Thursday, October 16, 2025 EPAC Exam 2025 - Part 1

 Dear all,

Here our attempt at Part 1 of the exam

Impression: very challenging, i.e. too difficult. The balance between mainstream issues and outliers seems not right for the given amount of time. 

Please feel free to comment on our answers. You do not need to use your own name, but then make up a name (instead of anonymous) such that responses can be kept separate.

Kind regards,

Diane, Tanja, Jelle

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1.   A French applicant does not reply to a communication pursuant to Article 94(3) EPC from the Examining Division dated 2 May 2025 giving a two-month time limit to adapt the description to the amended claims. A noting of loss of rights dated 21 July 2025 is received by the applicant on 4 August 2025.

 Which of the following statements is correct?

 A.    The date of notification of the noting of loss of rights is 21 July 2025 and the time limit for requesting further processing expires on 21 September 2025.

B.    The date of notification of the noting of loss of rights is 21 July 2025 and the time limit for requesting further processing expires on 29 September 2025.

C.    The date of notification of the noting of loss of rights is 29 July 2025 and the time limit for requesting further processing expires on 29 September 2025.

D.    The date of notification of the noting of loss of rights is 4 August 2025 and the time limit for requesting further processing expires on 6 October 2025.

 Answer: B

 R. 126(2) EPC

·       Deemed date of notification is date of communication: 21/07/2025.

·       Received 14 days after this date, so 7 days too late

·       These 7 days get added to the end of the initial 2 months

·       Period expires: 21/07/2025 + 2m + 7d à 28/09/2025 (Sun) extended to 29 September 2025.

2. On the instruction of your employer, you have opted their European patent application out of the jurisdiction of the Unified Patent Court (UPC). The European patent has now been granted.

 Which of the following statements is correct?

 A.  The opt-out cannot be withdrawn.

B.  The proprietor cannot benefit from UPC jurisdiction.

C.  The proprietor cannot enforce their patent in national courts.

D.  Unitary effect can no longer be registered.

 Answer: B 

A.    Opt out can be withdrawn at any time, as long as national proceedings have not been instituted – Art. 83(4) UPCA – statement A is incorrect

B.    Unless the proprietor withdraws the opt-out and opts back in, the UPC does not have jurisdiction.

C.    The whole point of opting out is so that national courts have jurisdiction – statement C is incorrect.

D.    After an opt-out has been registered, a request for unitary effect is considered a withdrawal of the opt-out – R 5(9) Rules of Procedure – so a request is possible (as long as made within 1m of date of grant). Statement D is incorrect 

3. A European divisional application is received by the EPO on 22 January 2025. The application contains 52 pages of description, the abstract, 2 pages of claims and 6 pages drawings. The description contains 10 pages of sequence listing as a separate part of description in PDF, (pages 43 to 52), which correspond to the sequence listing complying with the WIPO Standard ST.25 included in the parent application. A separate sequence listing complying with the WIPO Standard ST.26 was filed on 9 April 2025 (6 pages).

 For how many pages is a fee to be paid?

 A.  16

B.  22

C.  26

D.  32

 Answer: A

 GL A-IV, 5.4

·       Listing acc. ST.25 in parent may be filed in pdf format (to avoid adding or losing subject matter). These 10 pages are excluded from the page fee calculation.

·       The 6 pages of ST.26 compliant pages also does not count towards page fee calculation. 

·       The application therefore has (52-10) + 1 + 2 + 6 = 51 pages

·       35 pages are fee exempt (R. 38.2 EPC), so 16 * page fee is due

4. A European patent application claims three priorities, namely from applications in Italy (IT), the United Kingdom (GB) and Germany (DE). The search report for the Italian priority application was drawn up by the EPO. The search results for the priority applications were not on file at the time the examining division assumed responsibility. The EPO issued a communication under Rule 70b EPC (EPO Form 2913) inviting the applicant to file a copy of the results of any search carried out for previous application/s, or a statement of non- availability for:

 A.  all three priorities.

B.  the GB and DE priorities.

C.  the IT and DE priorities.

D.  the DE priority.

 Answer: D

 GL A-III 6.12

·       Search report for IT priority application automatically included for (IT) because EPO performed the search itself

·       Search report for GB priority application automatically included due to agreement with UK patent office

·       Search report for DE priority application is not available to EPO and must therefore be filed

5. Mr X, a Syrian national residing in the Republic of Moldova, and University Y, registered and based in the Republic of Moldova, jointly filed a request for international preliminary examination with the EPO as IPEA on 8 October 2025. Based on the eligibility criteria for PCT fee reductions bound to country classification, what fee reductions apply to the demand?

 A.    The handling fee qualifies for a 90% reduction and the preliminary examination fee qualifies for a 75% reduction.

B.    Neither the handling fee nor the preliminary examination fee qualifies for any reduction.

C.    The handling fee qualifies for a 90% reduction, while the preliminary examination fee does not qualify for any reduction.

D.    The handling fee does not qualify for a reduction, while the preliminary examination fee qualifies for a 75% reduction.

 Answer: D

Applicants who are a natural person and reside in and are a national of a “low-income” state are entitled to a 90% reduction in the fees for the benefit of the IB (International filing fee, (SIS) handling fee) – point 5 PCT Schedule of Fees

Applicants who are a natural person resident in and a national of a “low-income state”, which is not an EPC state, are entitled to a 75% reduction in (S)IS / IPE fee for the EPO as (S)ISA / IPEA. Natural/legal persons from a validation state also qualify for the 75% reduction – OJ 2020, A4

 In the case of joint applicants, each applicant must qualify for the potential 90% / 75% reduction.

 Examination fee for EPO as IPEA

·       Moldova is a validation state

·       Syria is low-income state

·       Mr X is a national and resident of a state that qualifies for a 75% reduction in the international preliminary examination fee

·       University Y is a legal person in a validation state, so also qualifies for the 75% reduction.

·       Both applicants qualify and the preliminary examination fee is reduced by 75%

 Handling fee

·       A 90% reduction in the handling fee is available only to natural persons from a low-income country.

·       University Y is not a natural person and does not qualify

·       No reduction in handling fee  

6. Your firm filed a European patent application, EP1, with the Portuguese Patent Office on    8 July 2024. On 8 October 2025, you were notified that EP1 is deemed withdrawn because it was not forwarded to the EPO. What is the due date to file a request for conversion and where must the request be filed?

 A.  8 January 2026 with the Portuguese Patent Office.

B.  8 January 2026 with the European Patent Office.

C.  8 December 2025 with the European Patent Office.

D.  8 December 2025 with the Portuguese Patent Office.

 

Answer: A 

·       Request for conversion must be filed at Portuguese Office in this case – Art. 135(2) EPC

·       Time limit is 3m from “deemed withdrawn” communication

·       8/10/2025 + 3m à 8/01/2026

7. A decision pursuant to Article 97(1) EPC was issued on 12 September 2025 for European patent application EP-1, which was filed on 13 July 2022 in the name of Nemo Inc. The mention of the grant was published in the European Patent Bulletin on 8 October 2025. On 6 October 2025, the transfer of EP-1 to Global Inc. was registered at the EPO. On the same date, a European divisional patent application, EP-2, was filed in the name of Global Inc.

Which of the following statements is correct?

A.    If claims are not included in the divisional application received on 6 October 2025, the EPO will issue a communication under Rule 112(1) EPC stating that the application will not be processed as a European divisional application.

B.    Renewal fees for the third and fourth years for EP-2 must be paid by 6 February 2026 to avoid payment of the additional fee (50% surcharge).

C.   Renewal fees for the third and fourth years for EP-2 may still be validly paid by 30 April 2026 provided that the additional fee (50% surcharge) is paid.

D.    EP-2 cannot be filed in the name of Global Inc.

 Answer: B 

A.    Claims may be filed later, ultimately within 2m of an invitation under R. 58 EPC to do so. A is incorrect.

     D.    Divisional was filed before date of grant, so while application was still pending, by applicant of  record, so has been validly filed – Art. 76(1); R. 36(1) EPC, D is incorrect

 Renewal fees

·       Accrued renewal fees for EP-1: 3^rd & 4^th years (due on 31 July 2024 & 2025 respectively)

·       Accrued renewal fees are due at filing on 6/10/2025, but may be paid without surcharge within a period of 4 months – R. 51(3) EPC

·       So by 6/02/2026 (Friday and all EPO offices are open) – statement B is correct

·       The 6m period to pay with 50% surcharge is calculated from the due date, i.e. 6/10/2025 + 6m à 6/04/2026 (Easter Monday) à 7/4/2026 (Tuesday and all EPO offices are open). Statement C is incorrect.

8. Mr X, an Italian national and resident, filed his first European patent application, EP-X, in Italian, accompanied by a translation into English, on 10 April 2024. On filing the application, a request for examination in Italian was made and micro-entity status was declared by ticking the appropriate boxes on EPO Form 1001. EP-X was published without the search report on 16 October 2024. The European Patent Bulletin mentioned the publication of the search report on 6 November 2024. The opinion accompanying the search report mentioned several deficiencies.

 Which of the following statements is correct? 

A.    The examination and designation fee with combined language and micro-entity reductions had to be paid by 16 April 2025. A reply to the search opinion had to be filed by 6 May 2025.

B.    The examination fee with combined language and micro-entity reductions and the designation fee with micro-entity reduction had to be paid by 16 April 2025. A reply to the search opinion had to be filed by the same date.

C.    The examination and designation fee with combined language and micro-entity reductions had to be paid by 6 May 2025. A reply to the search opinion had to be filed by the same date.

D.    The examination fee with combined language and micro-entity reductions and the designation fee with micro-entity reduction had to be paid by 6 May 2025. A reply to the search opinion had to be filed by the same date. 

 

Answer: D 

·       Time limit to complete request for examination by paying examination fee is 6m from publication of ESR: 6/11/2024 + 6m à 6/05/2025 (Tue) – Art. 94(1); R. 70(1)

·       Same 6m period to pay designation fee – R 39(1) EPC

·       Search report was negative, so a reply is mandatory within same 6m period – R. 70a(1) EPC

·       Language-related fee reduction does not apply to the designation fee (R. 7a(1) EPC), which excludes answer C.

9. Which of the following statements correctly describes the characteristics of the European search report types issued by the European Patent Office (EPO)? 

A.    The European search report is not accompanied by a search opinion when a valid waiver under Rule 70(2) EPC has been filed.

B.    The EPO does not issue an extended European search report for a divisional application if one was issued for the parent application.

C.    A supplementary European search report is issued if the China National Intellectual Property Administration (CNIPA) acted as ISA and the EPO acted as SISA.

D.    When issuing a European search report, the EPO always issues a search opinion regardless of whether the examination fee has been paid or not.

 Answer: A 

A.     Where examination fee was paid before receipt of search report and R. 70(2) communication has been waived, no search opinion is issued. Instead, the examining division sends the search report together with either an office action (Art. 94(3) communication) or an intention to grant under R. 71(3). A is correct and D is therefore incorrect – GL B-XI, 7

B.     Incorrect because divisional applications are searched, published and examined in the same way as other European patent applications (GL A-IV, 1.8).

C.    Incorrect because no supplementary ESR is drawn up when the EPO was ISA or SISA – Art. 153(7) EPC; Decision of Admin Council OJ 2009, 594; GL E-IX, 3.1.

10. Mr Van Holland is a Dutch citizen resident in the Netherlands. On 16 October 2023, he filed a European patent application in Dutch, accompanied by a translation into English, and paid all fees that could possibly be paid. The extended  European search  report was issued  on  15 May  2024  and  duly  published  together  with  the  application  on  16 April  2025.  On      1 September 2025, Mr Van Holland paid the renewal fee for the third year. Today, 9 October 2025, he decided to abandon the application by not replying to the negative search opinion. Which fee(s) will be refunded? 

A.  The search fee and the examination fee.

B.  Only the examination fee.

C.  The examination fee and the renewal fee.

D.  Only the renewal fee.

Answer: C.

 Analysis

Mandatory response to negative search opinion is due 6m from publication of ESR – R. 70a(1); R. 70(1) EPC

16.04.2025 + 6m à 16.10.2025 (Thu)

Application will be deemed withdrawn at midnight on that date, as no response will be filed

 Due date for payment of 1^st renewal fee: 31 Oct. 2025 – R. 51(1) EPC

Paid on 1 Sept, when application still pending, and within 3m of due date, so validly paid

 Search fee

·       No refund of search fee

·       Search fee is refunded in full only if application is (deemed) withdrawn before search starts  (RFees 9(1)), or if EPO can make full use of an earlier search (RFees9(2))

 Renewal fee for third year

·       Refunded because application becomes deemed withdrawn before the due date and the legal basis for the payment ceases to exist.

·       GL A-X, 10.1.1: If the payment is made before or on the due date and if, no later than that date, the legal basis ceases to exist (e.g. because the patent application is deemed withdrawn or is withdrawn), the amount paid is to be refunded.

 Examination fee

·       The exam. fee is refunded in full because application is deemed withdrawn before substantive examination has started – RFees 11(a)

·       Examination cannot have started yet, because although examination request has been completed by payment of exam fee (prior to receipt of search report), the applicant has 6m from publication of the ESR (R. 70(2); GL EVIII, 1.2) to indicate whether they want to proceed, and to file reply to negative search opinion.

  

11.     Which of the following acts is NOT required within the time limit to validly file an admissible notice of appeal?

 A.  Indicating the name and address of the appellant.

B.  Indicating the appealed decision.

C.  Indicating the facts and evidence on which the appeal is based.

D.  Paying the fee for appeal. 

Answer: C 

·       Period for filing grounds of appeal (indicating facts and evidence) is 4m from notification decision (Art. 108 EPC).

·       Notice of appeal is to be filed within 2m therefrom, whereby the appeal fee must be paid within this 2m period (or appeal deemed not filed) (Art. 108 EPC)

·       Name & address and impugned decision are admissibility requirements for the notice of appeal – R 99(1) EPC .       

12. A European patent application, EP-X, claiming priority of PAT-X filed on 2 April 2024, was filed on 2 April 2025 without stating the intention to pay validation fees in the appropriate section of the Request for grant form. EP-X was published with the search report on 8 October 2025. Supposing that the designation fee is duly paid and that the applicant now intends to request validation in Cambodia (KH) and the Lao People's Democratic Republic (LA), which of the following statements is correct? 

A.    Validation in KH and LA is not possible since the intention to pay the validation fees for KH and LA was not stated in the appropriate section of the Request for grant form.

B.    A request for validation in KH is made by paying the validation fee for KH by 8 April 2026. A request for validation in LA is not possible because the validation agreement with LA was not in force when EP-X was filed.

C.    If validation fees for KH and LA are not paid by 8 April 2026, they may still be validly paid by 8 June 2026, with a 50% surcharge.

D.    If validation fees for KH and LA are not paid by 8 April 2026, they may still be validly paid within two months from the notification of the loss of rights, which will be issued after expiry of the basic period for payment of the validation fees. 

Answer: C 

·       LA became a validation state on 1 April 2025, i.e. the day before EP-X was filed, so validation request is possible.

·       KH has been a validation state since 1 March 2018, so a validation request is possible.

·       The request is made by paying the validation fee.

·       Time limit is 6m from publication of ESR – GL A-III, 12.2

·       8.10.2025 + 6m à 8.04.2026 (Wednesday and all EPO offices are open).

·       May still be paid within 2 months from expiry with 50% surcharge (A-III, 12.2), i.e. 8/6-26 (Monday and all offices are open).

 

13. On 25 July 2024, you filed an international patent application validly claiming priority of a European patent application filed on 24 June 2024. 

On 27 August 2025, your office received the International Search Report (ISR) from the European Patent Office acting as the International Searching Authority. The date of transmittal of the ISR was 25 August 2025.

 

What is the deadline for filing amendments under Article 19 PCT? 

A.  25 November 2025

B.  24 October 2025

C.  25 October 2025

D.  27 October 2025

 

Answer: D 

·       Time limit is later of 2m from transmittal of ISR or 16m from priority – R. 46.1 PCT

·       2m period expires: 25/08/2025 + 2m à 25/10/2026 (Sat) extended to 27/10/2025

·       16m period expires: 24/06/2024 + 16m à 24/10/2025 (Fri)

·       27 Oct. is later, so that is last day

14.      Applicant X, a large company, receives an International Search Report prepared by the Austrian Patent Office and subsequently files a request for entry into the European phase. The EPO issues a partial supplementary European search report due to lack of unity of invention and invites the applicant to pay two additional search fees. 

Does a fee reduction apply to these additional search fees? 

A.  Yes, a fee reduction applies to the additional search fees because the international search was conducted by the Austrian Patent Office.

B.   No, a fee reduction does not apply because the Austrian Patent Office is not among the International Searching Authorities (ISAs) that qualify for a search fee reduction.

C.  Yes, a fee reduction applies to the additional search fees because the EPO only performs partial additional searches, leading to lower additional search fees.

D.  No, a fee reduction does not apply because the fee reduction is granted only once and was applied to the search fee paid on entry into the European phase. 

Answer: D 

GL A-X, 9.5.1

·       The search fee due on entry under R. 159(1)(e) EPC was reduced by € 1300, because AT was ISA

·       This reduction does not apply to additional search fees due under R. 164(1) EPC in the case of non-unity.

 

15. Assuming all due care is taken by the party concerned, in which situation is a re-establishment of rights NOT available?

 

A.  In opposition proceedings, the proprietor missed the time limit under Rule 79(1) EPC to reply to the opposition.

B.  In opposition proceedings, the proprietor missed the time limit for filing a notice of appeal.

C.  In opposition proceedings, the proprietor filed a notice of appeal in time but missed the time limit for filing the grounds for appeal.

D.  In opposition proceedings, the opponent filed a notice of appeal in time but missed the time limit for filing the grounds for appeal. 

Answer: A 

·       RE under Art. 122 EPC is available to a patent proprietor when a time limit is missed in spite of all due care and failure to meet the time limit results in a loss of rights that cannot be remedied in any other way.

·       Failure to respond to the invitation under R. 79(1) to file observations does not lead to a loss of rights, so RE not available.

 Statements B-D

·       Failing to meet the 2m time limit to file a notice of appeal or the 4m period to file the grounds of appeal results in a loss of rights for the proprietor, so B and C correct.

·       Exceptionally, an opponent who files the notice of appeal on time but misses the time limit to file the grounds of appeal, in spite of all due care, is allowed to request RE- G 1/86 – so D is also correct.