EQE cheat sheet

Under Art. 123(2) EPC, amendments may not add subject-matter extending beyond the content of the application as filed; the standard is what is directly and unambiguously derivable from the whole disclosure, drawings included.

Under Art. 123(3) EPC, claims in opposition may not be amended to extend the protection conferred; the comparison is between granted claim scope and amended scope, so a narrowing that shifts category (product to process) can still offend.

Art. 54(1) EPC: an invention is novel if it does not form part of the state of the art; Art. 54(2) defines state of the art as everything made available to the public before the filing date (or priority date).

Art. 54(3) EPC: European applications with earlier filing/priority dates and publication on or after the later date are prior art for novelty only, not for inventive step, and only if designating the same state.

Art. 56 EPC: inventive step requires that, having regard to the state of the art, the invention is not obvious to a person skilled in the art; the problem-solution approach uses closest prior art, distinguishing features, objective technical problem, and obviousness.

Art. 87(1) EPC: priority requires the same invention, a first filing in a Paris Convention or WTO state, and filing within 12 months; the priority document must disclose the subject-matter claimed in a directly and unambiguously derivable way.

Claim interpretation under Art. 69 EPC and its Protocol uses the claims as the primary reference, with the description and drawings used to interpret; the Protocol excludes a purely literal reading and a purely purposive reading divorced from the claims.

Art. 84 EPC requires claims to be clear, concise, and supported by the description; lack of clarity under Art. 84 is not an opposition ground, but lack of support under Art. 83 (sufficiency) and Art. 123(2) may be.

Art. 100 EPC opposition grounds are exhaustive: added matter (Art. 123(2)), insufficiency (Art. 83), and lack of novelty or inventive step (Art. 54/56); clarity and support are not grounds.

Art. 101(3) EPC: the Opposition Division may maintain the patent as amended, provided the amendments comply with the EPC; Art. 105a EPC allows limitation at the request of the proprietor during opposition.

Client instructions must be checked against the deadline regime: for example, response to an Art. 94(3) EPC communication is 4 months, and to a Rule 71(3) EPC communication (approval) 4 months, with further processing under Art. 121 EPC available if the time limit is missed.

A priority claim must be made within 16 months of the priority date (Rule 52 EPC) and the priority document filed within 16 months (Rule 53 EPC); if the priority document is not in an EPO-accepted language, a translation may be required.

When a client supplies a publication or prior use, distinguish novelty-only Art. 54(3) prior art from Art. 54(2) prior art; the former cannot be combined for inventive step and matters only if it designates the same state.

When a client asks whether to file before publishing, check Art. 55 EPC (6-month grace period only for abuse or official exhibitions) and Art. 54(2) EPC: any prior public disclosure destroys novelty in Europe, unlike the US 1-year grace period.

For PCT national phase entry, the 30-month deadline under PCT Art. 22(1) (or 31(1) for Chapter II) applies; the EPO as designated Office requires translation of the international application (Rule 159 EPC) and payment of the filing fee within the same period.

When evaluating an invention disclosure, apply the problem-solution approach: identify the closest prior art, the distinguishing features, the technical effect, and whether the effect is achievable across the scope claimed (Art. 83 EPC sufficiency).

If the client instructs a narrowing amendment, verify Art. 123(2) EPC basis in the application as filed (not the priority document alone) and Art. 123(3) EPC for granted patents; an amendment based only on the priority document may be added matter.

When a client asks about infringement, distinguish Art. 64(1) EPC (product protection covers all uses) from Art. 64(2) EPC (process protection extends to products directly obtained), and consider the national law of the designated state.

EPC time limits: Rule 132 EPC excludes the day of the event and ends on the corresponding day of the relevant month; if that day is a non-working day, the limit extends to the next working day (Rule 134(1) EPC).

Further processing under Art. 121 EPC applies to missed EPC time limits (not to the priority period, the opposition period, or the 12-month period for payment of the appeal fee); re-establishment under Art. 122 EPC requires due care and a 2-month period from removal of the cause, within 1 year.

The opposition period is 9 months from publication of the mention of grant (Art. 99(1) EPC); the opposition fee must be paid within that period, and the notice of opposition must state the grounds and facts (Rule 76 EPC).

Appeal: the notice of appeal must be filed within 2 months of the decision (Art. 108 EPC), with the appeal fee paid in that period, and the statement of grounds filed within 4 months of the decision.

PCT: international filing (Art. 3 PCT), international search (Art. 15-18 PCT), publication at 18 months (Art. 21 PCT), and optional preliminary examination (Chapter II, Art. 31 PCT); the EPO may act as ISA, IPEA, and designated Office.

PCT Art. 19 amendments are filed with the IB within 2 months from the ISR or 16 months from priority, whichever expires later; Art. 34 amendments are filed with the IPEA during Chapter II, before the IPER is established.

The EPO as designated Office applies Rule 161 EPC: the applicant may be invited to remedy deficiencies and to file amendments; a response to a Rule 161/162 communication is normally 6 months.

Under Art. 105a EPC, the proprietor may request limitation or revocation during opposition; limitation is examined by the Examining Division, and the opposition proceedings continue on the limited claim set.

Under Rule 164 EPC, the EPO as ISA may issue a partial search declaration; a protest against the additional-fee invitation is decided by the review panel, and the protest must be filed within 1 month of the invitation.

Independent claim structure: a two-part form under Rule 43(1) EPC where appropriate - a preamble reciting the closest prior art features and a characterising portion reciting the distinguishing features; the two-part form is not mandatory if inappropriate.

Claim categories: product, process, apparatus, and use claims; a product claim covers any use of the product (Art. 64(1) EPC), and a process claim covers products directly obtained by the process (Art. 64(2) EPC).

Drafting for Art. 123(2) EPC: every feature in the claim must have a basis in the application as filed, either literally or by direct and unambiguous derivation; a generic disclosure does not provide a basis for a specific selection unless the selection is disclosed.

When responding to an Art. 94(3) EPC communication, address each objection explicitly, amend only where necessary, and provide a basis for each amendment in the application as filed; arguments without amendment can succeed where the examiner's reading is wrong.

Opposition notice under Rule 76(2) EPC must contain: the particulars of the opponent, the patent number, the grounds under Art. 100 EPC, the facts and evidence, and the requests; the grounds must be substantiated within the 9-month period.

In opposition, the patentee may amend under Art. 101(3) EPC; a new independent claim may be filed, but the amendment must be a response to the grounds and must not extend the scope (Art. 123(3) EPC) or add matter (Art. 123(2) EPC).

If the patentee files a limitation under Art. 105a EPC during opposition, the Opposition Division must stay the opposition pending the limitation decision; the limited claims replace the granted claims if the limitation is allowed.

For a claim to be sufficiently disclosed under Art. 83 EPC, the specification must enable the skilled person to carry out the invention across the whole scope claimed, without undue burden; a single example may not support a broad genus.

Freedom-to-operate analysis compares the client's product or process with the claims of unexpired third-party patents in the relevant jurisdictions; the analysis must consider claim interpretation and equivalents under national law.

A validity opinion should address Art. 100 EPC grounds (added matter, sufficiency, novelty, inventive step) and, where relevant, Art. 138 EPC grounds for national revocation; the opinion should state assumptions and the evidence relied on.

Infringement under Art. 64 EPC is determined by national courts; the EPC does not provide a uniform infringement test, so a cross-border opinion must consider each designated state's law and the Protocol on Interpretation of Art. 69 EPC.

For a patentability opinion, distinguish the prior art under Art. 54(2) EPC (any public disclosure) from Art. 54(3) EPC (earlier European applications), and assess inventive step using the problem-solution approach with a realistic closest prior art.

A due-diligence opinion on a patent portfolio should check: chain of title, priority validity, annuity payment status, opposition/appeal status, and whether the claims have been limited under Art. 105a EPC.

For a client asking whether to oppose, consider the 9-month window, the cost of opposition, the possibility of national revocation proceedings (Art. 138 EPC), and whether a limitation request by the patentee is likely to moot the opposition.

When advising on the UPC and EPC interaction, note that the Unified Patent Court Agreement provides a separate litigation route for European patents with unitary effect and for opted-in European patents; the EPC remains the grant framework.

A legal opinion on added matter should compare the amended claim with the application as filed, not with the granted claim, and should identify the specific passage that provides a direct and unambiguous basis.