Quiz Qs Flashcards
In which of the following situations will the European Patent Office accord a date of filing?
Select one or more:
A. Filing with the EPO in Munich a handwritten document with a statement saying “Request for grant of a European patent”, a three-page description, two claims, and a full name and address of the applicant.
B. Filing by fax a machine typed document where the fax cover sheet indicates “European patent application” with a 20-page description and no claims [and the fax number allows the applicant to be contacted].
C. Filing by fax a machine typed document indicating the full name and address of the applicant, who is a US citizen and resident, stating that a European patent is sought, and the following statement: “reference is made to a US application that I myself filed on 1 May 2012 with the USPTO. I wish this US application to replace the description of the present application. I will gladly provide a certified copy of the US application upon request”. A set of 15 claims is also added.
D. A filled out EPO Form 1001, put in the mailbox at EPO in Munich, with a title, 5-page description in font size 6 printed horizontally on both sides of A3 paper, 156 claims, a 4-page abstract and 7 colour drawings. No fees were paid.
A, B and D
A. Filing with the EPO in Munich a handwritten document with a statement saying “Request for grant of a European patent”, a three-page description, two claims, and a full name and address of the applicant.
B. Filing by fax a machine typed document where the fax cover sheet indicates “European patent application” with a 20-page description and no claims [and the fax number allows the applicant to be contacted].
D. A filled out EPO Form 1001, put in the mailbox at EPO in Munich, with a title, 5-page description in font size 6 printed horizontally on both sides of A3 paper, 156 claims, a 4-page abstract and 7 colour drawings. No fees were paid.
A patent application is filed at the EPO late in the evening of Friday, 21 October 2011, which is not an EPO holiday, claiming priority of an earlier national patent application dated Thursday, 21 October 2010 (also not an EPO holiday). The first 25 pages comprising part of the description are received via the fax at the EPO before midnight whereas the remaining 4 pages containing the description of the developments made during the priority year and the claims are received after midnight at the EPO.
What will happen with the application? You may wish to read Special Edition 3, OJ EPO 2007, A.3 (reprinted at Special Edition 3, OJ EPO 2010, 15) before answering this question.
A. It will keep the priority of 21 October 2010 if the applicant keeps all pages.
B. The filing date will be 22 October 2011 if the applicant drops the last four pages.
C. It will lose the priority of 21 October 2010 if the applicant keeps all pages.
D. The filing date will stay 21 October 2011 if the applicant keeps all pages.
C. It will lose the priority of 21 October 2010 if the applicant keeps all pages.
Which of the following situations will lead to a filing date of 3 November 2011?
Some other documents were filed on 3 November 2011 but:
A. The description, claims and drawings were filed in English on 2 December 2011 together with the Request for Grant form on which there is no indication of the applicant or the inventor, only the full name of the professional representative is provided.
B. The description, claims and drawings were filed by a Latvian applicant, using the Request for Grant form to indicate the applicant’s name and address, in Latvian on 3 November 2011, a translation of all the documents into German was filed on 12 December 2011.
C. The application was filed in English, using the Request for Grant form to indicate the applicant’s name and address and consists of a description of the invention and drawings but no claims on 3 November 2011. A set of claims for the application was filed on 4 January 2012.
B. The description, claims and drawings were filed by a Latvian applicant, using the Request for Grant form to indicate the applicant’s name and address, in Latvian on 3 November 2011, a translation of all the documents into German was filed on 12 December 2011.
C. The application was filed in English, using the Request for Grant form to indicate the applicant’s name and address and consists of a description of the invention and drawings but no claims on 3 November 2011. A set of claims for the application was filed on 4 January 2012.
Which of the following do not belong to the formal deficiencies that can be objected to after accordance of a filing date?
A. A missing designation of the inventor.
B. A missing request for grant form.
C. A missing abstract.
D. A missing set of drawings.
D. A missing set of drawings.
A European patent application was accorded a date of filing. The patent application comprises 45 pages, which includes a 1-page abstract and 20 claims.
Which fees must be paid if the applicant does not want to receive any invitations to correct deficiencies or communications from the EPO?
A. Page fees for ten pages, search fee, filing fee and five claim fees within one month from filing.
B. The search fee, filing fee within one month and the page fees for ten pages, five claim fees within two months from filing.
C. The search fee, filing fee within one month from filing and five claim fees within two months from filing.
D. Page fees for nine pages, claims fee for five claims, the search fee and the filing fee within one month from filing.
A. Page fees for ten pages, search fee, filing fee and five claim fees within one month from filing.
European patent application EP1 was filed with 15 claims. Two claims were added during examination. The applicant has received a communication under Rule 71(3) EPC, and the “Druckexemplar” includes claims 1-17.
Which of the following statements is correct?
A. Failure to pay the additional claims fees results in claims 16-17 being deemed abandoned.
B. Failure to pay the additional claims fees results in the application being deemed withdrawn.
The correct answer is: B Failure to pay the additional claims fees results in the application being deemed withdrawn.
The application is deemed withdrawn pursuant Rule 71(7) EPC. The loss of rights will be notified according to Rule 112(1) EPC, and can be remedied by requesting further processing under Article 121 EPC.
The examining division has decided to grant a European patent based on European patent application EP1. The decision is based on claims 1-10. The mention of the grant in respect of EP1 has just been published. On the same day, the specification of the resulting European patent was published (B1-document). A few days later you discover an error in the wording of claim 1 in the published patent specification: The last two lines of claim 1 of the B1 are missing compared to claim 1 on which the decision to grant was based.
Which of the following statements is correct?
A. As the European Patent Office is no longer responsible for the European patent after grant, correction of the error can only be performed with the national offices of the contracting states in which the patent has been validated.
B. The correction of the error is possible by filing an appeal against a decision to grant. The patentee is adversely affected by the error and may thus appeal.
C. Correction of the error is not allowed if the correction would extend the scope of protection compared to the scope of the claims published in the B1 document.
D. The mistake has no effect on the content of the patent granted.
E. Correction of the error restarts the opposition period.
The correct answer is: The mistake has no effect on the content of the patent granted.
The mistake has no effect on the patent as granted, since the text of the published patent has no legal consequence or binding character, both the latter being determined by the publication of the mention of the grant in the European Patent Bulletin and the “Druckexemplar” as the authentic text (Article 98 EPC) (see also GL C-V 10). Only the text on which the decision to grant the patent is based, the “Druckexemplar”, is decisive (see GL H‑VI, 4). Thus, mistakes in the specification of a European patent arising in the course of its production have no effect on the content of the patent granted.
N.B. We now have decision G 1/10. Previously, it was attempted to apply Rule 140 EPC analogously for corrections of patent publications although this rule relates to errors in decisions. This is no longer possible. Rule 140 EPC is not available to correct patents (compare T 0802/10).
Corrections of patent documents are admissible only under Rule 139 EPC until the patent is granted and as long as proceedings are pending (see GL H‑VI, 2.2.1; GL H-VI, 3.1). After this point in time, only errors in bibliographic data or printing errors may be corrected (see GL H‑VI, 6 and 3.2 and 3.3).
If necessary, the EPO may arrange for the correction to be made public as soon as any mistake in a specification is discovered. This is done by means of a note in the European Patent Bulletin and publication of a corrigendum, the sole purpose being to bring the specification into line with the content of the decision to grant (see Rule 143(2) EPC and the Decision of the President of the EPO dated 14 October 2009, OJ EPO 2009, 598, Art. 1, point 2).
Errors of this kind can be corrected at any time (see also GL C‑V, 10). A complete republication of the patent specification will take place where appropriate (see GL H‑VI, 6).
This has no influence on the opposition period which is triggered by the publication of the mention of the grant, not by the publication of the B1 document (Article 99(1) EPC; T 1644/10).
European patent application EP1 was filed 17 months ago without claiming priority. EP1 is validly pending. Last Wednesday you received a communication from the EPO informing you that the technical preparations for publication of EP1 have been completed and that the application will be published a few weeks from now.
True or false: There still a chance that publication of EP1 may be prevented. You may wish to read decision J 5/81 before answering this question.
The correct answer is ‘True’.
If after termination of the technical preparations the application is withdrawn to avoid publication, non-publication cannot be guaranteed (Rule 67(2) EPC). The EPO will try (in accordance with the principles of J 5/81, OJ EPO 4/1982, 155) to prevent publication on a case-by-case basis if the stage reached in the publication procedure permits this reasonably easily (GL A-VI, 1.2). The President of the European Patent Office has determined when the technical preparations for publication are deemed to have been completed (Rule 67(1) EPC; which is at the end of the day that comes five weeks before expiry of the 18 month from the filing date or earliest claimed priority date (Dec. of Pres. Spec. Ed.3 of OJ EPO 2007, D1). Even after the five weeks period has expired, there is still the possibility, but no guarantee, that publication can be prevented.
The examination fee in respect of European patent application EP1 has been paid upon filing. On the request for grant form, the box indicating that the applicant has waived his right to receive a communication according to Rule 70(2) EPC has been crossed. The applicant has received a communication under Rule 71(3) EPC together with the European search report.
True or False: The applicant has the right to amend the claims of his own volition at this stage.
The correct answer is ‘True’.
Article 123(1), last sentence, EPC gives the applicant the right to amend the application at least once of his own volition (GL C-III, 2).
Before receiving the European search report, the applicant may not amend the application (Rule 137(1) EPC).
When receiving the Search Opinion accompanying the European search report, the applicant is given the opportunity to file comments, corrections or amendments (Rule 70a(1) EPC). This is the ONLY opportunity to file amendments of his OWN volition (Rule 137(2) EPC). No further amendments may be made without consent of the examining division (Rule 137(3) EPC), although generally such consent will be given if this brings the application closer to grant.
When the request for examination is filed early, i.e. the examination fee was paid before receiving the search report, the applicant will receive a communication under Rule 70(2) EPC. The search division then normally invites the applicant to confirm whether he wishes to proceed further with the application and file voluntary comments/amendments on the attached opinion under Rule 70a EPC. However, if the applicant has waived the Rule 70(2) EPC communication, no search opinion is prepared. Instead the application goes straight to examination and the first substantive examination is the Art. 94(3) EPC communication or Rule 71(3) EPC).
Because, in the case of the question, the applicant has waived his right to receive the Rule 70(2) EPC communication, the European search report accompanying the Rule 71(3) EPC communication allows him to file amendments of his own volition even at this late stage of the proceedings and despite the application being ready for grant (See GL C-VI, 3 and C-III, 2).
This is regulated by Rule 70a(2) EPC. Accordingly, the EPO is obliged to give the applicant the opportunity to comment on the extended European search report and, where appropriate, invite him to correct any deficiencies noted in the opinion accompanying the European search report and to amend the description, claims and drawings within the period specified for indicating whether he wishes to proceed further with the application.
A waiver of the Rule 70(2) EPC communication is thus a waiver to be asked about continuation of proceedings, and should not be misinterpreted as a waiver of the right to file voluntary amendments under Article 123(1), last sentence, EPC.
After responding to the communication pursuant Rule 161(1) EPC in respect of a Euro-PCT application where the EPO acted as IPEA, the applicant withdraws the application. The examination fee was duly paid upon entry into the European phase.
Which of the following statements is correct?
A. 75% of the examination fee will be refunded if substantive examination has not yet started.
B. The examination fee will be fully refunded if substantive examination has not yet started.
C. No refund is possible.
The correct answer is: B, The examination fee will be fully refunded if substantive examination has not yet started.
The examining division has resumed responsibility as from the request for examination (Rule 10(2) EPC), however, under the new revised rules (OJ EPO 2016, A48), the decisive condition is whether the examination itself has started or not.
If substantive examination has not yet started, the applicant is entitled to a 100% refund (Article 11(b) RFees; and Decision of the Administrative Council of 29 June 2016 amending Article 11 of the Rules relating to Fees, OJ EPO 2016, A48).
The date of start of examination (GL C‑IV, 7.1 – old GL version still online 01 June 2020) is indicated by means of the European Patent Register after publication of the patent application. Recently, the EPO has decided to stop issuing EPO Form 2919 as of 1 February 2020. The Office will continue to publish the date of the start of examination in the public part of the file, so it will still be available for file inspection in the European Patent Register after publication of the patent application. Before publication, the Office will provide applicants with the relevant information at their request, or else they can access this information online via the My Files service.
If substantive examination has started and also before expiry of the time-limit for responding to the first Art. 94(3) EPC communication or issuing of a Rule 71(3) EPC communication, an amount of 50% can be refunded (GL A-VI, 2.5).
True or False: The time limit for responding to a communication under Rule 71(3) EPC is extendable.
False. This is not an office time limit, but a time limit of four months from notification of the communication, which is specified in the Implementing Regulations (Rule 71(3) EPC). Hence, it is not extendable. Failure to meet the time limit will lead to the application being deemed withdrawn under Rule 71(7) EPC. This can be remedied by requesting further processing under Article 121 EPC and paying the fee for grant and publishing and providing a translation of the claims plus the further processing fee; or requesting grant on the basis of a different text.
One month after receipt of a communication under Rule 71(3) EPC, the applicant requests oral proceedings. No oral proceedings have yet been held in respect of the European patent application, but the examining division does not believe that a discussion during oral proceedings would be expedient.
True or False: The examining division can refuse this request.
False. No, the applicant has the right to oral proceedings (Article 116(1) EPC; GL E-III, 2). The request must be made prior to the termination of proceedings which occurs three days prior to the date stamped on the Decision to Grant (T 556/95 r.6 and G 12/91 r.9).
Side note: In T 2573/11, the three-day rule of G 12/91 was not maintained and the document was marked “to EPO postal service” at the bottom of the letter with a different date that was earlier than three days before the date stamp on the communication. In this case, the Board argued that the actual day of hand-over to the postal service is decisive.
During substantive examination the applicant of European patent application EP1 has received a second communication pursuant to Article 94(3) EPC.
In this and the earlier communication under Article 94(3) EPC (as well as in the European search opinion), only clarity and sufficiency of disclosure have been discussed. Oral proceedings have not been requested.
The applicant responds to the communication presenting arguments in support of clarity and sufficiency of disclosure. The first examiner finds the applicant’s arguments convincing, but he regards document D1 from the European search report as clearly novelty destroying.
True or False: The examining division can refuse the application on the basis of lack of novelty without issuing a further communication under Article 94(3) EPC.
False. No, the examining division may only base a decision on grounds on which the applicant has had an opportunity to comment (Article 113(1) EPC). The examining division may issue an immediate refusal after a first communication, but this must be based on grounds on which the applicant has had an opportunity to comment (GL C-IV, 3).
If examination of the applicant’s reply shows that despite his submissions objections persist, and provided that at least one communication has been sent in examination proceedings (see GL C-III, 4 and E-IX, 4.1) and the applicant has been given the right to be heard (Art. 113(1) EPC), i.e. the decision is based solely on grounds on which he has had an opportunity to comment, the examiner will consider recommending to the other members of the examining division that the application be refused (see T 201/98). However, where there is a reasonable prospect that an additional invitation to overcome the objection(s) could lead to the grant of the application, the examiner will send a further written communication or contact the applicant by telephone. The examiner may also make suggestions on how to overcome the raised objections (see GL B-XI, 3.8, and C-III, 4.1.2).
European patent application EP1 is validly pending at the European Patent Office. A communication under Article 94(3) EPC was issued on 15 April 2016 in which applicant is requested to bring the description in conformity with the amended claims that have been accepted for grant. The time limit for filing a response is set at two months. The applicant is preparing replacement sheets of the description by introducing handwritten amendments.
Do the replacement sheets fulfil the requirements of the EPC?
No. Rule 49(8) EPC stipulates that the request for grant of a European patent, the description, the claims and the abstract shall be typed or printed, and that only graphic symbols and characters and chemical or mathematical formulae may, if necessary, be drawn or written by hand (GL A-IX, 11.1). Therefore, also any replacement documents must be typed or printed too (R. 50(1) EPC). Thus, replacement sheets with handwritten amendments do not fulfil this requirement.
Handwritten amendments by the applicant to the description, claims and abstract (unless they involve graphic symbols and characters and chemical or mathematical formulae) are no longer accepted in strict compliance with Rule 50(1) EPC in conjunction with Rule 49(8) EPC (see OJ EPO 2013, 603, and GL A-III, 3.2). For the procedure to follow in oral proceedings, see GL E-III, 8.7.3 (also GL C-V, 3).
European patent application EP2 is validly pending at the European Patent Office. The examining division is not prepared to grant a patent and therefore the applicant has been summoned to attend oral proceedings. During oral proceedings which take place on 15 April 2016, the applicant submits a new set of amended claims that can be accepted by the examining division. In the new set of amended claims the applicant has indicated the changes by introducing handwritten amendments.
Do the documents with handwritten amendments fulfil the requirements of the EPC?
No. Rule 49(8) EPC stipulates that the request for grant of a European patent, the description, the claims and the abstract shall be typed or printed, and that only graphic symbols and characters and chemical or mathematical formulae may, if necessary, be drawn or written by hand. Replacement sheets with handwritten amendments do not fulfil this requirement.
In examination, the formal requirement of Rule 49(8) EPC applies to documents submitted during oral proceedings as well. Documents containing handwritten amendments will normally be accepted by the division as a basis for discussion during oral proceedings until agreement is reached on the final text of the patent. However, a final decision granting a patent may be taken only on the basis of documents which are formally compliant (GL E-III, 8.7.1)
In the decision of 14 October 2015, Rule 82(2) EPC was amended so that documents with handwritten amendments could be submitted in oral proceedings in opposition and opposition appeal proceedings (Decision of the Administrative Council of 14 October 2015 amending Rule 82 EPC, OJ 2015, A82, and Notice from the European Patent Office dated 9 March 2016 concerning amended Rule 82 EPC, OJ 2016, A22). Amended Rule 82(2) EPC does not apply to documents submitted during oral proceedings before an examining division.
Whereas the formal requirement of Rule 49 EPC apply to documents submitted during oral proceedings during examination, in practice such amendments may be accepted by the examining division, in which case the applicant will be invited to file the submissions in typed or printed form within two months. For further details, see GL E-III, 8.7.
An applicant receives a communication under Rule 71(3) EPC dated 9 June 2016. When reviewing the text intended for grant, the applicant discovers a typing error in claim 1. The applicant wishes to file a request for correction in order to have the typing error corrected, but he also wishes to obtain a patent as soon as possible. The applicant knows that if he files a request for correction in response to the Rule 71(3) EPC communication, then the EPO shall issue a new communication under Rule 71(3) EPC before the decision to grant can be issued.
Is it possible for the applicant to avoid that the EPO issues the further communication under Rule 71(3) EPC?
Yes. Since 1 July 2015, the EPO has offered applicants the option of expressly waiving their right to receive a further communication under Rule 71(3) EPC (notice of allowance) aiming to increasing procedural efficiency (see OJ EPO 2015, A52).
However, as of May 2020 and following consultation with users and the fact that applicants very rarely make use of the waiver procedure, the EPO has decided to abolish the waiver option and so always to establish approval of the text intended for grant in accordance with the procedure laid down in Rule 71(6) EPC.
Consequently, the EPO will no longer process waivers which are filed in response to a communication issued on 1 July 2020 or later informing the applicant of the text intended for grant, i.e. the option to waive the right to a further communication under Rule 71(3) EPC is no longer be available. Waivers which are filed in response to such a communication dated before 1 July 2020 will, however, still be processed (see notice from the EPO dated 26.05.2020: OJ EPO 2020, A73).
A PCT application was filed on 10 January 2014 without claiming priority from an earlier application. The PCT application entered the European regional phase on 7 July 2016. Applicant wishes to validate the Euro-PCT application in Moldova.
Is it possible for the applicant to validate the Euro-PCT application in Moldova?
No. The agreement on the validation of European patent in Moldova entered into force on 1 November 2015 and applies to any European or international patent applications filed on or after that date. The Euro-PCT application was filed on 10 January 2014, which is before 1 November 2015, and therefore it is not possible to validate the Euro-PCT application in Moldova (Decision of the President of the European Patent Office dated 1 October 2015 fixing the amount of the fee for validating European patent applications and patents in the Republic of Moldova, OJ EPO 2015, A84, and Validation of European patents in the Republic of Moldova (MD) with effect of 1 November 2015, OJ 2015, A85).
