EP Patents (series 1) (do not use, not ready) Flashcards
What are the official languages of the EPO?
- English
- French
- German
A Rule 161(A) communication was issued on 21 October 2021.
a) What is the deadline for filing a response?
b) If filing an amended set of 19 claims, how many claims fees need to be paid with the response (assume no excess claims fees were paid when entering the European Regional phase
a)
21/10/2019 + 10 days = 31/10/2021
31/10/2019 + 6 months = 30/04/2022
So the deadline for responding to the Rule 161 communicaiton is 30/04/2022
b)
Excess claims fees are payable for each claim in excess of 15
19 - 15 = 4
So 4 excess claims fees are payable
EP21348231.8 was filed on 19 November 2021 and claimed priority from JP2001-342458 which was filed on 30 November 2020. No official fees were paid on filing and the specification and EP1001 form consisted of the following:
EP1001 form: 6 pages
Description: 28 pages
Claims: 4 pages (17 claims)
Abstract: 1 page
Drawings: 7 pages (8 figures)
a) What is the deadline for paying the official fees associated with filing?
b) What official fees need to be paid?
c) What is the deadline for filing a certified copy?
d) What is the deadline for filing the designation of inventor?
a)
The official fees are due 1 month from the filing date
19/11/2021 + 1 month = 19/12/2021
So the official fees are due 19/12/2021
b)
The following official fees need to be paid:
FFiling fee
E Excess claims fees x 2 (excess claims fees are payable for each claim in excess of 15)
E Excess page fees x 5 (excess page fees are payable for page of the description in excess of 35) - The EP1001 form is not taken into account for page fees
S Search fee
c) The certified copy is due 16 months from the earliest priority date
30/11/2020 + 16 months = 30/03/2022
So the deadline for filing the certified copy is 30/03/2022
d) The designation of inventor is due 16 months from the earliest priority date
30/11/2020 + 16 months = 30/03/2022
So the deadline for filing the designation of inventor is 30/03/2022
What do the following mean?
A1
A2
A3
B1
A1 Specificaiton is published with the search report
A2 Specification only is published
A3 Search report is published
B1 Granted specification is published
An Examination report was issued on 19 October 2021 and sets a 4 month time limit for reply.
a) What is the deadline for filing a response to the examination report?
b) What is the deadline for filing an extension request and how should the extension be requested?
c) What is the extended deadline for filing a response to the examination report?
a)
19/10/2021 + 10 days = 29/10/2021
29/10/2021 + 4 months = 28/02/2021
So the deadline for replying to the examination report is 28/02/2022
b)
The extension must be requested by the response date - 28/02/2022. The extension request needs to be filed in writing
c)
19/10/2021 + 10 days = 29/10/2021
29/10/2021 + 6 months = 29/04/2021
So the extended deadline for replying to the examination report is 29/02/2022
A decision to grant was issued on 18 November 2021 and sets an intended grant date of 15 December 2021.
a) What is the deadline for third parties to file an Opposition?
b) What is the deadline for validating the case in Spain?
c) What is the deadline for filing a divisional application?
a)
An opposition must be filed within 9 months from the date of grant
15/12/2021 + 9 months = 15/09/2022
So the deadline for filing an opposition is 15/09/2022
b)
The deadline for validating this case in spain is 3 months from the date of grant
15/12/2021 + 3 months = 15/03/2022
So the deadline for validating in Spain is 15/03/2022
c)
The deadline for filing a divisional is 1 day before grant
15/12/2021 - 1 day = 14/12/2021
So the deadline for filing a divisional is 14/12/2021
An EP application was filed on 5 June 2021 and the search report was issued on 8 September 2021. The application was published with the search report on 27 October 2021.
a) What actions must be performed for the case to proceed to examination?
b) What is the deadline for performing these actions?
a)
The following actions must be performed for the case to proceed to examination:
D Pay Designation fee
E Pay Examinaiton fee
V Pay Validation state fees (if validation states are selected)
E Pay Extension state fees (if extension states are selected)
RReply to the Search opinion
b)
The above actions must be performed within 6 months from publication of the search report
27/10/2021 + 6 months = 27/04/2022
So the deadline is 27/04/2022
A Rule 71(3) communication was issued on 22 November 2021 and the lauguage of the druckexemplar is English
What is the deadline for replying to the Rule 71(3) communication and what actions must be performed?
22/11/2021 + 10 days = 02/12/2021
02/12/2021 + 4 months = 02/04/2022
So the deadline for replying to the 71(3) communication is 02/04/2022.
The following actions must be performed in response to the 71(3) communiciation:
C Claim translations into the other two EPO languages (French and German)
R Reply to the 71(3) communicaiton by approving the text
E Excess claims fees - 71(3) communication will indicate if they are due
E Excess page fees - 71(3) communication will indicate if they are due
P Pay Grant & Printing fee
PCT/US2020/024531 was filed on 8 May 2020 and claimed priority from US61/231245 filed on 30/06/2019.
What is the deadline for entering the EP regional phase?
The deadline for entering the EP regional phase is 31 months from the earliest priority date
30/06/2019 + 31 months = 30/01/2022
So the deadline for entering the EP regional phase is 30/01/2022
EP1921342.0 was filed on 8 December 2020 and published on 3rd May 2021.
a) What is the deadline for paying the next renewal fee?
b) If the renewal fee is not paid on time, what is the latest date the fee can be paid with surcharge?
a)
Renewal fees are payable from the 3rd year onwards
The 3rd year renewal fee is due 08/12/2022
Renewal fees at the EPO can be paid on the last day of the month, so the 3rd year renewal fee is due 31/12/2022
b)
The renewal fee can be paid 6 months late with surcharge
31/12/2022 + 6 months = 30/06/2023
An EP examination report was issued on 8 February 2021 with a 4 month time limt. No reply to the examination report was filed, so the EPO issued a communication on 27 October 2021 indicating that the application was deemed to be withdrawn.
a) In order to continue with the applicaition, what actions must be taken?
b) What is the deadline for performing these actions?
a)
- The omitted act must be completed (i.e. reply to the examination report)
- Pay further processing fee
b)
27/10/2021 + 10 days = 06/11/2021
06/11/2021 + 2 months = 06/01/2022
So the deadline for performing these actions is 06/01/2022
The EPO issued a written decision refusing EP1832134.4 on 20 October 2021.
a) What is the deadline for filing the notice of appeal?
b) What is the deadline for paying the appeal fee?
c) What is the deadline for filing the grounds of appeal?
a)
The notice of appeal must be filed within 2 months of the decision
20/10/2021 + 10 days = 30/10/2021
30/10/2021 + 2 months = 30/12/2021
So the notice of appeal must be filed by 30/12/2021
b)
The appeal fee must be paid within 2 months of the decision
20/10/2021 + 10 days = 30/10/2021
30/10/2021 + 2 months = 30/12/2021
So the appeal fee must be paid by 30/12/2021
c)
The grounds of appeal must be filed within 4 months of the decision
20/10/2021 + 10 days = 30/10/2021
30/10/2021 + 4 months = 28/02/2022
So the grounds of appeal must be filed by 28/02/2022
EP21384201.4 was filed on 3 February 2021 and the specification only was published on 10 July 2021. The search report was issued on 1 August 2021 and the search report published on 18 August 2021.
a) What actions must be performed for the case to proceed to examination?
b) What is the deadline for performing these actions?
a)
The following actions must be performed for the case to proceed to examination:
D Pay Designation fee
E Pay Examinaiton fee
V Pay Validation state fees (if validation states are selected)
E Pay Extension state fees (if extension states are selected)
R Reply to the Search opinion
b)
The above actions must be performed within 6 months from publication of the search report
18/08/2021 + 6 months = 18/02/2022
So the deadline is 18/02/2022
