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.