The European Patent Office is organizing a new examination intended for paralegals, patent administrators and formalities officers, as from December 2022.

The examination results in the European patent administration certification (EPAC), a professional certification for patent administrators, according to Art. 1 of Rules concerning the establishment of a EPAC (R.EPAC) adopted by the decision of the President of the European Patent Office on 14 April 2022.

The first edition of this examination took place online on December 12th, 2022.

According to EPAC syllabus:

– The examination papers are drawn up in the three official languages of the EPO (English, French and German).

– Candidates may use any books or documents they consider useful for answering the examination papers.

– The EPAC certification has been designed to enable paralegals, patent administrators and formalities officers to demonstrate that they have the required knowledge and skills to deal independently and autonomously with the procedures associated with the filing, prosecution, grant and maintenance of European and international patent applications, as well as post-grant procedures.

– The examination focuses on procedural aspects under the European Patent Convention, the Patent Cooperation Treaty (PCT) and the Paris Convention as well as national laws and other agreements in so far as they apply to European patents and patent applications, including the London Agreement.

– Candidates must answer questions on the various patenting routes and application procedures and the procedural, administrative and formalities-related tasks involved.

– Candidates must demonstrate the ability to validly file patent applications with competent authorities on the basis of said regional and international treaties and agreements, as well as to monitor and carry out in a timely manner any procedural matters, including payment of applicable fees.

– Candidates must be familiar with how to monitor time limits, the filing of documents and fee payments.

– In particular, candidates must demonstrate familiarity with the procedures for remedying deficiencies or losses of rights caused by missed deadlines or payments and non-conformities.

– Candidates must be capable of determining possible means of redress and be able to deal with all post-grant procedures.

The EPAC syllabus comprise the following chapters:

MODULE 1 – Understanding patents:

A – General aspects of patent law

B – The European patent grant system

B1 – The EPO as patenting authority

B2 – The EP patent application procedure

C – The PCT patent filing system

C1 – WIPO, role of the International Bureau (IB)

C2 – The PCT application procedure

MODULE 2 – EPO procedure from filing to search results: Candidates must demonstrate that they have the ability to file and prosecute a European patent application (EP direct and divisional) meeting the requirements of the European Patent Convention.

A – Filing a European patent application

A1 – Date of filing

A2 – Formal requirements for European patent applications

C – Search and European search report

D – Publication of the European patent application

MODULE 3 – EPO procedure from entry into examination to validation: Candidates must master all procedural steps involved in the European patent grant process and post-grant procedures.

A – Examination: Examination request, maintenance of application • Fees (examination, designation, extension, validation, renewal fees) • Filing amendments before substantive examination (basis) • Prior search results • Additional search fees • Refund of fees • Acceleration of the examination procedure (waiver, PACE request, PPH request ) • Substantive examination (Office actions, response to Office actions, amendments) • Stay, interruption and resumption of the proceedings • Third-party observations • Withdrawals • Oral proceedings, consultation, witness hearing, practical considerations (sending samples/models) • Intention to grant • Approval (fees, translation of claims) and disapproval by the applicant, late amendments • Decisions (decision to grant, refusal) • Publication (types) • Correction after grant (bibliographic data, specification, publication errors)

B – Appeal procedure ex parte: Filing an appeal • Who may file • What, where and how to file • What to pay

C – Post grant

C1 – National validation : Overview of national systems • Extension states • Validation states • When to validate • Validation requirements (e.g. London Agreement) • Annuities

C2 – Opposition procedure:  Filing notice of an opposition • Who may file • What, when, where and how to file • What to pay • Outcome of the opposition

C3 – Appeal procedure inter partes:  Filing an appeal • Who may file • What, where and how to file • What to pay

C4– Limitation and revocation procedure

MODULE 4 – PCT procedure

A – Filing an international application: Where to file, the choice of receiving Office (national office, IB, EPO) • How to file • PCT request form • Content of the application • Official fees • Languages, translations and fee reductions

A1– International filing date 6: Accordance of filing date/ requirements • Missing elements, change of filing date

A2 – Formal requirements of an international application: Examination of formal requirements (applicant, representative, designation of inventor, priority, designation of states, signatures) • Invitation to correct defects • Remedies (extension of time limit, Rule 91, Rule 26 PCT) • Claiming priority (correcting, adding, withdrawing priority claim) • Correcting defects (correction of errors, restoration of priority right, request for obvious error • Possible remedies

B – International search: The choice of the International Searching Authority (ISA) • Search fee, refund • PCT-Direct letter • Content and form of international search report (ISR) • Special procedures (lack of unity, no meaningful search) • Amendment of the claims before the International Bureau (Article 19 PCT) • Role of the Supplementary International Searching Authority (SISA) • Filing a supplementary international search (SIS)

C – International publication: When and where published, technical preparations • Form and content of the publication, PATENTSCOPE • International publication: languages • Preventing publication or delaying publication

D – International preliminary examination: Where to file, the choice of the International Preliminary Examining Authority (IPEA) • How to file • What to file • Demand request form • What to pay • Office actions, reply to office actions, amendments • International preliminary report (IPER) • Third-party observations

MODULE 5 – Entry into the national/regional phase after PCT

A – The national/regional phase: End of PCT international phase, time limits for national/regional entry • Early entry • Outline procedure European regional phase • Supplementary search (or not)

B – Entry into the European phase, formal requirements and examination: Requirements for entry into the European phase (request for examination, fees, translations, basis for grant) • Early processing • Foreign agents and their role in the national procedure • Acceleration of the examination procedure (early entry, waiver, PPH, PACE) • Subsequent requirements (applicant, inventor, representation, amendments, certified copy, search results priority application, sequence listings) • Correction of defects and remedies

EPAC certifies the mastering of procedural administrative tasks relating to the patent granting procedures under the legal systems of the European Patent Convention (EPC) and the Patent Cooperation Treaty (PCT) (Art. 2 R.EPAC).

Candidates will submit a request for enrolment via the electronic means provided on the EPO

Website (Art. 8 R.EPAC).

The EPO will issue a certificate to successful candidates having passed the examination (Art. 3 R.EPAC).

The certification will demonstrate that candidates have the required knowledge and skills to deal independently and autonomously with the procedures associated with the filing, prosecution, grant and maintenance of European and international patent applications, as well as post-grant procedures (Art. 8 R.EPAC).

According to Art. 8(3) R.EPAC, the examination syllabus will include:

(i) general aspects of patent law, EPC and PCT;

(ii) EPO procedure from filing to search results;

(iii) EPO procedure from entry into examination to validation;

(iv) PCT procedure;

(v) entry into the national/regional phase after PCT.

Art. 10 R.EPAC regulates the conditions allowed for the candidates with disabilities:

(1) Candidates with disabilities are those who can prove that they suffer from a disability severely affecting their capacity to sit the examination as presented.

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

(3) Depending on the severity and degree of the disability, the candidate may participate in the examination under conditions which compensate as far as possible for the consequences of their disability in respect of the examination. Appropriate measures may be granted by the Academy to compensate for the disability in question.

The following is a non-exhaustive list of Instructions to candidates concerning the conduct of the EPAC examination:

i. General about EPAC examination:

2. The EPAC examination is conducted online using the WISEflow examination system in conjunction with the corresponding lockdown browser. The examination is invigilated using online proctoring based on video and audio recordings, with the help of artificial intelligence combined with human invigilation.

4. Candidates sitting the examination must write and submit their answers in the dedicated text editor and interface in WISEflow. The answer must be written in the language selected when enrolling.

6. Candidates wishing to lodge a complaint concerning the conduct of the examination can do so at the latest by the end of the day of the examination by filling the online form provided by the EPO.

II. Examination environment

1. The examination may be taken at any suitable location chosen by the candidate.

2. The room must be suitable for an examination in terms of light, temperature and noise. The room’s doors must remain closed during the examination. Candidates must be alone in the room. No other person is allowed to be in or enter the room during the examination.

3. There must not be any light source pointed at the camera from behind the candidate to ensure that the image is clean. Likewise, the background behind the candidate must not contain any portraits with faces visible to the camera.

4. Listening to the radio or playing any other sound or music is not allowed.

5. Candidates are allowed food, drinks and medication as well as standard, non-electric/nonelectronic desk accessories (notepaper, pens, pencils etc.).

6. Candidates may use any printed materials, e.g. books, and any documents they consider useful for answering the examination questions.

III. Technical requirements

1. To sit the examination, candidates require the necessary technical equipment as set out in the WISEflow documentation available on the WISEflow website.

2. The hardware used by candidates must comply in particular with the following requirements:

(a) The microphone must capture the sound around the candidate and must be connected and active throughout the examination.

(b) The camera should be positioned centred above or below the frame of the active screen, but not more than 5 cm away from it. The camera is to be oriented to show a frontal portrait image of the candidate when looking at the screen. It must not be covered at any time.

(c) Speaker audio settings must be adjusted to pick up sounds from the internet browser at audible volume levels.

III. Getting started with the examination

1. Candidates must activate their user profile in WISEflow.

4. Candidates should prepare their desk with books and any further material they might want to use well before the start of the examination. They should log on to WISEflow 30 minutes before the start time of the examination.

a) Candidates must have a valid official photographic ID (identity card or passport) and keep it within easy reach. For the purpose of verifying their identity, candidates must hold their ID next to their face for a reference photo to be taken at the beginning of the examination.

b) Candidates must have the examination monitoring equipment (camera and microphone) activated throughout the entire examination.

c) Other than the computer system required for the examination (PC or laptop, monitor, keyboard, mouse, etc.) and routers, no other electronic equipment are permitted (calculators, digital watches, tablets, smartphones, smart watches, etc.). Candidates may not use headphones, headsets or any other non-electronic noise-cancelling items such as earplugs.

IV. Exam invigilation

2. Throughout the examination, invigilators will monitor camera and microphone activity. Accordingly, invigilators may perform further checks to inspect the candidates’ examination environment.

5. Candidates must not copy or photograph the examination questions or otherwise share them during the examination time in writing or orally.

6. Candidates must be seated facing the computer/laptop/camera. Their face and ears must be clearly discernible and should not be covered by caps, scarves, sunglasses, other body parts, etc. Eyeglasses with clear lenses are permitted but only where used as vision aids.

8. Candidates should not move away from their desk during the examination; they must remain in the camera’s field of view apart from during the specified breaks.

9. To contact the invigilator, candidates must use the integrated chat widget that appears in the bottom right-hand corner of the screen once they are in the lockdown environment. The invigilator can also contact candidates via this chat widget.

11. Candidates must not contact any other person during the examination except the invigilator where necessary.

V. Misconduct

1. The following is a non-exhaustive list of what will or might be considered fraudulent behaviour or misconduct:

(a) impersonation – when a candidate attempts to deceive by pretending to be someone else or has another person take the examination for them

(b) having a second person in the room (or the appearance thereof)

(c) using unauthorised material or electronic or other equipment that is not permitted

(d) failing to follow invigilators’ instructions

(e) receiving, swapping or passing on information that could be related to the examination, whether orally or in writing using paper/notes/online materials on a computer or other electronic equipment

(f) speaking during the examination

(g) copying from another candidate and discussing or working together with others

The website epo.org provides also further interesting information on EPAC:

–  the exam is open to everyone, not only for candidates from EPO member states

– the EPAC exam takes place once a year, at the end of the year.

– If a person holds a similar national certification, he is not automatically entitled to the EPAC. He must take the EPAC.

– You can enrol for the EPAC exam without following any courses, and you don’t have to enrol for the exam to follow the EPO’s EPAC course. How you prepare for the EPAC exam is up to you. The EPO’s Academy provides training materials, and external providers will likely offer EPAC courses in the future.

– The EPAC is a certification – it is not valid for a particular period of time. By passing the EPAC you show that on the date of the examination you were able to manage the work of a patent paralegal.

– Corporate computers and networks often have a strict security policy. In this respect, some candidates have experienced issues with the lockdown browser (e.g. interruption of flow), with the use of camera and microphone or with the reliability of the network connection used by the lockdown browser and IP address issues. If you experience issues during the mock examinations, which cannot be solved, it is strongly advised to either contact your IT department to solve the issues within your corporate IT Policy or most advisable is to use another (private) computer or network.

– You are not allowed to use shortcuts (Alt+Tab, Ctrl+P or the like), key combinations and touchpad gestures in the lockdown browser, except the ones mentioned below. Using shortcuts is seen as an unauthorised action and can result in the lockdown browser to stop your examination.

– The following Windows shortcuts are allowed, but only work in the editor (not in the “external internet resources”): Ctrl+C, Ctrl+V, Ctrl+Shift+V, Ctrl+F (and the corresponding Mac shortcuts).

– In the lockdown browser, you will have access to the EPO legal texts as “external resources”.

Romanian patent attorney Cristina Georgescu