Pages 18-35

Implementing provisions to the Regulation on the European qualifying examination

The Supervisory Board,

Having regard to the Regulation on the European qualifying examination for professional representatives which entered into force on 1 January 2009 (OJ EPO 2009, 9), and in particular Article 3, paragraph 7, thereof, has decided as follows:

Rule 1

Applications for registration and enrolment

(1) For registration and enrolment, candidates shall use the registration and enrolment forms published by the Examination Secretariat (hereinafter "the Secretariat").

(2) On the forms, candidates shall state their surname, given name(s), address, date and place of birth, and nationality. Where applicable, the forms shall be accompanied by originals or certified copies of:

(a) documents providing proof of identity

(b) evidence that the candidate possesses the qualification or equivalent level of scientific or technical knowledge required by Article 11(1)(a) of the Regulation on the European qualifying examination for professional representatives before the European Patent Office (hereinafter "the REE"), and

(c) a certificate or certificates issued by a professional representative, or by the candidate's employer, attesting to the completion of the period of training or employment required by Article 11(2)(a) REE or Article 11(7) REE as appropriate and indicating the nature and duration of the duties performed by the candidate, or

(d) a certificate issued by the European Patent Office (hereinafter "the EPO") attesting that the candidate has performed full-time the duties of an examiner at the EPO for at least four years

(e) evidence of circumstances which may give grounds for remission (Article 11(5) REE).

(3) Copies of the documents required under paragraph 2 above can be certified by a competent national authority in a contracting state to the European Patent Convention (hereinafter "contracting state") or by a professional representative before the EPO.

(4) Where appropriate, applications for enrolment shall also state the language in which the candidate wishes to submit his answers in accordance with Rule 5(1).

(5) The Secretariat may request additional information.

Rule 2

Examination syllabus

The examination syllabus referred to in Article 13 REE shall cover only those legal texts referred to in Article 13(1)(a) to (c) REE which are in force on 31 December of the year prior to the examination. The EPO case law referred to in Article 13(1)(d) REE shall be that covered in the latest edition of "Case Law of the Boards of Appeal of the European Patent Office" (hereinafter "the Case Law Book"), the case law referred to in any case law special edition of the Official Journal published after the latest edition of the Case Law Book, and any case law published in the Official Journal on or before 31 December of the year prior to the examination.

Rule 3

Marking

When marking answer papers, the members of the Examination Committees shall bear in mind that candidates may have written their answers in a language other than their mother tongue. Errors of grammar or style shall therefore not be penalised.

Rule 4

Marking sheets

(1) Pursuant to Article 8(1)(d) REE, details regarding the marking shall be entered on the marking sheets.

(2) The Secretariat shall make available to each candidate the marking sheets pertaining to his answer papers.

Rule 5

Languages

(1) Pursuant to Article 12(3) REE, candidates may, if they so request when enrolling for the examination, submit their answers in an official language of a contracting state which is not an official language of the EPO. The Secretariat shall then arrange for a translation into one of the EPO official languages and submit it to the appropriate Examination Committee in addition to the original answer.

(2) The translations referred to in paragraph 1 shall not entail any additional fee and may be prepared by the Institute of Professional Representatives before the EPO (hereinafter "the Institute").

Rule 61

Grades/passing the pre-examination and the examination

(1) Each answer paper shall be marked on a scale from zero to 100 by the relevant Examination Committee.

(2) With regard to the pre-examination as defined in Rule 10:

(a) where, on the merits of an answer paper, 70 marks or more are awarded, a PASS grade shall be awarded for that paper, or

(b) where, on the merits of an answer paper, fewer than 70 marks are awarded, a FAIL grade shall be awarded for that paper.

(3) With regard to the examination as defined in Rule 21:

(a) where, on the merits of an answer paper, 50 marks or more are awarded, a PASS grade shall be awarded for that paper, or

(b) where, on the merits of an answer paper, fewer than 45 marks are awarded, a FAIL grade shall be awarded for that paper, or

(c) where, on the merits of an answer paper, at least 45 but fewer than 50 marks are awarded, the grade awarded for that paper shall be COMPENSABLE FAIL.

(4) Irrespective of the marks and grade awarded for the pre-examination and subject to Article 14(2) REE, a candidate shall be declared to have passed the examination once he has sat all the examination papers and if he satisfies all of the following conditions:

(a) he has not been awarded a FAIL grade in any of the papers

(b) he has been awarded a PASS grade in at least two papers, and

(c) his total aggregate mark in the four papers is at least 200.

(5) If a candidate re-sits an examination paper in accordance with Article 16(1) REE, the marks and grade previously obtained for this paper shall no longer be valid.

(6) Where, in accordance with the Implementing Provisions in force prior to the entry into force of these Implementing Provisions, a grade was awarded for a paper based on a scale from 1 (being the highest grade) to 7 (being the lowest grade), it shall be deemed, for the purpose of paragraph 4(c) only, that the mark awarded for a paper awarded grade 1 is 100 marks, for a paper awarded grade 2, 79 marks, for a paper awarded grade 3, 69 marks, and for a paper awarded grade 4, 59 marks.

Rule 7

Registration and enrolment fees

Pursuant to Articles 11(6) and 17 REE, the fee for each application for registration and enrolment shall be the basic fee.

Rule 8

Examination fees

(1) Pursuant to Articles 16 and 17 REE, the fee for sitting the pre-examination paper and each of the examination papers shall be the basic fee.

(a) The fee for re-sitting a paper for the first time shall be the basic fee.

(b) The fee for re-sitting a paper for the second time shall amount to 150% of the basic fee.

(c) The fee for re-sitting a paper for the third time shall amount to 200% of the basic fee.

(d) The fee for re-sitting a paper for the fourth and subsequent times shall amount to 400% of the basic fee for each such re-sit.

(2) The fee increments specified in paragraph 1 shall apply as of the examination year 2010. Their calculation shall be based on the examination papers sat in 2010 or thereafter.

Rule 9

Appeal fee

Pursuant to Article 24(2) REE, the appeal fee shall amount to 600% of the basic fee.

Rule 10

Pre-examination

(1) A pre-examination shall be held for the first time in 2012.

(2) The pre-examination shall consist of one paper.

(3) The purpose of this paper shall be to assess candidates' ability to answer legal questions and questions relating to the drafting of claims as defined in Article 1(4) REE. The duration of this paper shall be four hours.

(4) The paper shall consist of

(a) legal questions relating to the candidates' knowledge of the documents referred to in Rule 22(1) and

(b) questions on at least one technical proposal from a client, at least one draft claim in respect of that technical proposal and at least one relevant prior-art document. Candidates will be expected to answer questions on the allowability of the claim(s) under the European Patent Convention (hereinafter "the EPC") and as to whether the claim(s) provide(s) the broadest possible protection under the EPC. When answering the questions, candidates shall bear in mind the requirements of the EPC, in particular regarding novelty and inventive step, and the recommendations contained in the Guidelines for Examination in the EPO (hereinafter "the Guidelines").

(5) Rule 22(3) shall apply mutatis mutandis to the pre-examination.

Rule 11

Qualification required

(1) Pursuant to Article 11(1)(a) REE, a candidate shall be considered to have the necessary qualification if he possesses at least a university-level scientific or technical bachelor's degree, or any equivalent academic degree, in one of the subjects defined in Rule 13 or any subjects equivalent to these, from a university, technical university, technical high school, vocational college, higher technical college or institute, school of engineering, or any similar establishment having at least the academic level of the aforementioned establishments in one of the contracting states.

(2) The academic degree referred to in paragraph 1 shall have been awarded at the end of a full-time course with a minimum duration of three years. At least 80% of the course hours taken to obtain this degree shall have been devoted to scientific and/or technical subjects.

(3) If a candidate's qualification does not fulfil the requirements of paragraphs 1 and 2, Rule 14 shall apply.

Rule 12

Qualification from a non-contracting state

(1) Should a candidate possess a degree, diploma or certificate from an educational establishment in a non-contracting state, he shall have to satisfy the Secretariat that this is equivalent to a degree as mentioned in Rule 11.

(2) In the case referred to in paragraph 1, the Secretariat may require an official document from a competent authority in one of the contracting states attesting that the degree, diploma or certificate is equivalent to a degree as mentioned in Rule 11.

Rule 13

Qualification subject-matter

The scientific and/or technical subjects referred to in Rule 11 shall include biology, biochemistry, chemistry, construction technology, electricity, electronics, information technology, mathematics, mechanics, medicine, pharmacology and physics.

Rule 14

Equivalent knowledge

If a candidate is not able to prove that he meets the conditions referred to in Rules 11, 12, and 13, he may nevertheless be considered to possess an equivalent level of scientific and/or technical knowledge if he can establish that he has at least ten years' experience in the activities defined in Article 11(2)(a) REE.

Rule 15

Professional activities

(1) The professional activities referred to in Article 11(2)(a) REE shall be completed in one or more of the contracting states.

(2) Only professional activities amounting to a minimum period of three months with at least 50% part-time involvement shall be considered for the purposes of Article 11(3) REE.

Rule 16

Remission

(1)(a) An academic institution located in one of the contracting states may request that candidates who have successfully completed specialised studies in the field of industrial property at that institution be granted a reduction of six months in the duration of the period of professional activity defined in Article 11(2) REE. Such requests shall be submitted to the Secretariat before completion of the academic year in question and decided upon by the Examination Board on the basis of the following criteria:

(i) the duration of the studies is at least one full-time academic year,

(ii) the curriculum and a description of the content of the studies are available to the public; these documents shall be submitted to the Secretariat,

(iii) the number of hours devoted to each subject can be derived from the curriculum,

(iv) the curriculum indicates which subjects are mandatory and lists the criteria for selecting other subjects,

(v) on request, all the course material shall be submitted to the Secretariat,

(vi) at least 600 course hours are devoted to intellectual property,

(vii) of the 600 course hours mentioned under (vi), at least 350 are devoted to patent matters,

(viii) of the 350 course hours mentioned under (vii), at least 130 are devoted to European patent law as laid down in the EPC and to the Patent Cooperation Treaty (hereinafter "the PCT"),

(ix) of the 600 course hours mentioned under (vi), at least 175 are given by professional representatives before the EPO.

(b) If the Examination Board grants a request under (a), that decision shall be valid only for the academic year in respect of which the request was made and shall apply only to candidates who request a reduction on the basis of that decision and are able to show that they successfully completed their studies in that academic year at the academic institution in question.

(2) The Secretariat may grant a reduction of up to one year in the periods of professional activity defined in Article 11(2)(a) REE to candidates who have been patent examiners with the EPO or one of the national patent offices of the contracting states. Only periods amounting to a minimum of one year with at least 50% part-time involvement shall be considered. The reduction shall not exceed 25% of the recognised period of activity as a patent examiner.

(3) Candidates who have completed the eight months' training with the German patent authorities and have been admitted to sit the qualifying examination for German patent attorneys shall be granted a reduction of six months. This eight months' training with the German patent authorities does not constitute a period of professional activity as defined in Article 11(2)(a) REE.

(4) The period of professional activity under Article 11(2) REE and the periods under paragraphs 1, 2 and 3 of this rule shall not overlap.

Rule 17

Disabled candidates

(1) Disabled candidates are those who can prove that they suffer from a disability severely affecting their capacity to participate in the pre-examination or the examination as set up for all other candidates.

(2) Any such candidate shall provide appropriate evidence issued by the competent national health service.

(3) Depending on the severity and degree of the disability, the Secretariat may allow the candidate to participate in the pre-examination or the examination under conditions which compensate as far as possible for the consequences of his disability in respect of those examinations. Additional time for writing the papers, personal assistance or other logistical or technical support may be accorded as appropriate depending on the circumstances of a particular case.

Rule 18

Invigilation

(1) Subject to paragraph 3 below, invigilators shall normally be members of the Examination Board or the Examination Committees.

(2) For the conduct of the pre-examination or the examination at an examination centre, the Secretariat shall appoint a chief invigilator and a deputy invigilator from among the members of the Examination Board, the Examination Committees or the Secretariat.

(3) The Secretariat may nominate other invigilators.

Rule 19

Conduct of the pre-examination or the examination

(1) If a candidate fails to comply with the instructions to candidates concerning the conduct of the pre-examination or the examination or with instructions given on the basis thereof by the invigilators, the following measures may be taken by the Examination Board in respect of that candidate:

(a) deduction of marks

(b) instructions to the competent Examination Committee to mark the answer paper concerned only in part

(c) instructions to the competent Examination Committee not to mark the answer paper concerned and not to award any marks, and/or

(d) disqualification from the pre-examination or the examination for a given year.

The Examination Board shall take a decision on the matter as soon as possible after the pre-examination or the examination.

(2) If a candidate disturbs other candidates during the pre-examination or the examination, the chief invigilator shall be empowered to suspend him at once from the paper during which this occurs. The chief invigilator shall then send to the Examination Board a comprehensive report including any evidence. The Examination Board shall take a decision on the matter as soon as possible.

(3) Complaints concerning the conduct of the pre-examination or the examination shall not be entertained by the Examination Board unless a written statement of the facts is submitted to the chief invigilator at the latest 30 minutes after the closing signal has been given on the final day of the examination.

(4) Any decision taken by the Examination Board pursuant to this rule shall be based upon all the available evidence, reasoned and issued in writing.

Rule 20

Fraudulent behaviour

(1) Fraudulent behaviour is any behaviour by a candidate with the aim of obtaining an undue advantage during registration/enrolment or during/after the pre-examination or the examination. Such behaviour may consist, inter alia, in presenting false documents, making false or incomplete statements and/or using equipment during the pre-examination or the examination which is not allowed.

(2) The following measures may be taken by the Examination Board if fraudulent behaviour has been discovered:

(a) refusal of registration and/or enrolment for the forthcoming and subsequent pre-examinations or examinations

(b) deduction of marks

(c) instructions to the competent Examination Committee to mark the answer paper concerned only in part

(d) instructions to the competent Examination Committee not to mark the answer paper concerned and not to award any marks, and/or

(e) disqualification from the pre-examination or the examination for a given year.

(3) The Examination Board shall take a decision on the matter as soon as possible after the fraudulent behaviour has been discovered.

(4) Any decision taken by the Examination Board pursuant to this rule shall be based upon all the available evidence, reasoned and issued in writing.

Rule 21

Examination papers

The examination shall consist of four papers: Paper A, Paper B, Paper C and Paper D as defined in Rules 23 to 26 respectively.

Rule 22

General instructions for answering the papers

(1) Candidates are expected to be familiar with at least the following documents in the versions valid as at 31 December of the year prior to the pre-examination or the examination:

(a) the EPC

(b) the Implementing Regulations to the EPC

(c) the Protocol on the Centralisation of the European Patent System and on its Introduction (Protocol on Centralisation)

(d) the Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent (Protocol on Recognition)

(e) the Rules relating to Fees

(f) the notice of the President of the EPO concerning the arrangements for deposit accounts

(g) the PCT

(h) the Regulations under the PCT

(i) the Paris Convention for the Protection of Industrial Property

(j) the list of contracting states to the EPC and of contracting states to the PCT

(k) the Ancillary Regulations to the EPC

(l) the brochure entitled "National law relating to the EPC"

(m) the Guidelines for Examination in the EPO

(n) the content of the Official Journal of the EPO.

(2) It will be assumed that candidates have read the examination paper in the language in which they give their answer. Candidates who give their answer in a language other than one of the EPO official languages, and have filed a corresponding request when enrolling for the examination, shall indicate on the front page of their answer papers which language they used in answering the examination papers.

(3) Candidates shall accept the facts given in the examination paper and limit themselves to those facts. Whether and to what extent those facts are used shall be the responsibility of each candidate. Candidates shall not use any special knowledge they may have of the technical field of the invention.

Rule 232

Content of the examination – Drafting paper (Paper A)

(1) The purpose of this paper shall be to assess candidates' ability to draft claims and the introductory part of a European patent application as defined in Article 1(4) REE. The duration of this paper shall be three and a half hours.

(2) Candidates shall assume that they have received a letter from their client which includes a description of an invention for which the client wishes to obtain a European patent, together with references to the most pertinent prior art known to him.

(3) Candidates are expected to draft an independent claim (or claims) which offer(s) the patent applicant the broadest possible protection in accordance with the EPC. When drafting the claim(s), candidates shall bear in mind the requirements of the EPC, in particular regarding novelty and inventive step, and the recommendations contained in the Guidelines for Examination in the EPO. Dependent claims, which shall be limited to a reasonable number, shall be drafted in order to provide a fall-back position in case the independent claim(s) is/are rejected.

(4) Candidates are also expected to draft an introduction, i.e. that part of the description which precedes the examples or the explanation of the drawings. The introduction shall provide support for the claim(s). In particular, candidates shall give consideration to the advisability of mentioning the advantages of the invention in the introduction.

(5) Candidates are expected to draft claims and an introduction for one European patent application only. The application shall meet the requirements of the EPC as to unity. If, however, candidates seek to protect further inventions by filing one or more separate patent applications, they shall, in a note, clearly identify the features of the independent claim in such separate application(s), for example by referring to selected portions of the claims, or, alternatively, they shall draft the claim itself.

(6) In addition to their answer, candidates may set out the reasons for their choice of answer in a supplementary note, outlining why, for example, they have selected a particular form of claim, a particular feature for an independent claim or a particular piece of prior art as a starting point, or why they have rejected or preferred a particular item of prior art. Supplementary notes to examiners cannot, however, replace essential parts of candidates' answers.

Rule 24²

Content of the examination – Reply paper (Paper B)

(1) The purpose of this paper shall be to assess candidates' ability to reply to an official communication in which prior art has been cited as defined in Article 1(4) REE. The duration of this paper shall be three hours.

(2) In this paper, candidates shall assume that a European patent application has been filed designating all the contracting states, and that the EPO has issued an official communication. The paper shall include a client's letter containing instructions about the way the client wishes to proceed with the European patent application and a draft set of claims to be filed with the candidates' response to the official communication.

(3) Candidates are expected to respond to all points raised in the official communication. The response shall be in the form of a letter to the EPO accompanied by the claims supplied by the client, amended as appropriate to meet the requirements of the EPC. The description shall not, however, be amended. In their reply, candidates shall identify clearly all amendments made in the claims and their basis in the application as filed, and provide additional explanations where necessary. Candidates shall also set out their arguments in support of the patentability of the independent claim(s).

(4) Candidates may give the reasons for their choice of answer in a supplementary note. If they consider that any part of the application ought to be made the subject of one or more divisional applications, they shall, in the note, clearly set out the independent claim(s) for such divisional application(s). The note shall also present the arguments in support of the patentability of the independent claim(s) in such divisional application(s). Supplementary notes to examiners cannot, however, replace essential parts of candidates' replies to the EPO.

(5) Notwithstanding the provisions of Rule 24(1), (2) and (3) and only with regard to the European qualifying examination to be held in 2011 and 2012:

(a) the duration of this paper shall be four hours

(b) the paper shall not include a draft set of claims to be filed with the candidates' response to the official communication. Candidates are expected to draft a response accompanied, where appropriate, by a set of claims. The claims shall afford the broadest possible protection while meeting the requirements of the EPC.

Rule 25²

Content of the examination – Opposition paper (Paper C)

(1) The purpose of this paper shall be to assess candidates' ability to draft a notice of opposition to a European patent as defined in Article 1(4) REE. The duration of this paper shall be five hours.

(2) The paper shall be presented in the form of a letter from a client to a professional representative accompanied by the European patent to be opposed (Annex 1) and prior-art documents. The annexed prior art shall comprise at least three documents.

(3) Candidates are expected to put themselves in the position of the representative and, using only the information provided by the client, prepare a notice of opposition which when typed would be ready for filing. The pre-printed opposition form provided may be used, but it is not obligatory and marks will not be lost if it is not used.

(4) The notice of opposition prepared by candidates shall comply with Articles 99 and 100 and Rule 76 EPC, bearing in mind the relevant recommendations in the Guidelines for Examination in the EPO, Part D. In order to maintain anonymity, candidates shall not give their real name, but should instead use the name of the representative to whom the client's letter is addressed.

(5) The notice of opposition shall contain all those grounds (and no others) - where possible against all the claims - which candidates consider in this particular case to be prejudicial to the maintenance of the patent. The omission of good grounds for opposition will lead to a loss of marks commensurate with the importance of the grounds in question. Article 100(b) EPC shall not be cited. Candidates shall also briefly set out on a separate sheet the reasons why they did or did not take up the client's suggestions. In addition, any questions the client may have asked shall be answered.

(6) All claims shall be treated separately, taking due note of their dependences.

(7) Prior-art documents shall be referred to by their annex number only.

(8) It is to be assumed that, for all annexes which claim a priority, the disclosures in the annexes are identical with those in the corresponding priority documents unless there is evidence to suggest otherwise. If, however, any facts presented need to be confirmed, e.g. in the case of an alleged prior public disclosure, candidates are expected to state that such confirmation will be filed later. Regardless of the date of the client's letter, candidates are to assume that there is no possibility of conferring with him.

(9) Candidates should be aware that Annex 1 is fictitious and is not necessarily in a form that would have led to the grant of a patent by the EPO.

(10) Notwithstanding the provisions of Rule 25(1) and only with regard to the European qualifying examination to be held in 2011 and 2012, the duration of this paper shall be six hours.

Rule 26²

Content of the examination – Legal paper (Paper D)

(1) The purpose of this paper shall be to assess candidates' ability to answer legal questions and to draft legal assessments as defined in Article 1(4) REE. The duration of this paper shall be five hours.

(2) It shall comprise questions relating to different areas of the candidates' legal knowledge. Answers should be brief and to the point. Candidates shall always cite any article, rule or other legal basis relevant to their answer.

(3) It shall also include an enquiry from a client requiring an answer in the form of a legal opinion. Candidates shall use the opinion they draft to explain the legal consequences of the situation as described. They shall be expected to demonstrate their ability to deal with a complex industrial-property law case involving fundamental issues of patentability, rights of inventors, inventions as property and third-party rights, as defined in particular, but not solely, in Articles 52 to 89 EPC, the corresponding articles of the PCT, any legislation relating to Community patents, the Paris Convention, and the relevant laws of the contracting states.

(4) Notwithstanding the provisions of Rule 26(1) and only with regard to the European qualifying examination to be held in 2011 and 2012, this paper shall consist of part I, which shall comprise questions relating to the subjects mentioned in paragraph 2, and part II, which shall comprise questions relating to the subjects mentioned in paragraph 3. The duration of the two parts shall be three and four hours respectively.

Rule 27

Composition and number of Examination Committees

(1) The proportion of Examination Committee members from the EPO and from the Institute as specified in Article 7(3) REE may vary, but at least 50% of the members of any Examination Committee shall be from the Institute.

(2) Pursuant to Articles 3(1) and 8 REE, four Examination Committees shall be established for the examination: Examination Committee I shall be in charge of Papers A and B, Examination Committee II shall be in charge of Paper C, Examination Committee III shall be in charge of Paper D and Examination Committee IV shall be in charge of the pre-examination paper.

Rule 283

Registration

(1) In accordance with Article 11(1) REE, candidates intending to enrol for the European qualifying examination for the first time shall register once they have started the professional activities or are employed as defined in Article 11(2) REE.

(2) The fee for registration shall become applicable as from a date to be determined by the Supervisory Board.

Rule 29

Entry into force

These Implementing Provisions

(1) shall enter into force on 1 April 2010,

(2) shall replace the Implementing Provisions as adopted on 18 March 2009 and shall apply to European qualifying examinations to be held in 2011 and thereafter, unless otherwise provided in these Implementing Provisions.

(3) Rule 6(6) shall apply to the European qualifying examination held in 2010.

(4) Notwithstanding paragraph 2, the Implementing Provisions as adopted on 18 March 2009 shall continue to apply to the European qualifying examination held in 2010.

Done at Munich, 25 January 2010

For the Supervisory Board

The Chairman

Peter VERMEIJ