In addition (I just keep on trying...) the latter platform allows for (realtime) collaboration. So, if you want to contribute, please send me an e-mail.
20/12/2009
PCT Newsletter Summary 2009 complete
The PCT Newsletter Summary 2009 has been updated and now contains all practical advices as published (and some additional information). From 2010 I'll move to the Google Docs platform, saving myself some time in editing, converting to PDF, uploading etc...
15/12/2009
Paper A tool E/M
One of the visitors of this Blog has modified/updated the Paper A tool (which is focussed on the Chemistry paper) in view of the E/M paper.
Download it here under 3rd Party Tools.
Update: In the EQE Wiki, which you can find on the eqe-online forum there is another article on how to tackle paper A E/M. Click here
Download it here under 3rd Party Tools.
Update: In the EQE Wiki, which you can find on the eqe-online forum there is another article on how to tackle paper A E/M. Click here
12/12/2009
PCT Newsletter - December 2009 (No. 12/2009)
The latest issue of the PCT Newsletter (No. 12/2009) is now available on the PCT Resources page:
http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_12.pdf
This is the last PCT newsletter of 2009. I'll update the PCT summary also including the PCT newsletters published beginning of this year (if this appears necessary).
http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_12.pdf
This is the last PCT newsletter of 2009. I'll update the PCT summary also including the PCT newsletters published beginning of this year (if this appears necessary).
03/12/2009
Work in progress ...
Although the number of posts have dropped over the last months, I've picked up some activities that require quite some time before the result can be published. The following can be expected, hopefully at the beginning of next year:
- Clean and editable version of the Implementing Regulations
- Tool for B (focussed on chemistry)
- An approach for dealing with inventive step in the EQE (though this may also be useful afterwards :-))
In addition, the A Tool that is currently available is re-worked by a reader of this Blog to also cover the electro/ mechanic exams. Hopefully it will be available soon.
As a reminder I'd like to invite you to provide some feedback on what is currently available. I'll be happy to modify/improve ...
Happy studying !
- Clean and editable version of the Implementing Regulations
- Tool for B (focussed on chemistry)
- An approach for dealing with inventive step in the EQE (though this may also be useful afterwards :-))
In addition, the A Tool that is currently available is re-worked by a reader of this Blog to also cover the electro/ mechanic exams. Hopefully it will be available soon.
As a reminder I'd like to invite you to provide some feedback on what is currently available. I'll be happy to modify/improve ...
Happy studying !
20/11/2009
Missing parts under the PCT and the EPC
Under the EPC applicants have the possibility to file missing parts while keeping the same filing date provided the missing parts are completely contained in the priority application.
A similar possibility exists under the PCT, however there is a slight difference, in the sense that under the PCT the missing parts must be completely contained in the priority application(s) from which priority is claimed upon filing. The EPC provisions do not appear to have this requirement.
As a result an applicant may be allowed (after having filed his application) to first add an additional priority claim and then file "missing parts" of the application based on this later added priority claim.
During a seminar of the EPI on the PCT earlier today, this difference was brought under the attention to a speaker from the EPO. Although he more or less agreed with the person making this comment that adding "missing part" in this way probably contravenes Article 123(2) he admitted that it is not forbidden under the EPC per se.
This appears to be one of the loopholes in the law which one day will be solved either by case law or revision of the law.
More snippets from this seminar to come....
A similar possibility exists under the PCT, however there is a slight difference, in the sense that under the PCT the missing parts must be completely contained in the priority application(s) from which priority is claimed upon filing. The EPC provisions do not appear to have this requirement.
As a result an applicant may be allowed (after having filed his application) to first add an additional priority claim and then file "missing parts" of the application based on this later added priority claim.
During a seminar of the EPI on the PCT earlier today, this difference was brought under the attention to a speaker from the EPO. Although he more or less agreed with the person making this comment that adding "missing part" in this way probably contravenes Article 123(2) he admitted that it is not forbidden under the EPC per se.
This appears to be one of the loopholes in the law which one day will be solved either by case law or revision of the law.
More snippets from this seminar to come....
18/11/2009
Clean editable version of the EPC
Today I added a clean and editable version of the EPC articles to the downloads section. A similar version for the rules will follow someday. I started copying the official text from the EPO website already some time ago, yet never did anything with it so far. The text you find was made using the Google docs platform and is (as far as I've checked) free of any annotations or errors. You can download it in several forms and use it for further editing. Most probably this tool is a bit late for EQE 2010 sitters, yet for those considering doing "D" in 2011 this may be of use.
Anyway, the link below should give you "read-only" access to the Google docs document. Please let me know if the link does not work properly and/or if there are still some errors in this document (which is unlikely by the way...)
As mentioned before a similar document with the Rules will follow someday, probably beginning 2010. Again, if you like to help, let me know, see also here.
Click here for the document
Anyway, the link below should give you "read-only" access to the Google docs document. Please let me know if the link does not work properly and/or if there are still some errors in this document (which is unlikely by the way...)
As mentioned before a similar document with the Rules will follow someday, probably beginning 2010. Again, if you like to help, let me know, see also here.
Click here for the document
17/11/2009
PCT Newsletter - November 2009 available
The latest issue of the PCT Newsletter (No. 11/2009) is now available on
the PCT Resources page in:
PDF at:
http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_11.pdf
the PCT Resources page in:
PDF at:
http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_11.pdf
The practical advice this month is mainly related to electronic filing, to my opinion not so relevant for the EQE. One thing to remember both for the EPC and PCT is that a fee reduction applies when applicants file electronically. Thus, e-filing is in the interest of your D2 client, hence mentioning this may be worth a mark (you never know...).
For what it's worth, I will update the PCT summary.
09/11/2009
26/10/2009
EPC Flashcards
"EPC flashcards may be used for studying/memorising the EPC. Here is how it works:
You print out the cards (front and back, the topic on the front should line up with the corresponding topic on the back) then cut them out.
They cards are convenient for studying because you can either do it yourself (you look at the front or back, then try to say what is on the other side) or else with someone else. They hold the card, read you the first part, then you have to say the other part and they check whether or not it is correct.
For example, they pick a card "Article 54" then you have to say what is on the other side "Novelty" then they say correct or incorrect. Then you can put the ones you got correct in one pile, and the ones incorrect in another pile, then go though the incorrect ones again until you get more and more correct.
They are useful because you can take them anywhere, such as when you are waiting for the bus, or at the doctor's office, etc., you just take them out and flip through them."
Download the EPC Flashcards here.
21/10/2009
News from the EQE-online forum
The European Patent Academy plans to publish a set of commented answers to the EQE 2009 on the EQE-online forum. With the following announcement, they plan to get some 2009 candidate's answers which are handed over to CEIPI tutors for selection and addition of their comments. The set of commented answer papers will be made available on the forum.
Click here to read the full announcement.
Click here for the forum.
Click here to read the full announcement.
Click here for the forum.
18/10/2009
How about this?
I've done some experimenting with Google Docs over the weekend and found out that this platform has some very cool features. One such feature of particular interest is that several people can work on one and the same document at the same time. The interesting part is that each editor can (with a delay of a few seconds at most) see what the others are doing. In fact, you can even see who is editing at any particular time.
This opens up the possibility for making tools that can be developed, edited, corrected continuously. The only two things that are required are internet access and a Google account. You can make text documents, spreadsheets and presentations. So you could envisage a free, editable, (hopefully) updated version of (an annotated) EPC and/or PCT, which is available online 24/7. Or, what about presentations/ flowcharts on specific topics or parts of the law....
This all sounds very nice of course, but developing all this material requires time. So, I'm wondering if anyone would be interested in contributing to such "online projects". Keep in mind that the more people that join, the less each person has to do/type.
Please send me an e-mail if you'd like to contribute..
This opens up the possibility for making tools that can be developed, edited, corrected continuously. The only two things that are required are internet access and a Google account. You can make text documents, spreadsheets and presentations. So you could envisage a free, editable, (hopefully) updated version of (an annotated) EPC and/or PCT, which is available online 24/7. Or, what about presentations/ flowcharts on specific topics or parts of the law....
This all sounds very nice of course, but developing all this material requires time. So, I'm wondering if anyone would be interested in contributing to such "online projects". Keep in mind that the more people that join, the less each person has to do/type.
Please send me an e-mail if you'd like to contribute..
14/10/2009
New tool available: EPC Keyword Guide
Today, for the first time since the start of this Blog, I received a tool by one of the readers of this Blog which he would like to share.
The tool does basically the opposite of the EPC Quickreference posted earlier. The Quickreference lists the EPC Articles and Rules sorted by number and each Article or Rule is followed by a few keywords. The "EPC Keyword Guide" shows in alphabetical order keywords followed by the respective Article or Rule. Special thanks to Nèstor Corominas for sending this tool, who in his e-mail added the following sentence :
"Free software" philosophy is not something so easy to find among our colleagues. I know EQE is a hard test, but I do not think that not sharing information bring the candidates further!
Download the EPC Keyword Guide here.
The tool does basically the opposite of the EPC Quickreference posted earlier. The Quickreference lists the EPC Articles and Rules sorted by number and each Article or Rule is followed by a few keywords. The "EPC Keyword Guide" shows in alphabetical order keywords followed by the respective Article or Rule. Special thanks to Nèstor Corominas for sending this tool, who in his e-mail added the following sentence :
"Free software" philosophy is not something so easy to find among our colleagues. I know EQE is a hard test, but I do not think that not sharing information bring the candidates further!
Download the EPC Keyword Guide here.
13/10/2009
T 0756/06: Technical and non-technical features in one claim
This case concerns the way the EPO deals with claims which contain both technical and non-technical features and provides a nice summary of the case law. The Board reasons (R 4 and 5):
It is established jurisprudence that such claims are inventions in the sense of Article 52(1) and (2) EPC, but that the non-technical features cannot support the presence of inventive step (Article 56 EPC). Technical features are generally considered to be those that produce a technical effect.
In practice in such cases, one of two approaches is generally followed.
In the first approach, e.g. apparent from T 931/95 [..] there is an initial analysis of the technical character of the features of the claim and then a consideration of the inventive step of only those features.
This approach is typically used for inventions that are essentially business methods running on more or less notoriously known computer hardware.
The second approach, e.g. used in T 641/00 [..] is a more conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that contribute to the technical character are considered for inventive step.
This approach may be more appropriate where the technical part is more substantial and/or relevant prior art exists. It has the advantage that any non-technical feature known from this prior art will not appear as a difference and does not need to be considered in the subsequent steps, thus sparing the step of judging whether it makes a technical contribution. Furthermore, this approach is less abstract since the claimed features can be analysed against concrete prior art.
You may want to print this part of the decision and take it with you to the C exam ....
It is established jurisprudence that such claims are inventions in the sense of Article 52(1) and (2) EPC, but that the non-technical features cannot support the presence of inventive step (Article 56 EPC). Technical features are generally considered to be those that produce a technical effect.
In practice in such cases, one of two approaches is generally followed.
In the first approach, e.g. apparent from T 931/95 [..] there is an initial analysis of the technical character of the features of the claim and then a consideration of the inventive step of only those features.
This approach is typically used for inventions that are essentially business methods running on more or less notoriously known computer hardware.
The second approach, e.g. used in T 641/00 [..] is a more conventional application of the problem and solution approach where the differences with respect to the closest prior art are determined and only those that contribute to the technical character are considered for inventive step.
This approach may be more appropriate where the technical part is more substantial and/or relevant prior art exists. It has the advantage that any non-technical feature known from this prior art will not appear as a difference and does not need to be considered in the subsequent steps, thus sparing the step of judging whether it makes a technical contribution. Furthermore, this approach is less abstract since the claimed features can be analysed against concrete prior art.
You may want to print this part of the decision and take it with you to the C exam ....
08/10/2009
PCT Newsletter - October 2009 (No. 10/2009)
The latest issue of the PCT Newsletter (No. 10/2009) is now available on the PCT Resources page in:
PDF at: http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_10.pdf
The practical advice relates to restoration of priority right under Rule 26bis.3. Questions with respect to restoration of the priority right come up in the EQE every now and then.
As always, the PCT summary will be updated, see the downloads section...
PDF at: http://www.wipo.int/edocs/pctndocs/en/2009/pct_news_2009_10.pdf
The practical advice relates to restoration of priority right under Rule 26bis.3. Questions with respect to restoration of the priority right come up in the EQE every now and then.
As always, the PCT summary will be updated, see the downloads section...
07/10/2009
Case studies on the EQE forum
For those wanting to practise a D2 like case, there is one available from the EQE forum, see here.
The post says that an answer will be posted in the near future ....
The post says that an answer will be posted in the near future ....
05/10/2009
T 1382/04: Request for oral proceedings sufficient for pendency of application
Rule 100 EPC , relating to Appeal proceedings is as follows:
(1) ...
(2) In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be specified, on communications issued by itself or observations submitted by another party.
(3) If the applicant fails to reply in due time to an invitation under paragraph 2, the European patent application shall be deemed to be withdrawn, unless the decision impugned was taken by the Legal Division.
In this case the applicant appealed against the decision of the Examining Division refusing his application. The board issued a communication under Rule 100(2). Failure to reply to such an invitation would result in deemed withdrawal according to Rule 100(3). The application replied by merely requesting oral proceedings, hence the Board considered the question whether or not the request (which was filed in due time) met the requirements of Rule 100(2). The Board reasoned as follows:
Reason 1.1: Historically, the legal instrument of a deemed withdrawal was introduced for administrative reasons as a means to save resources of patent offices and courts in cases where the applicant or appellant has clearly lost its interest in prosecuting an application [..]
Reason 1.2 : In the present case, the Board considers the request for oral proceedings which was received within the time limit for filing observations as a reply avoiding a deemed withdrawal under Rule 100(3) EPC since it cannot be assumed that the appellant has lost his interest in the application while requesting oral proceedings at the same time, apparently with a view to present his comments on the Board's arguments orally.
Thus, the Board concurs with a corresponding finding in decision T 861/03 (point 6.2 of the reasons).
Read the decision here.
(1) ...
(2) In the examination of the appeal, the Board of Appeal shall invite the parties, as often as necessary, to file observations, within a period to be specified, on communications issued by itself or observations submitted by another party.
(3) If the applicant fails to reply in due time to an invitation under paragraph 2, the European patent application shall be deemed to be withdrawn, unless the decision impugned was taken by the Legal Division.
In this case the applicant appealed against the decision of the Examining Division refusing his application. The board issued a communication under Rule 100(2). Failure to reply to such an invitation would result in deemed withdrawal according to Rule 100(3). The application replied by merely requesting oral proceedings, hence the Board considered the question whether or not the request (which was filed in due time) met the requirements of Rule 100(2). The Board reasoned as follows:
Reason 1.1: Historically, the legal instrument of a deemed withdrawal was introduced for administrative reasons as a means to save resources of patent offices and courts in cases where the applicant or appellant has clearly lost its interest in prosecuting an application [..]
Reason 1.2 : In the present case, the Board considers the request for oral proceedings which was received within the time limit for filing observations as a reply avoiding a deemed withdrawal under Rule 100(3) EPC since it cannot be assumed that the appellant has lost his interest in the application while requesting oral proceedings at the same time, apparently with a view to present his comments on the Board's arguments orally.
Thus, the Board concurs with a corresponding finding in decision T 861/03 (point 6.2 of the reasons).
Read the decision here.
01/10/2009
Read the question ...
Question 8 of D1 2009 was one of few questions where I lost about half of the marks available. I recently read the answer I handed in and compared it to the model answer taking into account the remarks made in the Examiner's report.
The question was as follows:
QUESTION 8 (5 points)
A European patent application AP1 was duly filed on 23 February 2008 claiming priority from earlier application PR1 filed on 24 March 2007. Application AP1, as originally filed, contained 30 claims. At the search stage a non-unity objection was raised. The applicant paid one further search fee. The subject-matter of all claims was searched. Application AP1 is still pending. Today, 3 March 2009, the applicant files a divisional application using form 1001. The divisional application contains a set of claims 1 to 20, which correspond to claims 11 to 30 originally filed in AP1. Claims 1 to 20 of the divisional application relate to the second invention already searched in AP1.
What fees are due on filing and until when can these fees be paid? What is the legal basis for the amounts of these fees?
Not a particularly difficult question it seemed.
However what I wrote down did not answer the question. More in particular (probably like many fellow candidates) I explained which fees needed to be paid. Because of that, I did not mention designation fees and examination fees.
However, the question was which fees were due which is different (yet may overlap) from the question which fees had to be paid.
As you all know (!?) the term "due date" has a special menaing in the EPC, namely the first day on which payment of a fee may be validly effected, not the last day of a period for such payment, see Guidelines
A-XI 5.1.1
Since the applicant used form 1001, payment of the examination and designation fees was due on filing. (Although they could be paid until 6m after the date on which the EP bulletin mentions the publication of
the search report, see Rule 70(1) and Rule 39(1).)
So, always be alert on the wording of the question and keep in mind that (most of the time) all information in a question is there for a reason !
The question was as follows:
QUESTION 8 (5 points)
A European patent application AP1 was duly filed on 23 February 2008 claiming priority from earlier application PR1 filed on 24 March 2007. Application AP1, as originally filed, contained 30 claims. At the search stage a non-unity objection was raised. The applicant paid one further search fee. The subject-matter of all claims was searched. Application AP1 is still pending. Today, 3 March 2009, the applicant files a divisional application using form 1001. The divisional application contains a set of claims 1 to 20, which correspond to claims 11 to 30 originally filed in AP1. Claims 1 to 20 of the divisional application relate to the second invention already searched in AP1.
What fees are due on filing and until when can these fees be paid? What is the legal basis for the amounts of these fees?
Not a particularly difficult question it seemed.
However what I wrote down did not answer the question. More in particular (probably like many fellow candidates) I explained which fees needed to be paid. Because of that, I did not mention designation fees and examination fees.
However, the question was which fees were due which is different (yet may overlap) from the question which fees had to be paid.
As you all know (!?) the term "due date" has a special menaing in the EPC, namely the first day on which payment of a fee may be validly effected, not the last day of a period for such payment, see Guidelines
A-XI 5.1.1
Since the applicant used form 1001, payment of the examination and designation fees was due on filing. (Although they could be paid until 6m after the date on which the EP bulletin mentions the publication of
the search report, see Rule 70(1) and Rule 39(1).)
So, always be alert on the wording of the question and keep in mind that (most of the time) all information in a question is there for a reason !
24/09/2009
EQE Study Guide
Recently the European Patent Office published a study guide for EQE candidates. This "Guide for preparation" contains quite some practical information on the EQE and provides a rough timing schedule on how to prepare for the EQE.
The publication is available electronically via the eqe-online website and as a hardcopy at the EPO.
The EPO allowed me to publish a copy on this website, which you can download here.
Happy reading !
23/09/2009
Size matters !
This is just a small piece of advice to those who are now using the full-size version of the Guidelines and are making annotations and/or highlighting parts thereof. The advice is to stop using this full size version while you still can and to print the 5 parts of the Guidelines in the form of A5 booklets. You can download the parts for free from the EPO website, so it will only cost you some time (and maybe a bit of money) to make the booklets.
For the exam itself it is not really an issue, yet for travelling to the examination centres size does matter !
22/09/2009
Update of PCT applicant's guide
The WIPO has published an updated version of the applicant's guide. The applicant's guide is quite a useful guide for learning/ understanding the PCT. It is advisable to take a copy of the latest version to the EQE. Please keep in mind that it will not help you to "just take it" without having looked at how the guide works. In the exam there is simply no time to start looking for an answer. You should basically already know approximately where you could find the answer and then use the (detailed) index to find it. Of course this guide should be used in addition to the official PCT Articles and Rules. I can further recommend taking a look at the book of Cees Mulder in that respect.
In the EQE 2009 there were not a lot of PCT related questions (luckily), but you never know if this is the start of a trend or not.....
Download the Applicant's Guide here.
In the EQE 2009 there were not a lot of PCT related questions (luckily), but you never know if this is the start of a trend or not.....
Download the Applicant's Guide here.
20/09/2009
EQETools celebrates 10000 pageloads
Today the EQETools Blog reached 10.000 pageloads !
Since the start of the Blog earlier this year this number of pageloads was reached by +/- 4000 unique visitors (according to Statcounter.com).
This post is to say "thanks" to all of you that visit the Blog or read the feeds every now and then. The still increasing number of visitors and pageloads per day is inspiring.
Next stop: 100.000 pageloads !
Since the start of the Blog earlier this year this number of pageloads was reached by +/- 4000 unique visitors (according to Statcounter.com).
This post is to say "thanks" to all of you that visit the Blog or read the feeds every now and then. The still increasing number of visitors and pageloads per day is inspiring.
Next stop: 100.000 pageloads !
19/09/2009
New Blogs on the block
Two new Blogs have recently started, both of these may be worthwhile following in preparing for the EQE.
Salted Patent
K's Law
Happy reading !
Salted Patent
K's Law
Happy reading !
17/09/2009
Tool for B
I received several requests for paper B tools lately.
The situation is that the summary I used myself consisted of printed material, handwritten notes and some course material. I am working on an "A type" tool using the above mentioned materials, but this will take some more time.
For those wondering "what about C", I'm afraid I have to disappoint you. I used copyright protected course material and some notes....that's it.
(For those wondering why I keep doing this at all.........I'm asking myself the same question from time to time and the answer is that I still don't know.)
The situation is that the summary I used myself consisted of printed material, handwritten notes and some course material. I am working on an "A type" tool using the above mentioned materials, but this will take some more time.
For those wondering "what about C", I'm afraid I have to disappoint you. I used copyright protected course material and some notes....that's it.
(For those wondering why I keep doing this at all.........I'm asking myself the same question from time to time and the answer is that I still don't know.)
16/09/2009
PCT Newsletter #9 available for download
The September issue of the PCT Newsletter is available for download here.
The Practical Advice will be copied to the PCT Newsletter summary.
The Practical Advice will be copied to the PCT Newsletter summary.
15/09/2009
Notice relating to filing by reference
The EPO issued a Notice on the website relating to the filing of a certified copy when an application is filed by reference.
Filing by reference is allowed under Rule 40(1), but the applicant is required to file a certified copy of the previous application under Rule 40(3). If such a copy is not filed the “application” is not accorded a filing date, see Rule 40(1). Further processing under Article 121(1) is not available, however the applicant may request re-establishment under Article 122(1). If no filing date is accorded the application shall not be dealt with as a European Patent Application, Article 90(2). According to Rule 40(3) last sentence, R53(2), relating to the filing of a priority document, applies mutatis mutandis.
The notice concerns the situation where the EPO already has a copy of the earlier application in it’s files. Filing of a certified copy is not required if the previous application is:
(a) a European patent application,
(b) an international application filed with the European Patent Office as receiving Office under the Patent Cooperation Treaty (PCT),
(c) a Japanese patent or utility model application,
(d) a Korean patent or utility model application,
(e) a United States provisional or non-provisional patent application.
See the decision in OJ 2009, 236 copied in the OJ 2009 Summary.
Please note that the decision in the above mentioned OJ reference replaces the decision dated 12 July 2007 on the filing of priority documents (Special edition No. 3, OJ EPO 2007, B.1). If necessary update your reference books !
So, what’s the lesson here? Well, failure to file a priority document will not have any effect on a later application other than loss of the priority right. Failure to file the “reference” application will result in that the later application will not be treated as a European Patent Application. As a filing date was not accorded it is not possible to file a new application and claim priority from this "later application". (I hope this is not too confusing)
Filing by reference is allowed under Rule 40(1), but the applicant is required to file a certified copy of the previous application under Rule 40(3). If such a copy is not filed the “application” is not accorded a filing date, see Rule 40(1). Further processing under Article 121(1) is not available, however the applicant may request re-establishment under Article 122(1). If no filing date is accorded the application shall not be dealt with as a European Patent Application, Article 90(2). According to Rule 40(3) last sentence, R53(2), relating to the filing of a priority document, applies mutatis mutandis.
The notice concerns the situation where the EPO already has a copy of the earlier application in it’s files. Filing of a certified copy is not required if the previous application is:
(a) a European patent application,
(b) an international application filed with the European Patent Office as receiving Office under the Patent Cooperation Treaty (PCT),
(c) a Japanese patent or utility model application,
(d) a Korean patent or utility model application,
(e) a United States provisional or non-provisional patent application.
See the decision in OJ 2009, 236 copied in the OJ 2009 Summary.
Please note that the decision in the above mentioned OJ reference replaces the decision dated 12 July 2007 on the filing of priority documents (Special edition No. 3, OJ EPO 2007, B.1). If necessary update your reference books !
So, what’s the lesson here? Well, failure to file a priority document will not have any effect on a later application other than loss of the priority right. Failure to file the “reference” application will result in that the later application will not be treated as a European Patent Application. As a filing date was not accorded it is not possible to file a new application and claim priority from this "later application". (I hope this is not too confusing)
14/09/2009
Do the new compensation rules lower the bar for passing D ?
This is a post for discussion purpose !
Under the "old" rules for examination you could compensate for an exam where you scored between 45 and 49 marks if you scored more than 200 points in total, you were a first-sitter and passed the other three papers.
The "new" Rules are as follows:
Rule 6: Grades/passing the examination
(1) Each answer paper shall be marked on a scale from zero to 100 by the relevant Examination Committee.
(a) Where, on the merits of an answer paper, a mark of 50 or more is awarded, a PASS grade shall be awarded for that paper.
(b) Where, on the merits of an answer paper, fewer than 45 marks are awarded, a FAIL grade shall be awarded for that paper.
(c) Where, on the merits of an answer paper, a mark of at least 45 but less than 50 is awarded, the grade awarded for that paper shall be COMPENSABLE FAIL.
(2) Subject to Article 14(2) REE, a candidate shall be declared to have passed the examination if he satisfies all of the following conditions:
(a) he has not been awarded a FAIL grade in any of the papers,
(b) he has been awarded a PASS grade in at least two papers, and
(c) his total aggregate mark in the four papers set out in Rule 21 is at least 200.
(3) [not shown]
The "first sitter" requirement seems to have been deleted, which to me makes sense as all four papers cover different aspects of the work of a Patent Attorney.
Anyhow, suppose a candidate scores the following:
A: 80 points (pass)
B: 30 points (fail)
C: 50 points (pass)
D: 45 points (compensable fail)
Under the "old" rules (as I understand it, please correct me if I'm wrong) this candidate had to resit both B and D.
However, the new rules seem to allow this candidate to resit only paper B in order for him to pass all four papers. Even if he would only score 50 points for paper B, he can compensate his D paper with the results for his A paper.
In another example, even when the candidate would have scored 45 points for both C and D, he seems to allowed to pass all papers by resitting only paper B.
Since in most cases scores for paper A and/or B are probably rather high (that is >60) the new system effectively seems to lower the bar for the more difficult (and from a preparation point of view extremely time consuming) paper D to 45 marks.
As I started this post it is for discussion purposes, and above that I may have missed an article or rule that renders the above example complete nonsense...... Anyway, your comments are welcome.
Read the Regulations here.
Under the "old" rules for examination you could compensate for an exam where you scored between 45 and 49 marks if you scored more than 200 points in total, you were a first-sitter and passed the other three papers.
The "new" Rules are as follows:
Rule 6: Grades/passing the examination
(1) Each answer paper shall be marked on a scale from zero to 100 by the relevant Examination Committee.
(a) Where, on the merits of an answer paper, a mark of 50 or more is awarded, a PASS grade shall be awarded for that paper.
(b) Where, on the merits of an answer paper, fewer than 45 marks are awarded, a FAIL grade shall be awarded for that paper.
(c) Where, on the merits of an answer paper, a mark of at least 45 but less than 50 is awarded, the grade awarded for that paper shall be COMPENSABLE FAIL.
(2) Subject to Article 14(2) REE, a candidate shall be declared to have passed the examination if he satisfies all of the following conditions:
(a) he has not been awarded a FAIL grade in any of the papers,
(b) he has been awarded a PASS grade in at least two papers, and
(c) his total aggregate mark in the four papers set out in Rule 21 is at least 200.
(3) [not shown]
The "first sitter" requirement seems to have been deleted, which to me makes sense as all four papers cover different aspects of the work of a Patent Attorney.
Anyhow, suppose a candidate scores the following:
A: 80 points (pass)
B: 30 points (fail)
C: 50 points (pass)
D: 45 points (compensable fail)
Under the "old" rules (as I understand it, please correct me if I'm wrong) this candidate had to resit both B and D.
However, the new rules seem to allow this candidate to resit only paper B in order for him to pass all four papers. Even if he would only score 50 points for paper B, he can compensate his D paper with the results for his A paper.
In another example, even when the candidate would have scored 45 points for both C and D, he seems to allowed to pass all papers by resitting only paper B.
Since in most cases scores for paper A and/or B are probably rather high (that is >60) the new system effectively seems to lower the bar for the more difficult (and from a preparation point of view extremely time consuming) paper D to 45 marks.
As I started this post it is for discussion purposes, and above that I may have missed an article or rule that renders the above example complete nonsense...... Anyway, your comments are welcome.
Read the Regulations here.
14th Edition of the National Law Table available
Please note that a new version of the National Law Table (14th edition) is available.
The publication is free of charge and can be ordered from csc@epo.org or by placing a request at the following link:
http://www.epo.org/patents/patent-information/ordering.html
The NatLaw table is one of the items you definetely want to take to the EQE, especially for the D paper. Using outdated material is not really appreciated by the exam committee, so make sure your information resources are up to date!
The publication is free of charge and can be ordered from csc@epo.org or by placing a request at the following link:
http://www.epo.org/patents/patent-information/ordering.html
The NatLaw table is one of the items you definetely want to take to the EQE, especially for the D paper. Using outdated material is not really appreciated by the exam committee, so make sure your information resources are up to date!
11/09/2009
Site maintenance
In the next few weeks I will be integrating the download site with the Blog. This has the advantage for you that you no longer need to browse through the seperate download website but instead can download all tools directly from this Blog. This may however mean that documents are not be available for a short time or that links no longer work properly. Please send me an e-mail in case you come across such a "broken link".
08/09/2009
T0998/06: Undisclosed disclaimers and clarity
The patentee in opposition proceedings introduced an undisclosed disclaimer in view of prior art under Art 54(3) which as you all know (!?) is allowed in view of G1/03. The patent was maintained in amended form by the opposition division and the patentee filed appeal against the decision.
In view of the Board the disclaimer contains several features that give rise to clarity objections:
First of all the disclaimer contains "product-by-process" type features. The question arises whether the process features result in a product that differs from a product having the same composition (in this case a polymer product) yet being made with a different proces. The Board concludes that neither the patent nor the prior art gives any relevant information in that respect. Thus, in view of the Board it is unclear for the public whether the process steps for making the product are essential (notwendig) or not. Thus, it is unclear what part of the scope of the claim is actually disclaimed.
Secondly the disclaimer lacks clarity in that the method for measuring a certain parameter is not incoirporated in the disclaimer. (Although apparently there was basis in the prior art for the introduction thereof...).
Thirdly the disclaimer refers to components being present in certain "parts" (Teile) without defining whether it concerns volume, weight or any other type of "parts".
The above clarity issues are not really specific to disclaimers. That said, when introducing undisclosed disclaimers a patentee (or applicant), in view of the other requirements of G1/03, is likely to keep the claim language as close as possible to the actual disclosure of the 54(3) prior art. For example, it would be interesting to know what would have happened if the patentee would have introduced the prior art compositions without the process steps. My guess is that such a claim would be objected to as excluding more than necessary. Here again the patentee cannot rely on the prior art nor on its own disclosure for arguing this is not the case....
In G1/03, reason 3, the Enlarged Board noted that the requirements of consiseness and clarity of Art. 84 are also applicable to claims containing disclaimers.
Hence, the appeal was dismissed.
Read more on undisclosed disclaimers here, here and here.
In view of the Board the disclaimer contains several features that give rise to clarity objections:
First of all the disclaimer contains "product-by-process" type features. The question arises whether the process features result in a product that differs from a product having the same composition (in this case a polymer product) yet being made with a different proces. The Board concludes that neither the patent nor the prior art gives any relevant information in that respect. Thus, in view of the Board it is unclear for the public whether the process steps for making the product are essential (notwendig) or not. Thus, it is unclear what part of the scope of the claim is actually disclaimed.
Secondly the disclaimer lacks clarity in that the method for measuring a certain parameter is not incoirporated in the disclaimer. (Although apparently there was basis in the prior art for the introduction thereof...).
Thirdly the disclaimer refers to components being present in certain "parts" (Teile) without defining whether it concerns volume, weight or any other type of "parts".
The above clarity issues are not really specific to disclaimers. That said, when introducing undisclosed disclaimers a patentee (or applicant), in view of the other requirements of G1/03, is likely to keep the claim language as close as possible to the actual disclosure of the 54(3) prior art. For example, it would be interesting to know what would have happened if the patentee would have introduced the prior art compositions without the process steps. My guess is that such a claim would be objected to as excluding more than necessary. Here again the patentee cannot rely on the prior art nor on its own disclosure for arguing this is not the case....
In G1/03, reason 3, the Enlarged Board noted that the requirements of consiseness and clarity of Art. 84 are also applicable to claims containing disclaimers.
Hence, the appeal was dismissed.
Read more on undisclosed disclaimers here, here and here.
04/09/2009
Official Journal #8 and #9
In view of my holidays probably one of the shortests posts on this Blog:
The Official Journal Summary 2009 has been updated and is available for download.
Click here.
The Official Journal Summary 2009 has been updated and is available for download.
Click here.
Basic D2 tools
Making a "timeline" is one of the things you simply have to do when doing the D2 paper. There are many different ways of making such a timeline and you should choose the one you like best. In the download area I published a very (very very very) basic timeline template, designed to be printed on A3 paper. I wrote the "client events" on the right-hand-side and all the rest on the left-hand-side. Most recent events on the top of the page.
Also in the downloads area a very (very very very) basic "ready to use" subject matter matrix template. To be honest I only used this for practising. I found it more convenient to have all the information on 1 sheet. So when doing my last two "trial" papers and my actual D2 EQE 2009 exam I only used the timeline template. It does make the sheet a bit "messy" yet it worked for me as you have read before ....
Anyway, two extremely basic tools, yet I hope it is of use.
Download here.
Also in the downloads area a very (very very very) basic "ready to use" subject matter matrix template. To be honest I only used this for practising. I found it more convenient to have all the information on 1 sheet. So when doing my last two "trial" papers and my actual D2 EQE 2009 exam I only used the timeline template. It does make the sheet a bit "messy" yet it worked for me as you have read before ....
Anyway, two extremely basic tools, yet I hope it is of use.
Download here.
01/09/2009
How to read decisions ...
Subtitled: "When preparing for the European Qualifying Examination"
This article relates mainly to decisions from the Technical Board of Appeal of the European Patent Office (the "T" decisions) yet probably applies to other decisions as well. The task of knowing and learning the Articles and Rules of the EPC is already quite time consuming so you may find it helpful to try the way of reading decisions further outlined below. I used this method myself during my preparation and still use it for the purpose of this Blog.
1. Browse through the front page to see what the decision is about; Relevant legal provisions, keywords, catchword, etc.
2. Determine which kind of decision is appealed (Examining Division, Opposition Division) and find out who is who. This can be found on the next one or two pages.
3. For the time being, skip the "Summary of Facts and Submissions" and go directly to the "Reasons".
4. Start reading from the "Reasons" yet don't try to understand all the "case specific" details unless they are necessary for understanding the case, which is not always obvious by the way. Normally I just skip all the details about the case until the Board summarises and concludes on a certain aspect. From reading the conclusion it usually becomes apparent if further reading of the details is required or not (at this point you may need to go back to the "Summary of Facts and Submissions").
Tip: When legal provisions are referred to, always read these provisions (again). This will help you in getting the EPC "in your system".
5. Read through the "Reasons" for each issue. Make notes where necessary and don't forget to have a yellow marker around. Be alert when the Board reasons "beyond" the specific subject matter of the case. This is often where the Board either may create new case law or summarise established case law.
6. Scan the "Order"
That's it !
Depending on the case, the number of issues to be dealt and your experience with reading decisions this process can take anywhere from 5 - 60 minutes.
The question that may arise is whether you have to read a lot of decisions in preparing for the EQE. I don't have the definitive answer to that, yet I do advise you to read at least a few (whatever that means). Of course the EPO case law book and many other resources provide overviews and summaries of (established) case law, all of which can be used. I personally did not find the case law book very suitable for studying and used "Visser" and (to a lesser extent) "Hoekstra" as my main sources. I have not seen/tried any other sources by the way ...
Hopefully in addition to what is already out there you can use the case law summaries I post on this Blog every now and then. Likewise the French "European Patent Case Law Blog" provides summaries and discussion of the Boards of Appeal case law.
This article relates mainly to decisions from the Technical Board of Appeal of the European Patent Office (the "T" decisions) yet probably applies to other decisions as well. The task of knowing and learning the Articles and Rules of the EPC is already quite time consuming so you may find it helpful to try the way of reading decisions further outlined below. I used this method myself during my preparation and still use it for the purpose of this Blog.
1. Browse through the front page to see what the decision is about; Relevant legal provisions, keywords, catchword, etc.
2. Determine which kind of decision is appealed (Examining Division, Opposition Division) and find out who is who. This can be found on the next one or two pages.
3. For the time being, skip the "Summary of Facts and Submissions" and go directly to the "Reasons".
4. Start reading from the "Reasons" yet don't try to understand all the "case specific" details unless they are necessary for understanding the case, which is not always obvious by the way. Normally I just skip all the details about the case until the Board summarises and concludes on a certain aspect. From reading the conclusion it usually becomes apparent if further reading of the details is required or not (at this point you may need to go back to the "Summary of Facts and Submissions").
Tip: When legal provisions are referred to, always read these provisions (again). This will help you in getting the EPC "in your system".
5. Read through the "Reasons" for each issue. Make notes where necessary and don't forget to have a yellow marker around. Be alert when the Board reasons "beyond" the specific subject matter of the case. This is often where the Board either may create new case law or summarise established case law.
6. Scan the "Order"
That's it !
Depending on the case, the number of issues to be dealt and your experience with reading decisions this process can take anywhere from 5 - 60 minutes.
The question that may arise is whether you have to read a lot of decisions in preparing for the EQE. I don't have the definitive answer to that, yet I do advise you to read at least a few (whatever that means). Of course the EPO case law book and many other resources provide overviews and summaries of (established) case law, all of which can be used. I personally did not find the case law book very suitable for studying and used "Visser" and (to a lesser extent) "Hoekstra" as my main sources. I have not seen/tried any other sources by the way ...
Hopefully in addition to what is already out there you can use the case law summaries I post on this Blog every now and then. Likewise the French "European Patent Case Law Blog" provides summaries and discussion of the Boards of Appeal case law.
06/08/2009
Tool for Paper A available
Inspired by yesterday's good news I have now posted the tool I developed myself for taking the paper A. Please note that I took the chemistry paper and that as such this tool may need some tweaking to also suit the E/M exam. If someone feels confident in making a similar tool for E/M, please let me know and I'll send you a document you can edit. I'm happy to post the result in the download area.
Anyway, tackling the A paper may be done using several strategies/ approaches and in general the advice is to find the way that suits you best (not much of an advice is it...).
During my first days of preparation I was taught to first "scan" through the client's letter and the prior art and after that carefully re-read everything identifying all possible inventions. I know that many of my colleague candidates used this approach during last exam and at least several of them were succesful.
However this method did not suit me because most of the time I was biased by the prior art when trying to define all possible inventions. As a result I did not do very well in the first papers I practised. I then started working on (more or less) my own approach which in the end resulted in the A tool that is now available for download.
The key difference in my approach is that I:
- First read the letter of the client very accurately and in full detail and at the same time filled in all tables in the tool.
- Only after I basically defined all possible inventions I read the prior art and indicated which possible invention was not patentable (i.e. not new or inventive)
The tool is easiest to use when you print it on A3 double sided.
Any comments/ additions/ suggestions are welcome.
Good luck, I hope you find this tool useful.
Download the tool here.
Anyway, tackling the A paper may be done using several strategies/ approaches and in general the advice is to find the way that suits you best (not much of an advice is it...).
During my first days of preparation I was taught to first "scan" through the client's letter and the prior art and after that carefully re-read everything identifying all possible inventions. I know that many of my colleague candidates used this approach during last exam and at least several of them were succesful.
However this method did not suit me because most of the time I was biased by the prior art when trying to define all possible inventions. As a result I did not do very well in the first papers I practised. I then started working on (more or less) my own approach which in the end resulted in the A tool that is now available for download.
The key difference in my approach is that I:
- First read the letter of the client very accurately and in full detail and at the same time filled in all tables in the tool.
- Only after I basically defined all possible inventions I read the prior art and indicated which possible invention was not patentable (i.e. not new or inventive)
The tool is easiest to use when you print it on A3 double sided.
Any comments/ additions/ suggestions are welcome.
Good luck, I hope you find this tool useful.
Download the tool here.
05/08/2009
EQETools passed the EQE
I didn't sleep very well last night and I opened my laptop this morning feeling a bit shaky.
However my mood changed from tired and nervous to extremely happy and energetic !!
This is why :
Result paper A 83 pass
Result paper B 68 pass
Result paper C 71 pass
Result paper D 63 pass
However my mood changed from tired and nervous to extremely happy and energetic !!
This is why :
Result paper A 83 pass
Result paper B 68 pass
Result paper C 71 pass
Result paper D 63 pass
30/07/2009
Official Journal #7, 2009
In this OJ a publication of Board of Appeal decision T 307/03 relating to the subject of double patenting.
Headnote:
I. The principle of prohibition of double patenting, namely that the inventor (or his successor in title) has a right to the grant of one and only one patent from the European Patent Office for a particular invention as defined in a particular claim is applicable under the EPC, and can be deduced from the provision of Article 60 EPC stating "The right to a European patent shall belong to the inventor or his successor in title" (see point 2.1).
II. Decision T 587/98 (OJ EPO 2000, 497) to the effect (see its point 3.6) that there is no basis in the EPC prohibiting "conflicting claims" not followed (see point 2.7).
III. A double patenting objection can be raised also where the subject-matter of the granted claim is encompassed by the subject-matter of the claim later put forward, that is where the applicant is seeking to re-patent the subject-matter of the already granted patent claim, and in
addition to obtain patent protection for other subject-matter not claimed in the already granted patent. In particular, where the subject matter which would be double patented is the preferred way of carrying out the invention both of the granted patent and of the pending application
under consideration, the extent of double patenting cannot be ignored as de minimis. To avoid the objection of double patenting the claims of the pending application should be confined to the other subject-matter that is not already patented, to allow the examination procedure to focus on whether a claim to this other subject-matter meets the requirements of the EPC (see points 5.2 to 5.4).
The Board of Appeal found a basis for this decision (which is not in line with T 587/98) in Article 60. This in turn has created an interesting discussion earlier this year on (among others) the IPKat Blog, see here. In particular, see the comment by Derk Visser (Author of "The Annotated EPC").
OJ 2009, 434
The EPO will in Opposition Proceedings no longer automatically transmit copies of documents specified as patent documents. If oral proceedings are to take place,parties are advised to check the electronic file via the Register Plus online service in advance of the hearing to ensure they are in possession of all relevant documents.
(Not so very relevant for the EQE probably)
Not in OJ #7, 2009 but published on the website :
The German Patent and Trademark Office will be closed on the following days (in addition to what has been published in OJ 2009, 72)
28 December 2009
29 December 2009
30 december 2009
Under Rule 134(1) EPC, periods expiring on a day on which at least one of the filing offices of the EPO is not open for receipt of documents are extended to the first day thereafter on which all the filing offices are open for receipt of documents.
Under Rule 134(3) EPC, the provisions of Rule 134(1) EPC apply mutatis mutandis where acts are performed with the central industrial property office or other competent authority of a contracting state.
All the above will be copied to the OJ 2009 Summary and published soon on this website.
Headnote:
I. The principle of prohibition of double patenting, namely that the inventor (or his successor in title) has a right to the grant of one and only one patent from the European Patent Office for a particular invention as defined in a particular claim is applicable under the EPC, and can be deduced from the provision of Article 60 EPC stating "The right to a European patent shall belong to the inventor or his successor in title" (see point 2.1).
II. Decision T 587/98 (OJ EPO 2000, 497) to the effect (see its point 3.6) that there is no basis in the EPC prohibiting "conflicting claims" not followed (see point 2.7).
III. A double patenting objection can be raised also where the subject-matter of the granted claim is encompassed by the subject-matter of the claim later put forward, that is where the applicant is seeking to re-patent the subject-matter of the already granted patent claim, and in
addition to obtain patent protection for other subject-matter not claimed in the already granted patent. In particular, where the subject matter which would be double patented is the preferred way of carrying out the invention both of the granted patent and of the pending application
under consideration, the extent of double patenting cannot be ignored as de minimis. To avoid the objection of double patenting the claims of the pending application should be confined to the other subject-matter that is not already patented, to allow the examination procedure to focus on whether a claim to this other subject-matter meets the requirements of the EPC (see points 5.2 to 5.4).
The Board of Appeal found a basis for this decision (which is not in line with T 587/98) in Article 60. This in turn has created an interesting discussion earlier this year on (among others) the IPKat Blog, see here. In particular, see the comment by Derk Visser (Author of "The Annotated EPC").
OJ 2009, 434
The EPO will in Opposition Proceedings no longer automatically transmit copies of documents specified as patent documents. If oral proceedings are to take place,parties are advised to check the electronic file via the Register Plus online service in advance of the hearing to ensure they are in possession of all relevant documents.
(Not so very relevant for the EQE probably)
Not in OJ #7, 2009 but published on the website :
The German Patent and Trademark Office will be closed on the following days (in addition to what has been published in OJ 2009, 72)
28 December 2009
29 December 2009
30 december 2009
Under Rule 134(1) EPC, periods expiring on a day on which at least one of the filing offices of the EPO is not open for receipt of documents are extended to the first day thereafter on which all the filing offices are open for receipt of documents.
Under Rule 134(3) EPC, the provisions of Rule 134(1) EPC apply mutatis mutandis where acts are performed with the central industrial property office or other competent authority of a contracting state.
All the above will be copied to the OJ 2009 Summary and published soon on this website.
R 0007/09: The first review under Article 112a with succes for the petitioner
This is the first case where a petitioner was succesful before the Enlarged Board to the extent that his appeal case was re-opened.
In short, the petioner did not receive the grounds of appeal as put forward by another party. The Board of Appeal did not summon the parties to oral Proceedings as the other party only requested Oral Proceedings as an auxiliary request. The Board then decided on the case.
The petitioner argued that his right to be heard was infringed as he was unable to comment on the grounds of appeal put forward by the other party.
The EPO was not able to establish that these grounds of appeal in fact reached the petitioner (see Rule 126(2)) and finally concluded that the petitioner's rights under Article 113(1) therefore indeed had been infringed.
The case itself seems quite straightforward, read it here.
Further comments, see here.
In short, the petioner did not receive the grounds of appeal as put forward by another party. The Board of Appeal did not summon the parties to oral Proceedings as the other party only requested Oral Proceedings as an auxiliary request. The Board then decided on the case.
The petitioner argued that his right to be heard was infringed as he was unable to comment on the grounds of appeal put forward by the other party.
The EPO was not able to establish that these grounds of appeal in fact reached the petitioner (see Rule 126(2)) and finally concluded that the petitioner's rights under Article 113(1) therefore indeed had been infringed.
The case itself seems quite straightforward, read it here.
Further comments, see here.
23/07/2009
Another approach to inventive step
The person skilled in the art is a key figure in the problem solution approach. A lot of case law has developed around this fictive character, see for example here.
Recently I came across a written opinion where the examiner apparently used another character for determining the presence of an inventive step.
This person appears to be dead which makes it very easy to come to the conclusion that an invention involves an inventive step. More in particular, as far as I know a dead person cannot do anything and also does not know anything ..... I'm thus very surpised why this examiner did not allow claim 1.........
Recently I came across a written opinion where the examiner apparently used another character for determining the presence of an inventive step.
This person appears to be dead which makes it very easy to come to the conclusion that an invention involves an inventive step. More in particular, as far as I know a dead person cannot do anything and also does not know anything ..... I'm thus very surpised why this examiner did not allow claim 1.........
21/07/2009
T 0051/08: Res iudicata and divisionals
Art. 111(2) first sentence reads:
If the Board of Appeal remits the case for further prosecution to the department whose decision was appealed, that department shall be bound by the ratio decidendi of the Board of Appeal, in so far as the facts are the same.
The meaning of the legal term res iudicata is old and well-established: it defines "...a matter finally settled by a Court of competent jurisdiction, rendering that subject matter conclusive as to the rights of the parties and their privies" (see Black's Law Dictionary, 5th Edition). Such a final judgement by a court of competent jurisdiction therefore constitutes an absolute bar to a subsequent legal action involving the same claim, demand or cause of action, and the same parties or privies (T 934/91, OJ EPO 1994, 184, point 3 of the reasons). Once a final judgement has been handed down, subsequent judges who are confronted with a suit that is identical to or substantially the same as the earlier one and between the same parties, are prevented
from deciding on it a second time.
In T167/93 (headnote) the Board of Appeal said that a decision of a Board of Appeal on appeal from an Examining Division has no binding effect in subsequent opposition proceedings or on appeal therefrom, having regard both to the EPC and 'res iudicata' principle(s).
This decision is silent with respect to the situation where an applicant files a divisional and wants to pursue subject matter in this divisional application whereas a decision in appeal has already been taken for the same subject matter in the parent application.
Such a situation was subject of decision T 51/08. The Board reasons (r 3.1) that a divisional application gives the applicant, within certain limits, the possibility to pursue the same subject matter as in the parent application. Since the aim of the res iudicata maxim is to avoid relitigation of the same subject matter by the same parties, it must inevitably apply to a divisional application.
and in r 3.3:
[..]while it is true that Article 111(2) EPC 1973 provides for the binding effect of a judgment only for the decided case, the general principle of res iudicata goes beyond this and aims at avoiding any subsequent ruling on the same subject matter in other proceedings between the same parties.
The Board thus come to the conclusion as nicely summarised in the catchword :
Subject matter on which a final decision has been taken by a board of appeal in the parent application becomes res iudicata and cannot be pursued in the divisional application.
In addition the Board concludes in the same catchword that :
If the statement setting out the grounds of appeal in a case does not go beyond submitting and arguing for a set of claims which constitutes such subject matter, the appeal is not sufficiently substantiated.
My feeling is that some day this case may be part of a D1 question....
Read the decision here.
20/07/2009
T 0700/05: Bringing a translation into conformity under Art. 14(2) EPC 1973
Article 14(2) EPC 1973 relates to applications filed at the EPO by a natural or legal person having their residence or principal place of business within the territory of a Contracting State having a language other than English, German or French. Such applicants may file an application at the EPO in the official language of that Contracting State, but then need to file a translation into an official language of the EPO.
Article 14(2) EPC 1973 states in its last sentence that "throughout the proceedings before the European Patent Office, such translation may be brought into conformity with the original text of the application".
This provision has been changed in EPC 2000 under which a European Patent application may be filed in any language.
In this case a Japanese applicant filed a PCT application in Japanese at the Japanese Patent Office designating the EPO. Upon entering the regional phase, applicant filed a translation in English.
During opposition the proprietor finds out that there was an error in the translation and requests correction.
The Board of Appeal first establishes that the provisions of EPC1973 apply. The Board then says the following (reason 4) :
The international patent application [..] was filed by an applicant having its place of business in Japan. The international application designated the European Patent Office [..] and was thus deemed to be a European patent application pursuant to Article 150(3) EPC 1973. A translation into English of this international application was provided to the EPO, as prescribed by Article 158(2) EPC 1973 in conjunction with Article 14(1) EPC 1973.
Taking into account that Euro-PCT applications are deemed by Article 153(2) to be European applications and the principle that they thus must be treated as favourably as applications made in a Contracting State, a PCT application originally filed in Japanese must be treated in the same way as an application filed in the language of a Contracting State which language is not an official language of the EPC. The provision of Article 14(2) EPC 1973 must thus be applied by analogy to allow also the translation into English of an original PCT application in Japanese to be brought into conformity with the original Japanese text of the application throughout the proceedings before the European Patent Office, i.e. also including opposition and appeal proceedings.
To me this is a bit of a strange decision. For example, take the situation where there were a Spanish and a Mexican applicant. Both applicants have their mother tongue in Spanish, which is a publication language under the PCT.
Both applicants could have filed a direct European Patent Application (Art. 58). However, only the Spanish applicant was allowed to file his application in Spanish, whereas the Mexican applicant needed to file in French, German or English. Thus, the Spanish applicant could have brought (or can bring) his translation into conformity under Article 14(2) EPC 1973, whereas the Mexican applicant could/can not unless he had first filed a PCT application in Spanish and then entered the regional phase before the EPO.
Maybe this is established practice of the EPO, or maybe I'm missing the point, but from this decision one may draw the conclusion that applicants from non-contracting states had better filed a PCT application (in a publication language of the PCT) rather than a direct European application if they wanted or want to rely on the provision of Article 14(2) EPC 1973 last sentence.
Anyway, under EPC 2000 this is no longer an issue as direct European Applications may now be filed in any language.....
Read the decision here.
T 2321/08 continued...
The Blog "European Patent Case Law" noticed an interesting development concerning this case.
The Examining Division, in a communication undert Art. 94(3) following the order of the Board of Appeal, openly comments on this decision and argues why this decision is either incorrect, should not be followed and/or why the issue at hand should possibly be dealt with by the Enlarged Board.
Click here for the European Patent Case Law Blog. (In case you have difficulty with reading French, there is a translation option in this Blog that works quite well. Further, you can also download the communication directly from this Blog.)
Click here for an earlier post on this decision.
The Examining Division, in a communication undert Art. 94(3) following the order of the Board of Appeal, openly comments on this decision and argues why this decision is either incorrect, should not be followed and/or why the issue at hand should possibly be dealt with by the Enlarged Board.
Click here for the European Patent Case Law Blog. (In case you have difficulty with reading French, there is a translation option in this Blog that works quite well. Further, you can also download the communication directly from this Blog.)
Click here for an earlier post on this decision.
17/07/2009
T 1847/06: Another undisclosed disclaimer not allowed
When I was in Strassbourg earlier this year (CEIPI D course) one of the tutors warned us to stay away from undisclosed disclaimer as "it could only get you into trouble".
At that time I just took these words for granted and focussed on studying for the EQE. After the EQE I started this Blog and since then I try to pick out the interesting decisions as published regularly on the EPO website. As such, this is the 3rd time in about 3 months that a decision concerns such undisclosed disclaimers, in which indeed the proprietor of the patent got into trouble and lost a request or even his patent. See also T440/04 here and T 0107/07 here.
The present case is yet another variant of how things can go very wrong. The proprietor in appeal filed requests wherein claim 1 contains an undisclosed disclaimer, which was drafted generally as follows:
1. Use of a [..] stem cell [..] to screen [..] provided that said screening does not comprise [..]
The disclaimer was said to disclaim the subject matter of a 54(3) document.
The Board of Appeal (see Reason 13) first considers that this 54(3) document indeed anticipates the claim when read without the disclaimer. However, the Board of Appeal does not find a basis in this document for the broad "comprising" language as used by the proprietor in the disclaimer.
For this reason the Board considers that the disclaimer introduced into claim 1 extends beyond the disclosure of the 54(3) document and, therefore does not meet the requirements of G1/03. Consequently the introduced disclaimer offends against Article 123(2).
So, the lesson (I believe) to be learnt from this case is that when you have to introduce an undisclosed disclaimer, for example in the B exam, or you have to attack a claim in the C exam containing such a disclaimer, always check if the disclaimer does not extend beyond the disclosure of the document that contains the disclaimed subject matter.
If the disclaimer so extends you have probably drafted the wrong disclaimer in your B exam, or you can attack the respective claim undert Art. 123(2) in the C exam. Note that (as was the case in T440/04) if you conclude that the disclaimer does not extend beyond the contents of the "disclaimer document" this is still no guarantee that the claim (B exam) is correct or cannot be attacked (C exam). It could still be the case that the disclaimer disclaims "too little".
Have a good weekend ...
14/07/2009
PCT Newsletter 2009 #7 and #8
The combined July and August edition of the PCT Newsletter is available for download, click here.
Question from the practical advice:
I have heard that a number of changes took place on 1 July 2009 concerning the filing of sequence listings, for example, that there is no longer a fee benefit for sequence listings over 400 pages. As I plan on filing an international application containing a sequence listing of about 500 pages, please could you explain the options available to me for filing the sequence listing part - will I now have to pay a fee per sheet for that part?
The answer can be found in the Newsletter. This advice concerns sequence listings and is quite specific. I personally think it is not that important for the EQE ...
That said, I copied the entire advice and the other information above to the PCT Newsletter Summary, which will be available in the download area soon.
The National Institute of Industrial Property (Brazil) was appointed as ISA and IPEA and will begin functioning as such with effect from August 7, 2009.
Question from the practical advice:
I have heard that a number of changes took place on 1 July 2009 concerning the filing of sequence listings, for example, that there is no longer a fee benefit for sequence listings over 400 pages. As I plan on filing an international application containing a sequence listing of about 500 pages, please could you explain the options available to me for filing the sequence listing part - will I now have to pay a fee per sheet for that part?
The answer can be found in the Newsletter. This advice concerns sequence listings and is quite specific. I personally think it is not that important for the EQE ...
That said, I copied the entire advice and the other information above to the PCT Newsletter Summary, which will be available in the download area soon.
13/07/2009
Who is the skilled person ?
The EPC does not have any provision defining the person skilled in the art, or skilled person in short. Yet this person appears to be a quite important character for the purpose of applying the EPC. For example, the skilled person is important if not crucial for determining presence of an inventive step, Article 56. Most EPC study books provide a summary on what the skilled person is all about. During the working sessions of the 14th European Patent Judges' Symposium Graham Ashley, member of a Technical Board of Appeal EPO presented an article providing yet another summary.
This summary is well hidden in the in Special Edition 1 of the Official Journal 2009, yet may be interesting reading material. Like other summaries, the article discusses who or what the skilled person is (for purpose of the EPC) and provides quite a few references to the Case Law.
Unfortunately it is not possible to extract only this article, but rather you would
have to download the whole Special Edition. Anyway, the article can be found on pages 94 -101.
Below is the summary by the author of this article :
Summary (dots added by EQETools)
The skilled person (or persons) of the EPC is
- not real,
- being of average ability for his field
- but having exhaustive common knowledge and aware of all things that are not technical.
- He is a legal creation
- whose purpose is to assist in providing a more objective approach to the assessment of inventive step and other provisions of the EPC.
- He certainly does not cut an athletic figure,
- and whilst being able to vault the bar of common knowledge, raising it any higher would be beyond his capability.
Happy reading !
09/07/2009
T 0069/07: Don't forget to call....
Article 6 of the Code of Conduct of the European Patent Institute, of which Professional Representatives are obligatory a member reads :
"In all dealings with the European Patent Office and its employees, a member shall act courteously, and shall do everything possible to uphold the good reputation of this Institute and its Members."
In this particular case a party decided on the day before not to attend Oral Proceedings (before the Board of Appeal) taking place the next day. However the representative did not inform the EPO about this non-attendance so that obviously the Board of Appeal did not become aware of it on forehand.
During (or just before the actual opening) the Oral Proceedings the Board allowed waiting some time for a possible small delay in arrival. Then, later on the Board had the registrar telephone the Professional Representative, who only then informed the registrar of the non-attendance.
The Board then says (Reason 1.4 and 1.5) :
"The representative of the respondent had sufficient time to inform the Board of its intended non-appearance at the oral proceedings, i.e. by informing the Board by telephone immediately after the decision not to attend was taken. This would have avoided that the other party and the Board first of all courteously waited for the representative of the respondent in case he had unintentionally been delayed, and then that the registrar of the Board had to carry out enquiries to establish if it was intended that the representative would attend the oral proceedings."
"The facts of [..] T 954/93 [..] were similar to those of the present case in that a party did not appear at the oral proceedings without informing the Board beforehand, causing telephone calls and a delay in the start of the oral proceedings. In that case the deciding board considered that the actions of the representative were "reprehensible" [..].
The present Board agrees with that decision and considers that the views of that Board also apply in the present case."
In other words, it seems the Board was "not amused" ...
Read the "code of conduct" here.
Not an important decision for the EQE by the way .....
07/07/2009
T 0107/07: Undisclosed disclaimer not allowable
Again an example of the danger of introducing undisclosed disclaimers. See also T440/04 reported earlier on this Blog for another example.
This case concerns an opposition appeal against EP 0 684 304 concerning a cleaning composition.
During examination prior art under Art. 54(3) was cited against the corresponding patent application. In response the applicant introduced an undisclosed disclaimer in claim 1, disclaiming the subject matter of this 54(3) prior art. A patent was then granted.
Opposition was filed and the patent was maintained in amended form. Claim 1 as maintained differed from claim 1 as granted yet contains the undisclosed disclaimer.
In it's decision the opposition division held that altough G1/03 was not yet published at the time of introduction of the disclaimer, the principles of legitimate expectations did not prevent the application of this decision retrospectively. Further, the disclaimer was found to be drafted in accordance with the criteria of G1/03, hence the claim complied with Art. 123(2) EPC.
The opponents argued that the disclaimer removes more than necessary so that the principles of G1/03 were not met. The opposition division did not agree and found (r. 3.3):
"that Headnote II.2 of G 1/03 should be understood in the light of paragraph 3 of the Reasons for this decision. Here it is explained that the disclaimer should not remove more than necessary to restore novelty because the necessity for a disclaimer is not an opportunity for the applicant/proprietor to reshape his claims arbitrarily. On the other hand the requirements of conciseness and clarity of Article 84 also apply to claims containing disclaimers; a balance has to be struck between the interests of the applicant and of the public and this may necessitate adapting the terminology of the disclaimer in order to respect these requirements. This balance is also mentioned in the Guidelines, C-VI 5.3.11."
[..]
"the opposition division considers that the wording of the disclaimer is clear and concise and that the requirements of Article 84 are met. Moreover the disclaimer does not amount to an arbitrary reshaping of the claim as it uses precisely the wording of [..]. The opposition division therefore concludes that the balance mentioned above has been respected in the present case.
Both the proprietor and the opponents were not happy and filed an appeal.
The opponents argued that the 54(3) document that was cited during the examination proceedings was in fact not novelty destroying when the claim would have been read without the disclaimer.
The Board of Appeal then summarises the established case law, in particular G1/03 and states (r 1.1.2) :
"that the introduction of a disclaimer based on a state of the art is not allowable if said state of the art does not destroy the novelty of the claim in question (see G 1/03, point 2.6.5) [..]"
"For example, G 1/03 underlines that a disclaimer may serve exclusively the purpose for which it is intended and nothing more and that, in the case of a disclaimer concerning conflicting pplications, its purpose is to establish novelty with respect to a prior application in the sense of Article 54(3) EPC. Therefore, if a disclaimer has effects which go beyond its purpose as stated above, it is or becomes inadmissible (point 2.6.5 of the reasons)."
The Board then looks again at the 54(3) prior art and concludes that this prior art does not anticipate the subject matter of claim 1 when read without the disclaimer. Hence the disclaimer was found unallowable.
The proprietor tried to argue that the disclaimer does not have "bearing on the technical information of the application and does not contribute to the technical teaching of the claimed subject-matter; its addition to claim 1 thus cannot be considered to contravene the requirements of Article 123(2) EPC for the reasons given in G 1/93 and G 1/03 (see for example, G 1/93, headnote 2 and G 1/03, point 3 of the reasons)." (r 1.1.4)
The Board of Appeal does not agree and confirms that G1/03 specifies that a disclaimer excluding a conflicting application, only excluding subject-matter for legal reasons, is required to give effect to Article 54(3) EPC and has no bearing on the technical information in the application (points 2.1.3 and 3 of the reasons).
The disclaimer in this case does not comply with the requirements listed in G 1/03 for an allowable disclaimer since it has been drafted on the basis of a document which cannot destroy the novelty of the claimed subject-matter.
With respect to G1/93 the Board concludes that the disclaimer modifies the technical characteristics of claim 1 hence that this disclaimer constitutes an amendment that contravenes Art. 123(2) EPC. (See reason 1.1.4 for more details)
All other requests also contained the disclaimer, and as a result the patent was revoked.
I did not study the subject matter of the claims and the prior art in detail, but removal of the disclaimer was probably not an option for the proprietor in this case, because such an amendment would have contravened Art. 123(3) as extending the protection conferred. So, effectively the proprietor may have been caught in the Art. 123(3)-(2) trap.
The lesson learned from this case is (again) that one should be extremely careful when introducing undisclosed disclaimers in a patent application. In some of the recent A and B chemistry papers introduction of such disclaimers has been required (I don't know if this was the case of E/M papers). Some day the C committee will probably build a similar case in a C paper.....oops I may just have inspired them to do so.
In any case, be prepared and study G1/03 well before sitting the EQE.
Read the decision here.
03/07/2009
Friday evening considerations
As the evening of another very hot day sets in, the mind starts working again.
..... flowcharts instead of large pieces of text ..... case law organised so one can actually find it quickly ..... A tools ..... B Tools ..... C Tools ..... how about the Guidelines ..... what am I going to do with the PCT ..... is this Blog appreciated at all ..... where do I find the time to further optimise the layout of the Blog and the download area ..... what will it look like in the future and what do I need to do to get there ..... what am I going to do with advertising in the future ..... will I try to find sponsoring for the Blog ..... will I invite others to join the Blog as authors ..... will I start promoting this Blog actively ..... where do I find the time to organise all the stuff I mentioned above ..... did I pass the EQE
The answer to at least one of these issues will be known on August 5.
I just wonder if I will be having the same thoughts next year ?
Cheers !
30/06/2009
T1465/05: Classic case of re-establishment of rights
I found this case during further analysis of T1304/04 .
An applicant appealed against the decision to refuse a patent application. All documents were filed in due time, however due to an error the appeal fee was not paid. As a consequence the appeal was deemed not filed (Article 108) and the applicant was so notified.
It appeared that the "well instructed, permanently supervised and reliable" assistent of the professional representative made the error probably by putting the payment order in a wrong "pigeon-hole" (as it is referred to in the decision).
Applicant requested re-establishment and the Board applied the established case law:
R 1.3: [..] due care is considered to have been taken if non-compliance with the time limit results from an isolated mistake within a normally satisfactory system for monitoring time limits (see Case Law of the Boards of Appeal, 5th edition, 2006, section VI.E.6.2).
In a case of a culpable error on the part of an assistant, this criterion is considered to be met, if the professional representative is able to show that he has chosen for the work a suitable person properly instructed in the tasks to be performed, and that he has himself exercised reasonable supervision over the work (see Case Law, supra, section VI.E.6.3.4(a), in particularJ5/80, OJ EPO 1981, 343).
The professional representative was able to show all due care and the appeal was found admissible.
Nothing special about this case, yet by reading the same articles, rules or case law over and over again you'll get the subject better in your system which saves you time when sitting the EQE. At least that's the way it works for me....
26/06/2009
T1304/07: Appeal or re-establishment of rights?
Rule 126(1) EPC reads:
(1) Decisions incurring a period for appeal or a petition for review, summonses and other such documents as determined by the President of the European Patent Office shall be notified by registered letter with advice of delivery. All other notifications by post shall be by registered letter.
(2) Where notification is effected by registered letter, whether or not with advice of delivery, such letter shall be deemed to be delivered to the addressee on the tenth day following its posting, unless it has failed to reach the addressee or has reached him at a later date; in the event of any dispute, it shall be incumbent on the European Patent Office to establish that the letter has reached its destination or to establish the date on which the letter was delivered to the addressee, as the case may be.
(3), (4) Not shown.
In this case the Opposition Division had sent an invitation to file observations to the patent proprietor. The proprietor did not respond to this invitation and the patent was revoked as not complying with Art. 84. The proprietor filed an appeal arguing that he did not receive the communication in question, so that it was not his fault that the time limit for answering this communication was missed. The EPO provided evidence that the letter in fact was delivered to the adressee, thereby fulfilling its duty under R126(2) last sentence. As a consequence the appeal was dismissed.
The Board in R4: As the piece of mail containing the official communication was provably placed in the addressee's PO box, it is irrelevant for the validity of the notification, whether the communication then also reached "the sphere of responsibility" of the addressee's internal post services [..].
The communication that was apparently not received was dated 08/02/2007 and the decision by the Opposition division was dated 21/06/2007. Based on this information I wonder if the proprietor could also have requested re-establishment of rights under Art. 122 EPC. (Removal of cause of non compliance then being the notification of the decision by the Opposition Division).
By doing so he would have had support by established case law in respect of the "all due care" criterium.
J2/86: An isolated mistake of an otherwise properly functioning administration is an admissible ground for re-establishment.
From reading the decision of the Board of Appeal this might have been the situation in this case.
Just a thought, please feel free to comment ....
25/06/2009
T 2321/08: Obligation to acknowledge prior art
This interesting case has already been discussed by the French Blog of Laurent Teyssedre, so I'll keep this very brief.
The situation was such that an applicant did not cite (relevant) prior art in his application as filed, whereas he was very aware of such relevant prior art. The Examining Division therefore refused the application as not complying with Rule 42(1)(b) EPC. Applicant appealed and the Board of Appeal concluded that this refusal was not justified.
Below is the catchword in English:
1. Rule 27(1)(b) EPC 1973, or equivalent Rule 42(1)(b) EPC 2000, does not put a stringent obligation on the applicant to acknowledge prior art known to him, and to cite documents known to him reflecting this prior art, already at the time of filing the application.
2. No requirement of the EPC prohibits amending an application in order to meet the provisions set out in Rule 27(1)(b) EPC 1973 or Rule 42(1)(b) EPC 2000.
The Board of Appeal refers to G1/05 reasons 3.2 and 3.4. These reasons have been added to the G summary.
As far as relevant and entirely correct, not mentioning relevant prior art in procedures before the USPTO may be regarded as inequitable conduct, which may result in revocation of the patent during litigation proceedings. This is probably a bridge too far to be of relevance for the EQE, yet it is important if your clients file patent applications in the USA.
The situation was such that an applicant did not cite (relevant) prior art in his application as filed, whereas he was very aware of such relevant prior art. The Examining Division therefore refused the application as not complying with Rule 42(1)(b) EPC. Applicant appealed and the Board of Appeal concluded that this refusal was not justified.
Below is the catchword in English:
1. Rule 27(1)(b) EPC 1973, or equivalent Rule 42(1)(b) EPC 2000, does not put a stringent obligation on the applicant to acknowledge prior art known to him, and to cite documents known to him reflecting this prior art, already at the time of filing the application.
2. No requirement of the EPC prohibits amending an application in order to meet the provisions set out in Rule 27(1)(b) EPC 1973 or Rule 42(1)(b) EPC 2000.
The Board of Appeal refers to G1/05 reasons 3.2 and 3.4. These reasons have been added to the G summary.
As far as relevant and entirely correct, not mentioning relevant prior art in procedures before the USPTO may be regarded as inequitable conduct, which may result in revocation of the patent during litigation proceedings. This is probably a bridge too far to be of relevance for the EQE, yet it is important if your clients file patent applications in the USA.
Read the entire decision here.
23/06/2009
Official Journal #6, 2009
Not a lot of new EQE-relevant material in this Official Journal. In summary:
Accession of San marino to the EPC (already reported here).
Accession of Lithuania to the London Agreement (already reported here).
OJ 2009, 400
List of holidays observed by EPO filing offices and the national patent authorities in 2009
The Institute for Industrial Property (INPI) in France has informed us that this year, in addition to the list of holidays published in OJ EPO 2009, 71, it will further be closed on the following days:
Friday, 22 May 2009
Monday, 13 July 2009
Under Rule 134(1) EPC, periods expiring on a day on which at least one of the filing offices of the EPO is not open for receipt of documents are extended to the first day thereafter on which all the filing offices are open for receipt of documents. Under Rule 134(3) EPC, the provisions of Rule 134(1) EPC apply mutatis mutandis where acts are performed with the
central industrial property office or other competent authority of a contracting state.
The OJ 2009 Summary will be updated and published in the download are.
Accession of San marino to the EPC (already reported here).
Accession of Lithuania to the London Agreement (already reported here).
OJ 2009, 400
List of holidays observed by EPO filing offices and the national patent authorities in 2009
The Institute for Industrial Property (INPI) in France has informed us that this year, in addition to the list of holidays published in OJ EPO 2009, 71, it will further be closed on the following days:
Friday, 22 May 2009
Monday, 13 July 2009
Under Rule 134(1) EPC, periods expiring on a day on which at least one of the filing offices of the EPO is not open for receipt of documents are extended to the first day thereafter on which all the filing offices are open for receipt of documents. Under Rule 134(3) EPC, the provisions of Rule 134(1) EPC apply mutatis mutandis where acts are performed with the
central industrial property office or other competent authority of a contracting state.
The OJ 2009 Summary will be updated and published in the download are.
20/06/2009
T 431/07: Insufficient disclosure
In this case a proprietor filed an appeal against the decision of the Opposition Division to revoke the patent based on lack of inventive step and insufficient disclosure.
With respect to the aleged insufficient disclosure claim 5 as granted is of importance. This claim reads:
5. Universal colouring compositions according to any one of the preceding claims, characterized in that they have a viscosity of 2.0-10.0 poises at 20°C.
The specification itself did not provide any information as to how this viscosity was measured and which type of measurement equipment was used.
The subject matter of claim 5 was incorporated in claim 1 of several requests.
The proprietor (appellant) argued that the skilled person in this specific field would measure this viscosity using a so called "Stormer viscosimeter". However, the respondent filed evidence that such a viscosimeter would not provide measurement results in the absolute unit "poises" but rather in relative values.
The board then reasons (R 2.2.5) "in view of the numerous techniques and devices used in the state of the art to measure viscosity, it amounts to an undue burden for the person skilled in the art if the latter is left without any clear guidance as to how to prepare compositions which meet the required range of viscosity."
Following the established case law (e.g. T14/83, OJ EPO 1984,105) the Board concludes that the invention as claimed has not been disclosed in a manner sufficiently clear and complete within the meaning of Article 100(b) EPC.
This decision may seem straightforward, however in numerous A exams (at least in the chemistry field) candidates have had to put clear definitions in the claims of measurement methods (or other features).
From what I learned some guidance (but always judge for yourself!) may be the following:
In the exam look for sentences like "as is a generally known", or "known to the skilled person" or any similar language in the letter of the client. If you find these sentences in relation to a specific feature it is normally not necessary to put a clear definition in the claim.
On the other hand, in the absense of such language, if you find clear definitions for certain claim features you have to put these definitions in the claim and not only in the description.
Read the decision here.
19/06/2009
Amended Rule 36: Translation issue resolved for divisionals
Note: This post relates to new Rule 36, which will enter into force 1 April 2010!
According to Article 76(1) a divisional application may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed. The divisional application shall be in the language of the proceedings for the earlier application, see present Rule 36(2).
Suppose now an applicant files a first application in Greek, which is allowed under Article 14(2), and within the period of Rule 6(1) he files a translation in English. According to Article 14(3) English will therefore be the language of proceedings.
The applicant may however bring the translation into conformity with the application as filed, which was the application in the Greek language. Thus, if during the course of proceedings translation errors are found, such errors may be corrected.
Suppose now that the same applicant files a divisional application before having made any correction in the first application. This divisional should be filed in English according to present Rule 36(2). This has the effect that the language of the application as filed for the divisional is English and not Greek. Consequently, the applicant will not have the opportunity to bring the divisional application into conformity with the earlier application in Greek.
This can have the effect (in a worst case scenario) that the divisional application, due to an error in translation, may be refused or revoked.
This rather strange situation has been resolved by the amendment to Rule 36(2) which allows the divisional to be filed in the language of the earlier application (i.e. in Greek). By doing so, the language of the application as filed will be the Greek language and consequently the English translation may be brought into conformity during the course of proceedings before the EPO.
There's a lot more to say about the Rule changes anounced in OJ 2009 #5 but the above situation may be a good candidate for the D exam....
According to Article 76(1) a divisional application may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed. The divisional application shall be in the language of the proceedings for the earlier application, see present Rule 36(2).
Suppose now an applicant files a first application in Greek, which is allowed under Article 14(2), and within the period of Rule 6(1) he files a translation in English. According to Article 14(3) English will therefore be the language of proceedings.
The applicant may however bring the translation into conformity with the application as filed, which was the application in the Greek language. Thus, if during the course of proceedings translation errors are found, such errors may be corrected.
Suppose now that the same applicant files a divisional application before having made any correction in the first application. This divisional should be filed in English according to present Rule 36(2). This has the effect that the language of the application as filed for the divisional is English and not Greek. Consequently, the applicant will not have the opportunity to bring the divisional application into conformity with the earlier application in Greek.
This can have the effect (in a worst case scenario) that the divisional application, due to an error in translation, may be refused or revoked.
This rather strange situation has been resolved by the amendment to Rule 36(2) which allows the divisional to be filed in the language of the earlier application (i.e. in Greek). By doing so, the language of the application as filed will be the Greek language and consequently the English translation may be brought into conformity during the course of proceedings before the EPO.
There's a lot more to say about the Rule changes anounced in OJ 2009 #5 but the above situation may be a good candidate for the D exam....
15/06/2009
PCT Newsletter 2009 #6
The June 2009 issue of the PCT Newsletter is available for download, click here.
Several rule changes will enter into force from July 1, 2009. A document with all the changes can be downloaded here and a presentation (Powerpoint) here.
Make sure you update your PCT legal texts !!
With effect from 1 June 2009 the French National Institute of Industrial Property (INPI) has withdrawn it's reservation under Rule 26bis.3(j). As a result Rule 26bis.3(a) to (i) apply with respect to the INPI in it's capacity as Receiving Office. The INPI further notified that it will apply the "due care" criterion".
The practical advice and some of the information above has been copied to the PCT Newsletter 2009 Summary (which will be available from the download area on short term).
Happy reading !
Several rule changes will enter into force from July 1, 2009. A document with all the changes can be downloaded here and a presentation (Powerpoint) here.
Make sure you update your PCT legal texts !!
With effect from 1 June 2009 the French National Institute of Industrial Property (INPI) has withdrawn it's reservation under Rule 26bis.3(j). As a result Rule 26bis.3(a) to (i) apply with respect to the INPI in it's capacity as Receiving Office. The INPI further notified that it will apply the "due care" criterion".
The practical advice and some of the information above has been copied to the PCT Newsletter 2009 Summary (which will be available from the download area on short term).
Happy reading !
10/06/2009
Printing and commenting
Just as a reminder, you can print the posts on this Blog without the sidebars by first clicking on the title of a post, then by clicking the "print this post" link, which you find at the bottom. Alternatively you can print by using the 
button.
button.In addition this is also the place where you can comment on my posts.
Petition for review; Snippets from R5/08
For those of you who do not yet know, decisions made on petitions for review under Article 112a EPC are referred to with an "R". Now that we've got that settled here's the more serious part of this post ...
Let's start with a short summary of these review proceedings including some legal basis:
Under Article 112a(1) any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal. The petition may only be filed on the grounds under Article 112a(2) and Rule 104 and needs to be filed within two months of notification of the decision of the Board of Appeal, see Article 112a(4). The petition is deemed not filed if the required fee is not paid in due time (Rfees 2.11a).
Let's start with a short summary of these review proceedings including some legal basis:
Under Article 112a(1) any party to appeal proceedings adversely affected by the decision of the Board of Appeal may file a petition for review of the decision by the Enlarged Board of Appeal. The petition may only be filed on the grounds under Article 112a(2) and Rule 104 and needs to be filed within two months of notification of the decision of the Board of Appeal, see Article 112a(4). The petition is deemed not filed if the required fee is not paid in due time (Rfees 2.11a).
Failure to meet the time limit is excluded from further processing according to Article 121(4), however re-establishment of rights may be requested under Article 122 and Rule 136. Of course all due care needs to be proven.
The actual procedure is basically a 2-step procedure, see See Rule 109(2).
During the first step the Enlarged Board consisting of two legally qualified members and one technically qualified member shall examine all petitions for review and shall reject those which are clearly inadmissible or unallowable; such decision shall require unanimity.
During a second step the Enlarged Board of Appeal consisting of four legally qualified members and one technically qualified member shall decide on any petition not so rejected.
If the petition is allowable, the Enlarged Board of Appeal shall set aside the decision and shall re-open proceedings before the Boards of Appeal, see Article 112a(5). If re-opened the Enlarged Board of Appeal shall order the reimbursement of the fee for a petition for review, Rule 110.
Case R5/08 was one of the cases which was not clearly inadmissible or unallowable.
One of the issues that was dealt with in this case was the meaning of the word "taken" in the transitional provisions, which say that Article 112a shall apply to decisions of the Boards of Appeal taken as from the date of its entry into force.
The petitioner basically wanted to have 2 decisions reviewed, one of them being pronounced during oral proceedings on 18 October 2007 (before entry into force of EPC2000) and notified on 29 April 2008 (after entry into force of EPC2000). The petitioner argued that the word "taken" should be understood to mean "notified" and hence that this first decision could be subject to the petition for review procedure. Although the decision contains some interesting reading material and discusses the earlier decision G12/91 in some detail, this post is limited to reproduction of the summary of the Enlarged Board :
R. 21: In summary, none of the petitioner’s arguments outweigh the very clear direction pointed by decision G 12/91 to the interpretation of “taken” as the date a decision given orally is pronounced. Any other interpretation would lead either to a deceptive meaning of “taken” or the retrospective delay of a board’s decision’s irreversible effect by the later filing of a petition. Accordingly, the Enlarged Board finds that the first decision dated 18 October 2007 was taken on that date for the purposes of the transitional provisions and therefore Article ll2a EPC cannot apply to it. Thus the petition is, as regards that decision, inadmissible.
In reasons 28-34 the Enlarged Board further explains the 2 step character of the petition for review procedure because according to the Enlarged Board, "the respondent wholly misunderstood the two distinct stages ..." (The respondent complained that he was not involved during this first step and that therefore his right to be heard was denied.)
R. 30: [..]in the first stage of petition proceedings, parties other than the petitioner are not to be involved in the proceedings. Such other parties are beyond doubt parties [..], but they are not to be involved. So long as they are not involved, they have no right to be heard and thus no complaint [..]of a denial of the right to be heard can arise.
R. 31: [..] Rule 109(3) EPC [..] says quite clearly “The Enlarged Board of Appeal composed according to paragraph 2(a) shall decide...”. As would only be expected of any judicial decision, the only persons involved in the decision are the appointed decision-makers who, under Article ll2a and Rule 109(2) (a) and (3) EPC, are three members of the Enlarged Board. Accordingly, the expression “without involvement of the parties” means without the parties’ involvement in the proceedings. That is the straightforward and common sense interpretation of Rule 109(3) EPC and the only interpretation it can bear.
The actual procedure is basically a 2-step procedure, see See Rule 109(2).
During the first step the Enlarged Board consisting of two legally qualified members and one technically qualified member shall examine all petitions for review and shall reject those which are clearly inadmissible or unallowable; such decision shall require unanimity.
During a second step the Enlarged Board of Appeal consisting of four legally qualified members and one technically qualified member shall decide on any petition not so rejected.
If the petition is allowable, the Enlarged Board of Appeal shall set aside the decision and shall re-open proceedings before the Boards of Appeal, see Article 112a(5). If re-opened the Enlarged Board of Appeal shall order the reimbursement of the fee for a petition for review, Rule 110.
Case R5/08 was one of the cases which was not clearly inadmissible or unallowable.
One of the issues that was dealt with in this case was the meaning of the word "taken" in the transitional provisions, which say that Article 112a shall apply to decisions of the Boards of Appeal taken as from the date of its entry into force.
The petitioner basically wanted to have 2 decisions reviewed, one of them being pronounced during oral proceedings on 18 October 2007 (before entry into force of EPC2000) and notified on 29 April 2008 (after entry into force of EPC2000). The petitioner argued that the word "taken" should be understood to mean "notified" and hence that this first decision could be subject to the petition for review procedure. Although the decision contains some interesting reading material and discusses the earlier decision G12/91 in some detail, this post is limited to reproduction of the summary of the Enlarged Board :
R. 21: In summary, none of the petitioner’s arguments outweigh the very clear direction pointed by decision G 12/91 to the interpretation of “taken” as the date a decision given orally is pronounced. Any other interpretation would lead either to a deceptive meaning of “taken” or the retrospective delay of a board’s decision’s irreversible effect by the later filing of a petition. Accordingly, the Enlarged Board finds that the first decision dated 18 October 2007 was taken on that date for the purposes of the transitional provisions and therefore Article ll2a EPC cannot apply to it. Thus the petition is, as regards that decision, inadmissible.
In reasons 28-34 the Enlarged Board further explains the 2 step character of the petition for review procedure because according to the Enlarged Board, "the respondent wholly misunderstood the two distinct stages ..." (The respondent complained that he was not involved during this first step and that therefore his right to be heard was denied.)
R. 30: [..]in the first stage of petition proceedings, parties other than the petitioner are not to be involved in the proceedings. Such other parties are beyond doubt parties [..], but they are not to be involved. So long as they are not involved, they have no right to be heard and thus no complaint [..]of a denial of the right to be heard can arise.
R. 31: [..] Rule 109(3) EPC [..] says quite clearly “The Enlarged Board of Appeal composed according to paragraph 2(a) shall decide...”. As would only be expected of any judicial decision, the only persons involved in the decision are the appointed decision-makers who, under Article ll2a and Rule 109(2) (a) and (3) EPC, are three members of the Enlarged Board. Accordingly, the expression “without involvement of the parties” means without the parties’ involvement in the proceedings. That is the straightforward and common sense interpretation of Rule 109(3) EPC and the only interpretation it can bear.
So, I hope this post clarified a bit the review procedure for those of you who -like the respondent- "wholly misunderstood" before.
09/06/2009
G Summary updated
An updated version of the G summary is available for download. Changes are minor and concern among others addition of (some) keywords, correction of typo's, layout changes and introduction of references to EPC2000.
Download it here
Download it here
08/06/2009
EQETools Blog reached 1000 pageviews
Today the EQETools Blog reached a total of over 1000 pageloads.
Together with a significant number of returning visitors this strengthens me to keep going with this Blog and to further expand it with more tools, case law, articles on specific EPC topics and more ...
A special thanks to "Le blog du droit européen des brevets" for mentioning the EQETools Blog in their May 31 post !
Cheers !
07/06/2009
T 716/06: Hearing of a witness
This case concerns an opposition based on Article 100(a) wherein a lack of novelty was said to exist based on inter alia public prior use for which the opponent offered a witness to be heard.
The Opposition Division came to the conclusion that the alleged prior use was not sufficiently substantiated as to the issues what was made available to the public and when and how it was made available. The witness was not heard.
Using the words of the Board of Appeal : The Opposition division has apparently either ignored or overlooked the Opponent's offer to hear the witness named in the notice of opposition on certain details of this alleged prior use.
The Board then explains the principles regarding witness hearing with respect to public prior use :
There is normally no need for the competent department to hear a witness on an alleged prior use, if it does not evaluate differently the facts and arguments brought forward by the Opponent in support of the claimed prior use.
There is also normally no need to hear a witness to testify that an alleged prior use was made available to the public, if this alleged prior use is cited only in support of lack of novelty and the department of the EPO is of the opinion that the alleged prior use is in fact not a novelty destroying state of the art, since establishing availability to the public in that case would have no influence on the decision to be taken.
By contrast, in the present case the Opposition division was of the opinion that not only the claimed public prior use was not established but also this public prior use, even if established, would not be a novelty destroying state of the art, because the feature [..] was not disclosed therein.
However, the Opposition division did not consider the Opponent's offer to hear the same witness on these two issues.
In other words, the witness was offered to testify on those facts which specifically concerned the questions of "when and how" and "what" was available to the public, i.e. questions upon which the decision turned.
Given that hearing witnesses is one of the means of giving or obtaining evidence according to Article 117 EPC 1973, in ignoring the Opponent's request to [..] the witness, even if due to an oversight, the Opposition division has disregarded oral evidence offered on these two issues and thus, infringed the Appellant's right to be heard (Article 113(1) EPC 1973). This constitutes a substantial procedural violation.
The decision under appeal is set aside and the case is remitted to the Opposition Division.
Catchword:
If a request is made by an opponent to hear a witness on an alleged public prior use and on the disclosure of a certain feature by this prior use, the competent department of the EPO must as a rule grant this request before deciding that the alleged public prior use is neither established nor a novelty destroying state of the art because the feature in question is not found to be disclosed therein.
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