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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The current list for Exam-Related Questions (Part II) is:
G10-01 (EQE – 1 point)
In appeal proceedings before the EPO, an amended set of claims was transmitted using the epoline online filing software.

Legal situation?

Answer
o Electronic filing of documents [in accordance with R.2(1) EPC] is permitted in all proceedings [OJEPO 2009, 182, Art.1(1)].
o No confirmation documents on paper need to be filed – OJEPO 2009, 182, Art.12

Comment
o Based on Question 2(c) of Paper DI of EQE 2005 [1 point (adapted)].
o Prior to 5 March 2009, it was not permitted in appeal – see T514/05


The current list for Basic Questions (Part I) is:
C6-12
Can priority be claimed from:
(a) a European patent application which contains no claims?
(b) a European patent application filed by a Chinese applicant who did not file a translation into English, German or French?

Can priority be claimed by a European application from:
(c) a US provisional patent application?

Answer
o The wording “duly filed” in Art.4A(1) PC means every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements [Art.4A(2) PC]. This includes the EPC.
o By a regular national filing is meant any filing that is sufficient to establish the date on which the application was filed, whatever may be the subsequent fate of the application [Art.4A(3) PC].
o If certain elements of the invention for which priority is claimed do not appear among the claims formulated in the previous application, priority may nonetheless be granted, provided that the documents of the previous application as a whole specifically disclose such elements [Art.4H(1) PC].

(a) Yes.
o The EPC does not require claims for according a date of filing for a European patent application [Art.80 and R.40 EPC].
o A European patent application with a date of filing is a regular national filing [Art.66 EPC].
o Therefore this application is “duly filed” [Art.4A(1) PC].

(b) Yes
o the EPC does not impose a language requirement for according a date of filing for a European patent application [Art.80 and R.40 EPC].
o Therefore this application is “duly filed” [Art.4A(1) PC].
o The fact that the application is deemed withdrawn [Art.14(2) EPC, last sentence] is irrelevant [Art.4A(3) PC].


(c) Yes [OJEPO 1996, 81]:
o “Duly filed” in Art.87(1) EPC means every filing that is equivalent to a regular national filing under the national law of the State where it was made or under bilateral or multilateral agreements [Art.87(2) EPC].
o It is possible to file a provisional patent application in the USA.
o The provisional application cannot as such lead to the grant of a patent as it is not examined and is deemed abandoned 12 months after filing. It does however give rise to a priority date for a subsequent, regular national filing.
o The EPO recognises the provisional application for patent as giving rise to a right of priority within the meaning of Art.87(1) EPC.

Comment
Guidelines C V, 1.3: So long as the contents of the application were sufficient to establish a filing date, it can be used to create a priority date, no matter what the outcome of the application may later be; for example, it may subsequently be abandoned or refused.

(c) The US provisional patent application is not explicitly mentioned in Guidelines A III, 6.1 as a “previous application” from which priority may be claimed in Art.87(1) EPC, but from Guidelines A II, 5.4.3 it is implicit that if priority is claimed from a “US provisional patent application”, a copy of the claimed priority is already available to the EPO under R.53(2) EPC and need not be filed by the applicant.


C6-32 (EQE – 5 points)
On 14 December 2009 you filed a European patent application EP2 claiming priority from a European patent application EP1 filed on 17 August 2009. Today, 2 March 2010, you received a telephone call from your client who instructs you also to claim priority from a German utility model filed on 19 December 2008.
(a) Is this possible? If so, what is the last date on which the applicant can add the priority claim?

Your client further informs you that the certified copy of the priority document of the German utility model will not be issued by the German Patent and Trademark Office before 12 May 2010.
(b) What can you undertake?
(c) Would your answer to question (b) have been different if the added priority claim would relate to a US patent application?

Answer

?
DE EP1 EP2 Today


19/12/08 17/8/09 14/12/09 2/3/10

(a) Claiming priority:
o A European patent application can claim priority from a European patent application [Art.87(1) and (2) EPC].
o A European patent application can claim priority from a (German) utility model [Art.87(1) EPC].

Addition of a further priority claim:
o A further priority claim can be added to the declaration of priority by the applicant within 16 months from the earliest priority date claimed [R.52(2) EPC]:
19/12/08 + 16 months [R.131(4) EPC]  19/4/10 (Monday).
o Hence, on 2 March 2010, this is still possible.

(b) Filing the missing priority document:
o If priority is claimed, a certified copy of the priority document must be filed within 16 months of the earliest priority date [R.53(1) EPC], i.e. at the latest on 19 April 2010 [see answer (a)].
o If the certified copy of the utility model is available on 12 May 2010, this is too late.
o After according a filing date, the EPO performs the formalities check which includes checking the requirements of Art.88(1) EPC [Art.90(3) and R.57(g) EPC].
o The EPO will note the deficiency [Art.90(4) EPC] and send an invitation to file the missing certified copy of the German utility model within a period to be specified [R.59 EPC].
o The “period to be specified” in R.59 EPC must be at least 2 months [R.132(2) EPC].
o Hence, if the certified copy of the priority document of the German utility model is filed on or shortly after 12/5/10, the period of R.59 EPC will not yet have expired.

(c) Possibly.
o No copy of the previous application need be filed if that copy is available to the EPO: in that case, the EPO includes a copy of the previous application in the file of the European patent application under conditions determined by the President of the EPO [R.53(2) EPC].
o The EPO will include free of charge a copy of the previous application in the file of the European patent application if that earlier application is, amongst others, a US patent application [R.53(2) EPC; OJEPO 2009, 236; Guidelines A III, 6.7 (iii)].
o However, as long as the US priority document has not yet been published, the applicant must authorise the USPTO to release the document to the EPO. The form for doing so must be signed by a person authorised to do so according to the US patent law [OJ 2007, 473].

Comment
Based on Question 3 of paper DI of EQE 2002 [5 points (adapted)]: the question has been adapted from the PCT to the EPC and question (c) has been added.

(a) Declaration of priority:
o Guidelines A III, 6.5.1: The declaration of priority should preferably be made on filing, but can be made up to 16 months from the earliest priority date claimed. That is to say, the date, State or WTO member and the file number can be supplied up to 16 months after the earliest claimed priority. Where the priority claim is inserted after the filing date and causes a change in the earliest priority date, this 16 month period is calculated from that new earliest priority date in accordance with Art.88(2) EPC.
o OJEPO 2007 – Special Edition No.5 – Synoptic presentation – R.53 EPC: R.52(2) and (3) EPC apply the time periods laid down in PCT R.26bis.1(a) for the addition or correction of priority claims to Euro-direct applications, with the necessary terminological adjustments, in order to avoid treating Euro-PCT and Euro-direct applications differently. For clarity's sake, the addition of further priority claims and the correction of existing ones are dealt with separately.
(b) If the missing priority document is not filed in the period of R.59 EPC, the right to claim priority from the German utility model is lost for the European patent application [Art.90(5) EPC, last sentence]. Further processing does not apply to the period of R.59 EPC, since this is excluded [Art.121(4) and R.135(2) EPC].


G3-04
(a) May European patent applications be filed electronically? Is a confirmation on paper necessary?
(b) May documents filed subsequently to the filing of the European patent application be filed electronically? Is a confirmation on paper necessary?
(c) How and when is the receipt acknowledged of documents filed electronically?
Does the acknowledgement of receipt imply that a date of filing is accorded?
(d) How is the authenticity of documents filed electronically confirmed?

Answer
(a) Yes.
o According to R.2(1) EPC the President of the EPO may permit to file patent applications to be filed by “technical means of communication”.
o OJEPO 2009, 182:
o European patent applications and international (PCT) applications may be filed with the EPO in electronic form [Art.1(1) and Art.2].
o European patent applications may also be filed in electronic form with the competent national authorities of those Contracting States which so permit [Art.1(2)].
o No confirmation on paper is required for documents filed electronically [Art.12].

(b) Documents filed subsequently:
o According to R.2(1) EPC the President of the EPO may permit documents filed after filing European patent applications to be transmitted to the EPO by “technical means of communication”.
o No confirmation on paper need be filed [OJEPO 2009, 182, Art.12].
o Priority documents may not be filed in electronic form, save such as have been digitally signed by the issuing authority and are accepted by the EPO [OJEPO 2009, 182, Art.3].
o This applies to all proceeding [OJEPO 2009, 182, Art.1]
o Professional representatives [Art.134(1) EPC], legal practitioners [Art.134(7) EPC] and employees [Art.133(3) EPC] who inform the EPO via their epoline portal administrator that they wish to receive communications online will receive mail items in their company mailbox containing a link to the corresponding communication in one of the EPO’s databases [OJEPO 2004, 61, item 6.1].
o A digitally signed certified copy of a US patent application, as issued in electronic form by the USPTO on or after 30 July 2004, is accepted by the EPO as a priority document provided that it is filed together with the corresponding certification statement [Guidelines A III, 6.7].

(c) OJEPO 2009, 182:
o The receipt of documents filed electronically is acknowledged electronically by the EPO or the competent national authority during the submission session [Art.10(1)].
o Acknowledgement of receipt does not imply that a date of filing is accorded [Art.10(4)].

(d) Electronic signature:
o Where the EPC provides that a document must be signed, the authenticity of the document may be confirmed by handwritten signature or other appropriate means the use of which has been permitted by the President of the EPO. A document authenticated by such other means is deemed to meet the legal requirements of signature in the same way as a document bearing a handwritten signature which has been filed in paper form [R.2(2) EPC].
o Where filed documents require signature, their authenticity may be confirmed by means of a facsimile signature, a text string signature or an enhanced electronic signature [OJEPO 2009, 182, Art.7(1)].
o The authenticity of documents filed electronically with the EPO must be confirmed by means of an enhanced electronic signature [OJEPO 2007 – Special Edition No.3 – A.5, Art.1(1)].

Comment
Prior to 5 March 2009, Documents in opposition proceedings, in European patent limitation or revocation proceedings, in appeal proceedings, or in proceedings for review by the Enlarged Board of Appeal of decisions of the Boards of Appeal may not be filed electronically [OJEPO 2007 – Special Edition No.3 – A.4, Art.2(3)].


G8-11
(a) Where can a notice of opposition to a European patent be filed?
(b) Can an opposition be filed with the central industrial property office of a Contracting State?
(c) Can a notice of opposition to a European patent be filed by fax? Is confirmation on paper necessary?
(d) Can a notice of opposition be filed electronically?

Answer
(a) A notice of opposition to a European patent can only be filed with the EPO in Munich, The Hague or Berlin (not in Vienna or Brussels) [R.2(1) EPC; OJEPO 2007 – Special Edition No.3 – A.1; also see Guidelines D III, 1 and D IV, 1.2.2.1 (i)].

(b) No.
o There is no such provision in Art.99 or R.76 EPC.
o Only European patent applications may also be filed at the central industrial property office [Art.75(1)(b) EPC].
o If an opposition is filed with the central industrial property office of a Contracting State this is regarded a deficiency under R.77(1) EPC.
o Deficiencies under R.77(1) EPC also include oppositions which, notwithstanding Art.99(1) EPC, are filed with the central industrial property office of a Contracting State or an authority thereunder and not forwarded by these offices either at all or in time for them to be received by the EPO before the expiry of the opposition period. There is no legal obligation upon these offices or authorities to forward oppositions to the EPO [Guidelines D IV, 1.2.2.1 (i)].
o It is assumed that the payment in the form of a debit-order accompanied the notice of opposition.
o Therefore, if the notice and debit order are received by the EPO within the 9 month period of Art.99(1) EPC, the opposition will be deemed to have been filed.
o If the debit order is received outside the 9-month period, the opposition will be deemed not to have been filed [Art.99(1), last sentence].

(c) Notice of opposition filed by fax:
o The notice of opposition [Art.99(1) EPC] must be in writing [R.76(1) EPC].
o The notice of opposition can be filed by fax, to be confirmed only on request [R.2(1) EPC; OJEPO 2007 – Special Edition No.3 – A.3].

(d) Yes. R.2 EPC; OJEPO 2009, 182:
o Art.1(1): Documents may be filed electronically in all proceedings, including opposition.

Comment
(b) Filing opposition at national patent office:
o No provisions similar to Art.75(1)(b) EPC exists for filing oppositions; also no need for it because there are no national security risks.
o Guidelines D IV, 1.2.2.1 (i) seem to indicate that such a case would lead to the notice of opposition being deemed inadmissible.
(c-d) R.1 EPC: In written proceedings before the EPO, the requirement to use the written form is satisfied if the content of the documents can be reproduced in a legible form on paper.
o Prior to 5 March 2009, filing electronically in opposition proceedings was not allowed.