Monday, 22 February 2010

The front page of Annex 1

The front page may reveal interesting information:
  • the proprietor: is there another annex of the same proprietor, be extra alert for 'first application' issues
  • priority country: WTO state and Annex 1 is a Euro-PCT, check the transitional provisions
  • priority claimed from a US continuation: invalid, it can never be the first application;
    from a US continuation in part - only valid for the later added matter
  • warning that claims have been added after filing (it must thus be under EPC2000): all claims must be examined also for added subject-matter
  • a B1 publication: if the client indicates that a central limitation has taken place (and what) be aware that you must attack the limited claims and not the claims of the B1 publication

EQE 2010 - possible topic

The last couple of years added subject-matter has not been tested in a complex situation; the issue of disclaimers has also not been in the C exam following G1/03 and G2/03. Combining those two can lead to interesting issues in the exam. For example, the client may be upset that the proprietor introduced a disclaimer during examination. Your first assessment of Annex 1 may reveal that the disclaimere was introduced to restore novelty over an Art.54(3) prior right (e.g. Annex 3). So, it looks like this is an allowable disclaimer. Later you may discover that a normal Art.54(2) disclosure, e.g. Annex 4, which is not an accidental disclosure, already discloses the disclaimed subject-matter. The disclaimer is thus not allowable and vioates Art.100(c) (in view of Art.123(2)).

Any other interesting topics?