EQE Paper F cheat sheet

Under Art. 60(1) EPC the right to a European patent belongs to the inventor or the inventor's successor in title; the EPO examines entitlement only in limited contexts (e.g. Art. 61, Art. 81, national proceedings under Art. 61(1)).

Art. 61(1) EPC: a final national decision that the applicant is not entitled is a ground for the true proprietor to prosecute the application, or to file a new European application for the same invention, within three months of the decision becoming final.

The Art. 61(1) three-month period is non-extendable; the new application is treated as filed on the filing date of the earlier application and, if the earlier application enjoyed priority, that priority carries over (Art. 61(1), last sentence).

Art. 61(1) new application must be limited to subject-matter disclosed in the earlier application (or in the earlier application as granted, where relevant); added matter objections apply via Art. 123(2).

Employee inventions: entitlement is governed by national law (Art. 60(1), second sentence); the EPO applies the law of the state where the employee is mainly employed, or the state of the employer's place of business if the place of employment cannot be determined.

Art. 81 EPC requires designation of the inventor; the inventor may waive the right to be mentioned. Wrong inventor designation is correctable and is not, by itself, a ground of invalidity.

Co-ownership and transfers are governed by national law; a transfer of the application must be recorded to have effect against third parties (Art. 72 EPC: written, signed by both parties; Art. 71 for assignments before filing).

Priority (Art. 87-89 EPC): 12 months from the first filing; the first application must be for the same invention; multiple priorities may be claimed from different countries for different claims (Art. 88(3)).

Partial priority is recognised (G 1/15): a generic 'OR' claim may enjoy partial priority for disclosed alternatives; entitlement to priority is assessed per claim, per subject-matter actually disclosed in the priority document.

Burden of proof in entitlement disputes before the EPO: the party alleging that the applicant derived the invention bears the burden; derivation requires (i) prior possession of the invention by the true owner and (ii) the applicant obtained it from that person.

Art. 61(1) proceedings are not available for pending national litigation: the decision must be final. Interim injunctions and first-instance decisions subject to appeal do not suffice.

Evidence filed late may be disregarded under Art. 114(2) EPC; the criterion is relevance and procedural economy, not mere lateness. Counter-evidence responding to a new point is normally admitted.

Oral proceedings are ordered under Art. 116 EPC either on request or if the EPO considers it expedient; a request is a procedural right, not an entitlement to a particular date.

The EPO is not bound by national court findings on entitlement, but a final national judgment is strong evidence and may trigger Art. 61(1).

Time limits: two-month period for filing the appeal (Art. 108); four months for the statement of grounds; the appeal fee is refunded only in cases of interlocutory revision under Art. 109.

Re-establishment (Art. 122) is available for missed EPO time limits (not for the priority period, the appeal period, or the Art. 61(1) period). Two months from removal of the cause, four months from expiry of the missed period, and the omitted act must be completed within the two-month period.

The problem-solution approach is applied in examination and opposition: (1) closest prior art, (2) objective technical problem, (3) obviousness. It is not applied to entitlement disputes.

Auxiliary requests in opposition must be filed with the statement of grounds or within the time limit set by the Board; late-filed requests may be held inadmissible (Art. 12(4) RPBA).

Art. 61(1) EPC does not create a pan-European entitlement remedy; it operates through a national court decision and a subsequent EPO procedure.

The EPO has no jurisdiction to decide entitlement disputes between private parties; those go to national courts (Art. 61(1), Art. 138(1)(e) EPC for revocation).

Art. 138(1)(e) EPC: a European patent may be revoked in national proceedings if the proprietor was not entitled under Art. 60(1).

Art. 61(1) applies to pending applications; for granted patents the true proprietor must use national revocation or a national transfer action.

The Lugano/Brussels regime allocates jurisdiction in cross-border entitlement disputes; Art. 22(4) Brussels I (recast) gives exclusive jurisdiction to the courts of the state of registration/deposit for proceedings concerning registration or validity of patents.

Choice of law for employee inventions: the applicable law is the law of the state where the employee is mainly employed, regardless of the employer's seat (Art. 60(1), second sentence).

The EPO's Boards of Appeal are not bound by national court decisions on entitlement, but the Enlarged Board may refer questions of law (Art. 112 EPC).

Restitutio in integrum is not available for the priority year; a missed priority claim can be restored under Rule 136 EPC (two months from the expiry of the 12-month period, fee, request).

If the true proprietor wins under Art. 61(1), the original applicant's application is refused; the new application is examined afresh and may be opposed.

Inventor status is a question of fact: the person who contributed to the inventive concept, not merely the person who executed the work, is the inventor.

Joint inventors each own a share; the share and the right to exploit are governed by national law and by contract.

Successor in title: an assignment must be in writing and signed by both parties (Art. 72 EPC) to be effective before the EPO; a mere declaration of transfer is insufficient.

Employment contracts may allocate inventions to the employer; the applicable national law determines whether such clauses are valid and whether compensation is due.

The inventor's moral right to be mentioned (Art. 81) cannot be assigned; only the right to waive the mention can be exercised.

A transfer of the right to the patent before filing must be in writing and signed (Art. 71 EPC); a subsequent transfer of the application follows Art. 72.

Priority can be claimed only by the same applicant or the successor in title; a transfer of the priority right must be established, but the EPO does not require documentary proof at filing.

Confidentiality and non-compete clauses may affect entitlement in national proceedings but do not create an EPO remedy; the EPO applies Art. 60(1) only.

The burden of proving succession lies with the party asserting it; a chain of assignments must be documented.

Art. 123(2) EPC: amendments may not add subject-matter beyond the content of the application as filed; the 'gold standard' is whether the amendment is directly and unambiguously derivable.

Art. 123(3) EPC: in opposition, claims may not be amended to extend the scope of protection; the comparison is between granted claims and amended claims.

In Art. 61(1) new applications, the claims must be limited to subject-matter disclosed in the earlier application; a broader claim is inadmissible.

Partial priority (G 1/15) requires that the subject-matter of the claim be disclosed in the priority document; otherwise the claim enjoys the filing date only.

Disclaimers are allowed only if they do not add subject-matter and are not the sole basis for novelty; a disclaimer that removes a specific embodiment disclosed in the application is normally allowable (G 1/03).

The problem-solution approach requires a closest prior art document that is in the same technical field and addresses the same problem; the objective technical problem is derived from the difference.

Feature analysis: identify the distinguishing features, the technical effect, and whether the effect is plausible across the claimed scope (Art. 83 sufficiency).

Claim categories: product, process, and use claims have different infringement and novelty rules; a process claim is not infringed by importing a product made abroad unless the product is directly obtained by the process (Art. 64(2)).

A claim to a product defined by a process (product-by-process) is novel only if the product itself is novel; the process features do not confer novelty.

Opposition grounds are exhaustive (Art. 100): lack of novelty/inventive step, insufficient disclosure, added matter, and excluded subject-matter; entitlement is not an opposition ground.

Entitlement is a national revocation ground (Art. 138(1)(e)) and a basis for Art. 61(1) proceedings, not for opposition.

The opposition period is nine months from grant (Art. 99(1)); late oppositions are inadmissible.

The Opposition Division may revoke, maintain, or maintain in amended form; the proprietor may file auxiliary requests.

Appeal: two months to file (Art. 108), four months to file the statement of grounds; the appeal fee is EUR 1,880 (2024 scale) and is refunded only on interlocutory revision.

The Boards of Appeal are independent (Art. 21-23); the Enlarged Board answers questions referred by the Boards or the President (Art. 112).

Art. 112a EPC: the Enlarged Board may review a Board decision for fundamental procedural defects; the request must be filed within two months of the decision.

A final national decision on entitlement may be used as evidence in EPO proceedings but does not bind the EPO; the EPO applies its own rules of procedure.

The EPO does not decide infringement; national courts do (Art. 64(3)). Entitlement disputes are similarly national, except for the Art. 61(1) mechanism.

Priority period: 12 months from the first filing (Art. 87(1)); restoration of the priority right is possible under Rule 136 within two months of expiry, with fee and request.

Art. 61(1) period: three months from the final national decision; non-extendable.

Appeal period: two months from the decision (Art. 108); statement of grounds: four months.

Re-establishment (Art. 122): two months from removal of the cause, four months from expiry of the missed period, and completion of the omitted act; not available for the priority year, appeal period, or Art. 61(1) period.

Further processing (Art. 121): available for most missed time limits before the EPO, with a fee; not available for the appeal period or Art. 61(1).

Fee refunds: appeal fee refunded on interlocutory revision; opposition fee not refunded on withdrawal after the opposition period.

The EPO may grant an extension of time limits only in limited circumstances (Rule 132); the request must be filed before expiry.

Late filing of evidence: the EPO may disregard it under Art. 114(2) if not relevant or filed late; the criterion is procedural economy.

Oral proceedings: a request is a procedural right; the EPO may refuse if the case is ready for decision (Art. 116(1)).