Citing legal basis on D1/M2 exam

Legal basis on D1/M2 is a careful balancing act – you need to be accurate, but not waste too much time looking it up.

• You don’t have time on the exam to figure out what the exact legal basis is, so pick out the most likely ones as you use your notes and reference books to answer questions.
• The REE does specify some specific documents that you should be familiar with, but it does not exclude you using other books to answer.
• The main marks are for article/rules and G decisions, so always cite them if you see them mentioned (even if you are not sure how relevant they are). You don’t need to repeat a reference because each question is marked as a whole. But sometimes it is quicker to just recite than to look in your answer to see if you already have it. Specify at least the paragraph of the articles and rules.
• In the last 2 years, they have also expected Guidelines references as a supplement to articles and rules. It is almost never worth it to verify legal basis – you can better use that time to answer another question. This is especially true for PCT.
• So, if you are answering based on a section from Guidelines, then cite the Guidelines because that is what you are basing your answer on, but also cite article/rules/decisions cited in the margin.
• For PCT, the best references for answering exam questions is the Introduction to the International Phase for general PCT, and the Euro-PCT Guide for the EPO-specific things. The Euro-PCT Guide is the only EPO “Guidelines” that deals with the formalities for EP entry.
• Most of the legal basis needed are the Rules, because these are the Implementing Regulations of the legal principles found in the Articles. In the last 2 years, they have also expected more “umbrella” articles to be cited for full marks – these are the Articles being implemented. Again, if you do not see this in the reference you are using, then don’t waste time looking it up.
• Most complex are the combined PCT/EPC questions – e.g. EP entry or fixing a PCT “problem/issue” after entry. Again, try not to waste too much time here, and concentrate on citing the legal basis for what you are actually using to answer the question. If you see an article mentioned, then add it to your answer.
• In theory, citing too many irrelevant provisions could lead to fewer marks being awarded, but if you are accurate most of the time and you vary it in some answers, you will get the benefit of the doubt in the marking.
• You do not need to memorise all EPC/PCT articles and rules. If you know just the list below by heart, and can cite them without looking up, then you can quickly get marks and find quickly most of the common legal provisions.
• For example, if you are answering a question on FP, most of the answer will be from R135, but you should know that it is implementing A121. If you are using a book like Visser where the articles and rules are separated, you should have both the A121 and R135 sections open (the easiest way to do that is to cut along the spine with a razer, and have 2x books – an article book and a rules book).

The goal of your legal training is to teach yourself to find things in the EPC by first thinking about which article/rules are relevant, and then look up what you need.

• This works well for procedural questions, because the EPC articles and rules follow the procedure.
• It is worth the investment for EPC because you will need to find articles and rules in the future.
• It is also very useful to be able to find things in the EPO Guidelines for your future.

PCT is more difficult to approach from the articles and rules because the articles have not been updated for 40 years, and the rules do not fit neatly into the articles any more. The WIPO also tries to make the rules as short as possible by using mutatis mutandis references. Better is to first look in the AG-Introduction to the International Phase Guidelines, and then look in the relevant law cited if you need more details. The PCT applicants guide also follows the procedure.

• This is also the approach that we use with PCT.App, where the articles and rules have been split up into their relevant sections, following the organisation of the PCT Applicants Guide. You also do not need to memorise PCT articles and rules when you are training – very few attorneys will ever use them in the future. The exception is Paris Convention for priority – you will need to know this in the future.

The A4 overview shows the most common Art/Rules required in D Examiner’s Reports of last 10 years.

• Learn to recognize these issue by heart and to cite without looking up.
• I have included more umbrella articles because these are sometimes expected, even if they are empty (like A.120 EPC).
• I have also improved the PCT section because legal basis was not always required in the past for these issues, or a GL reference was accepted.
• Bold citations are just additions compared to last year’s version of this slide.