My 2024 Paper D1 answer
2024 D1 was a relatively straightforward D1 paper, my candidates also reported about it as a long but doable paper.
I hope it is helpful to read my answer and to see the style I use(d) for Paper D1. (I wrote in the same style in 2021, during my Paper D. There were 4 out of the 6 questions where I either got the full marks or only lost 0.5 mark, so I do think this style is good, although, of course there are alternative ways and styles to answer these questions.)
Disclaimers:
My answer might include some mistakes as I’m publishing it before the Examiners’ Report would be available.
I didn’t write it under stress, and I did double check my answer for any typos and grammar mistakes before publishing. So, don’t worry if your real answer does not look like this.
Although I did try to write the answer under time pressure, you know how it goes when there is nobody to enforce it. (That is why I organised a Mock exam last year – to make sure you can practice under real time pressure, when there is someone else to enforce it.) So, at the end I did spend more time on the answers (mainly on the last question, Q5), stopped my timer a few times to get a coffee, etc. –> So, again, don’t worry if your real answer is shorter or messier.
QUESTION 1 (14 POINTS)
On 5 January 2024, applicant D filed international application PCT-3 at the Spanish Patent and Trademark Office (SPTO) acting as receiving office. The PCT request indicates the EPO as International Searching Authority (ISA). The filing fee, search fee and transmittal fee have been duly paid.
In a notification dated 17 January 2024, the SPTO invited applicant D to furnish a translation.
(a) In which language was PCT-3 filed and what steps does applicant D have to take for the ISA to start the search?
(b) Applicant D wants to file amended claims and correct an obvious mistake in the description at the lowest possible cost during the international phase. In what language, when and where do the respective documents have to be filed?
My answer:
(a) In which language was PCT-3 filed?
SPTO as rO accepts Spanish - R.12.1(a) and R.12.1(b)(ii) PCT, AG-IP Annex C of SPTO
As SPTO acts as rO and did not transmit IA to IB under R.19.4 PCT, we know that the IA was filed in Spanish - Art.3(4)(i) PCT
What steps does applicant D have to take for the ISA to start the search?
EPO can act as ISA for applications filed to SPTO - Art.16(3)(b), R.35.2 PCT and Art.152 EPC
However, EPO as ISA does not search in Spanish, they need IA to be in EN/DE/FR - A.3(1) and Annex A(ii) EPO-WIPO agreement
Any of EN/DE/FR translation can be chosen as they are all publication languages - R.12.3(a)(ii) and 48.3(a) PCT
The EN/DE/FR translation must be filed to SPTO as rO - R.12.3(a) PCT
Time limit to file this translation:
5 January 2024 + 1 m (R.80.2 PCT) –> 5 Feb 2024 Mon, but it seems the translation was not filed
Applicant can still file the translation if a late furnishing fee is also paid - R.12.3(c)(ii) PCT
Time limit file the translation and pay late furnishing fee under R.12.3(e) PCT is the later of:
- Date of receipt of IA, 5 January 2024 + 2 m (R.80.2 PCT) –> 5 Mar 2024 Tuesday, or
- Date of invitation, 17 January 2024 + 1 m (R.80.2 PCT) –> 17 Feb 2024 Sat, so R.80.5 applies –> 19 Feb 2024 Monday
5 Mar 2024 Tuesday is the later, so that applies
So, we have to file EN/DE/FR translation today and pay the late furnishing fee - R.12.3(c)(ii) PCT
But PCT-3 will be published in Spanish as it was filed in Spanish, a publication language - R.48.3(a) PCT
No further steps are needed from applicant
(b) Applicant D wants to file amended claims and correct an obvious mistake in the description at the lowest possible cost during the international phase.
Filing amended claims at the lowest possible cost during the international phase
Applicant can file amended claims under Art.19 PCT, it is free of charge
It can only be done after having received the international search report - Art.19(1) PCT
In what language: Under R.46.3 PCT, the amendment must be in the language of the publication, which will be Spanish under R.48.3(a) PCT
If statement is also filed, that also has to be Spanish - R.46.4 PCT
When:
Under R.46.1 PCT, time limit is the later of:
- two months from the date of transmittal of the ISR to the IB and to the applicant by the ISA (we don't have this date yet), or
- 16 months from the priority date, which, under Art.2(xi)(c) PCT, is the filing date as no priority was claimed, so: 5 January 2024 + 16 m –> 5 May 2025
- provided that any amendment made under Article 19 which is received by the International Bureau after the expiration of the applicable time limit shall be considered to have been received by that Bureau on the last day of that time limit if it reaches it before the technical preparations for international publication have been completed. - R.46.1 PCT
Where do the respective documents have to be filed: directly to IB - R.46.2 PCT
Correction of an obvious mistake in the description during the international phase
Applicant can file request for correction of an obvious mistake in the description under R. 91.1(a) PCT, it is free of charge.
In this case as mistake is in the description, EPO as ISA is the competent authority for authorising correction - R.91.1(b)(ii) PCT
Since mistake is obvious, EPO as ISA will accept and authorise the request for correction - R.91.1(d) PCT
In what language: Under R.12.2(b)(i) PCT, both in Spanish and the language of translation used for R.12.3 purposes (one of EN/DE/FR) *
*This is the only thing I didn’t manage to find in time while answering, so I added this later.
The letter itself can be any of EN/DE/FR - R.92(b) PCT, OJ EPO 2017 A115
When: Under R.91.2 PCT, time limit is 26 months from the priority date, which, under Art.2(xi)(c) PCT, is the filing date as no priority was claimed, so until:
5 January 2024 + 26 m –> 5 March 2026, so possible for 2 more years
Where do the respective documents have to be filed: to EPO as ISA as that is the competent authority under R.91.1(b)(ii) PCT - R.91.2 PCT
After the authorisation of the rectification of obvious mistake, the rectification shall be effective from date of filing of IA, so 5 January 2024 - R.91.3(c)(i) PCT
QUESTION 2 (12 POINTS)
In November 2021, company C filed European patent application EP-2. Only the filing and search fees were paid.
The publication of the European search report, which was accompanied by a negative search opinion, was mentioned in European Patent Bulletin of 17 May 2023.
On 26 May 2023, the EPO issued a communication pursuant to Rule 69 EPC and an invitation pursuant to Rule 70a(1) EPC.
No further acts were performed by company C. Due to an isolated mistake within a normally satisfactory monitoring system, company C became aware only today of a communication from the EPO dated 12 December 2023 noting that there has been a loss of rights.
Is it still possible for company C to prosecute EP-2? If so, what steps have to be taken and by when?
My answer:
Yes, it is still possible to prosecute EP-2.
Exam. fee (R.70(1) EPC) and designation fee (Art.79(2), R.39(1) EPC) was not yet paid
Response to search opinion is mandatory since opinion was negative - R.70a(1) EPC
Request for examination is automatically included in EPO Form 1001 which must have been used under R.41(1) EPC
Time limit to pay exam. fee (R.70(1) EPC), designation fee (R.39(1) EPC) and respond to search opinion (R.70a(1) EPC) was:
17 May 2023 + 6 months (R.131(4) EPC) –> 17 Nov 2023 Friday
Consequence of not doing these steps: EP-2 was deemed to be withdrawn - Art.94(2), R.39(2), R.70a(3) EPC
The loss of rights comm. about EP-2 being deemed to be withdrawn under R.112(1) was dated 12 December 2023
Further processing under Art.121, R.135 EPC would have been available for these 3 acts, as these are not excluded under Art.121(4) or R.135(2) EPC
Time limit for further processing was - R.135(1) EPC:
2 months from the notification of loss-of rights communication (R.126(2) as in force since 1 Nov 2023), so 12 December 2023 + 2 m (R.131(4) EPC) –> 12 Feb 2024 Monday
RE is available for missing FP time limit - Art.122, R.136 EPC
Further processing time limit was missed due to an isolated mistake within a normally satisfactory monitoring system which means all due care can be proven - J2/86
Removal of cause of non-compliance: today, 5 March 2024 when applicant became aware - T428/98
So, time limit to request RE - R.136(1) EPC is:
5 March 2024 + 2 m (R.131(4) EPC) –> 5 May 2024 Sunday, EPO closed so R.134(1) applies –> 6 May 2024 Monday
This is also well before 12 Feb 2025, i.e. within 1 year of the missed time limit of 12 Feb 2024.
Steps to do:
- Request RE for all 3 acts in writing from EPO - Art.122(1) EPC
- Prove all due care - Art.122(1) EPC, state grounds and set out facts - R.136(2) EPC
- Pay 3 RE fee - R.136(1) EPC, RFees 2(1) item 13
- Complete omitted acts, i.e. request FP for missed acts - R.136(2) EPC:
1) pay exam. fee (R.70(1) EPC) + 50% of the fee as FP fee - RFees 2(1).12
2) pay designation fee (R.39(1) EPC) + 50% of the fee as FP fee
3) respond (amend and/or argue) to negative search opinion request (R.70a(1) EPC) + pay flat FP fee
Renewal fee:
Renewal fee was also not paid yet.
3rd renewal fee was due on 30 November 2023 - Art.86(1) and R.51(1) EPC
6-month period for paying the fee with additional fee ends: 31 May 2024 - R.51(2) EPC, J4/91
However, since loss of rights (17 Nov 2023) occurred before the due date (30 November 2023), and RE is requested, 3rd renewal fee can even be paid within 4 months of the notification of the decision of allowing RE without an additional fee - R.51(4)(a) PCT
So, it does not have to be paid immediately.
So, we have to request RE and then pay the renewal fee for the 3rd year within 4 months of the notification of the decision of allowing RE to prosecute EP-2.
QUESTION 3 (9 POINTS)
The opposition period for European patent EP-1 expired yesterday.
On 16 January 2024, A and B, two nationals of Spain, A residing in Mexico and B residing in Spain, jointly filed a notice of opposition against EP-1. The opposition fee was paid on that date. The notice was filed in Spanish by A and B, named in that order, and signed by both of them. It includes the opponents' particulars, correctly identifies the opposed patent EP-1 and contains a statement of the extent to which EP-1 is opposed and properly substantiated grounds for this.
On 29 January 2024, the opposition division issued an invitation to remedy deficiencies, setting a time limit of two months.
Yesterday B filed a translation of the notice of opposition in English.
What procedural steps need to be taken to remedy the deficiencies and for substantive examination of the joint opposition to start?
My answer:
Opposition period under Art.99(1) expired yesterday, on 4 March 2024. Notice of opp. was filed before that date, on 16 Jan 2024, so filed in time.
Fee was also paid on 16 Jan 2024, so paid in time - Art.99(1) EPC
It is sufficient to pay one opposition fee in case of a joint opposition, so fee paid correctly - G3/99
Since both opponents are nationals of Spain, both are Art.14(4) persons and since Spanish is the off. language of Spain (Natlaw chapter II, item 4), Spanish can be used for filing the notice of opp. - Art.14(4) EPC
However, translation into EN/DE/FR must be filed - Art.14(1), R.3(1) EPC
Time limit to file translation is the later of:
16 January 2024 + 1 m (R.6(2) and R.131(4) EPC) –> 16 Feb 2024 Fri, or
end of opp. period, 4 March 2024.
4 March 2024 is the later so that applies
So, EN translation was filed in time as it was filed yesterday, on 4 March 2024, EN is EPO official language under Art.14(1) EPC
Representative is needed for A, since A is resident in Mexico that is not an EPC state - Art.133(2) EPC, GL D-IV, 1.2.2.2(iv)
Since representative was not appointed by A yet, EPO sent a R.77(2) EPC communication
If not corrected, opposition will be deemed inadmissible. - R.77(2) EPC
If opposition is inadmissible, opp. fee is not refunded.
As there is no FP and RE for opponents, and time limit to file new notice of opp. already expired, it is very important to appoint a representative (Art.134 EPC) and provide the missing signature in time.
Time limit to respond to R.77(2) EPC communication: 29 January 2024 + 2 m (R.131(4) EPC) –> 29 March 2024 Good Friday, EPO closed, R.134(1) applies –> 2 April Tuesday
Time limit can be extended if necessary by a request filed before the time limit expires - R.132(2) EPC
In case of joint opposition, R.151 applies for common representation. So, the representative appointed by A will be the deemed common representative during opp. proceedings - R.151(1) EPC
QUESTION 4 (11 POINTS)
Your client company E is the proprietor of granted patent EP-4. EP-4 has been granted with an independent claim 1 directed to subject-matter A, a dependent claim 2 directed to subject-matter A+B, a dependent claim 3 directed to subject-matter A+C and an independent claim 4 directed to subject-matter D.
Company F has filed an admissible opposition against only claim 1 of EP-4, based on the ground that the subject-matter of granted claim 1 is not new in view of prior-art document EP-D1. EP-D1 does not disclose or suggest any of the subject-matter claimed in EP-4.
In response to summons to attend oral proceedings sent by the opposition division, company F filed documents EP-D2 and EP-D3, both constituting prior art under
Article 54(3) EPC. It is immediately clear that, as argued by company F, EP-D2 discloses subject-matter A and EP-D3 discloses subject-matter D.
Advise company E on how to obtain a valid patent conferring the maximum possible scope of protection.
Overview:
granted claims:
claim 1: A
claim 2+1: A+B
claim 3+1: A+C
claim 4: D
EP-D2 (Art.54(3) EPC) discloses A
EP-D3 (Art.54(3) EPC) discloses D
My answer:
Extent of opposition: only claim 1!
EP-D1 is not novelty destroying for any of the claims, but the opposition is admissible.
EP-D2 and EP-D3 are late filed documents - Art.114(2) EPC
But, EP-D2 and EP-D3 can be admitted if they are prima facie relevant - Art.114(1) EPC
EP-D2 discloses A, which is the sjm. of claim 1, so novelty destroying against claim 1 - Art.52 and Art.54(3) EPC
Novelty is a ground for opposition, and it was also raised already in the notice of opp. - Art.100(a) EPC
So, EP-D2 is prima facie relevant, will be admitted, claim 1 cannot survive.
Claim 1 has to be deleted, we could keep claims 2 and 3.
Claims 2 and 3 are novel over EP-D2, as EP-D2 does not disclose B or C.
The amendment does not extend the scope of protection, so allowed under Art.123(3) EPC. Claims 2 and 3 have already been in the app. as filed, so also OK under Art.123(2) EPC.
Unity, Art.82 EPC is not a ground for opposition, it is not examined for patents, so claims 2 and 3 are fine.
EP-D3 discloses subject-matter D, so EP-D3 is only relevant against claim 4, and would be novelty destroying.
However, the extent of opposition is only claim 1, which means that claim 4, a separate independent claim cannot be examined during opposition! Because the opposition is limited to the extent of the opposition given in the notice of opposition. - G9/91
So, EP-D3 will not be admitted by the OD - Art.114(1) EPC, and claim 4 cannot be examined in opposition. - G9/91
So, the recommended amendments for company E: delete claim 1, proceed with claims 2 and 3, and keep claim 4 for now. This amendment satisfies Art.123(2) and (3) EPC and claims 2 and 3 are both novel over EP-D1, EP-D2 and EP-D3.
Regarding claim 4: Not novel over EP-D3 - Art.54(3) EPC
National revocation proceedings can be started before national courts, so there is a risk that claim 4 will be attacked and will have to be deleted later. - Art.138 EPC
To have a valid patent without risking later national revocation proceedings I recommend starting limitation proc. under Art. 105a(1) after the opposition ended. - Art. 105a(2) EPC
In limitation proc., simply delete claim 4
QUESTION 5 (9 POINTS)
Your client, applicant H, a national and resident of Morocco, filed European patent application EP-7 in French in March 2020. The mention of the grant was published on 21 February 2024.
What steps have to be taken and by when to:
(a) obtain patent protection in the United Kingdom and Poland; and
(b) obtain unitary patent protection?
My answer:
(a) UK
Validation: No translation needed under Art. 65(1) EPC, there is no time limit, patent is automatically valid. - Art. 1(1) London Agreement, EPO Natlaw table IV
However, the annuity fees must be paid before the UK office to make sure the patent stays in force.
Since the patent was already granted, the 5th renewal fee cannot be paid to the EPO anymore - Art.86(2) and Art.141(1) EPC
Payment of renewal fee: Due date of the 5th renewal fee without additional fee: 31 March 2024
Since this is within 2 months of the mention of the grant (21 February 2024 + 2 m –> 21 April 2024), Art.141(2) EPC applies and the 5th renewal fee can be paid without additional fee for a longer period (at least 2 months after the grant).
In the UK, the 5th renewal fee can be paid until the last day of the third whole calendar month after the date of publication in the Bulletin without any additional fee being charged, so until:
21 February 2024 + 3 m –> 21 May 2024, so until end of May –> 31 May 2024
Amount: GBP 70
Poland
Validation: A translation of the patent specification into Polish must be supplied under the conditions provided for in Art. 65(1) EPC. - EPO Natlaw table IV, 2
Time limit for validation: 21 February 2024 + 3 m –> 21 May 2024 (Tue) - EPO Natlaw table IV, 4
A national professional representative must be appointed for a national and resident of Morocco. - EPO Natlaw table IV, 3
Official fee must be paid for publication of the translation - EPO Natlaw table IV, 5
Payment of renewal fee:
Since the patent was already granted, the 5th renewal fee cannot be paid to the EPO anymore - Art.86(2) and Art.141(1) EPC
Since the annuity fee is due is within 2 months of the mention of the grant, Art.141(2) EPC applies and the 5th renewal fee can be paid without any additional fee until:
21 February 2024 + 2 m –> 21 April 2024 –> 22 April 2024 Monday
(b) Unitary patent protection
French was the language of the proceedings - Art.14(3) EPC
Patent was granted after 1 June 2023, so we can request unitary effect - Art.18(6) of Regulation (EU) No 1257/2012
Time limit: The request for unitary effect shall be filed with the EPO no later than 1 month after publication of the mention of grant of the European patent in the European Patent Bulletin. – Rule 6(1) Rules relating to Unitary Patent Protection (UPR)
So, until 21 February 2024 + 1 m –> 21 March 2024 Thursday
To do:
file the request in French in writing, as the request for unitary effect shall be filed in the language of the proceedings - Rule 6(2) UPR
appoint a representative, as the client is resident in Morocco (Art.133(2) EPC)
The same regime as under the EPC applies to representation (Art.133 EPC). - Rule 20(1) UPRrepresentative should duly sign the request
file translation of the translation of the description, the claims (and of any text in the drawings) in English - Rule 6(2)(d) UPR, Art. 6(1) Regulation (EU) No 1260/2012 (Translation of the claims can be re-used from R.71(3) translations.)
Filing the request is free of charge.
Request can be filed at the EPO Filing offices only, recommended to use EPO Form 7000.
Renewal fee:
Renewal fee are due in respect of the years following the year in which the mention of the grant of the European patent which benefits from unitary effect is published in the European Patent Bulletin. - Rule 13(1) UPR
Due date: the last day of the month containing the anniversary of the date of filing (in line with R.51(1) EPC). - Rule 13(2) UPR
Due date of the 5th renewal fee without additional fee: 31 March 2024
Since this is within 3 months of the notification of the communication referred to in Rule 7(1) UPR (i.e. the one informing the requester of the date of registration of unitary effect) may still be paid within that three-month period without any additional fee under Rule 13(3) UPR (see Rule 13(4) UPR).
Payment of 5th renewal fee should be done to the EPO, but it can be done by proprietor, without the representative
Despite some tips that there would be no Unitary Patent in Paper D, you see that the half of the last question was about requesting Unitary effect. Luckily, we did have an additional session with my Pre-exam and Paper D1 study groups to discuss Unitary Patent and some questions I drafted. Many candidates printed my presentation and managed to answer this question well!
By the way, you can already sign up for my Paper F and 25-week D1 study groups starting in autumn! If you are preparing for EQE 2025, keep following my Study with me site.