Common Paper D mistakes
When doing previous papers, we often make mistakes. However, that is the point of preparation. We are supposed to make these mistakes, but only at the first time. After that, we should have learnt from our mistakes and avoid making the same for the second time. So, don’t forget to make notes of your mistakes.
I have collected some common mistakes below. Since the list also includes many of my earlier mistakes, I could have chosen the title “My previous mistakes”, but I would feel too exposed…:) Hence the general and boring title.
This random list of mistakes is mostly connected to Paper D.
Let’s see.
Let’s start with the most important one that probably everyone knows perfectly: The patent proprietor is NOT entitled to make/use/sell his patented product/process in any of the Contracting States under all circumstances. A patent does not provide its proprietor with freedom to operate. A patent gives right to exclude others from making/selling/using/marketing etc. the patented product/process (TRIPS Art.28).
Different rules apply to nationals of a Contracting State who do not live in a Contracting State, for example regarding languages or representation.
A national of a Contracting State who is resident in a country that is not a Contracting State (e.g. a Spanish person living in Mexico or an Italian living in Australia) can use Art.14(4) EPC and file documents (covered by Art.14(4)) in his State’s official language (e.g. Spanish or Italian), but still has to be represented by a professional representative according to Art.133(2) EPC.
Art. 54(3) EPC:
A document can only be regarded as an Art.54(3) document, if it was validly published (Art.93 EPC).
If an application was withdrawn before its publication, but the withdrawal reached the EPO too late, it will still be published. A document published like this cannot be used as an Art. 54(3) document, since it was not pending at the time of its publication.Abstract is not part of the application for Art.54(3) according to Art.85 EPC!
Priority:
The correct legal basis for some priority questions is Art.4C(1) PC, not Art.87(1) EPC.
If there is a general question regarding priority in D-I, citing EPC legal basis instead of Paris Convention will gain 0 points (out of the marks awarded for the legal basis).
Oral disclosure is not prior art for PCT. (Rule 33.1(a) PCT)
Provisional protection of a Euro-PCT application starts from the date of the international publication if the PCT application was published in EN/DE/FR (an official language of the EPC). No need to enter Euro-PCT phase early in this case, that does not affect the start of the provisional protection. If however the international publication was published in a different language, such as Spanish or Chinese, the provisional protection will only be effective from the date of the publication of the translation submitted by the applicant upon entry into the Euro-PCT phase.
Claims fee (R.45(1)) is not part of the filing fee.
An objection under R.43(2) EPC (multiple independent claims in the same category) does not automatically mean that the application lacks unity (Art.82 EPC).
Due date does not always mean the last day for a valid payment. On the contrary, in most cases it means the first day for a valid payment.
Renewal fees: A regular renewal fee is due on the last day of the month containing the filing date. It can only be paid (without surcharge) by the due date.
However, the renewal fees of a divisional application – that are already due – are due on its filing. The last day for payment (without surcharge) is within four months of filing.
So, the due date for renewal fees can mean the first day and the last day for valid payment as well.
Confirmation copy for a patent application filed via Fax is not necessary for European Patent Application (unless EPO sends an invitation because of inferior quality), but it is a must when filing PCT applications, even when the PCT is filed with the EPO as a receiving Office.
Since there are many important differences - relevant for paper D - between EPC and PCT, I will soon write an article about the most important issues.
Filing and examination fee reductions based on R.6(3) EPC are also possible if only one applicant is an Art.14(4) person. As an example, a French and a Spanish natural person as joint applicants are entitled to language-based fee reductions, when filing in Spanish. (This was not evident from the previous Guidelines, but it has recently been amended. See GL A-X, 9.2.1 and also J4/18.)
However, all applicants have to be R.6(4) persons! (So any of: SMEs, natural persons, non-profit organisations, universities or public research organisations.)The phrase “between” does not include the endpoints! (Very important also for paper A.)
According to Art.69 EPC (and Protocol on Art.69 Art.2) equivalents are also covered by the extent of protection. However, Art.69 EPC is not to be taken into account during examination or opposition. What is more, Art.69 EPC should not be mentioned in an opposition or in Paper C.
While Art.69 EPC is not relevant in Paper C, it might be worth to mention equivalents regarding opposition: According to the Guidelines, equivalents not disclosed in the application cannot be taken into account for novelty (GL G-VI 2), only for inventive step arguments.
I will keep this article updated and add new mistakes that seem to be important.