EQE flashcards

32 cards. Read the term and the definition here. The deck at the top of this page is optional.

Art. 123(2) EPC

Amendments to a European patent application or patent 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.

Art. 123(3) EPC

Claims of a granted European patent may not be amended in opposition in a way that extends the protection conferred; the comparison is between the scope of the granted claims and the amended claims.

Art. 54(2) EPC

The state of the art comprises everything made available to the public by means of a written or oral description, by use, or in any other way, before the date of filing or the priority date.

Art. 54(3) EPC

European applications with an earlier filing or priority date and publication on or after the later date are prior art for novelty only, and only if they designate the same contracting state.

Art. 56 EPC

An invention is considered to involve an inventive step if, having regard to the state of the art, it is not obvious to a person skilled in the art; the problem-solution approach structures this assessment.

Art. 87(1) EPC

Priority may be claimed from a first filing in a Paris Convention or WTO state within 12 months, provided the priority document discloses the claimed subject-matter in a directly and unambiguously derivable way.

Art. 69 EPC

The extent of protection is determined by the claims, with the description and drawings used to interpret them; the Protocol excludes both a purely literal reading and a purely purposive reading divorced from the claims.

Art. 100 EPC grounds

Opposition may be based only on added matter under Art. 123(2), insufficiency under Art. 83, or lack of novelty or inventive step under Art. 54 and 56 EPC; these grounds are exhaustive.

Rule 52 EPC priority claim

The priority claim must be made within 16 months of the priority date; the priority document must be filed within the same period, and a translation may be required if it is not in an accepted language.

Art. 55 EPC grace period

A six-month grace period before filing applies only to disclosures due to abuse or to display at an official international exhibition; ordinary publication destroys novelty in Europe.

PCT national phase 30 months

Under PCT Art. 22(1) or 31(1), the applicant enters the national or regional phase within 30 months of the priority date; at the EPO, a translation and the filing fee are due in that period.

Art. 121 EPC further processing

Further processing allows a missed EPC time limit to be remedied by a request and fee; it does not apply to the priority period, the opposition period, or the appeal-fee period.

Art. 122 EPC re-establishment

Re-establishment requires that the applicant or proprietor took all due care, and the request must be filed within two months of removal of the cause and within one year of the missed time limit.

Problem-solution approach

Inventive step is assessed by identifying the closest prior art, the distinguishing features, the objective technical problem, and whether the claimed solution was obvious to the skilled person.

Art. 64(1) EPC

A European patent for a product confers protection against any use of the product; a process patent covers the use of the process and, under Art. 64(2), products directly obtained by it.

Rule 132 EPC time limits

Time limits are computed excluding the day of the event and ending on the corresponding day of the relevant month; if that day is a non-working day, the limit extends to the next working day.

Art. 99(1) EPC opposition period

Opposition must be filed within nine months of publication of the mention of grant; the opposition fee is due in that period and the notice must state the grounds and facts.

Art. 108 EPC appeal

The notice of appeal must be filed within two months of the decision, with the appeal fee paid in that period; the statement of grounds must be filed within four months of the decision.

PCT Art. 19 amendments

Amendments to the claims under PCT Art. 19 are filed with the International Bureau within two months from the international search report or 16 months from priority, whichever is later.

PCT Art. 34 amendments

Amendments under Chapter II are filed with the International Preliminary Examining Authority during preliminary examination, before the international preliminary examination report is established.

Rule 161 EPC invitation

Where the EPO acted as International Searching Authority, the applicant may be invited to remedy deficiencies and file amendments; a response is normally due within six months.

Rule 164 EPC partial search

The EPO as ISA may issue a partial search declaration and invite additional fees; a protest against the invitation must be filed within one month and is decided by the review panel.

Rule 43(1) EPC two-part claim

Where appropriate, an independent claim must have a preamble reciting the features of the closest prior art and a characterising portion reciting the distinguishing features; the form is not mandatory if inappropriate.

Rule 76(2) EPC opposition notice

The notice of opposition must identify the opponent and patent, state the grounds under Art. 100 EPC, and set out the facts and evidence relied on, all within the opposition period.

Art. 105a EPC limitation

The proprietor may request limitation or revocation during opposition; limitation is examined by the Examining Division, and the opposition continues on the limited claims if the limitation is allowed.

Art. 83 EPC sufficiency

The application must disclose the invention clearly and completely enough for the skilled person to carry it out across the whole scope claimed, without undue burden.

Art. 64 EPC infringement

Infringement of a European patent is determined by national courts; the EPC does not provide a uniform infringement test, so cross-border analysis must consider each designated state's law.

Freedom-to-operate analysis

An FTO study compares the client's product or process with the claims of unexpired third-party patents in the relevant jurisdictions, applying claim interpretation and equivalents under national law.

Art. 138 EPC national revocation

National courts may revoke a European patent on grounds including added matter, insufficiency, lack of novelty or inventive step, and extension of protection, as provided in the EPC.

Art. 69 Protocol interpretation

The Protocol on Interpretation of Art. 69 EPC excludes a purely literal reading and a purely purposive reading; the claims define scope, with the description and drawings used to interpret them.

Unified Patent Court Agreement

The UPC Agreement provides a separate litigation route for European patents with unitary effect and for opted-in European patents; the EPC remains the framework for grant.

Due-diligence portfolio check

A portfolio opinion should verify chain of title, priority validity, annuity status, opposition and appeal status, and whether claims have been limited under Art. 105a EPC.