Answering D1 Exam 2021 with EPC.App & PCT.App

While doing the D Exam as an official benchmarker, I kept track of how I used the EPC.App and PCT.App references to answer questions. I did this to check usability and completeness. Below are notes on how and where I found the main legal issues, so there are spoilers. The D Exam can be downloaded from the EPO Compendium. See also an earlier post with more about D Exam technical issues. 

I have not included my answers - these were made under exact exam conditions, so there are plenty of mistakes. I have concentrated on D1 use as you need to find things quickly. My main conclusions:

• Both books contained the legal info needed, and allowed it to be found quickly. Exception was Situation B of Q.5 - although this is unlikely to be asked again for many years, it can be important for real life. R.26.3ter is included in PCT.App, but we need to cross-reference that in other sections.
• The fastest way to search in EPC.App and PCT.App is to use the Detailed Contents. Based on your knowledge and the point in the procedure, you should be able to quickly see the most relevant provisions.
• The fastest way to answer PCT questions is to look for an overview of the procedure at the beginning of many sections.
• It is sometimes quicker to search directly in the Guidelines / Applicants Guides as not everything can be neatly sorted under the structure of a legal reference book.

The set of references I used was:

• EPC.App (IP.Appify) => EPC and Euro-PCT legal provisions, case law (Nov 20 - standard version from Amazon with the editor's annotations)
• Indexed EPO-EPC Guidelines (Fireball Patents) => EPC implementation by EPO, case law (1 Nov 19)
• National Law and Validation (Fireball Patents) => National Law tables (implementation by EPC states) and validation agreements (31 Oct 20)
• EPO as a PCT Authority (Fireball Patents) => Euro-PCT and EPO's PCT implementation (31 Oct 20)
• PCT.App (IP.Appify) => PCT and priority part of Paris Convention legal provisions (Sep 20 -  standard from Amazon, but printed with color mark-up made using Print on Demand option)
• Complete PCT Applicant's Guide (Fireball Patents) => PCT implementation by all offices (1 Sep 20)
• PCT References - Part 1 & 2 (Fireball Patents) => Most relevant PCT annexes (implementation by PCT states) and overviews (31 Oct 20)

To find things quickly:

• During study, you need to learn what each book contains and where/how to find it. For example:
• EPC.App is arranged according to Articles in numerical order, together with the relevant Rules. It has a Detailed Contents with the Articles, Rules and other contents like G-Decisions - this is the best tool to quickly scan through the contents if you are not sure where to look. There are also an Index of Legal Provisions to directly find specific Rules, and an Index of Decisions to directly find G, J , R, T & W case law. In general, the Articles and Rules of the EPC are arranged in chronological order as an application proceeds from filing to grant.
• EPO-EPC Guidelines are arranged in approximately chronological Parts as an application proceeds from filing to grant. Substantive issues, such as amendment and patentability, are arranged per subject. The Detailed Table of Contents is the best tool to quickly scan through the contents. In most other cases, you will be following a specific chapter or section link from another reference, such as OJEPO or EPC.App
• PCT.App is arranged according subjects in approximately chronological order, mirroring the structure of the WIPO Introduction to International and National Phases. It has a Detailed Contents with the Articles, Rules and other contents like Admin Instructions - this is the best tool to quickly scan through the contents if you are not sure where to look. There are also an Index of Legal Provisions to directly find specific Article and Rules. In general, the Articles of the PCT are arranged in chronological order as an application proceeds from filing to Chapter I entry, and from examination to Chapter II entry.
• PCT Applicants' Guides (Introduction to International and National Phases) are arranged in approximately chronological order as an application proceeds from filing through search, publication, examination to national entry. The Detailed Table of Contents is the best tool to quickly scan through the contents. In some cases, you will be following a specific chapter or section link from another reference, such as PCT Newsletter or PCT.App.
• To decide on which reference to use during the exam, determine: 
• EPC, PCT or Euro-PCT?
• More likely to be found under legal provisions or implementation?
• If more than one, which will be quickest to find?

My approach to D1: 

• I copied each question completely into the answer sheet, and only used occasional highlighting (this can waste a lot of time and does not generate marks). I left it in my answer just to have a copy immediately after the exam.
• CTRL-C and CTL-V (Win 10) were sufficient to properly copy/paste all D1 questions except Q.4 (needed to manually remove formatting and tidy up lines)
• I use 3 minutes per mark as a rule of thumb to quickly calculate how much time to spend. Traditionally, the D Exam was 330 minutes (3.3 mins/mark). This year, an extra 30 mins was given to compensate for the format (3.6 mins/mark). It is normal to run out of time answering D1 questions.
• There are no negative marks and no requirement to fully complete everything you start - you want to generate enough to get 55 marks or higher. Get the marks first for the things you know well - if necessary, skip a part of a question until the end.
• There is no time to read all the questions first, so I read each question in order as if I am going to answer it completely. If the question seems likely to take a long time to answer (or I have no idea), I skip it and go back to it at the end.
• it is very difficult under pressure to read, understand and apply something you read for the first time (or it seems like the first time)
• even if you think know the issues or can find them, you don't want to waste too much time 
• I identified EPC, PCT and/or Euro-PCT parts while reading
• I copied the last part of the questions ("the explicit questions") as a rough framework for my answer to make sure I didn't forget anything.
• I made a rough vertical timeline by copying phrases and putting them in chronological order (no need to make it nice - just understandable during the exam). I avoided editing by sticking close to the exact wording, although I did reduce some long sentences. E.g.: 
• -- EP-A1 was filed in 2018  A in English - X and Y, and claims invention X only
• --  A.94(3) issued by the EPO on 5 October 2020
• -- received by applicant A on 8 October 2020
• -- No response has been filed
• -- January 2021, he filed a European divisional application EP-A2 based on EP-A1 in French. claiming and describing invention Y
• For some issues I know well, I have an idea how to form the answer and select the argumentation to use. For others, it can be less clear how to proceed, so I just to start working on pieces (like calculating time limits) until a bigger picture emerges. In most cases, the overall answer to the question about whether something is possible or not is added at the end.
• Main part of answer includes identifying the correct law (legal provisions, case law and/or implementation) by citation, applying it step-by-step to the facts given and any other facts you can derive, and giving a conclusion as an answer (yes/no/yes if.../no).
• Be conscious of where you are in the procedure - certain conditions must have already been fulfilled (and thus are less relevant to discuss). Focus should be on the next few weeks and major actions required in the future. Assume that the case takes place on the day of the exam - here 2 Mar 2021. 
• At the end, if time, I check whether there are still facts from question that I have not used - these may need to be included somehow. But I am always trying to get to the next question, and often decide not to address these if I have already answered the question asked.

CLICK BELOW TO SEE THE DETAILS PER QUESTION/PART

• Almost all questions had the facts in chronological order
• Almost everything had been asked before in previous exams, or could be considered from the core of the syllabus
• small exception: last part of Q5

Q1. 9 marks => 27 mins (actually took 30 mins)

• I was disturbed by the technical problem. Luckily, I could fix it within a few minutes by refreshing.
• Clearly EPC, and an office action - A. 94(3) is involved. Common subject in real-life.
• Communication dates are given, so expiry can be calculated. 
• Focus is on invention Y, pursued in divisional which was recently filed. So first check status of divisional. Divisional requirements that appear relevant are pending, subject matter, languages
• Opened EPC.App directly at Art.76 Divisional (an article I know by heart) in Part III, Chapter I. Rule 36 is underneath on the same page with the definitions of pending. Quickly scanned article for anything specifically applicable to Art. 94(3) communications (nothing). 
• Quickly scanned other relevant rules and case law under A.76 in case something here is relevant for the answer - G decisions can always be relevant, R.51 also.
• Pending is most relevant for question, so date of deemed withdrawal calculated
• Language of filing of parent and divisional mentioned in question, so also addressed
• G decision could be relevant, so also mentioned
• EPO will not search if filing and search fees have not been paid, so also mentioned
• No month mentioned for filing date, so renewal fees (R. 51) not discussed

Q2. 8 marks => 24 mins (actually took 30 mins)

• From 1st paragraph, it was clear that restoration of priority under PCT is relevant. 
• From last paragraph, entry before EPO is relevant (Euro-PCT) and question is directed to this. 
• As PCT prevails over any conflicting EPC provisions  (A.150(2) EPC), checked first PCT requirements when entering, and then checked specific EPO requirements
• PCT.App is arranged similar to the WIPO Introduction to International Phase, where application requirements are dealt with where they are first required. So, priority is dealt with under the section relating to claiming priority on filing. 
• Quickly scanned Detailed Contents. Opened PCT.App at section 2.10 Claiming Priority. R. 26bis is mentioned in the overview of the procedure at the beginning of the section. Also at the beginning is an overview of relevant sections, including 3.7 Restoration of Priority before rO and 12.5 Restoration of priority before dO/eO. As restoration by rO was granted, most relevant section seemed to be 12.5
• Section 12.5 has an initial overview of the key issued which provided all the actions, time limits and PCT legal basis. Summarised this section in my answer.
• Calculated EP entry time limit and time limit to request restoration under due care.
• The intersection between PCT and EPC is not always clear from the EPC itself, so I went to Euro-PCT Guide. From Detailed Table of Contents, found 5.13.017 Restoration of priority under R.49ter.2. No additional details or legal basis needed, except to state that EPO requires a fee to be paid. This fee is also found in PCT AG-NP, National Chapter, EP

Q6. 8 marks => 24 mins (actually took 23 mins)

• From 1st and 2nd paragraph, it was clear that it was EPC. In particular, a national prior right against a granted EP patent.
• Two possibilities - discuss opposition (no hint that it is relevant) or limitation
• Found limitation in Detailed Contents of EPC.App - Part V, A.105a and A. 105b EPC
• Quickly scanned articles for anything specifically applicable to national prior rights (nothing). 
• Quickly scanned other relevant rules and case law under A.105a/A.105b - found R.138, and section with notes on "different effect for different contracting states". Also found Guideline references for more details.

Q3. 7 marks => 21 mins (actually took 28 mins)

• From paras 1 to 3, it was clear that it was EPC. Two rules mentioned - R.58 and R.70(2).
• Looked under Index of Legal Provisions in EPC.App for page numbers for R.58 and R.70(2). Could also quickly scan Detailed Contents.
• Found R.58 under A.90 (Part IV) and R.70(2) under A.94 (Part IV).
• Question ask about refunding search/examination fees. In general, search fee refund depends on whether search started, and examination fee depends on whether examination has started.
• Quickly scanned R.70 for anything specifically about refunds - RFees A.11 mentioned in notes. 
• Also scanned R.58 - no notes about refunds, but late filed claims mentioned in notes.
• Opened EPC.App at RFees A.2(2) for search fee. Quickly scanned for anything specifically about refunds - RFees A.9 mentioned in notes. 
• Had pieces to answer question, but ran out of time to do it thoroughly. Just addressed main points. It may have been better to look in EPO Guidelines.

Q4. 8 marks => 24 mins (actually took 28 mins)

• Note that priority claim seems to be 12m + 1 day, so likely needs to be checked
• The rest of the dates are not given in chronological order
• Appears to be EPC question
• Not sure where to start, so started checking validity of priority EP-D1, establish effective date EP-D1 claim
• Based on (b), it appears to suggest using a disclaimer. This may be easier to find in Guidelines under Amendment. Scanned Detailed Table of Contents to find "H-V 4.1 Disclaimers NOT disclosed"
• This section provides G decision references and A.54(3) and A.54(2) situations.
• c) means that several combinations must be addressed. This question took a long time.

Q5. 10 marks => 30 mins (used 30 mins, but ran out of time)

• Clearly a PCT question. Problem are the two different situations. each with 2 parts - this could be a lot to finish.
• Situation A is common question about filing PCT application in a particular language. Situation B is less common -this will take a long time to answer as it will be difficult to find the exact answer
• A(1) asks about rO. Quickly scanned Detailed Contents. Opened PCT.App at section 2.3 The Competent rO.  Mentioned in Key Issues - if incorrect language, forwarded to IB
• A(2) asks about translations. Quickly scanned Detailed Contents. Opened PCT.App at section 3.3 Translations for Search & Publication.  Overview of language regime in Key Issues with legal basis, so summarised this in answer. 
• B(1) and B(2) - I was right this was hard to find. It seems likely that this is correctable but don't know how specific PCT is, and/or whether EPO is very specific.
• Eventually found part of answer in AG-IP 6.018, R.26.3ter
• Using the Index of Legal Provisions, I found R.26.3ter in Section 3.5.2 Invitation to Correct Defects of PCT.App. I then ran out of time as the D1-2 session ended while I was typing.