No more "prior claims" approach in Europe / updated answer to Exam-Related Question

One of the things that has changed in the new National Law table is in table VII with respect to conversion.
A couple of the exceptions (always nice for EQE questions) are now gone.

Prior to July 2008, there was an exception in Switzerland and Liechtenstein where a withdrawal or rejection on the basis of earlier EP right [Art.54(3) EPC] opened the possibility of a conversion to a national application in those states [see National Law EPC, Table VII, column 1]. Reason for this was the “prior claim approach” in Switzerland and Liechtenstein. However, with the amendment to their national law in July 2008, Switzerland & Lichtenstein now apply the “whole contents” approach for prior rights.

The other one is for Italy - they used to allow a fairly broad conversion to an Italian utility model. This is no longer possible. 

For those using our Exam-Related Questions, click below to see the new answer for one of the questions.

R.40(3) - deemed withdrawn or refused ?

I recently received the following question:

I just answered question G3-10(d) [Basic Questions book] relating to failure to file a translation under R 40(3).

According to Visser, a missing translation under Art 90(3), R 57 (a), R 40(3) and failure to provide this within the two month time limit under R.58 will lead to the refusal of the application Art 90(5). He has also stated that the statement in A-III, 14 is probably incorrect.

In the DeltaPatents answer you refer to the translation under Art 14(2), R 6(1), which will lead to the application being deemed withdrawn.

Which is the correct answer?

Think about it, then click on Read more to see my answer

Bookmark this great reference version of the EPC

It has been a while since I looked at the EPO's html version of the EPC.
Today I noticed a couple of features which are useful for daily practice:

1. A hyperlinked EPC2000 => EPC1973 cross-reference table. For example, for the Rules
2. For each article and rule, an overview of recent changes to that provision, and hyperlinks to the apropriate decision of the Administrative Council. For example, R.71

Unfortunately, you cannot use this on the EQE, but it may help when studying.

Errors in Question Books 8th Edition June 2009

28 April 2010: Sorry, these documents are no longer available on our website. E-mail us if you need them.
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Being human, we sometimes miss updating answers based upon changes in the law.

If we detect any errors, we put them on our website, here

If anybody finds any other errors, let us know,and we will inform others about it

I have included the latest update list below. If you wait a couple of days, we will have the pdf version on the website.

Do national judges ever proceed on the basis of provisional protection ?

In principle, upon publication - Art.67 EPC and Art.69(2) - of a European application (assuming you comply with the national requirements - National Law Table III), you are granted provisional rights.

Theoretically, you can then go to a judge and invoke the right against an infringer.
However, the scope of your provisional protection can change retroactively, so you are potentially liable for damages if on grant, there is no infringement.
I see that Hungary has quite a long section in the National Law Table III.A, column 2. For most other states, it creates a liability for damages.

My question is - does anyone ever try to sue an infringer based solely on provisional protection?

Address for service - what happens if you don't do it ?

After grant under the EPC, some states require translations - Art.65. However, National Law Table V, column 6 sometimes requires a national patent attorney to be appointed or an address for service to be provided (See for example, Ireland - "must be provided"). There is no basis in the EPC for this.

Is there a deadline and sanction for the address for service ?
Presumably it is found in national law, but is it possible to give a general rule ?

For the successful candidates who complain about the EQE ...

If you think that the EQE is unfair, too hard or even too easy, you have the chance to influence it.

The EPO is looking for new members of the Examination Committees - see here

There are currently three ECs, each comprising epi and EPO members. EC I is responsible
for papers A and B, EC II for paper C and EC III for paper D. The duties of the ECs are set
out in Article 8 REE. Initially, the duties of new EC members will mainly concern the marking
of candidates' answer papers, which will require a minimum commitment of 120 hours per
year, including a minimum of three days of meetings in Munich. EC members may also be
involved in other duties that would require further time commitments.

Sorry, but you must have already passed the EQE

The closing date for applications is 9 October 2009

Digital exchange of PCT priority documents

The much anticipated digital exchange of priority documents seems to be moving ahead.

The status can be found here

Unfortunately, it not yet possible to use it for filers at the EPO, or for regional entry in Europe.

JP to amend Examination Guidelines for medical inventions

Handy for those in this field:

JP is to review its examination guidelines in respect of "medicinal inventions with new dosage/administration" and "methods for gathering data from human body for assisting with diagnosis"
See here

There is a possibility to postpone examination for affected applications until the new guidelines are published - see here

New edition of National Law

As yet only available electronically.

The new version is updated with details of the London Agreement
- expect a question on EQE 2010 on this.

Find it here

15/09/09: Paper version can now be ordered here

Changing attitudes towards divisionals & amendments

I am currently preparing materials for our yearly patent law update, aimed at qualified patent attorneys who want to keep up with the latest EPC and PCT legal developments.
From 1 April 2010, some major changes will be introduced into the EPC. Thanks to the European Patent Organisation for keeping us all busy with their "Raising the bar" program ;-)
We will all have to change our attitude to filing amendments and divisionals in the next few years.

The PATENT LAW UPDATE 2009 will be held on Wed 11 November 2009 in Utrecht.

For more details, click on the link to the left for "Ongoing Training for Patent Attorneys"

If preferred, we can also provide an in-house version, tailored to your requirements. Please contact us for more details

EQE Appeals

The deadline for filing an appeal against your EQE 2009 decision is approaching
(decision date + 10days + 1 month)

If you are thinking about it, consider the following:

• All grounds have to be filed within the same period (REE Art.24)
  
• It may take 1.5 years before you get a decision (so you will have to do the exam next year anyway)
  
• The chances of winning are tiny

There are two reasons to file an appeal:

• The exam committee clearly made a mistake
  E.g., they didn't mark a page of your answer, you got 0 points even though you have the same answer as the compendium
• You are very angry, and want to tell the examination board what you think
  This may help you to get past your disappointment

For most people, I recommend putting all that energy into analysing the differences between the compendium and your answer, and practicing past papers.

If you want to see how we can help, click on the link "Training for EQE" on the left.

EQE 2010

From next year, the new EQE regulations apply. It is quite complex, so if you are unsure about something, ask the EQE Secretariaat.

There are some improvements:

• No modular system anymore
  Sit them in any order and any combination.
  Note that if you did A&B in 2009, and C&D in 2010 (all for first time), you can either use the old system or the new system
  

• Compensation applied at every sitting
  Although you cannot compensate a failed paper from the past, it does mean that if you resit, it is no longer necessary to get 50 points or more
  Exception: if you did A&B in 2009, and C&D in 2010 (all for first time), you can use the old system and compensate a compensable fail for A and/or B with good scores in C & D.
  

• No translation required for the C-paper
  The whole paper, including all documents will be provided in all 3 languages

EQE 2009

A belated congratulations to all who passed at least something. None of the exams are easy, and it is easy to miss something crucial when you are under stress.