Wording 1-4

Question 1

Notice of opposition (formal data)

Answer 1

Notice of opposition (use as heading)

Patent opposed (R76(2)):
Patent number
Title
(application number)
(date of grant)

example:
Patent opposed: EP1 861 768 B1, Application No. 07017201.3, granted on 18.06.2008, entitled “Table for heating pre-cooked food”

Proprietor of Patent R76(2):
Name
example: Volley, Inc.

Opponent (R76(2), R41 2(c)):
Name (family name, given name) (default is the company not the person who signed the letter)
Address
State of Residence / principle place of business
Nationality

example: Alassi SPA, of Italian nationality, Via Genova 6, I-34121 Trieste, Italy

Representative R76(2):
Name (family name, given name)
Address
No authorisation required.
example: Representative: Alain Le Grand, European Patent Attorney, of 15, rue des Chapeliers, F-22300 Lannion, France (no authorisation required)

I hereby effect payment of the opposition fee via my deposit account number XXXX.

Opposition is filed against claims X to Z of the patent (e.g., the claims given in first part). Update for second part.
*Repeat in Part 2

Opposition is based on the grounds of A100(a), (c) EPC. Update in second part.

example: Opposition is based on: Art 100(a) in conjunction with Art. 54 (lack of novelty); Art 100(a) in conjunction with Art. 56 (lack of inventive step); and Art 100(c) (added subject matter).
*Repeat in Part 2

Signature of Representative (used in paper, not your name):
/name of attorney in paper/
14 March 2024 (date)

*Include in Part 1 and Part 2

Question 2

Claim objects - optional features

Answer 2

Like: “preferably”, “particularly”, “for example” (p188 Visser – check for 2022 )

Attack claim without (claim … a) and with (claim … b)

Carry over to any dependent claims – also attack them with and without optional feature:
claim …+1 becomes claim …+1 a and claim … +1 b.

GfE F-IV 4.9 Optional features recites “Optional features, i.e. features preceded by expressions such as “preferably”, “for example”, “such as” or “more particularly” are allowed if they do not introduce ambiguity. In such a case, they are to be regarded as entirely optional”.

Claim X has two optional features in that Y refers to Z as being [preferably], [particularly], [for example], Z. The term [preferably], [particularly], [for example] is commonly known as an optional feature (see GfE F-IV 4.9 Optional features) and should be considered to be non-limiting.

Question 3

Claim objects - alternatives

Answer 3

Comprising X or Y - Attack claim w/X (claim … a) and w/ Y (claim … b)

If “and/or”, there is a third scope to attack: w/ X&Y (claim … c)

Carry over to any dependent claims:
claim …+1 becomes claim …+1 a and claim … +1 b, etc.

Claim X has two alternatives in that the Y can be Z or A. I will refer to claim X wherein the Y is Z as claim XZ and wherein the Y is A as XA.

Similarly claim B when dependent on claim XZ is claim BZ and when dependent on claim XA is BA.

Claim X has three alternatives in that the Y can be Z and/or A. I will refer to claim X wherein the Y is Z as claim XZ and wherein the Y is A as XA and claim XZA wherein the Y is Z and A.

example: “Claim 4 has two alternatives in that the housing material can be ceramic OR plastic. I will refer to claim 4 wherein the housing is ceramic as claim 4c and wherein the housing is plastic as 4p. Similarly claim 5 when dependent on claim 4c is claim 5c and when dependent on claim 4p is claim 5p.”

Range with two dates – G1/15 (2021pp)

Question 4

Effective date of claims - scenarios

Answer 4

1. No priority claim, no divisional
2. Priority claim only
3. Multiple priorities claimed
4. Divisional, parent doesn’t claim priority
5. Divisional, parent claims priority
6. Divisional, parent claims multiple priorities
7. Claim added during prosecution
8. Claim added on divisional filing

Question 5

Effective date of claims - 1. No priority claim, not a divisional

Answer 5

1. No priority claim, not a divisional (2012pp) highly likely to be other significant issues with novelty and inventive step if this scenario is present
   o All claims have filing date as the effective date – unless claim added during examination adds matter to application in which case it has not effective date

A1 does not claim priority nor is it a divisional application. Consequently, the effective filing date of claims X to Y is the filing date of the present application which is DD/MM/YYYY.

Question 6

Effective date of claims - 2. Priority claim, not a divisional

Answer 6

2. Priority claim, not a divisional
   o Claims that meet the 4 step test (12 months, same invention, same applicant (unless transferred, priority application was valid first filing (2014pp)) validly claim priority and have the effective date of the priority application
   o Priority document must include an enabling disclosure for valid priority claim
   o All claims have filing date as the effective date – unless claim added during examination adds matter to application in which case it has not effective date

The applicant for the priority application is the same applicant for A1 (i.e., [insert name of applicant]).

A1 was filed on [insert date] which is within 12 months of the filing date ([insert date]) of the priority application.

Claims X to Y were present in the priority application because the priority application includes claims Xp to Yp.

The priority application is a first filing for claims X to Y because the priority application is the first application for claims X to Y…

As A1 validly claims priority from EPX for claims X to Y, the effective date of claim X to Y is the date of filing of the priority application which is DD/MM/YYYY.

Question 7

Effective date of claims - 3. Multiple priorities claimed, not a divisional

Answer 7

o Claims that meet the 4 step test (12 months, same invention, same applicant (unless transferred, priority application was valid first filing (2014pp)) validly claim priority and have the effective date of the priority application that first discloses it
o All claims have filing date as the effective date – unless claim added during examination adds matter to application in which case it has not effective date

See 2.

Question 8

Effective date of claims - 4. Divisional application, parent application does not claim priority

Answer 8

4. Divisional application, parent application does not claim priority (2013pp) if divisional parent missing matter, think G1/05, G1/06
   o Claims present in parent application have filing date of parent application (Art 76 EPC)
   o If they are not present in the parent and not derivable from the description of the parent, they have no priority date and are added matter under Art 76 EPC.
   o If they are present in a grandparent application but not in the parent, they are also added matter (see G1/06 and 2013pp)
   The present application is a properly filed division application and therefore is entitled to the filing date of the parent application (A76 EPC).

Question 9

Effective date of claims - 5. Divisional application, parent claims single priority

Answer 9

5. Divisional application, parent claims single priority
   o Claims present in parent application have filing date of parent application (Art 76 EPC)
    Unless they are also present in the priority application in which they will have the date of the priority application
   o If they are not present in the parent and not derivable from the description of the parent, they have no priority date and are added matter under Art 76 EPC.
   o If they are present in a grandparent application but not in the parent, they are also added matter (see G1/06 and 2013pp)
6. plus 4.

notes: “The parent application was filed (29/06/06) within 12 months of the date of LU1 (30/06/05) by the same applicant (A87 EPC). The divisional application was properly filed (A76 EPC) and therefore is also entitled to claim priority from LU1 and LU2 (G-A, IV, 1.2.2).”

Question 10

Effective date of claims - 6. Divisional application, parent claims multiple priorities

Answer 10

6. Divisional application, parent claims multiple priorities (2010pp)
   o Claims present in parent application have filing date of parent application (Art 76 EPC)
    Unless they are also present in the priority application in which they will have the date of the priority application
   o If they are not present in the parent and not derivable from the description of the parent, they have no priority date and are added matter under Art 76 EPC.
   o If they are present in a grandparent application but not in the parent, they are also added matter (see G1/06 and 2013pp)
7. plus 4.

Question 11

Effective date of claims -7. Claim added during examination not present in application as filed

Answer 11

7. Claim added during examination not present in application as filed
   o No date, 123(2) or 76 EPC…

Claim X was is not directly and unambiguously derivable from the present/parent application as filed. Consequently, claim X has no effective filing date.

Question 12

Priority: Entitled

Answer 12

The subject-matter of claim … forms part of the priority application.

Although claim … was added during examination, it has basis and support at A1, para # (“…”), which forms part of the priority application.

Claim … is thus entitled to priority.

The effective date of claim … is ________.

Question 13

Priority: Added on filing

Answer 13

The subject-matter of claim … was not included in the priority application.

Claim … was added during examination. It has basis and support at A1, para # (“…”). It therefore does not extend beyond the content of the application as filed. This subject-matter was not, however, included in the priority application.

Claim … is not entitled to priority.

The effective date of claim … is ________.

Question 14

Priority: Not first application

Answer 14

A# shows the same applicant as the proprietor of A1.

The filing date of A# (______) is earlier than the claimed priority date.

A# discloses the subject-matter of claim … (see discussion of claim … under its own heading below).

The priority application (application number) was not the first application filed by the applicant for the subject-matter of claim …

In accordance with A87(1) EPC, claim … is not entitled to the claimed priority date.

The effective date of claim … is the filing date of A1: ______

Question 15

Added subject-matter

Answer 15

The subject-matter of claim … was not included in A1 as filed.

Although A1, para # (included on filing) mentions “…”, this is not / there is no direct and unambiguous disclosure of “…”, as in claim …

This is contrary to the requirements of A123(2) EPC.

Claim … has no effective date and is opposed on the grounds of A100(c) EPC.

Question 16

Divisional

Answer 16

A1 is a divisional application based on the earlier application: [application number], having a filing date of _____ (and priority date of _______)

The subject-matter of claim … was included in the earlier application as it was filed and thus takes over the effective date of that application (A76(1) EPC).

	or

The subject-matter of claim … was not included in the earlier application as it was filed.

Although A1, para # (included in the earlier application) mentions “…”, this is not / there is no direct and unambiguous disclosure of “…”, as in claim …

This is contrary to the requirements of A76(1) EPC.

Claim … has no effective date and is opposed on the grounds of A100(c) EPC.

Question 17

4. Documents relied upon (prior art) - common variations

Answer 17

• applicant of prior art is same as A1 - priority for one or more claims invalid
• 54(2)
• 54(3) EP
• 54(3) PCT EP
• prior use
• internet disclosure

Question 18

4. Documents relied upon (prior art) - Pre-published

Answer 18

A# was published before the effective date of claim …

A# is full prior art under A54(2) EPC for claim …

Question 19

4. Documents relied upon (prior art) - EP (post published)

Answer 19

A# was filed before, but published after, the effective date of claim …

A# is a European patent application.

A# is therefore prior art under A54(3) EPC (considered for novelty only as per A56 EPC, 2nd sentence) for claim …

Question 20

4. Documents relied upon (prior art) - PCT (post published) = PA

Answer 20

A# was filed before, but published after, the effective date of claim …

A# is a PCT application published in English (an EPO official language) and designating the EPO.

It is assumed that the payment of the filing fee has been made and further evidence in support of this will be provided at a later date.

Therefore, it is considered as prior art under A54(3) EPC for claim … in accordance with A153(5) EPC and R165 EPC.

Question 21

4. Documents relied upon (prior art) - PCT (post published) =/= PA

Answer 21

A# was filed before, but published after, the effective date of claim …

A# is a PCT application
* which did not designate the EPO?
* which was not published in an EPO official language or for which a translation into an EPO official language was not provided to the EPO?
* for which the payment of the filing fee has not been made (R165 EPC)?

Therefore, it did not enter the European phase according to A153(5) EPC and R165 EPC.

A# therefore cannot be prior art under A54(3) EPC.

However, A# was published before the effective date of claim …’ A# is therefore full prior art under A54(2) EPC for claim …’

Question 22

4. Documents relied upon (prior art) - Non-EP (post published)

Answer 22

A# was filed before, but published after, the effective date of claim …

A# is a … patent application, not a European patent application.

A# therefore cannot be prior art under A54(3) EPC.

However, A# was published before the effective date of claim …’ A# is therefore full prior art under A54(2) EPC for claim …’

Question 23

4. Documents relied upon (prior art) - Evidence of prior use / sale / etc.

Answer 23

When, where, what, how

In order to show that a product was made available to the public prior to the effective date, it is necessary to provide the following information: when the prior use took place; what was made available; and under what circumstances (Guidelines G-IV, 7.2).

If contested, further evidence will be provided

Question 24

4. Documents relied upon (prior art) - Non-patent disclosure

Answer 24

CLIENT can testify as a witness or via affidavit that A# was publicly available on APPARENT DATE.

Regarding the circumstances of this public oral disclosure, we propose to hear PRESENTER (the presenter) and CLIENT as witnesses (or via affidavit). We will make any additional evidence available as soon as possible.

Question 25

4. Documents relied upon (prior art) - EXAMPLE

Answer 25

A2 (16/11/1987), A3 (27/06/05) and A5 (09/12/1996) were all published prior to 30/6/05 and are therefore all prior art under Art 54 (2) EPC.

A4 was published on 2/2/6 and is therefore prior art under Art 54(2) against claims 4p, 5p and 6 only.

As A4 is a European patent application that was validly published (02/02/2006) after, but was filed (02/08/2004) before, the effective dates of all of the claims 1-3, 4c and 5c, A4 is prior art under Art 54(3) EPC against claims 1-3, 4c and 5c.

A6 was published on 15/5/6 and is therefore prior art under Art 54(2) EPC against claim 6 only. As A6 is a European patent application that was validly published (15/05/2006) after, but was filed (15/11/2004) before the effective dates of all of the claims 1-3, 4p, 5p, 4c and 5c, A6 is prior art under Art 54(3) EPC against these claims.