Platform Formalities Officers - Examination...

1. The Examination 2013 comprises 21 multiple choice questions and 4 open cases2. You should attempt all questions3. Please write clearly, as it is difficult to award marks to illegible answers4. The Paper consists of 21 pages (21 multiple choice questions, 4 open cases and Annex 1, 2 and 3)5. In addition you are provided with - Answer sheets (10 pages) - EPO calendars 2013, 2014 and 2015 - EPO Schedule of Fees6. Please ensure your Examination Number is written on each page of your answer sheets and any forms submitted. Please do NOT write your name on the answer sheets7. When you have finished your exam, we would request you to place all answer sheets including the coloured paper (name, number and signature) in the envelope and to seal the envelop.

Marking

Multiple choice questions: 3 marks per multiple choice question (21 questions)Case 1: 6 marksCase 2: 8 marksCase 3: 8 marksCase 4: 15 marks

Platform Formalities Officers - Examination 2013

Thursday 23 May 2013 Exam starts: 2.00 pm / Exam ends: 5.00 pm

2

Platform Formalities Officers

Platform Formalities Officers - Examination 2013Thursday 23 MayExamination Number : .........

Multiple choice questions:Mark the correct answer with an X in box A, B, C or D

A B C D

Question 1.

Question 2.

Question 3.

Question 4.

Question 5.

Question 6.

Question 7.

Question 8.

Question 9.

Question 10.

Question 11.

Question 12.

Question 13.

Question 14.

Question 15.

Question 16.

Question 17.

Question 18.

Question 19.

Question 20.

Question 21.

3

Answer sheet - 1


4

Answer sheet - 2



Case 1:

1 : China

United States

India

2 : China

United States

India

Case 2:

5

Answer sheet - 3



Case 3:

6

Answer sheet - 4



Case 4:

7



Answer sheet - 5 Case 4 , 1 / 6 pages

8




EP

O 2

300.

1 0

4.08

1

Opponent’s reference

Notice of opposition to a European patent

I. Patent opposed

Patent No.

Application No.

Date of mention of the grant in the European Patent Bulletin (Art. 97(3), Art. 99(1) EPC)

Title of the invention

II. Proprietor of the patent first named in the patent specification

Opponent's or representative's reference (max. 15 keystrokes)

III. Opponent

Name

Address

State of residence or of principal place of business

Nationality

Telephone/Fax

Multiple opponents (see additional sheet)

IV. Authorisation

1. Representative (name only one representative or name of association of representatives to whom notification is to be made)

Address of place of business

Telephone/Fax

Additional representative(s) on additional sheet/see authorisation

9




EP

O 2

300.

2 0

4.08

2


2. Name(s) of employee(s) of the opponent authorised to act in these opposition proceedings under Art. 133(3) EPC

Authorisation(s) to 1./2. not considered necessary

has/have been registered under No.

is/are enclosed

V. Opposition is filed against • the patent as a whole

• claim(s) No(s).

VI. Grounds for opposition:

Opposition is based on the following grounds:

(a) the subject-matter of the European patent opposed is not patentable (Art. 100(a) EPC) because:

• it is not new (Art. 52(1); Art. 54 EPC)

• it does not involve an inventive step (Art. 52(1); Art. 56 EPC)

•patentability is excluded on other grounds, i.e. Article

(b) the patent opposed does not disclose the invention in a manner sufficiently clear and complete for it to be carried out by a person skilled in the art (Art. 100(b) EPC; see Art. 83 EPC).

(c) the subject-matter of the patent opposed extends beyond the content of the application/of the earlier application as filed (Art. 100(c) EPC, see Art. 123(2) EPC).

VII. Facts (Rule 76(2)(c) EPC) presented in support of the opposition are submitted herewith on a separate sheet (annex 1)

VIII. Other requests:

Art.

1 0




EP

O 2

300.

3 0

4.08

3


IX. Evidence presented

Evidence is enclosed

will be filed at a later date

A. Publications:

1

Particular relevance (page, column, line, fig.):

2


3


4


5


6 Particular relevance (page, column, line, fig.):

Continued on additional sheet B. Other evidence

Continued on additional sheet

1 1




EP

O 2

300.

4 0

4.08

4


X. Payment of the opposition fee is made

• as indicated in the enclosed voucher for payment of fees and costs (EPO Form 1010)

• via EPO Online Services

XI. List of documents

Enclosure No.

0 Form for notice of opposition

1 Facts (see VII.)

2 Copies of documents presented as evidence (see IX.)

a Publications

b Other documents

3 Signed authorisation(s) (see IV.)

4 Voucher for payment of fees and costs (see X.)

5 Additional sheet(s)

6 Other

Please specify here:

XII. Signature of opponent or representative

Place

Date

Signature

Name (block capitals)

In case of legal persons, signatory’s position within company

Number of sheets

1 2




EP

001 Filing fee – EP direct 3

Search fee

Designation fee(s) 4

Claims fee(s) (Rules 45(1), 162(1) EPC) 5

Additional copy

Examination fee

AmountCurrency

Total

Renewal fee for the 3rd year

Renewal fee for the 4th year


Code

Fee for grant 6

Extension fee(s)for 8 : _______________________________

Additional fee for printing specification(more than 35 pages) 7

European Patent OfficeTreasury and Accounts80298 MünchenGermanyFax +49(0)89 2399-4465

Please complete in typescript only

Signature

Bank payment /transfer to 1

Name of bank where EPO account held

Deposit account No.

Patent application / patent No. (please use a separate form for each application)

Mode of payment

Debit from deposit account with the EPO is requested 2

Address

Name of payer Payer's reference

EPO

101

0 0

9.10

Notes 1 - 8 see overleaf.

EUR

PCT

Place, date

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

002

005

015

055

006

007

008

033

034

035

___________________________________

___________________________________

___________________________________

___________________________________

___________________________________

Filing fee – entry EP phase 3020

Payment offees and expenses

01

02

03

04

05

06

07

08

03

09

10

11

12

13

14

15

16

17

18

19

20

21

22 0.00

Voucher

1 3


Page: 1 Online Fee Payment - Schedule of Fees 12.05.2013 23:42:11

Online Fee Payment - Schedule of Fees

Search criteriaFee group: FREQUENTLY PAID FEESCode:Description:Valid at: 12.05.2013Currency: EUR

Code Description Amount EUR001 Filing fee - EP direct - not online 200,00 +001 Filing fee - EP direct - online 115,00 +002 Fee for a European search - Applications filed on/after 01.07.2005 1.165,00 +002 Fee for a European search - Supplementary search for applications filed before

01.07.2005840,00 +

003 Fee for an international search 1.875,00 +005 Designation fee - For each State designated (max. 7x) for applications filed before

01.04.200995,00 +

005 Designation fee - For all contracting States designated for applications filed on/after01.04.2009

555,00 +

006 Examination fee - For applications filed before 01.07.2005 and for internationalapplications filed on/after 01.07.2005 without supplementary Europ

1.730,00 +

006 Examination fee - For applications filed on/after 01.07.2005 1.555,00 +007 Fee for grant and printing (not more than 35 pages) or fee for grant including fee for

publication875,00 +

010 Opposition fee 745,00 +011 Fee for appeal 1.240,00 +013 Fee for re-establishment, reinstatement, restoration (EPC, PCT) 610,00 +015 Claims fee - For the 16th to the 50th claim 225,00 +015 Claims fee - For the 51st and each subsequent claim 555,00 +022 Registering of transfer 95,00 +027 Inspection of files (paper copies max. 100 pgs, electr. storage medium) 50,00 +029 Certified copy of application; priority document 50,00 +033 Renewal fee for the 3rd year 445,00 +055 Add. copy of docs cited in search report 40,00 +121 Fee for further processing (late performance of acts R. 71(3)) 240,00 +122 Fee for further processing (non fee related cases) 240,00 +123 Fee for further processing (late payment of a fee - 50%) 0,00 +501 Additional filing fee for the 36th and each subsequent page 14,00 +520 Additional filing fee for the 36th and each subsequent page - entry into EP phase 14,00 +

23.05.2013

EP

001 Filing fee – EP direct 3

Search fee

Designation fee(s) 4

Claims fee(s) (Rules 45(1), 162(1) EPC) 5

Additional copy

Examination fee

AmountCurrency

Total

Renewal fee for the 3rd year



Code

Fee for grant 6

Extension fee(s)for 8 : _______________________________

Additional fee for printing specification(more than 35 pages) 7

European Patent OfficeTreasury and Accounts80298 MünchenGermanyFax +49(0)89 2399-4465

Please complete in typescript only

Signature

Bank payment /transfer to 1

Name of bank where EPO account held

Deposit account No.

Patent application / patent No. (please use a separate form for each application)

Mode of payment

Debit from deposit account with the EPO is requested 2

Address

Name of payer Payer's reference

EPO

101

0 0

9.10

Notes 1 - 8 see overleaf.

EUR

PCT

Place, date

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

EUR

002

005

015

055

006

007

008

033

034

035

___________________________________

___________________________________

___________________________________

___________________________________

___________________________________

Filing fee – entry EP phase 3020

Payment offees and expenses

01

02

03

04

05

06

07

08

03

09

10

11

12

13

14

15

16

17

18

19

20

21

22 0.00

EPO Schedule of Fees

Platform Formalities Officers - Examination 2013 - Thursday 23 May

EPO Calendar 2013

1 4



EPO Calendar 2013 – Provisional

Jan Feb Mar Apr May Jun Jul Aug Sep Oct Nov Dec

Tage / Days / Jours

2013

München

Munich

Den Haag

The Hague

La Haye

Berlin

Neujahr – New Year’s Day – Nouvel An 01.01.2013 x x x

Heilige Drei Könige – Epiphany - Epiphanie 06.01.2013 x

Karfreitag – Good Friday – Vendredi Saint 29.03.2013 x x x

Ostermontag – Easter Monday – Lundi de Pâques 01.04.2013 x x x

Nationalfeiertag – National Holiday – Fête nationale 30.04.2013 x

Maifeiertag – May Day – Fête du Travail 01.05.2013 x x x

Tag der Befreiung – Liberation Day – Journée de la Liberation 05.05.2013 x

Christi Himmelfahrt – Ascension Day – Ascension 09.05.2013 x x x

Pfingstmontag – Whit Monday – Lundi de Pentecôte 20.05.2013 x x x

Fronleichnam – Corpus Christi – Fête-Dieu 30.05.2013 x

Mariä Himmelfahrt – Assumption Day – Assomption 15.08.2013 x

Tag der Deutschen Einheit – Day of German Unity – Fête

Nationale

03.10.2013 x x

Allerheiligen – All Saints’ Day – Toussaint 01.11.2013 x

Heiliger Abend – Christmas Eve – Veille de Noël 24.12.2013 x x x

1. Weihnachtstag – Christmas Day – Noël 25.12.2013 x x x

2. Weihnachtstag – Boxing Day – Lendemain de Noël 26.12.2013 x x x

Silvester – New Year’s Eve – Saint-Sylvestre 31.12.2013 x x x

1 5


EPO Calendar 2014




Tage / Days / Jours

2014

München

Munich

Den Haag

The Hague

La Haye

Berlin













Nationale

03.10.2014 x x






27.04.2014

1 6


EPO Calendar 2015




Tage / Days / Jours

2015

München

Munich

Den Haag

The Hague

La Haye

Berlin













Nationale

03.10.2015 x x






27.04.2015

Examination 2013 ( 21 pages)

1 7



Examination - 1

1

Multiple choice questions

Question 1

Design rights have a limited validity period. What is the minimum duration of protection for an International design registration under the 1999 Act?

a. 25 years from the date of filing the application (initial 5 years + renewal for four additional 5-year periods).

b. 15 years from the date of filing the application (initial 5 years + renewal for two additional 5-year periods); a duration of protection in excess of 15 years may be provided by certain Contracting Parties in accordance with national legislation.

c. 10 years from the date of filing the application (initial 5 years + renewal for one additional 5-year period); a duration of protection in excess of 10 years may be provided by certain Contracting Parties in accordance with national legislation.

d. 5 years from the date of filing the application; a duration of protection in excess of 5 years may be provided by certain Contracting Parties in accordance with national legislation.

1 8



1

Examination - 2

2

Question 2

On 19 April 2013 a Dutch patent application is filed at the Netherlands Patent Office (NLOC) by fax, consisting of the following documents:

- an application form, signed by a patent attorney, only showing contact details of the attorney

- one sheet of text in the Chinese language and the handwritten words “our invention”, without claims and without abstract.

After having sent the fax, the attorney sends the above mentioned original papers, now including information about the Chinese applicant, by ordinary mail to NLOC. These original papers are delivered on 23 April 2013. Which of the following is correct:

a. As the papers filed by fax meet the minimum requirements, a filing date can be assigned based on the fax filing. The filing date will be 19 April 2013.

b. The papers filed by fax do not meet the minimum requirements, but the original papers do. Thus, a filing date can be assigned based on the date of receipt of the original papers. The filing date will be 23 April 2013.

c. None of the papers filed meet the minimum requirements, however the filing date of 23 April 2013 will be assigned based on the original papers, provided a translation of the Chinese text into Dutch or English is filed.

d. None of the papers filed meet the minimum requirements; your only option is to file a new application that does meet the minimum requirements as soon as possible.

1 9



2

Examination - 3

3

Question 3

A client residing in the United States instructs your firm to file a PCT patent application on his behalf, claiming priority from a US provisional patent application. The client is the sole applicant, and asks whether your Dutch patent attorney, who is not a professional representative before the EPO, can represent him as his agent.

How do you reply to this client?

a. You will file the PCT patent application with the Netherlands Patent Office (NLOC) as Receiving Office, and your attorney will be able to continue acting as his agent after filing.

b. You will file the PCT patent application with the European Patent Office as Receiving Office, and your attorney will be able to continue acting as his agent after filing.

c. You will file the PCT patent application with the International Bureau of WIPO as Receiving Office, however the client will have to appoint an agent based in the USA for the subsequent procedure.

d. Regrettably you have to decline this case, as the PCT patent application must be filed with the USPTO as Receiving Office directly.

2 0



3

Examination - 4

4

Question 4

Your client is the owner of an International design registration containing three (3) industrial designs D1, D2, and D3. The following Contracting Parties have been designated for each of the designs:

For D1: Benelux (BX), Germany (DE), France (FR)

For D2: BX, DE, Italy (IT)

For D3: only FR and IT

The client informs you that, due to an agreement reached with a competitor, he would like to give up protection for the design D3 only. The international registration will be due for renewal soon.

Consider the following statements:

I. The client’s request may be effected by renewing the international registration for designs D1 and D2 only.

II. The client’s request may be effected by renouncing the international registration for the contracting parties France and Italy.

Are these statements correct?

a. Statements I and II are both correct b. Only statement I is correct c. Only statement II is correct d. Both statements are wrong

Question 5

Today, a Dutch inventor calls your firm. He is applicant for a PCT patent application, which he filed himself at the International Bureau of WIPO. He mentions that he has received a letter dated 17 April 2013, stating that he needs to pay a filing fee and a late payment fee. He has received the letter only on 23 April 2013, and has evidence that the letter was really not delivered to him until that day.

The inventor asks whether it is still possible to pay these fees. How do you reply?

a. The time limit to pay the fee ended on 17 May 2013, but you will call the International Bureau immediately to see what could still be done.

b. This is still possible, however the payment must be made today (23 May 2013). c. This is still possible; the payment can be made up to and including 27 May 2013. d. This is still possible; the payment can be made up to and including 17 June 2013.

2 1



4

Examination - 5

5

Question 6

Regarding a Euro-PCT patent application, you received a Rule 161(1) EPC communication dated 24 May 2011. The patent attorney filed a response, whereafter the EPO sent as their next letter a communication under Rule 71(3) EPC dated 2 December 2012.

You have now received a letter from the EPO stating that the publication of the mention of the grant will take place on 5 June 2013.

What is the last day on which a voluntary divisional application can be filed?

a. 24 May 2013 b. 3 June 2013 c. 4 June 2013 d. 12 December 2014

Question 7

Review the following statements regarding Benelux trademark applications:

I. For a Benelux trademark application it is possible to claim priority at the moment of filing the application or within a period of two months from the filing of the application.

II. It is possible to add an additional class of goods/services in a Benelux trademark application within a period of two months from the filing of the application.



2 2



5

Examination - 6

6

Question 8

You have filed a European patent application in Dutch and you have received a date of filing. However, you did not file a translation in one of the official EPO languages within 2 months from the date of filing.

How can you resolve this problem?

a. You should file the translation with further processing immediately. b. The only remedy is to file the translation together with a request for re-establishment of rights,

assuming all due care can be proven. c. You will receive an invitation from the EPO to rectify the deficiency within an additional period

of 2 months from the invitation. d. You have to file a new application in an official language, thereby obtaining a new filing date.

Question 9

Review the following statements regarding International design applications:

I. It is possible to file an International design application directly with the International Bureau of WIPO.

II. An International design application may include more than one industrial design, however the different designs must relate to a single product.



2 3



6

Examination - 7

7

Question 10

Today a client sends you an email regarding his pending International patent application, which will be published soon. He is attaching a document with significant amendments to be made to the description of the application. The claims need not be amended.

The client asks you to file these amendments, but mentions that he has limited funds available. Based on this remark, you conclude that the client cannot afford international preliminary examination and, thus, that filing a demand is not an option.

The International patent application was filed on 13 December 2012, claiming priority of a US provisional patent application of 15 December 2011. The international search report was transmitted on 3 April 2013.

What is the latest date on which these amendments can be filed?

a. 3 June 2013 b. 4 June 2013 c. 5 June 2013 d. It is not possible to file these amendments (anymore).

2 4



7

Examination - 8

8

Question 11

For your client, one of the formalities officers in your firm, validated a European patent in the Netherlands by filing a Dutch translation with the Netherlands Patent Office (NLOC) and paying the required fee. The patent was granted on 6 February 2013 in the French language.

This morning, you inspected the electronic file for the case at NLOC. To your surprise, NLOC declared that the patent is not in force in the Netherlands due to a deficiency, which has not been remedied (Art 52.4B Row1995). The file contains a letter from NLOC (“termijnbrief wegens vormgebreken”), indicating that the page margins are too small. The letter is dated 22 April 2013 and sets a term of one month to correct the problem.

It turns out that NLOC’s finding is simply not correct; you carefully measured all page margins and found all margins were 2,5 cm wide, fully meeting the requirements.

After investigating in your office, the letter is found at the desk of the responsible formalities officer. When asked about the letter, she replies in a snappy tone that she is simply too busy to deal with this kind of incoming mail and that, in her opinion, this patent was not very important anyway.

How can you proceed to save this client’s patent in the Netherlands?

a. You should request reestablishment of right with NLOC (“herstel in de vorige toestand”) for the failure to address the deficiency in time.

b. You should file an appeal with NLOC (“bezwaar volgens de Algemene wet Bestuursrecht”) pointing out that the finding in their letter is erroneous.

c. You can file the translation of the description again, together with a note explaining that the margins are correct. This must be done today, as the one month term starts with the delivery of the letter from NLOC, which could not have been any earlier than 23 April 2013.

d. Unfortunately, this situation cannot be resolved and the loss of the patent is irrevocable.

2 5



8

Examination - 9

9

Question 12

Your client, the Belgian company Leonidas had filed a Benelux trademark application for the mark “The famous chocolates from Belgium”.

One of Leonidas’ competitors filed an opposition against this trademark application. The Benelux Office for Intellectual Property has decided that the opposition against your client’s Benelux trademark application is justified, and refuses to register the trademark. Leonidas is not pleased and wishes to file an appeal.

What is the deadline to file this appeal and where does the appeal have to be filed?

a. Leonidas has 2 months after the date of the decision to file the appeal at the Court of Brussels. b. Leonidas has 2 months after the date of the decision to file the appeal at the Benelux Office for

Intellectual Property. c. Leonidas has 3 months after the date of the decision to file the appeal at the Court of Brussels. d. Leonidas has 3 months after the date of the decision to file the appeal at the Benelux Office for

Intellectual Property.

2 6



9

Examination - 10

10

Question 13

Today, exactly 16 months ago, a US provisional patent application was filed by your associates in the United States, on behalf of one of your clients. At the time, the USPTO has been requested to make the priority document available electronically through the WIPO Digital Access Service (DAS). At the end of the priority year, your firm filed a PCT patent application with the International Bureau of WIPO as Receiving Office, claiming priority to the same US provisional patent application. In the PCT form, the Receiving Office was authorized to obtain a copy of the priority document from the DAS digital library. Further, your patent attorney, who is agent for the PCT patent application, has been given eOwnership of this international application in the ePCT web service.

On the same day as the PCT patent application, your agent in Taiwan filed the same application in Taiwan, also claiming priority from the original US provisional patent application.

This agent called you this morning to warn that he had not received the priority document from the USPTO yet and that the document has to be submitted to the office today. He also informs you that a time extension of 2 months can be obtained, for which he needs at least an electronic copy of the front page of the priority application.

How can you proceed?

a. Using (private) ePCT, your patent attorney can retrieve an electronic copy of the priority document from the file of the unpublished international application. This copy can be submitted to your agent.

b. You can call WIPO and request them to immediately forward an electronic copy of the priority document from the DAS digital library to the patent office in Taiwan, and inform your agent accordingly.

c. You can authorize the patent office in Taiwan to access the priority document from the WIPO digital library.

d. You can inform the agent that the priority document is already available in the WIPO digital library, and that he need not take further action.

2 7



10

Examination - 11

11

Question 14

Mr. T.Y. Coon owns and runs two separate companies, Red Band and Blue Band.

Red Band is the sole applicant of a Dutch patent application NL1 which has been filed. Today, close to the end of the 12 months’ priority term, Mr. Coon considers to file a European patent application EP1 for the same invention, claiming priority from NL1. Mr. Coon is the sole inventor of both NL1 and EP1.

Please review the following two statements:

I. If Blue Band is made the sole applicant of patent application EP1, then the priority claim will be valid without any further actions being required.

II. If Red Band and Blue Band are made joint applicants of patent application EP1, then the priority claim will be valid without any further actions being required.



Question 15

Review the following statements regarding a Benelux trademark opposition procedure:

I. In a Benelux opposition procedure it is possible to pay the opposition fee in two parts. The first part has to be paid at the time of filing the opposition and the second part has to be paid at least one day before the start of the (adversarial) opposition proceedings.

II. In a Benelux opposition procedure, the opponent and defendant can agree to exchange their arguments in English, in which case the Benelux Office for Intellectual Property will also issue the decision in English.


a. Statements I and II are both correct

b. Only statement I is correct

c. Only statement II is correct

d. Both statements are wrong

2 8



11

Examination - 12

12

Question 16

Your client has become aware that a competitor filed an application for a Community Trademark (CTM) on 1 December 2012 that is very similar to a registered Benelux Trademark owned by the client. The competitor’s CTM application was published on 22 March 2013.

Your client would like to file an opposition against the competitor’s trademark.

What is/was the last day to file the opposition?

a. 22 May 2013 b. 3 June 2013 c. 24 June 2013 d. 1 July 2013

Question 17

Can the priority claimed in an International patent application be withdrawn after international publication?

a. No, priority may never be withdrawn, not even prior to publication. b. No, priority can only be withdrawn until the completion of the technical preparations for

publication. c. Yes, priority may be withdrawn up to the due date for filing a demand. d. Yes, priority may be withdrawn at any time prior to expiry of 30 months from priority.

2 9



12

Examination - 13

3 0



13

13

Question 18

The companies Red Band and Blue Band from question 14 filed, as joint applicants, another patent application, namely an International patent application filed with the European Patent Office as Receiving Office.

Your patent attorney had been appointed by these companies as their agent for the International patent application, for which he was given a separate power of attorney signed by both applicants.

Recently, the original applicants sold some patents, including this International patent application, to an Argentinean company, Banda Verde. As a consequence, Banda Verde was registered at the International Bureau of WIPO as the new applicant, replacing the two Dutch companies.

Review the following statements:

I. The International patent application could be withdrawn by your patent attorney, by submitting a notice of withdrawal to the European Patent Office, using the existing power of attorney.

II. A demand for international preliminary examination may validly be filed by Banda Verde.






Question 19

Your client’s European patent application has been granted on 2 May 2013. The application was filed on 19 June 2010 as a divisional application from an earlier European patent application with filing date 10 April 2008.

What will be the deadline for payment of the first renewal fee in the Netherlands without penalty?

a. 30 June 2013 b. 31 July 2013 c. 30 April 2014 d. 1 May 2014

13

Question 18

The companies Red Band and Blue Band from question 14 filed, as joint applicants, another patent application, namely an International patent application filed with the European Patent Office as Receiving Office.

Your patent attorney had been appointed by these companies as their agent for the International patent application, for which he was given a separate power of attorney signed by both applicants.

Recently, the original applicants sold some patents, including this International patent application, to an Argentinean company, Banda Verde. As a consequence, Banda Verde was registered at the International Bureau of WIPO as the new applicant, replacing the two Dutch companies.

Review the following statements:

I. The International patent application could be withdrawn by your patent attorney, by submitting a notice of withdrawal to the European Patent Office, using the existing power of attorney.

II. A demand for international preliminary examination may validly be filed by Banda Verde.






Question 19

Your client’s European patent application has been granted on 2 May 2013. The application was filed on 19 June 2010 as a divisional application from an earlier European patent application with filing date 10 April 2008.

What will be the deadline for payment of the first renewal fee in the Netherlands without penalty?

a. 30 June 2013 b. 31 July 2013 c. 30 April 2014 d. 1 May 2014

Examination - 14

14

Question 20

Your client is a well-known manufacturer of medical equipment with headquarters in the Netherlands. Some time ago, they have filed a PCT patent application in English, with the European Patent Office as Receiving Office. The application will be published shortly.

Recently, you received a declaration that no international search would be established, because the European Patent Office considers the claimed invention to be a method for treatment of the human body, which the EPO is not required to search under R. 39.1 PCT.

Consider the following statements representing possible advice you can give to the client. Which of these is correct?

a. Amendments can be filed under Art. 19 PCT.

b. The client is entitled to a refund of the search fee.

c. If a demand is filed with arguments that the claims are in fact not a method for treatment, the

EPO must reconsider and examine the claims.

d. A request can be filed for the Russian Patent Office to carry out a supplementary international

search for this application, under R. 45bis. 1 PCT.

Question 21

On 1 July 2013 Croatia will be a new Member State of the European Union. What does this mean for existing Community Trademarks and Designs?

a. Extension of these rights to Croatia will take place automatically.

b. An application must be filed within 6 months after 1 July 2013 to extend the trade mark and

design rights to Croatia.

c. An application must be filed during the 6 months before 1 July 2013 to extend the trade mark

and design rights to Croatia.

d. Only Community Trademark and Design applications filed as from 1 July 2013 will be protected

in the extended European Union including Croatia.

3 1



14

Examination - 15

15

Open cases

Case 1

Your client owns the International patent application PCT/NL2012/00301 filed on 27 February 2012, validly claiming priority of the Dutch patent application no. 1000012 filed on 26 February 2011.

Your client is interested in entering the national phase for this application in China, the United States and India.

1. What is the latest date (including possible extensions and/or grace periods, but excluding any possibilities to obtain restoration or re-establishment of rights) to enter the national phase in these countries?

2. What is the latest date (including possible extensions and/or grace periods, but excluding any possibilities to obtain restoration or re-establishment of rights) to request examination in these countries?

3 2



15

Examination - 16

16

Case 2

Some time ago you had received an EPO Communication about the intention to grant a European patent application. From the Communication it appeared that, if you wanted to approve the text intended for grant, you had to perform the following two acts:

- filing of a translation of the claims in French and German - payment of the fee for grant/publication

within a period of 4 months. Furthermore, the Communication mentioned that no additional claims fees have to be paid.

Your client, applicant for this European patent application, was short on money at the time and wanted to delay the grant procedure.

1. Is it possible to request and obtain extension for the four months time limit, based on the poor financial position of the Applicant? Motivate your answer.

Since the client wanted to delay the procedure, the patent attorney chose to deliberately not observe the period of four months (or, if applicable, the extended period), as a result of which the application became deemed withdrawn.

Next, the patent attorney requested further processing, while at the same time filing an amended claim 1 with a letter explaining the amendments, and paying the fees due.

2. What was the total amount of the fee(s) due in this situation? Motivate your answer.

The EPO approved amended claim 1 and you received a new Communication about the intention to grant. Also this time the patent attorney chose not to observe the period of 4 months, as a result of which the application has now become deemed withdrawn again.

Now, the patent attorney requests further processing and files a translation of the claims into French and German, also paying the fees due.

3. What is the total amount of the fee(s) due in this situation? Motivate your answer.

Suppose the patent attorney, in search for a further delay of the procedure, considers not observing the time limit for requesting further processing in the present situation.

4. Would it be possible to validly request further processing in respect of this non-observed time limit? Motivate your answer.

3 3



16

Examination - 17

17

Case 3

Some weeks ago, on 3 May 2013, your firm filed an International patent application with the European Patent Office as Receiving Office, for which your patent attorney acts as agent.

The applicant Kollegg Inc. is a resident and national of the United Kingdom and the inventors, James Entwistle and Carl Gutjas, are residents and nationals of the United States of America. You filed the application indicating that Mr. Entwistle and Mr. Gutjas as “applicants for the US only” and Kellogg Inc. as “applicant for all designated States except the US”.

Today, your patent attorney comes to your desk and asks your attention for this case. It seems you had forgotten to claim priority from Kollegg’s earlier application A filed on 7 May 2012.

1. Until what date can the priority claim from A be added to the International patent application?

Your attorney further reminds you that there was a change in the U.S. law, and that due to this change, he wants you to change the applicants.

2. Please indicate to what change in the U.S law the attorney refers.

3. Please explain which changes you would make, and under which rule you would request these changes.

4. Under the changed law, does the USPTO still require a declaration of inventorship? If yes, how can such declaration be added to the International patent application, and what is the latest date for doing so?

3 4



17

Examination - 18

18

Case 4

Please see attached Annex 1, an internal memo from your patent attorney, Annex 2, a letter from one of your clients and Annex 3, copy of the B1 front page.

1. What is the last day for validly filing the opposition?

2. In accordance with your attorney’s instructions, please prepare a ‘Notice of opposition to a

European patent’ (Boxes I-IV, X and XI only) including the Voucher for payment of fees and costs.

On the date calculated in Case 4.1, the opposition is filed by one of your colleagues, who personally delivered the papers to the EPO in The Hague. One week later, you realize that the payment voucher still is lying on your colleague’s desk. It appears that, inadvertently, only the notice of opposition was filed, and the payment voucher was inadvertently overlooked.

3. What is the legal situation?

4. Can you request further processing and/or re-establishment of rights to resolve this? Motivate your answer.

3 5



18

Examination - 19

19

Annex 1 Internal Memo Date: 23 May 2013 Case: O307/EP Octrooibureau ‘ Future Patents’ Tel: 020-9545222 Fax: 020-9545223 Email: [email protected] Please prepare a ‘Notice of opposition to a European patent’ for a new opposition for our client Floor Management B.V. Please fill in Box I, II, III, IV, X and XI, and forward this form to me to complete and sign the form. Please prepare the payment voucher as well. A copy of the client’s letter of instructions is enclosed. Guus

3 6



19

Examination - 20

20

Annex 2 Mr. Ben Saunders Floor Management B.V. De Kade 12 4588 EN Nijmegen THE NETHERLANDS Mr. Guus Hetebrij European Patent Attorney Hoofdstraat 25 1029 CM Amsterdam THE NETHERLANDS 1 May 2013 Dear Mr. Hetebrij, We would like to file an opposition on behalf of Floor Management B.V. against European Patent EP 1 850 318 in the name of Nintendo Co., Ltd. Regards, Ben Saunders

3 7



20

Examination - 21

21

Annex 3 (11) EP 1 850 318 B1

(12) EUROPEAN PATENT SPECIFICATION (45) Date of publication and mention (51) Int Cl.:: G10H 1/34

(2006.01)

of the grant of the patent 30.08.2012 Bulletin 2012/32 (21) Application number: 06020833.7 (22) Date of filing: 04.10.2006

______________________________________________________________________________________

(54) Storage medium having music playing program stored therein and music playing apparatus thereof Speichermedium mit darauf gespeichertem Musikabspielprogramm und Musikabspielgerät Support de stockage stockant un programme de musique et appareil de musique correspondant ____________________________________________________________________________________

(84) Designated Contracting States: • Osada, Junya DE FR GB Minami-ku Kyoto 601-8501 (JP) (30) Priority: 25.04.2006 JP 2006120926 (74) Representative: Lang, Johannes et al (43) Date of publication of application: Bardehle

Pagenberg

31.10.2007 Bulletin 2007/44 Prinzregentenplatz 7

81675 München (DE)

(73) Proprietor: Nintendo Co., Ltd. Kyoto 601-8501 (JP) (56) References cited: EP-A1- 1 729 290 WO-A2-

2004/072767 (72) Inventors: US-A1- 2002 126

014 US-A1-2003 066

413 • Hikino, Mitsuhiro US-A1- 2004 011

189 US-A1-2005 098

021 Minami-ku Kyoto 601-8501 (JP)

3 8



21

Platform Formalities Officers - Examination...

Documents

Transcript of Platform Formalities Officers - Examination...