Updated PCT Newsletter summary

An updated PCT newsletter summary is available in the download section of this website. The summary contains the practical advices of all newsletters and some further information that I thought could be useful. Of course you should judge for yourself if the summary is complete enough to take to the EQE. The practical advices usually are quite good studying material. Try to answer the question yourself first before reading the answer....did you come up with the same ???

Don't forget to get yourself a copy of the excellent book on the PCT by Cees Mulder !

Updated document Implementing Regulations

The Implementing Regulations will change per January 1, 2011.

New Rule 70(b)
Amended Rule 141



NOTE: DO NOT USE THESE AMENDED RULES FOR THE EQE 2011 !!!

You can find the updated editable document in the download area, or by clicking here.

Updated G Summary available !!!

I know you have all been waiting for this and reminded me from time to time that it was still not there. I told most of you that I would post an updated version well before the EQE. Well, good news, the G Summary has been updated and is now available for download. Either go to the download pages, or click here for a direct download.

I wish you all the best for 2011 !!

PS: Note that the EQETools LinkedIN group is steadily growing. Feel free to join the group and post your questions, concerns, thoughts etc. etc.

Updated document Implementing Regulations

In view of the amendment of Rule 36 effective from October 26, 2010 an updated version of the Rules is now available for download.

Coffee break questions from the EPO

Surfing the EPO website I found a link that allows automatic e-mails be sent containing what the EPO calls "Coffee Break Questions". So far I have received two of such questions, see below for an example.

The EPO PschorrHöfe building in the Bayerstrasse (not the main building, but the one across the street) has a very nice "sky bar" for EPO employees (or lost attorneys :-)) to enjoy a good coffee after an excellent lunch. This is not the place for people wanting a quick shot of caffeine but rather a place to stay around for some time, to enjoy the view over Munich and of course the coffee.

Why am I writing this down ...

Well, first of all because the questions I have received so far are so easy that the coffee break will be very short if you focus solely on the answer of the question. However, this source of questions may nevertheless help you in your preparations by thinking bit further on the specific subject. Doing so may want you to decide to take another cappuccino. 

Question one was the following:

An invention can be patented only if it is new. What is the relevant date for determining the state of the art?

- The filing date
- The priority date
- The priority date if there is one, otherwise the filing date


The answer is not difficult, it probably takes a few seconds. However, you may want to consider the following:
- What are the other requirements for patentability? What is the legal basis ?
- What if the claimed invention is not the same invention as in the priority document?
- Following the previous question, what legal basis (Articles, Rules, Case Law) deals with the right to priority, and more specifically what is meant with "the same invention".
- What is the difference between prior art under Article 54(2) an 54(3) ? How is this related to the priority issue.
- What are the requirements for getting a filing date? Legal basis?
- etc. etc.

You can subscribe at the EQE-Online website.

Enjoy your coffee !!!

Looking for fellow EQE candidates ?

If you're looking for fellow EQE candidates and discuss about the exams, the EQE-online forum may be your choice. 

An alternative for you to consider may be the EQETools LinkedIN group that is in existing for some time now, offering you not only the chance to post your concerns, questions and thoughts but also to expand your professional network. Being a European Patent Attorney allows you to do your job in all countries of the Convention (if you would like that of course ...). So, knowing some people here and there may be beneficial for your future career. Needless to say there's a lot more advantages that the LinkedIN network has to offer.

The group is open to both EQE candidates as qualified attorneys.

You can join the group by going to the LinkedIn website and browse for the group EQETools. There you can request to join (you need to sign in first).

  

More free EQE resources

Some time ago the website www.cyberepc.com was launched. The idea behind this website is to provide an online source of information related to the EPC. Articles, Rules Guidelines and further information is all (hyper)linked so it is easy to navigate and find the provisions that you need. All that said the website was not primarily developed for EQE candidates.

CyberEPC has today expanded it's scope also to those looking for information and tools related to the EQE. You can find the "EQE Workspace" here.

A nice thing about the CyberEPC is that it is available in all three official languages of the EPC. For those wondering what these languages are, click here :-)

Have a nice weekend!

G1/09 : Refused but still pending ...

The excellent IP weblog IPKat reported the publication on the EPO register of G1/09. The summary on this weblog tells the story so I will limit this post to the decision itself:

In the case where no appeal is filed, a European patent application which has been refused by a decision of the Examining Division is thereafter pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal.

To read the whole decision, click here.

The end of Swiss type claims

In G2/08 the use of Swiss type claims was said to be no longer allowed 3 months after publication of the decision in the Official Journal.

The EPO has published a note on their website with more information, click here.
The three month period as determined in G2/08 expires January 28, 2011.


This means that Swiss type claims are no longer allowed in European aplications filed after that date, or having an earliest priority date of January 29, 2011. If any such application contains Swiss-type claims, the applicant will be invited to correct this deficiency.

The paper A tool has been corrected in view of this decision.
Read G2/08 here.

Adjustable D1 timing sheet

Apparently the timing sheets for D1 are appreciated and some people even want to have more control over the tables. Recently I received this timing sheet which offers a bit more options than the one that is already available for some time. Needless to say that passing D1 will never depend on a correct timing sheet, yet I believe it really helps in managing your time during the exams and/or your preparations.

Good luck and thanks for sending me this file !

Tool for paper B (Ch) available

Better too late than never; I've uploaded a tool for paper B (Ch). The draft has been on my computer for quite some time, but I did not take the time to update/ improve it.

The idea behind the tool is more or less the same as behind the paper A tool. That is, to have a one sheet summary of a possible workflow on tackling EQE paper B. An earlier version of this summary got me through the EQE of 2009, so at least for me it worked. That said I do advise to take a look at more elaborate articles/ books about taking paper B and above all to practice as much papers as possible.

As always, feel free to comment and/or to make suggestions
Download the tool here.

Updates

The PCT Newsletter summary and the Editable version of the EPC Implementing Regulations have been updated.

Click here for PCT Newsletter 5
Click here for PCT Newsletter6

The summary and the EPC Rules can be downloaded here.

US patent law for the EQE: A closer look at Section 102(b)

This post deals with some aspects of US Law and is based on how I understand it works.

Section 102(b) says that a person shall be entitled to a patent unless

"the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States"

This section as I understand it, although it does not say so explicitly, refers to acts by both the inventors and third parties.
An important aspect of this provision is that it refers explicitly to the "date of application for patent in the United States". This date is the actual US filing date and not the priority date in case priority is claimed from a non US patent application.

A further important aspect is that the provision allows a "grace period" of one year from "disclosure" of the invention. This grace period only applies if the disclosure was done by the inventors. Note that in case of public use, this public use needs to be in the US. So, public use outside the US does not fall under the provision of 102(b).

An interesting situation arises when the invention concerns a process and where the products from this process are sold more than one year before filing of a patent application. Here is what the Federal Circuit Court of Appeals said (D.L. Auld Co. v. Chroma Graphics Corp.):

"An inventor's commercial sale of a product produced by a novel or patentable process prior to the critical date not only results in the forfeiture of patent rights to the product itself; but, also forfeits any patent rights in the underlying process. Interestingly, if the process remains secret, however, the sale will not bar another inventor from patenting that very same process."

A nice and more complete overview can be found here:
http://www.zuberlaw.com/lawfirm/articles/protecting_your_process_patent/

So, let's consider the following example:

Product A was made using method B for a long time. At a certain moment in time method B is improved to (patentable) method B', the improvement resulting for example in a higher yield. Product A has not changed. By disclosing (for example selling) product A made with method B' in the US a one year period is triggered for filing a patent application on method B'. If this application is filed later, no valid US patent right on method B' can be  obtained.

It becomes even more interesting if method B' is carried out outside the US. Does the same reasoning as above then still apply? Unfortunately I did not get a definitive answer on that so far. However, assuming it does apply, most probably a lot of US method patents would be invalid for the reason that these are typically filed in the US near the end of the priority year (assuming the priority application was not  filed in the US). It is very likely that the inventive process is a few months older than the priority date and that some products made with this process have already been sold. Again, the catch is that 102(b) refers to a US filing date.

To overcome this potential problem one could (or should) consider filing a US provisional application a.s.a.p. after filing of the non US priority application. Doing so will result in an "early" US filing date, which by the way will also be beneficial in view of Section 102(e). (I'll come back to this provision later)

I'm not sure if you should you know all of this for the EQE, but at least I hope it is a bit more clear how this "grace period" works......

As I mentioned above, this post is based on how I understand it works. There is probably a lot more to say, so feel free to comment ...

ABC/D comprehensive by Patskills

Brian Cronin from Patskills has recently published the ABC/D comprehensive, which is available from unibook.com, click here.

Short description (copied from the Unibook website):

This book is a comprehensive analysis of the European Qualifying Exam for European Patent Attorney candidates preparing for the exam.
The book’s title alludes to the fact that paper D lays a legal foundation for the legally-oriented practical papers A, B and C.
It is designed principally for candidates who are embarking on their EQE preparations, to enable them to lay the foundations of effective exam preparation and enhance their professional performance. It will also be useful for candidates and resitters who need to review what they have achieved so far in order to consolidate and continue successfully. ABC/D Comprehensive is more than a primer to introduce beginners to the EQE. It provides a thorough understanding of the exam so candidates can orient effectively their exam preparation in order to optimize their return on the considerable investment involved.
According to the website the book costs 36 euro and probably a bit more for shipment.

Updated version of the Cross-Referenced PCT available

Please note that the 2010 edition of the book “The Cross-Referenced Patent Cooperation Treaty” has been issued. The new edition of the book has been updated taking account of the amendments of the “Regulations under the PCT” on 1 July 2010.

In the 2010-edition all references to the PCT Applicant’s Guide – International phase and the PCT Applicant’s Guide – National Phase have been renumbered in keeping with the re-structuring of the Guide by the International Bureau.

The 2010 edition of the “X-Ref PCT” is the one needed if you are preparing for the European Qualifying Examination (EQE) to be held in March 2011.

The new edition of the “X-Ref PCT” also provides reference to the Articles and Implementing Regulations of the EPC [1 April 2010], the Rules relating to Fees [1 July 2010] and to the new edition of the “Guidelines for Examination in the EPO” [April 2010] in as far as relevant for the PCT. As of 1 July 2010, the EPO will start acting as Authority competent to carry out Supplementary International Searches (SISA).


In addition, all references and appendices have been updated in the new edition.


Click here to go to the website.


Learning the PCT is not an easy thing to do. A possible (yet probably not the ultimate) way is to read the chapters on the PCT in Visser using the X-Ref PCT to actually read the articles and rules whereas you make further annotations and/or notes at the same time (both in Visser as in the X Ref PCT). Likewise it is advisable to get to know the Applicant's Guide. Learn how it's organised and learn how to use the index.

If you read through the Visser part at least once it is then also a good idea to take a look at the PCT forms  and to read/check the Articles and Rules that apply to each box in each form. Ask yourself questions like "what would happen if I tick/ untick this box", "why is this box here in the firt place", "if I make a mistake, what would happen, what would be the remedy and what do I need to do". I only found out the usefulness of doing this after having read through the part in Visser at least twice, but can really recommend doing it in an early stage. In fact doing this may even be the start of your "PCT experience".

The same basically goes for the practical advices that are published in the PCT Newsletter. Use the X-Ref PCT to follow the explanations on the subjects you find in these advices. Making notes and further annotations will help you in understanding how it all works.

Hope this helps a bit ...

Bits and pieces

T1423/07 : Double Patenting
The Blogs EPLaw and K's Law report recent Board of Appeal decision T1423/07 concerning the subject of double patenting. In reason 2.3.2 the Board basically says it will not follow the reasoning applied in T 0307/03. You may want to annotate your Guidelines, C-IV 7.4 (April 2010 version)

New Guidelines
This should be "old news", yet for those who are not yet aware : The new version of the Guidelines is available from the EPO Website, click here.
You can order a paper copy at the EPO, yet I recommend you download, print and bind it yourself as an A5 booklet, see here.

CEIPI Courses for the EQE
The Official Journal provides an overview of EQE courses that are organised by CEIPI, click here.

T 2017/07 : Extension of protection conferred

This case, which recently published, is an example of how things can go very wrong for a patent proprietor when claims directed to compositions which contain both open language (comprising) and generic terms of the "Markush type" have to be amended.

To refresh the memory, Article 123(3) EPC reads:
"The European patent may not be amended in such a way as to extend the protection it confers."

In this particular case claim 1 as granted reads:

"A hair dye composition which comprises
                 (A) an acid dye and
                 (B) an alkylene carbonate having 3-5 carbon atoms in total,
                 wherein the content of (B) is 0.5-50 % by weight
                 [..]"

During opposition this claim was amended to read :

"A hair dye composition which comprises
                 (A) an acid dye and
                 (B) an alkylene carbonate having 3-5 carbon atoms in total,
                 wherein the content of (B) is 0.5-50 % by weight,
                 the alkylene carbonate being propylene carbonate
                 [..]"

At first sight such a claim seems acceptable. However, the opponent and the Board further examined the case and found that by limiting the claim to a species of the genus "carbonate" at the same time maintaining the "comprising" language the scope of protection was in fact not limited but extended. The Board basically reasons that because of the "comprising" nature of the claim the hair dye may still contain carbonates falling within the genus "carbonate having 3-5 carbon atoms in total". As the amount of these further carbonates is not defined in the claim, one may end up with a total of "carbonate" well over 50%. This would result in a broader protection than the protection conferred by the claim as granted.

The Board of Appeal formulated the following headnote :

A composition which is specified in a claim to comprise a component in an amount which is defined by a numerical range of values is subject to an implicit proviso excluding the presence of that component in an amount outside of that range.


An amendment restricting the breadth of that component, for instance by narrowing down a generic class or a list of chemical compounds defining that component, has the consequence of limiting the scope of this implicit proviso.


A composition which is defined as comprising the components indicated in the claim is open to the presence of any further components, unless otherwise specified. In a claim directed to such an openly defined composition, the restriction of the breadth of a component present therein may have the effect of broadening the scope of protection of that claim, with the consequence that in opposition/appeal proceedings such amended claim may extend the protection conferred by the granted patent (Article 123(3) EPC).

To me the decision makes sense, but at the same time I have to admit that this is a scenario I have never considered before when drafting claims.

Article on problem-solution-approach updated

I recently updated the article on the problem solution approach in view of the new version of the Guidelines. All references to the Guidelines now apply to the April 2010 version.

Some additional remarks were added w.r.t. reformulation of the objective technical technical problem.

The article can be downloaded/viewed from the download area, or simply by clicking here.

PCT Newsletter - April 2010 (No. 04/2010)

The latest issue of the PCT Newsletter (No. 04/2010) is now available on
the PCT Resources page in:

http://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_04.pdf

Although interesting to read, w.r.t. importance for the EQE you can skip the practical advice in my view as it does not relate to the law as such but more or less is aimed at providing strategic advice for applicants. More in particular the advice is aimed at whether or not is appropriate to file a demand. I personally wonder why the WIPO decided to do this.

Anyway, I've copied the items which I think are important to the PCT summary.
- EPO will be SISA as per July 1st 2010
- Notifications by e-mail
- Example request forms
- Updated ISA and IPEA agreements
- Power of Attorney waivers

Editable copy of EPC Implementing Regulations updated

The Editable version of the Implementing Regulations has been updated. Download here directly or go to the downloads section. The update concerns the amendments that entered into force on April 1, 2010.

The following Rules were amended/ inserted :

Rule 36 (1) and (2)
Rule 57(a)
Rule 135(2)
Rule 62a
Rule 63
Rule 64, paragraph 1
Rule 69
Rule 70a
Rule 137
Rule 161

T 0961/09: Legal framework w.r.t. Article 76(1)

T 0961/09 and T 0962/09 relate to decisions by the Examining Division refusing a divisional application for non-compliance with Article 76(1). To refresh the memory, Article 76(1) reads:

A European divisional application shall be filed directly with the European Patent Office in accordance with the Implementing Regulations. It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed; in so far as this requirement is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority.

In both decisions, the Board of Appeal summarizes the legal framework with respect to this Article :

[..]

In summary, as follows from reasons 5.1 of G 1/05 (OJ EPO 2008, 271) and G 1/06 (OJ EPO 2008, 307) the main criterion for assessing compliance of Article 76(1) is essentially the same as that applied when assessing compliance to Article 123(2) EPC. 

Thus, subject-matter of the divisional must be directly and unambiguously derivable by the skilled person from the disclosure of the earlier, parent application as originally filed, as determined by the totality of its claims, description and figures when read in context. 

Moreover, it is normally not admissible to extract isolated features from a set of features originally disclosed in combination, see T 1067/97, T 714/00 or T 25/03.

Following T 770/90, an unduly broad filed claim cannot justify new feature combinations. Nor, the Board adds, can the content of a document be regarded as a reservoir for combining features from separate embodiments, see e.g. T 296/96. 

The Board further refers to decisions T 1500/07, T 1501/07 and T 1502/07 in particular reasons 2 thereof.

Although specifically directed to Article 76(1) I'd say this is a very useful summary.

The counter starts again !

In Official Journal  3, 2010 the date for the EQE 2011 has been announced. As you may have guessed, the examination starts March 1. Applications may be filed as per April 1, 2010 and have to be received by the EPO no later than July 19, 2010.

For those who sat the EQE 2010 and handed in at least one paper, you can enrol as from August 10, 2010 and your application should be received no later than September 20, 2010.

A lot more information can be found here.

Delta Patents increase their presence on the net

Following the initiative of Pete Pollard, Jelle Hoekstra, Rolf Suurmond and Joeri Beetz have joined Pete's blogging activities with respect to the EQE. The new Blogs, specifically directed to papers C and D can be found by clicking the links below :


EQE Paper C

EQE paper D

Patent Law updates


Given the high quality courses Delta Patents provide (for those wondering: no, I'm not affiliated in any way) I'm sure these Blogs will be a valuable source of information to EQE candidates.

EPC Rule changes, some comments

A number of changes to the Implementing Regulations will enter into force on the 1st of April. In a Webinar earlier today, hosted by the EPO, an overview was presented. First part of the presentation related to amended Rules 63, 64, 137 and new Rules 62a and 70a(1). The second part related to the new time limits set for filing of divisional applications.

The entire session was recorded and can be found here*.

In general, the session was well organised. The speaker, Mr Ingwer Koch, guided the participants through a presentation. By means of the chat function of WebEx attendees could submit their questions, which in turn were collected, summarised and presented by another employe of the EPO (sorry, I can't find his name anymore) to Mr. Koch directly. Worked really well!

Concerning the contents, some remarks by Mr. Koch:

New Rule 62a(1) relates to a situation where there are multiple independent claims in one category.
Applicants should seriously pay attention to Rule 137(5) as in force from April 1st, 2010. More in particular, when the applicant receives a communication under new R62a he is strongly advised to indicate which subject matter he wants to have searched. Not doing so will result in only the first claims of a category being searched. If the applicant later on realises that he in facted wanted other claims to be searched he cannot amend his case accordingly because of Rule 137(5). The only option would be to file a divisional application. If no attention is paid to the new time limits in place, this could result in a loss of protection for certain subject matter. In the words of Mr. Koch "The applicant ends up having nothing ..."

The same goes for amended Rule 63 (the EPO refers to this Rule as being applicable to complex applications): Applicants are strongly advised to indicate and explain the subject matter they want to have searched. No search means it is impossible to later on amend the case to such subject matter.

New Rule 70a EPC forces applicants to file a response to the search opinion in case this opinion is "negative". Negative (at least that's how I understood it) means the application does not fulfill the requirements of patentability. This includes all requirements (so not only novelty/ inventive step). I have not seen a lot of cases where the opinion does not have a single objection, so in practice every opinion probably needs to be replied to. Mr. Koch explained that the EPO expects a reply similar to a reply that is expected in response to an Article 94(3) communication (which makes sense as far as I'm concerned).

In case of Euro-PCT applications where the EPO was ISA (and IPEA) a reply to the WO-ISA (or IPER) is likewise obligatory. The time limit is 1 month from the Rule 161(1) communication, so more or less about 6 weeks after expiry of the 31m period for regional entry. Applicants that use Euro-PCT route for "buying time" will probably not like this Rule very much. For example, if the decision for European entry is only taken at the end of the International Phase, applicants only have a quite limited time for preparing an answer to the WO-ISA or WO-IPER.

Finally (for this post) Rule 137 will include a new paragraph which forces applicants to indicate the basis in the application as filed. Non- compliance may result in an invitation to correct. I think such a rule makes sense as it helps applicants to check their amendments in view of Article 123(2). For most attorneys/ applicants this new paragraph will probably not change the way they work drastically.

With respect to divisionals Mr. Koch gave some examples explaining how it will work, I think the presentation (see below) speaks for itself.


The presentation can be found here.


* The link may be temporary, please let me know if it no longer works.

Comments on EQE 2010 Paper A Chemistry Part I

I have studied paper A 2010 (Chemistry) recently, first of all to see if the method you can download from this website still would have worked and secondly to see what the paper was all about. I did not draft any claims, yet wrote down in general which claims I think were expected.

After having done so I checked the eqe-online forum and found out there was quite some discussion going on about what should be claimed. Below my personal opnion and some thoughts on this. I'll probably post some more on this paper later.

In his letter, the client indicates that he would like to have protection not only to the specific invention described but that he would also like coverage for any other application that may be envisaged in the future. The client does not give any example of such a possible other application.

The letter then continues by stating the main problems of the known bio-active glasses:

- known glasses need to be ground, which results in
            o non uniform particles; some of them are too large
            o irregular in shape
            o random arrangement encourages irregular bone structure
            o use of powder may be dangerous

- known glasses cannot be drawn into fibres easily and fibres not very well absorbed in the bone

The basic idea of the invention resides in the finding that certain compositions were found that in fact can be drawn in fibres easily and that these fibres (when cut) are very suitable for ossification.

(Note that the client does not mention anything about grinding the “inventive” composition, he only talks about making the fibres!)

The prior art consists of two small documents, D1 basically corresponding to what the client already described in the letter. D2 also discloses glass compositions, but does not mention anything about the use  thereof as bioactive material.

Unfortunately (?) D2 discloses compositions that fall in the range of compositions that were found to be suitable by the client. In fact, D2 discloses the exact same compositions as in the examples provided by the client.

Thus, a composition can not be claimed as it is not novel over D2.

There is an interesting discussion on the eqe-online forum where some people are of the opinion that it was possible to add a disclaimer, thereby disclaiming the D2 compositions. Ocassionally reference is made to G1/03.

My personal opinion is that introduction of a disclaimer is incorrect:

- With respect to G1/03 it is noted that this decision relates to amendments. More in particular, the decision sets out the criteria to be met when amending an application by introducing an “undisclosed disclaimer” without offending against Article 123(2). Obviously when you are drafting a patent application you are not amending anything so that these criteria don’t apply and G1/03 is not so relevant at all. (You can disclaim anything you like in an application; it will by definition be a “disclosed disclaimer”.)

So, the argument that "D2 is from a totally remote field" is in my view irrelevant for arguing the introduction of a disclaimer.

- More importantly, D2 clearly discloses “compositions around compositions 1-3”. This means in my opinion that D2 not only discloses the compositions 1-3 but also compositions that are “close”. So, a disclaimer disclaiming the three compositions from D2 only would arguably be insufficient to create novelty over D2. The result is a strange situation where you cannot really disclaim what D2 discloses. To me this was a clear pointer that a disclaimer is not what the exam committee is looking for.

- Further to this the compositions of D2 are exactly the same as the compositions according to the client's examples. This again is (in my view) a hint that a disclaimer is not appropriate.

In this respect it is finally noted that (although not explicitly mentioned as far as I know) the composition as such only solves the technical problem of being able to be drawn into fibres more easily. All the other technical problems mentioned above seem to be solved only by making fibres from the compositions first.

All in all, I don’t think you could have claimed a composition.

(As a general comment I can add that I found this paper a bit more difficult than the paper of 2009.)

PCT Procedures and Passage into the European Phase: 2nd edition available

Peter Watchorn and Andrea Veronese brought to my attention that as of March 2010 the second edition of their book "PCT Procedures and Passage into the European Phase" is available. 

Peter and Andrea wrote the following :

This second edition of "PCT Procedures" incorporates and explains all legal changes which came into force for the EPC and the PCT since the first edition of this book was published in 2006 (including, in particular, the coming into force of the EPC-2000). 

It also pre-empts changes to the EPC and the PCT which will comeinto force in 2010 (on 1 April and 1 July respectively). It explains in particular the changes regarding the limitation of supplementary searches in the European system, changes to the filing of divisional applications (relevant to non-unitary cases entering the European phase from the PCT) as well as changes to the procedures for making and indicating amendments in the EPC and the requirement to reply to EPO opinions or reports after entry into the European phase. 

Likewise for the PCT, the new Supplementary International Search, new procedures for the acquisition of a filing date and the late filing of application documents in the PCT as well as new procedures for correcting application documents are also explained in detail.

More information can be found on their website : http://www.pct-compass.com/

More links to study material can be found here.

PCT Newsletter - March 2010 (No. 03/2010)

The latest issue of the PCT Newsletter (No. 03/2010) is now available on the PCT Resources page in:
PDF at: http://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_03.pdf

I've copied the (in my opinion) most interesting parts w.r.t. the EQE to the summary available here.

Feedback please !

Now that the EQE 2010 is over the long wait for the results has started. I hope you did well last week.

Since yesterday, the EPO has made the papers available on their website, click here.

By means of this post I'm kindly asking the ones who have taken the exams (if anyone of you still visits this website...) whether or not you used any of the tools, and if they were useful or not. Any feedback is welcome !!

Please reply either by posting a comment or by sending me an e-mail directly.

Good luck !!!

To all of you who will be sitting the EQE next week :


Good Luck !


Bonne Chance !


Viel Erfolg !



Don't forget to relax over the weekend. Go to a nice restaurant, do something fun with your children, anything to keep your mind of the EQE for at least a day.......Believe me, it helps!

PCT Newsletter - February 2010 (No. 02/2010)

http://eqetools.blogspot.com/2009/06/downloads.htmlThe latest issue of the PCT Newsletter (No. 02/2010) is now available on the PCT Resources page in:

PDF at: http://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_02.pdf
HTML at: http://www.wipo.int/pct/en/newslett/

The PCT summary will be updated soon (I'm a bit behind with the summaries, sorry for that..)

Download summaries here.

Undisclosed disclaimers, an overview of how G1/03 and G2/03 are applied

In the recent EPI Information (4/09) Andrew Rudge wrote a very interesting article titled

"The art of gracefully renouncing what's not yours - how the Boards of Appeal have applied G1/03 and G2/03 in practice".

The article gives a nice overview of  the case law with respect to undisclosed disclaimers after G1/03 and G2/03. I've said it before, but I'll repeat it yet again, the C committee may be inspired by the very strict manner in which the Enlarged Board decisions are applied and someday may introduce a claim containing an undisclosed disclaimer into the C paper. Maybe it's worth taking this article to the exam, you never know....

Read the article here

Modified Timing Sheets for D1

Under the "3rd party tools" in the download section you can now download a modified timing tool for D1 which was submitted earlier today by one of the readers of this Blog. The difference with my own version is that the timing has been set to 4 minutes per mark which is stricter than in the exam itself (where it is four and a half minute). In an additional column you can see how much "extra" time you will have. Using the words of the person that submitted this tool  "this additional time is the time that you can still comfortably consume without having problems to finish D1." 


Although time management is important for D1, the timing tools are not to be used as a strict guidance. Don't forget that some questions just take longer to answer than others...

Click here to go to the downloads ...

EQE Problem solution approach

In the B and C exam you are tested for your abilities to apply the problem-solution approach in the correct manner. Basically the Guidelines explain how this approach works, yet it is quite compact and may even confuse you. In an effort to make it more understandable I've compiled an article which divides the problem solution approach into smaller steps. This article is the result of my own notes, the way I was taught how to do it, the Guidelines and some case law references. You will notice that the Guidelines, especially part C-IV 11.7 is basically split up and repeated.

Give it a try and provide me with some feedback on how to further improve this article.

Download here.

PCT Newsletter - January 2010 (No. 01/2010)

The latest issue of the PCT Newsletter (No. 01/2010) is now available on the PCT Resources page in:

PDF at: http://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_01.pdf
HTML at: http://www.wipo.int/pct/en/newslett/

For the EQE there is an interesting item with respect to the material you should (?) take to the exam. The PDF's are about 1700 pages in total, so think carefully before you hit the "print" button. The key question you will have is whether or not to take these documents to the EQE.

I don't think anyone can give you a clear answer on that. However, you could ask yourself how much marks you will loose if you don't know the specific detail that the specific D question asks for. In addition, if you don't know your way around this huge document it is pointless printing it out and carrying it to the EQE.

So, not much of a help from my side so far.

For what it's worth, I did not bring it along last year. I merely copied the relevant information for the countries that I thought could be part of a question (EP, US, JP, CN) only to find out that I did not even need that....

I personally find it absurd that candidates should print so many pages and wonder why the Examination Committee does not limit the scope to only a small selection of countries/regions. It's all about knowing the principle rather than being able to find out pecularities of how the PCT is implemented in Zimbabwe for example isn't it .....

I'll update the PCT Summary 2010 shortly and post a link in the downloads section


Update : Pete Pollard has made a summary of PCT material to take to the EQE, click here.

Editable version of the Implementing Regulations

An editable version (in English) of the Implementing Regulations is available for download.

Click here for a direct download.

Or click here to find it in the download section.

If you have no idea why this document is available you probably don't need it :-)
That said, still a lot of people want to make their own annotated version of the EPC. This download will hopefully be of use to them.

As always, I tried to make the document as clean and accurate as possible. If nevertheless you find some errors please let me know either by e-mail or by posting a comment.

Note that this specific version concerns the Rules as in force on 31/12/2009. The major amendments that will enter into force on April 1st 2010 are NOT included. I will make a seperate version in the course of this year.

Happy New Year !!

To all of you reading this Blog every now and then, let me start this first post of the year by wishing you all the best for 2010! For those doing the EQE 2010, good luck in these last +/- 2 months.

Looking back at 2009 I can only conclude that it has been a remarkable, interesting an succesful year.

Succesful in the sense that I (contrary to my expectations) passed the EQE.

Interesting in the sense that I've found a way to stay up-to-date with what's going on at the EPO that is useful not only for me yet may also be of interest to others.

Remarkable in the sense that I did not expect that the Blog would receive so many pageloads as illustrated below. From the very beginning in April 2009 until October 2009 the number of monthly pageloads has increased significantly to a total number of about 27.000. The small drop in November and December is clearly related to the number of posts, which decreased over the last two months. Overall, I'm very happy with this result.

In addition, the Blog now has

34 E-mail subscriptions
69 RSS subscribers


2010 will hopefully be even more interesting; at least the following can be expected:

- Significant layout changes
- A/B Tools will be updated
- Up-to-date editable version of the EPC Articles and Rules available
- OJEPO and PCT summaries will be moved to the Google Docs platform
- More articles, more case law discussions
- ....

Cheers !!