Friday, October 17, 2025 EPAC EXAM 2025 Part 2

 Dear all,

We thought that Part 1 of this year's exam was very difficult. It was a breeze in comparison with Part 2.

In our opinion, the balance in the questions between standard aspects that formalities officers encounter in daily practice and exceptional aspects that require specialized knowledge and a lot of looking up is not correct. There is too much emphasis on the exceptions and the answers to several questions required checking of several different documents, particularly question 5.

Question 4, worth only 3 marks, provided a huge amount of details that did not seem relevant for answering the question, and the details which were relevant for answering were not clear to us. We are still unsure what answer was expected to this question.

Here is our attempt at Part 1 of the exam.

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

 

Question 1 [6 points]

On 28 February 2025, Spanish applicant A filed international application PCT-A claiming priority from a Spanish national application filed on 2 March 2024. PCT-A was filed in Spanish at the Spanish Patent Office.

The Spanish Patent Office, acting as International Searching Authority (ISA), issued an International Search Report (ISR) and a written opinion, which were transmitted to the applicant on 7 October 2025.

 

(1)   Before deciding on entry into the European phase, applicant A wants to obtain a report drafted by the EPO considering their arguments on the objections raised in the written opinion.

How should they proceed and by when? Explain your reasoning.

Please specify whether any fees are due and to whom they should be paid. (Fee amounts need not be specified.)

 

A should file a Demand for International Preliminary Examination using form PCT/IPEA/401 with the EPO as IPEA

·       EPO is a competent IPEA when rO = Spain – Annex C-ES

·       and also when the Spanish office was ISA – Annex E-EP

 The time limit for filing the Demand is the later of 3m from transmittal of the ISR or 22m from priority (R. 54bis PCT; GL-PCT/EPO C-II, 1.1)

3m period expires: 7/10/2025 + 3m à 7/01/2026 (Wed, EPO open)

22m period expires 2/3/2024 + 22m à 2/01/2025 (Fri, EPO open)

 The demand must be filed by 7 Jan. 2025 at the latest.

 Language

The EPO as IPEA only accepts English, French and German – Annex E-EP

Since PCT-A was filed and published in Spanish, a translation of PCT-A into one of these languages must be submitted - GL-PCT-EPO A-VII, 2.3.1

The demand form must be filed in the language of translation - GL-PCT-EPO A-VII, 2.3.3

 The arguments on the objections raised in the ISR should preferably be filed together with the Demand, also in the language of translation.

 Fees

The preliminary examination fee and the handling fee must also be paid to the EPO.

Time limit to pay: 1m from date on which demand is filed or 22m from priority, 2 Jan 2026, if that is later. [R. 57; R. 58 PCT; GL-PCT/EPO A-III, 7.1, 7.2]

 

(2)   The EPO as International Preliminary Examining Authority (IPEA) considers that there are still objections outstanding.

What opportunity or opportunities does the applicant have to file amendments/arguments before a negative International Preliminary Examination Report (IPER) is issued? Explain why.

 

GL EPO-PCT C-IV 2.2

The examiner will send a WO-IPEA to the applicant, which is considered the first written opinion. Typically, the applicant has 2 months to reply by filing further arguments / Art. 34 amendments.

 If objections still not overcome, applicants must be given a further opportunity for interaction in Chapter II before a negative IPER is issued, on condition that a substantive reply to the 1^st WO-IPEA was filed.

 The further opportunity may be a second WO-IPEA or, if a request for a telephone interview was submitted, telephone minutes.

 In response to the 2^nd WO-IPEA / telephone minutes, the applicant can file further arguments / Art. 34 amendments.

 

 Question 2 [6 points]

 On 2 April 2024, Danish applicant A filed international application PCT-A claiming priority from an EP application dated 29 March 2023. PCT-A was filed in English at the EPO, with the EPO also acting as International Searching Authority (ISA).

In addition to an abstract, the application contains 53 pages of description, 12 pages with 86 claims and 10 pages with 12 figures and was published as an A1 publication.

 

The applicant wishes to enter the European regional phase with the widest territorial protection available. The applicant's company policy is to file the application using Online Filing 2.0 and to have an automatic debit order in place for all EP applications and for payment of all fees.

(1)   What does the applicant need to do to validly enter the European regional phase according to the applicant's company policy and by when? Which fees will be debited? (You do not need to specify any fee amounts.)

The time limit to enter the EP phase is 31m from priority – R 159(1) EPC

29/03/2023 + 31m à 29/10/2025 (Wed, EPO offices open)

 

Actions:

By this date, the applicant should submit form 1200 using OLF 2.0, specify the application documents on which grant procedure is to be based and indicate automatic debiting as the method of payment.

Form 1200 contains the written request for examination.

Also indicate in Form 12OO that BA is designated as an extension state and also tick the boxes for all validation states.

 

The following fees will be debited:

Online filing fee, which includes a page fee for pages in excess of 35 (R. 38(2) EPC)

PCT-A as published forms basis for page count: 53 + 12 + 10 + 1 (abstract) = 76, so 41 * page fee

 

Examination fee and designation fee (as ISR will have been published > 6 months ago in Oct. 2024)

The extension fee for BA and the validation fee for each validation state will be debited.

 

These fees will be debited on the last day of the 31m period

 

The renewal fee for the third year will be debited on the due date: 30 April 2026

 

The claims fees for 86 – 15 = 71 claims fees are debited on the last day of the 6m period for responding to the R 161(1)/ 162 communication

 

 

On 18 November 2025, the applicant receives a communication pursuant to Rules 161(1) and 162 EPC (Form 1226AA) dated 14 November 2025 inviting them to correct any deficiencies noted in the written opinion of the ISA.

 The applicant does not file a response to this communication, as more time is needed to reduce the number of claims.

On 28 May 2026, the applicant receives a communication dated 26 May 2026 noting the loss of rights pursuant to Rule 112(1) EPC. The noting of loss of rights concerns the omitted act only, as the claim fees have been automatically debited from the deposit account.

     (2)   The applicant wishes to have an amended set of 22 claims examined. Explain what the             applicant needs to do and by when.

Please also indicate which fees will be debited/refunded, if any. (You do not need to specify fee amounts, if any.)

  The applicant has 2m from notification of R. 111(2) communication to request further    processing

  Deemed notified on 26/05/2026, so 2m period expires on 26/07/2026 (Sun) extended to 27/07/2026 (Mon, EPO offices open)

 The applicant must file the set of 22 amended claims,  including basis for the amendments,  by 27 July   2025.

 The flat fee for further processing will be automatically debited from the deposit account  on the day the omitted act (filing the reply to the communication) is completed.

 The claims fees due are calculated based on the amended claims – R 162(2) EPC

 Since examination is to be  based on 22 claims, requiring  7 * claims fee, and  71* claims fee has been paid, 71-7 = 64 * claims fee will be refunded – R 162(3) EPC; GL E-IX, 2.3.8.

 Question 3 [5 points]

Company A is an Indian autonomous startup enterprise that employs 15 full-time employees and has an annual turnover and an annual balance sheet total of EUR 1 million.

On 21 November 2024, an employee acting in the name of Company A filed European patent application EP-X and paid both the filing fee and the search fee. EP-X is the first application filed by Company A with the EPO. It was filed in English and includes a description and 14 claims.

 

On 31 December 2024, a number of employees left the company. As of 1 January 2025, the company had only nine people employed.

 (1)   What should be done before the search can start?

 Indian applicant A is not based in an EPC state and must appoint a professional representative – Art. 133(2) EPC

Note: The acts of filing the application and paying filing and search fee have been validly performed (representation not required for the act of filing (Art. 133(2)) and anybody can pay fees (GL A-X, 1)).

 The applicant receives a partial search report identifying two inventions and inviting them to pay a search fee for the second invention. The partial search report is accompanied by a positive search opinion for the first invention. The applicant wants to receive a communication under Rule 71(3) EPC for the first invention only, at the minimum cost.

 

(2)   How should the applicant proceed and by when? (You do not need to specify any fee amounts.)

 Actions

Do not pay the additional search fee within the allowed 2m period of R. 64(1) EPC.

The partial search report will become the final search report, accompanied by the search opinion – GL-B-VII, 1.2.1

After receipt of the final search report, file a set of amended claims directed to the first invention only.

 Minimisation of costs

As of 1 Jan 2025, applicant has fewer than 10 employees and now qualifies as a micro-entity under R, 7a(3) EPC.

File a declaration under R. 7b(1) that the IN applicant has micro-entity status, preferably using form 1010

Complete the request for examination by paying the examination fee with 30% micro-entity reduction.

Pay the designation fee with 30% micro-entity reduction.

 The declaration can be filed at any time after 1 Jan 2025, at the latest by the time the reduced examination fee and designation fee are paid.

These fees must be paid within 6m from publication of European search report, but can be paid earlier.

 

 After having entered the examination phase, Company A finds an investor with more than 100 employees and sells 50% of the patent application EP-X to it. Both applicants want to have a patent granted for EP-X as soon as possible at the lowest cost.

 (3)   What should be done? What is the impact on the fees for the patent application? (You do not need to specify any fee amounts.)

 To get the R 71(3) communication as soon as possible, professional representative should file a PACE request online (no cost involved)

 The EPO must also be informed of the change of status of the applicant (OJ 2024, A8), as entitlement to micro-entitly-related fee reductions require that all applicants have micro-entity status(R. 7a(5)).

Request the EPO to register the 50% transfer to company X by filing appropriate documents signed by A and X.

File the request using MyEPO, to avoid paying the transfer fee

 

When the communication under R. 71(3) is issued, file a translation of the claims into German and French and pay the fee for grant and printing as soon as possible.

Also pay the renewal fee for the 3^rd year by 30 Nov. 2026.

 

The full amount of the fee for grant and printing and the renewal fee must be paid, as joint applicant X does not qualify as a micro-entity.

There is no impact on the earlier paid examination fee and designation fee, as later changes in status do not affect fee payments for which the reduced amount was validly paid.

 

Question 4 [3 points]

 On 7 February 2024, Japanese company J filed an international application in Japanese claiming priority from a Japanese national application filed on 9 February 2023 and with the Japan Patent Office (JPO) acting as International Searching Authority (ISA). The international application contains 30 pages of description, 5 pages with 17 claims, no drawings and an abstract. The international application was published in August 2024 with the International Search Report (ISR) and a set of amended claims under Article 19 PCT.

 Company J wanted to enter the European phase as soon as possible to obtain a patent, so they filed a request for entry on 6 May 2025. On EPO Form 1200, it was indicated that early processing was requested and proceedings before the EPO were to be based on the set of claims amended under Article 19 PCT.

The request was accompanied by a request for accelerated search under the PACE programme and an English translation of the description as originally filed and of the amended claims under Article 19 PCT. The applicant paid all the required fees. The International Bureau (IB) has provided the EPO with the copy of the ISR, International Preliminary Report on Patentability (IPRP) under Chapter I and their English translations.

 (1)   Why will the supplementary European search not start immediately? Mention all reasons.

 A translation into English of the 17 claims as originally filed has not been submitted.

This is a minimum requirement for early processing to be effective – R. 159(1)a; GL E-IX, 2.8

Search cannot start until the processing begins.

 In further proceedings, the JP applicant must appoint a professional representative, but until expiry of the 31m period, the applicant may perform the steps required for entry to the EP phase themselves, including the filing of translations, request for early processing etc. GL-E-IX, 2.3.1

 Furthermore, search can only begin at the end of the 6m period for responding to the invitation under R. 161(2), unless this is waived.

If Art. 19 amended claims have more than 15 claims, claims fees need to be paid before search can start – R. 162(1)

 Further translations are also missing, although these are not needed for early processing to be effective.

An English translation of the abstract is needed and of the accompanying letter, indicating the basis in the application as filed for the Art. 19 amended claims, and any statement under Art. 19(1) PCT also needs to be filed so that the examiner can understand the amendments and take them into account – GL E-IX, 2.1.4.

 

The applicant decided not to reply to the communication regarding early processing, so the request for early processing was not effective.

(2)   What will be the next communication if the applicant does not take any further steps on expiry of the 31-month period? Which time limit applies and what are the consequences if the applicant does not reply?

 A translation of the application as filed (claims and description) is a minimum requirement that must be performed before the 31m period expires – R. 159(1)(a).

If not provided on time, the application is deemed withdrawn – R. 160(1).

The EPO will issue  a loss of rights communication – R. 160(2)

The applicant must appoint a professional representative, who should file the missing translation of the original claims within 2m from notification and pay the flat fee for further processing.

If not done, only remedy is re-establishment

 

 Question 5 [4 points]

You are the assistant of the patent attorney who represents the successive applicants/proprietors, each of whom have only ever had one application/patent.

The client's instructions are to perform all actions and pay the minimum fees required, if any, to obtain registration of the unitary effect for the granted European patent (no validation in states to which the unitary effect does not extend).

Your firm uses MyEPO, including Mailbox, and does not use automatic debiting. The file history is as follows:

8 October 2023: filing date of EP application in Spanish by applicant B, who is the sole inventor, residing in Portugal.

23 May 2025: registration of the transfer of the EP application to University C, an Italian university, to which the inventor assigned all rights.

9 September 2025: communication of the decision to grant. You immediately filed a valid request for unitary effect, including a request for compensation.

27 September 2025: registration of a transfer of the EP application from C to a Romanian SME D. 8 October 2025: publication of the mention of the grant in the Bulletin.

 

 (1)   Indicate what should be done in order to obtain a European patent with unitary effect in addition to the actions mentioned above.

 OJ 2023 SE3, 5: Under Rule 5(1) UPR, unitary effect must be requested by the proprietor of the European patent. If the proprietor changes because a transfer of rights is registered between the filing of an early request for unitary effect and the publication of the mention of the grant of the European patent in the European Patent Bulletin, the request may be rejected as a result, unless the new proprietor explicitly confirms it when requesting registration of the transfer.

 Option 1

Together with the request to register the transfer on 27 Sept. 2025, confirm that SME D wants to request unitary effect

 Option 2 (assuming this was not done) and today is 9 Oct. 2025

The request for unitary effect needs to be filed in the name of the proprietor – R. 5(1) UPR

There is currently a mismatch between the details of the original requester (University C) and the proprietor SME D and the request for unitary effect does not comply with R. 6(2) UPR [proprietor].

This needs to be corrected and a request for correction should be submitted today.

 According to UP Guidelines 2.4, the UPP division will give the proprietor the opportunity to comply with the requirements under R 6(2) within a non-extendible period of 1m.

 

 If all goes as it should, the unitary effect will be registered on 22 October 2025 (date of the communication notifying the registration).

 (2)   Explain whether and why the EPO will accept or refuse your request for compensation.

 The EPO will accept the request for compensation.

 EP application was filed in Spanish – R. 8(1) UPR

 Translation compensation is given to applicants

·       having residency or principal place of business in an EU member state, and

·       being a SME, non-profit organization, university or public research institution. (UPG 3.2.1.1; R. 8(2) UPR)

 In a situation of a transfer before a grant, both the initial applicant and the proprietor at grant must comply with the above-mentioned eligibility criteria, (UPG 3.2.1.2; R. 8(4) UPR).

·       Original applicant B, natural person from Portugal, qualifies

·       Romanian SME D also qualifies.

 (3)   Explain:

 -  which renewal fee will be due next

-  when it can be paid at the earliest

-  what is the last day to pay the next renewal fee without an additional fee

-  what is the last day to pay the next renewal fee with the additional fee

 The patent was granted on the date when the 3^rd patent year began and the renewal fee for the 3^rd year is no longer payable to the EPO under the EPC – GL A-X, 5.2.4

This is the next fee to be paid to the EPO under the UPR.

 The due date is 31/10/2025 – R. 13(2) UPR -  which is after the date of registration.

Earliest date to pay:  renewal fee can be validly paid 3m in advance.

 Comment DeltaPatents: In the present case, we assume that the renewal fee cannot be paid prior to the date of registration, but can find no document confirming this

 Last day to pay without surcharge

Art 144(2) EPC provides that any renewal fee due within 2m from date of grant may be validly paid within 2m of that date, so by 8/10/2025 + 2m à 8/12/2025 (Mon. EPO offices open)

 The last day to pay with surcharge is 6m from the due date – R. 13(3) UPR

So by 31/10/2025 + 6m à 30 April 2026 (Thu. EPO offices open)

  

Question 6 [6 points]

 On 10 July 2024, a European patent application, EP-ABC, was filed at the EPO on behalf of applicant, ABC, claiming priority from a US provisional patent application dated 16 August 2023. The filing and search fees were duly paid on filing and all requirements to obtain a European filing date were met. The application was filed with 12 claims and according to the applicant’s filing instructions, no extension or validation states were designated.

 On 1 October 2024, you received a partial search report dated 4 October 2024 indicating that the application lacks unity and relates to three separate inventions (X, Y and Z, with invention X corresponding to claims 1, 6 to 8 and 12; invention Y to claims 2 to 4 and 10; and invention Z to claims 5, 9 and 11).

 (1)   How do you obtain a search on invention Y? Specify the applicable time limit and what fees, if any, need to be paid. (You do not need to specify fee amounts, if any.)

  The partial search report will be based on invention X, as this is the first invention mentioned in the claims.

It is accompanied by an invitation under   R. 64(1) EPC to pay 2 x additional search fee  for  inventions Y and  Z for these to be included in the final search report.

 To get Y searched, pay 1 x additional search and indicate that claims 2-4 + 10 are to be searched.

Time limit is 4/10/2024 + 2m à  4/12/2024  (Wed)

 Today, 9 October 2025, you are contacted by applicant ABC, indicating that they also wish to obtain a search on invention Z.

 (2)  Explain how you can obtain a search on invention Z

 File a divisional application from EP-ABC and pay the filing fee and search fee within 1m from filing. (Art. 76(1); R 36 EPC)

The claims of the divisional application need to be directed to invention Z:  claims 5, 9 ad 11 of EP-ABC.

 In a separate scenario, you have received the following communication from the EPO. Form 1081 EPO_(EN).pdf

(3)  What is the deadline for reacting to this communication?

             (4)  What is the consequence if the time limit is missed? How can you remedy the                 situation?

 Form 1081 is a communication under R 69 EPC, notifying the date of publication of the search report.

The deadline for responding is 6m from this date of publication.

The examination fee and the designation fee must be paid by the deadline (R. 70(1); R 39(1) EPC).

 If missed, application will be deemed withdrawn and EPO sends out a loss of rights communication.

Situation can be remedied with further processing by paying the examination fee and the designation fee + 50% of each fee as FP fee.