basic legal questions for pre-exam and paper d · basic legal questions for pre-exam and ... basic...

Basic Legal Questions for Pre-Exam and Paper D

– Update to edition August 2013 (EQE 2014) –

(Updated until 19 December 2013)

L TRAINING FOR THE EUROPEAN

QUALIFYING EXAMINATION

© EIPEF

© Copyright DeltaPatents, 2013

All rights reserved. No part of this Training Material may be reproduced, used in any way for generating further course material or updates, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording, or otherwise, without written consent of DeltaPatents. The Training Material is made available for personal use only. This Training Material may not be used in courses competing with DeltaPatents courses. DeltaPatents does not accept any liability for the correctness or completeness of the Training Material.

Contents

Introduction and acknowledgement ............................................................................................... 1

Announcement ................................................................................................................................. 1

1. General remarks ........................................................................................................................... 3

1.1. Change of required marks for passing Pre-Exam................................................................. 3 1.2. Tutor’s report EQE 2014 ...................................................................................................... 4 1.3. Latest information ................................................................................................................ 4

2. Update of Study Guide ................................................................................................................. 5

Training Material and Sources - Guidelines (EPC) ...................................................................... 5 Training Material and Sources – Case Law ................................................................................ 6 Training Material and Sources – EQE ......................................................................................... 6

3. Calendars ...................................................................................................................................... 8

5. Update of Answers to Basic Legal Questions .......................................................................... 10

© 1 EIPEF

Basic Legal Questions book - Update to Edition Aug 2013 (EQE2014) December 2013

Introduction and acknowledgement

This document comprises an update to the ‘Basic legal Questions for Pre-Exam and Paper D’ book

(edition August 2013, EQE 2014):

o Publications in OJ EPO after the Book was printed (August 2013);

o Publications in PCT Newsletter after the Book was printed;

o Amendments to AG-IP after the Book was printed;

o A few corrections to the answers.

We thank all who provided any comments and all candidates who participated in our legal training

courses for useful feedback. Any further comments are highly appreciated.

The latest version of this document is available on our website.

Roel van Woudenberg,

19 December 2013

Announcement

In January 2014, DeltaPatents organizes some further training sessions for candidates preparing for

Pre-Exam 2014 and for the Main Exam 2014. Also, our Correction Papers programme for Paper D is

still active until late January.

Later in 2014, DeltaPatents will organize further training for new candidates preparing for Pre-Exam

2015 as well as courses for candidates who prepare for the Main Exam in 2015 (A, B, C and D

papers).

Please check our website for course details and further announcements:

http://www.deltapatents.com/en/ip_courses/

http://www.deltapatents.com/en/ip_courses/eqe_training/preexam_courses/

http://www.deltapatents.com/en/ip_courses/eqe_training/methodology_and_guided_exam_courses/

http://www.deltapatents.com/en/ip_courses/eqe_training/correction_papers/

For further information and enrolment, please refer to our website:

http://www.deltapatents.com/en/ip_courses/eqe_training/

or contact

[email protected] .

http://www.deltapatents.com/en/ip_courses/

http://www.deltapatents.com/en/ip_courses/eqe_training/preexam_courses/

http://www.deltapatents.com/en/ip_courses/eqe_training/methodology_and_guided_exam_courses/

http://www.deltapatents.com/en/ip_courses/eqe_training/correction_papers/

http://www.deltapatents.com/en/ip_courses/eqe_training/

mailto:[email protected]

© 2 EIPEF


This page intentionally left blank

EIPEF 3 ©

December 2013 Basic Legal Questions book - Update to Edition Aug 2013 (EQE2014)

1. General remarks

1.1. Change of required marks for passing Pre-Exam

The pass level for the Pre-Exam changed from 50 marks to 70 marks as of Pre-Exam 2014 (Decision

Supervisory Board 1 Oct 2013) – EQE section on EPO website:

© 4 EIPEF


1.2. Tutor’s report EQE 2014

In autumn each year, the EPA and EPO organize a meeting between the Exam Committees and the

tutors. As last year, DeltaPatents took the initiative to prepare a tutor’s report about the EQE 2013

and the discussions at the meeting. Tutors from various nationalities, patent attorney firms and

training organizations contributed to the tutor’s report: Pete Pollard, Harrie Marsman, Derek Jackson,

Simon Roberts and Roel van Woudenberg.

The tutor’s report is/will shortly be published in epi Information and is/will be available online from:

http://www.patentepi.com/en/publications/epi-information/

Until it is published in eoi information, it is available from the EQE Forum page:

http://www.eqe-online.org/forum/showthread.php?t=10137

1.3. Latest information

Check the EQE website during January and February for possible announcements from the

Examination Board:

http://www.epo.org/learning-events/eqe.html

Our latest information for your EQE 2014 preparation will be published on or announced via our

blogs:

- DeltaPatents Pre-Exam http://pre-exam.blogspot.com/

- DeltaPatents Paper D: http://eqe-d.blogspot.com

- DeltaPatents Paper C: http://eqe-c.blogspot.com

- DeltaPatents Course Links: http://www.deltapatents.com/en/ip_courses/course_links/

- Salted Patent: http://www.saltedpatent.com

http://www.patentepi.com/en/publications/epi-information/

http://www.eqe-online.org/forum/showthread.php?t=10137

http://www.epo.org/learning-events/eqe.html

http://pre-exam.blogspot.com/

http://eqe-d.blogspot.com/

http://eqe-c.blogspot.com/

http://www.deltapatents.com/en/ip_courses/course_links/

http://www.saltedpatent.com/

EIPEF 5 ©


2. Update of Study Guide Training Material and Sources - Law +Regulations

1. EPC

A new complete edition of “How to get a European patent, Guide for applicants - Part 1”, 14th

edition, is available online (since 18/12/2013), up-to-date until 1 October 2013, and refers to GL

(2013) and recent OJ publications.

The paragraph numbering has not substantially changed compared to 13th edition - its content and

the references given in the margin have been updated (until 1/10/2013) and a few new paragraphs

have been inserted (8a, 75a, 96a, 201a). Further, the example patent applications in Annex III

have been replaced by different ones, except for the chemistry example.

The version published in December differs from the version pre-published online in September by

updated OJ and PCT NL references and amended text in:

Note that the HTG-I guide is not accepted as legal basis in your D-paper if ‘true’ legal basis cover

the topics, e.g., Articles, Rules, OJ-references, a Guidelines-reference, or case law.

In the Study Guide and in the Answers, all references to HTG-I (2010) may be replaced by

references to HTG-I (2013).

3. London agreement

o OJ 2013, 404: “AL acceded London Agreement per 1/9/2013”

Warning

o Amendments to R.36(1) (OJ 2013, 501) and R.164 EPC have been announced and

published. However, as these only enter into force per 1 April 2014 and per 1 November

2014, you need to use the current, ‘old’ versions of these Rules –as in force on 31 Decembe

2013– at the EQE 2014.

Only at EQE2015, you need to apply the new versions, and, where applicable in view of the

transitional provisions, the old versions.

o The same applies with respect to various Decisions of the Council and the President and

Notices from the EPO having effect as of 1 January 2014, such as e.g. OJ 2013, 416, .

o The same also applies with respect to PCT R.66 and R.70, as well as PCT R.44ter and R.94,

with effect per 1 July 2014.

Training Material and Sources - Guidelines (EPC)

A new edition of the Guidelines is in force as from 20 September 2013, and is the only valid version

at EQE2014:

o “Guidelines for Examination in the EPO” [September 2013] (GL2013) – OJ 2013, 447

The paragraph numbering has not substantially changed compared to June 2012 edition. However,

E-II, 11.2.3 -11.2.6 are renumbered as E-II, 11.3 – 11.6, and a new paragraph E-VIII, 2.9 has been

included (relating to early entry into the EP regional phase), and the par. E-VIII, 2.9 and 2.10 have

been renumbered accordingly.

Amendments in the 2013 revision have been made in all eight parts in order to bring the text into line

with legal and procedural developments.

© 6 EIPEF


For example, all paragraphs of GL G-II, 2 have been brought in line with G3/08, wherein the

abandonment of the contribution approach was confirmed, such that technical character has to be

assessed from the claim as a whole (of particular relevance for the application of Art.52(2),(3) EPC);

H-VI, 5.1 has been brought in line with G1/10 (application of R.139 and R.140 EPC after grant).

Note that the European Patent Office decided to allow for annual revisions in order to keep the

Guidelines in line with legal and procedural developments.

In the Study Guide and the Answers, all references to GL (2012) may be replaced by references to

GL (2013).

References to GL (2012) E-II, 11.2.3 -11.2.6 have to renumbered as GL (2013) E-II, 11.3 – 11.6.

References to GL (2012) E-VIII, 2.8 may be replaced with a reference to GL (2013) E-VIII, 2.8& 2.9.

References to GL (2012) E-VIII, 2.9 and 2.10 have to be replaced by GL (2013) E-VIII, 2.10 and 2.11.

Training Material and Sources - Applicant’s Guide (PCT)

No changes were made to “Introduction to the International Phase” since the Book was printed.

However, several Annexes were updated, especially fee amounts cited therein.

Training Material and Sources – Case Law

The EPO published a new version of the Case Law Book:

o Case Law of the Boards of Appeal of the European Patent Office” [7th edition, Oct 2013

updated until end Dec 2012]

The Book had a major revision: many decisions were deleted, others added, and the chapter and

paragraph numbering changed considerably.

If using the Case law Book 2010 or 2013 edition at EQE2014, it is advised to cite the respective G, J,

T, W or R-decision, and not (only) the Case Law Book paragraph.

The next edition of the “Basic Legal Questions” Book will include references to the new edition of the

Case Law Book.

Training Material and Sources – EQE

o Note that the pass level for the Pre-Exam changed from 50 marks to 70 marks as of Pre-

Exam 2014 (Decision Supervisory Board 1 Oct 2013) – EQE section on EPO website.

o Notice from the Examination Board dd. 18 July 2013 – “candidates shall answer the papers

solely on the basis of the calendars in the examination papers”

B4, Law +Regulations:

o OJ 2013, 404: “AL accedes to London Agreement – 1/9/2013”

B5, Law +Regulations:

o OJ 2013, 500 “ Decision of the Administrative Council of 16 Octobert 2013 abrogating its

1978 decision relating to the interpretation of the term "association of representatives" (CA/D

9/13)” (per 16/10/13)

EIPEF 7 ©


o OJ 2013, 535 “ Notice from the European Patent Office dated 28 August 2013 on matters

concerning representation before the EPO” (about associations)

C2, Case Law:

o OJ 2012, 342 “International exhibitions as referred to in Art.55 EPC (Venlo, Yeosu, Milano)”

o OJ 2013, 270 “International exhibitions as referred to in Art.55 EPC (Milano, Astana)”

C4, Case Law:

o Referral G2/13, Broccoli II (by T 83/05) “Effect of exclusion of essentially biological processes

for the production of plants u. A.53(b) on allowability of product claims directed to plants or

plant material such as plant parts”

C7, Law +Regulations:

o PCT NL 11/2011: Brunei Darussalam (BN) acceded Paris Convention; bound per 17 Feb

2012

o PCT NL 07/2013: Samoa (WS) acceded Paris Convention; bound per 21 Sep 2013

H10, Case Law:

Reformation in peius:

o T 1843/09 (OJ 2013, 508) “Exceptions from the prohibition of reformatio in peius”

Petition for review

o R15/11 “Allowable petition for review; no opportunity to comment on grounds on which the

decision under review was based”

H12, Law +Regulations:

o OJ 2013, 552 “List of days in 2013 on which EPO filing offices and national authorities are

closed – corrigendum (DE office also closed on 27/12/13 and 30/12/13)”

However, at the EQE, you must use the calendars as provided with the exam paper.

L1, Law + Regulations:

o OJ 2013, 430 / PCT NL July 2013: “Accession by Iran (IR) - in force per 4/10/2013”

L3, Law + Regulations:

o OJ 2011, 327 “Informal clarification by EPO acting as ISA (IAs filed, or no ISR/decl,

≥1/4/2011)”

© 8 EIPEF


3. Calendars Be reminded not to use the calendars provided in our Q&A books at the actual EQE – the Examination Board provides official calendars as part of the paper. Candidates shall answer the papers solely on the basis of the calendars in the examination papers

EIPEF 9 ©


4. Update of Basic Legal Questions

NOTES ON THE REFERENCES:

Refer to section 2, “Update of Study Guide”

QUESTIONS DEALING WITH LAW CHANGES OF 2013 :

Please add:

IR accedes to PCT – in force per 1 Oct 2013 L1-21 PCT NL July 2013; OJ 2013, 430

New accessions to London Agreement H8-15 and related provisions OJ 2013, 404 (AL)

H8-15:

Please amend to question to read:

List the three most recent states that acceded the London Agreement and the respective dates of entry into force.

© 10 EIPEF


5. Update of Answers to Basic Legal Questions All references to HTG-I (2010) may be replaced by references to HTG-I (2013), which uses the same

paragraph numbering.

In the Study Guide and the Answers, all references to GL (2012) may be replaced by references to

GL (2013), which uses substantially the same paragraph numbering – with the following most

important differences:

- References to GL (2012) E-II, 11.2.3 -11.2.6 have to renumbered as GL (2013) E-II, 11.3 – 11.6.

- References to GL (2012) E-VIII, 2.8 may be replaced by references to GL (2013) E-VIII, 2.8& 2.9.

- References to GL (2012) E-VIII, 2.9 / 2.10 have to be replaced by GL (2013) E-VIII, 2.10 / 2.11.

Case Law Book references will be updated in the next edition of the Basic legal Questions Book.

C1-04:

In view of amendments in the new edition GL (2013), please expand first paragraph of answer to:

o Claim must be considered as a whole - T931/95 hn.4; GL (2013) G-II, 2 o Invention may not be subject of EP appln if it is non-technical as such - Art.52(2)(b), (3) EPC o Technical character should be assessed without regard to the prior art – T1173/97, confirmed by

G3/08; also GL (2013) G-II, 2

and add to comments:

(a) In T 2258/10 of 04.10.2011 the board found that any apparatus constituting a physical entity or concrete product has technical character. A cooking vessel clearly falls within this definition, and thus per se has technical character. (Case Law Book (2013) I.A.1.4.6).

(b) GL (2013) G-II, 3.4: “If technical aspects are present in such an aesthetic creation, it is not an aesthetic creation ‘as such’ and it is not excluded from patentability.”

C1-07:

In view of amendments in the new edition GL (2013), please expand first paragraph of answer to:

o Claim must be considered as a whole - T931/95 hn.4; GL (2013) G-II, 2 o Invention may not be subject of EP appln if it is non-technical as such - Art.52(2)(b), (3) EPC o Technical character should be assessed without regard to the prior art – T1173/97, confirmed by

G3/08; also GL (2013) G-II, 2

and change comment into:

GL (2013) G-II, 3.7: “A feature relating to a presentation of information defined solely by the content of the information does not have a technical character. This applies whether the feature is claimed as a presentation of the information per se (e.g. by acoustical signals, spoken words, visual displays, books defined by their subject, gramophone records defined by the musical piece recorded, traffic signs defined by the warning thereon) or as relating to processes and apparatus for presenting information (e.g. features of indicators or recorders defined solely by the information indicated or recorded would not be technical features). A feature which relates to the manner in which cognitive content is conveyed to the user on a screen normally does not contribute to a technical solution to a technical problem. An exception would be if the arrangement or manner of presentation can be shown to have a credible technical effect (T 1741/08, T 1143/06).” “When deciding if a feature relating to the presentation of information is technical or not, what has to be considered is whether or not it contributes to solving a technical problem.”

EIPEF 11 ©


C4-02:

In view of the new referral G2/13, please add to comments:

o Another new referral is pending as G2/13 (by the same board T 83/05 )with the following questions: 1. 1. Can the exclusion of essentially biological processes for the production of plants in Article 53(b)

EPC have a negative effect on the allowability of a product claim directed to plants or plant material such as plant parts?

2. In particular: (a) Is a product-by-process claim directed to plants or plant material other than a plant variety allowable if its process features define an essentially biological process for the production of plants? (b) Is a claim directed to plants or plant material other than a plant variety allowable even if the only method available at the filing date for generating the claimed subject-matter is an essentially biological process for the production of plants disclosed in the patent application?

3. Is it of relevance in the context of questions 1 and 2 that the protection conferred by the product claim encompasses the generation of the claimed product by means of an essentially biological process for the production of plants excluded as such under Article 53(b) EPC?

H3-14:

Please correct the last date of the time limit calculation under a):

10/6/14 + 2m [R.40(3); R.131(4)] 10/8/14 (Sun) [R.134(1)] 11/8/14 (Mon).

H8-15:

Please add:

o Albania acceded per 1/9/2013 – OJ 2013, 404

H9-02 & H10-05:

Replace reference to OJ 2010, 226 by OJ 2012, 448 in Comments (d)(2)

L1-21

Please add:

o Iran (IR) – in force per 4/10/2013 – OJ 2013, 430 / PCT NL 07/2013

L2b-07

Option 2 of answer: Correct references to AG-IP 10.038 and 10.039 into 11.038 and 11.039

L3-18:

Please correct the time limit calculation under a) into:

7/5/12 + 19m [R.80.2 ] 7/12/13 (Sat) [R.80.5] 9/12/13 (Mon)

L4-02

Please supplement answer to (b) to read:

o EP: 31m – Art.22(3) PCT (d0)/ Art.39(1)(b) PCT (eO), R.159(1) EPC

L4-22

In Comment:

Reference to GL (2012) E-VIII, 2.8 may be replaced by references to GL (2013) E-VIII, 2.8& 2.9.

basic legal questions for pre-exam and paper d · basic legal questions for pre-exam and ... basic...

Documents