% of the relevant fee)

Answer C (or possibly D)

FP fees:

2 procedural acts missed:  translation and written request for examination = 2 * flat fee

4 fees missed = 4 * missing fee + 50% FP fee

The 31m period has expired, so missing acts and further processing must be performed by a professional representative - Guidelines E-IX, 2.3.1

Missing acts and FP fees must be performed within 2m from notification of the loss of rights communication. It therefore seems necessary that a professional representative needs to be appointed within  the 2m period for the application to enter the EP phase.

It can also be argued that if form 1200 is filed, the translation is supplied and the fees are paid, but no representative has been appointed, the JP applicant may be invited to appoint a prof rep under R 163(5) EP. The procedural acts of requesting examination and filing the translation could also be considered as unsigned documents, because the JP applicant is not entitled to sign.  He might receive an invitation under R 50(3) to supply a missing signature, which can be fulfilled by appointing a prof rep.

Question 11

After receipt of a negative written opinion issued by the EPO acting as ISA, amendments under Article 19 PCT were filed during the international phase. No request for international preliminary examination was filed. Form 1200 was used, and no further amendments were filed with the EPO upon entry into the regional phase.  

What communication under Rules 161/162 EPC will be received in the regional phase?

Responses

A.     Form 1226AA; if you do not reply to it in time, the application will be deemed to be withdrawn

B.     Form 1226BB offering the opportunity to comment and file amendments

C.      Form 1226CC offering the opportunity to file amendments before the supplementary European search report is drawn up

D.     Form 1226AC stating that the examination has started

Answer: B

The EPO as ISA issued a negative written opinion, and if no amendments or response is filed on entry, communication 1226AA would be issued.

GL E-IX, 3.3.1

Earlier filed amendments or comments

A reply to the communication under Rule 161(1) may not be necessary where amendments or observations have already been filed that can be considered to be a valid reply. This is the case in the following situations: (i) If the applicant has filed new amendments and/or comments upon entry into the regional phase before the EPO, provided that – the applicant has indicated on entry into the European phase that such amendments and/or comments are to form the basis for further prosecution of the application (see E-IX, 2.1.1), and – they constitute a valid response (see B-XI, 8). (ii) If the applicant filed amendments according to Art. 19 and/or 34 PCT in the international phase, and if the EPO prepared the WO-ISA or SISR but no IPER (either because the applicant did not demand PCT Chapter II or because the IPEA was an office other than the EPO), then these amendments are considered to constitute a response to the WO-ISA or SISR, provided that the applicant – has indicated on entry into the European phase that these amendments are maintained.

GL E-IX, 2.1.1:

If the applicant does not specify the application documents on which the
European grant procedure is to be based, the international application as
published as well as any amendments made in the international phase are
considered to form part of the procedure.

Therefore, the A 19 amendments are considered a response to the opinion of the EPO and in the R 161(1)/162 communication that is issued after entry, the applicant will be offered the opportunity to amend or comment.

Question 12

Company M, which has its principal place of business in Tijuana, Mexico, validly filed an international patent application PCT-M with the Mexican Institute of Industrial Property. The application was filed in Spanish. A few days later, the applicant files an English translation of the application. 

Which of the following statements is correct?

Responses

A.     The applicant can choose the EPO as ISA and the USPTO as IPEA.

B.     The applicant can choose the USPTO as ISA and the EPO as IPEA.

C.      The applicant can choose the Austrian Patent Office as ISA and the EPO as IPEA.

D.     The applicant can choose the EPO as ISA and the Intellectual Property Office of Singapore as IPEA.

Answer: C

Looking up Annex C for Mexico, all of the mentioned offices are in principle competent ISAs and IPEAs.

However, the IPEAs may impose restrictions. [check annex E]

The USPTO and the Singapore Office will be IPEA only if they have also been ISA. 

The EPO will act as IPEA only if the EPO or another ISA that falls within the EPC contracting states, such as the Austrian Patent Office,  was ISA. 

Question 13

On 20 June 2023, applicant P validly filed an international patent application PCT-P, claiming priority from European patent application EP-I filed on 7 July 2022. Today, 12 October 2023, he discovers that he should also have claimed priority from EP-II filed on 3 July 2022.  

Can the missing priority claim still be validly added?

Responses

A.     Yes, the time limit for adding the priority claim expires on 3 November 2023.

B.     Yes, the time limit for adding the priority claim expires on 7 November 2023.

C.      Yes, the time limit for adding the priority claim expires on 20 October 2023.

D.     No, the time limit for adding the priority claim expired on 3 July 2023.

Answer: A

Time limit for adding a missing priority claim under the PCT is:

Later of 16m from earliest priority / 4 months from PCT filing – R 26bis.1(a) PCT

4m period: 20/6/2023 + 4m à 20/10/2023

16m period 3/7/2022 + 16m à 3/11/2023

Question 14

The opposition division revoked European patent EP-B1. The patent proprietor filed an appeal in time. The board of appeal forwarded a copy of the appeal to the opponent/respondent with a communication dated 1 June 2023 giving it an opportunity to file comments within a period of four months. The opponent/respondent files comments today, 12 October 2023. 

What further action has to be taken?

Responses

A.     The opponent/respondent needs to request an extension of the period for comment.

B.     The opponent/respondent needs to pay a fee for further processing.

C.      The opponent/respondent needs to file a substantiated request for reestablishment of rights and pay the associated fee.

D.     None of the above.

Answer: D

Remedies are not available to the opponent for missing time limits to file a response during opposition, so B and C incorrect.

An extension for extra time might have been granted, but only if submitted before the 4m period expired (expired on 11 Oct), so A also incorrect.

Question 15

A European patent application was filed on 20 March 2020. Proceedings were interrupted under Rule 142 EPC on 10 March 2022. The applicant was informed that proceedings would be resumed today, 12 October 2023. No renewal fee has been paid so far.  

Which of the following statements is correct?

Responses

A.     As no renewal fee has been paid, the application is deemed to be withdrawn.

B.     The renewal fees for the third and fourth years can be validly paid without any additional fee on 12 October 2023 at the latest.

C.      The renewal fees for the third and fourth years can be validly paid with an additional fee by 30 April 2024 at the latest.

D.     The renewal fees for the third and fourth years can be validly paid without any additional fee by 31 October 2023 at the latest.

Answer: B

When proceedings are interrupted, any periods other than those for requesting examination and paying renewal fees, in force at the date of interruption,  shall begin again as from the day on which the proceedings are resumed  - R. 142(4) EPC. 

Renewal fee for 3rd year due on 31/03/2022; 4th year: 31/03/2023.

These fees fell due after the interruption and could not be paid.

The due date is not a period in the normal sense, so it cannot begin again.  The date is deferred until date proceedings are resumed  (12/10/2023) – Guidelines E-VIII, 1.5

Please feel invited to post your comments!

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