The EQE2012 versions of the Basic Questiions for Paper D and Exam-related Questions for Paper D have some errors. A list of updates is found here:
http://www.deltapatents.com/data/uploads/downloads/basic-questions-EQE2012-errata.pdf
http://www.deltapatents.com/data/uploads/downloads/exam-questions-EQE2012-errata.pdf
I have a question related to divisional validly filed and during period for renewal fee payment R51(2) for the parent while not paying the renewal fee in said period. E.g. D book II G14-12. You cite J4/86, why is the divisional validly filed. I read J4/86 and I doubt that it’s the right reference.
ReplyDeleteI have a further problem with the expression or definition of “loss of rights” . It’s not clear for me how you have meant that loss of rights occur at the end of R51(2) and not at the end of the normal period.
I understood that G1/09 says something like that still substantive rights are derivable from the parent application, it’s pending. Could it be that one can cite G1/09, although it is directed for the pediofd for the appeal against the refusal of the application.
The Hoekstra book cites several times that the loss of rights occurs at the end of the normal period and not at the end of the grace.
How do you see that?
There is the EQE Forum where this topic is discussed, but it very confusing. Some even question whether your suggested answer is right.
http://www.eqe-online.org/forum/showthread.php?t=9652&p=26587&posted=1#post26587
- Renewal fees are an unusual kind of fee, so you cannot just apply case law from other fees to them. You pay them before they are due or on the due date - R.51(1). If you are too late, you pay within a grace period of 6m with the additional fee - R.51(2)
Delete- The J4/86 citation is misleading - the support is not found in the decision itself, but in reasons 3.3 and 3.4. The decision is concerned with the loss of right if no request for examination was made under EPC1973 - there was a grace period that was modelled after the renewals fees grace period. In 3.3. and 3.4, it states that in the case of the renewal fees grace period, the loss of right was at the end of the 6m period. The decision then deviates from this, as it applies the grace period model to the restrictions placed on the request for examination period. I have changed the citation in our answer to J4/86 r. 3.3 & 3.4.
- When in doubt about what is going on, you should have a look at what the EPO does. At the level of the EQE, you can assume that the EPO follows the law.
- if you miss the due date (R.51(1) date), the EPO send s you a courtesy communication - GL (2012) A-X, 5.2.4:
"If the renewal fee has not been paid on or before the due date, it may be validly paid within six months of the said date, provided that the
additional fee is paid within this period .... Whilst the applicant's attention is drawn to this possibility, he may not invoke the omission of such notification"
- According to R.112(1), the EPO must send you a communication when you lose a right. This is not a "courtesy" communication - they have to send it to you.
- Therefore, if you do not get a loss of rights communication after the R.51(1) period, then you have not lost any rights.
- If you still do not pay with additional fee within the 6 months, you receive a R.112(1) communication. I could not find it in the Guidelines, but if you look through some old cases, you will find them.
For those of you using Visser, under A.86(1):4 he discusses the change in wording in the law made under EPC2000. He admits that the EPO has stated that the rewording does not change the date that the deemed withdrawal takes effect. For the EQE, this is where you stop reading. The EPO has stated that there is no change in date of deemed withdrawal, and you can ask one of your senior formalities officers, the letters from the EPO (courtesy after R.51(1), loss of rights after R.51(2) period) has not changed either. If you wish to file an appeal (after passing the EQE), you can read the rest of the section
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J4/11 deals with a different situation. The divisional was filed after expiry of the 6m R.51(2) period for the parent, but a request for reestablishment was filed. Importantly, the request for re-establishment was refused.
J4/11 is entirely consistent with G1/09; A.67(4) - the parent was pending until deemed withdrawn. Any divisional filed after that is in principle not validly filed. The request for restablishment was refused, so the parent remained deemed withdrawn.
However, if the request for reestablishment had been succesful, then the loss of rights (deemed withdrawn) would never have occurred - A.122(3). It is the same if further processing was available and further processing was succesful - A.121(3), or (as mentioned in J4/11), if you request a decision - R.112(2) and the EPO agrees with you that there finding of loss of rights was incorrect, and the R.112(1) will be set aside (they will not take a decision - R.112(2), last sentence).
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Is it clearer, or am I making it worse?
For the coming exam, I would certainly expect a question on G1/09, but based only on situation of the GL (2012) A-IV, 1.1.1.1. They have not asked that yet.
I doubt if they will ask you about J4/11 - they will save that for EQE2014 ;-)
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