Tutor meeting 2011 : Paper D

Below a summary of the notes made during the Tutor meeting of last week. The summary is based on my interpretation of what was discussed.

This year’s paper D was considered by the EC (Examination Committee) as an average paper with the right level of difficulty.


In general the EC made several comments:

- Tutors should teach candidates the law and also teach them how to apply it. These are two separate aspects. In particular the board wants to see that the candidate realises what a patent right is, what he can do with it, what the patent law is and how it is applied. The knowledge should be in-depth.

- Candidates need to make sure that they very carefully read the question and then answer this question. Sometimes a correct answer is given to something that is not asked. Especially in D2 make sure that the question is fully understood.

- Questions like “Legal situation?” in D2 are no longer asked. Instead the EC asks more specific questions to guide the candidate towards the desired answer.

- More than 100 marks are available for a D paper, especially more than 60 marks can be scored for D2. The EC did not so say how many more.

- EC stresses that they want to see an advice based on application of the law. This is often not understood by candidates leading to loss of marks.

- Usually one citation for legal basis is sufficient. If for example a G decision is cited in the GL then there is no need to cite both the Guidelines and the G decision. Higher ranking provisions are preferred.

- There is no recipe for taking the exam. Candidates need to know the law and know how to apply it.

- The exam is setup so that a wrong turn in the argumentation is not fatal.

- There are no “negative points” in paper D.

- No marks are rewarded for knowing the EPO practice which has no legal basis.

- There are no “hidden” questions. However candidates must carefully investigate and deal with the consequences of a certain problem and are usually expected to deal with these consequences.

- Usually there are four or five issues in D2 to be dealt with. Answerring 3 correct will likely mean a candidate passes. Even with only two issues dealt with correctly and a well made D1 may result in passing the paper.

- The EC would like people to pass, but has to apply a high standard to guarantee a certain quality.

- D1 and D2 are marked seperately, but if the score of a candidate is “borderline” sometimes the paper as a whole will be looked at to make a final decision.

- Don’t submit lists of abbreviations. These will only cost time and cause confusion with the EC.

- Knowing the case law (except for the key decisions) is not an absolute requirement for passing the D paper. Of course it is preferred if a candidate has a fair knowledge of the case law.



Some Q and A

Q: Would it be possible to publish a simulation on how an actual paper is marked, preferably three different solutions good-average-bad ?
A: No, this is not possible for privacy reasons.


Q: How precise does reference to legal basis have to be?
A: That depends on the legal basis. If it is a PCT article with several paragraphs be as precise as possible.

Q: Why does the EC not indicate the amount of marks for D2 questions ?
A: Because the final “golden solution” is only defined based on the answers by the candidates. The marking scheme is only then defined.

Q: How and by whom is the exam tested?
A: By “guinea pigs”.

Q: Who are those “guinea pigs” ? 

A: People….

Q: This year the exam (D2) contained 30% more words compared to last year(s). This is disadvantageous for candidates that don’t have a mothertongue in an official language. What is your view on this ?
A: This should not be a problem. There is plenty of time to score more than 50 marks in total. Time pressure is something that is taught by tutors. The exam can be passed without having to feel severe time pressure.

Q: The D2 exam often has questions half-way the text. Is it intended that these should be answerred prior to reading the rest of the text?
A: Not necessarily. It is up to the candidate to decide how to answer the paper. The position of the questions is merely a guidance to help candidates structure their answer.

R: The EC does not take into account the time pressure of the exam.
A: If a candidate knows and understands the law he can answer each question. Moreover a candidate only needs to score 50 marks to pass. A candidate will only feel time pressure if he wants to score more than 80 marks. The time pressure is something that tutors teach their students and/or comes from a lack of thorough knowledge on the EPC.


Other remarks (also by other tutors):

- Read the question => know the answer => (always) find and check legal basis => write down the answer and cite legal basis.

- For D1 it is probably better to have an answer for each question than trying to get full marks for only part of them.

- There is no “recipe” or “standard approach” for the exam.

- Mention the date of the exam on your paper. The advice is supposed to be given on the day of the exam, which is “today”. Quote: "Today is today and there can be no doubt or discussion about that "

Hope this is of any use. 

For tutors having additional remarks or another opinion on what was said, feel free to post a comment.

Procedural Law under the EPC-2000, 2nd Edition, 2011

 


Andreas Veronese and Peter Watchhorn have updated their book "Procedural Law under the EPC-2000, 2nd Edition, 2011". The book can be purchased from their website, http://www.epc-compass.com.

Andreas and Peter write the following:

"We have updated the book to the legal changes which have entered into force over the last three years since the publication of the first edition in 2008. In particular, the "Raising the Bar" rule changes have been explained in this second edition (search limitations, time limits for filing divisional applications, provision of search results on claimed priorities, indication of amendments and their basis and mandatory response to the European search opinion or the Written Opinion prepared by the EPO in the PCT). We also dealt with the reform of the fee system (the unitary designation fee, shortened pre-payment of the renewal fees, page fees due on filing etc) which came into force in 2009 and the transitional provisions for all of these changes are also dealt with in this second edition, where relevant.

This second edition of "Procedural Law" is suitable for the study for, and for use in the EQE of 2012 (as is the second edition of our book "PCT Procedures and Passage into the European Phase" published last year)."

For those who are familiar with this book (or the book on the PCT they also wrote) please post your opinion/ review as a comment.

Updated PCT Newsletter summary

An updated PCT newsletter summary is available in the download section of this website. The summary contains the practical advices of all newsletters and some further information that I thought could be useful. Of course you should judge for yourself if the summary is complete enough to take to the EQE. The practical advices usually are quite good studying material. Try to answer the question yourself first before reading the answer....did you come up with the same ???

Don't forget to get yourself a copy of the excellent book on the PCT by Cees Mulder !

Updated document Implementing Regulations

The Implementing Regulations will change per January 1, 2011.

New Rule 70(b)
Amended Rule 141



NOTE: DO NOT USE THESE AMENDED RULES FOR THE EQE 2011 !!!

You can find the updated editable document in the download area, or by clicking here.

Updated G Summary available !!!

I know you have all been waiting for this and reminded me from time to time that it was still not there. I told most of you that I would post an updated version well before the EQE. Well, good news, the G Summary has been updated and is now available for download. Either go to the download pages, or click here for a direct download.

I wish you all the best for 2011 !!

PS: Note that the EQETools LinkedIN group is steadily growing. Feel free to join the group and post your questions, concerns, thoughts etc. etc.

Coffee break questions from the EPO

Surfing the EPO website I found a link that allows automatic e-mails be sent containing what the EPO calls "Coffee Break Questions". So far I have received two of such questions, see below for an example.

The EPO PschorrHöfe building in the Bayerstrasse (not the main building, but the one across the street) has a very nice "sky bar" for EPO employees (or lost attorneys :-)) to enjoy a good coffee after an excellent lunch. This is not the place for people wanting a quick shot of caffeine but rather a place to stay around for some time, to enjoy the view over Munich and of course the coffee.

Why am I writing this down ...

Well, first of all because the questions I have received so far are so easy that the coffee break will be very short if you focus solely on the answer of the question. However, this source of questions may nevertheless help you in your preparations by thinking bit further on the specific subject. Doing so may want you to decide to take another cappuccino. 

Question one was the following:

An invention can be patented only if it is new. What is the relevant date for determining the state of the art?

- The filing date
- The priority date
- The priority date if there is one, otherwise the filing date


The answer is not difficult, it probably takes a few seconds. However, you may want to consider the following:
- What are the other requirements for patentability? What is the legal basis ?
- What if the claimed invention is not the same invention as in the priority document?
- Following the previous question, what legal basis (Articles, Rules, Case Law) deals with the right to priority, and more specifically what is meant with "the same invention".
- What is the difference between prior art under Article 54(2) an 54(3) ? How is this related to the priority issue.
- What are the requirements for getting a filing date? Legal basis?
- etc. etc.

You can subscribe at the EQE-Online website.

Enjoy your coffee !!!

More free EQE resources

Some time ago the website www.cyberepc.com was launched. The idea behind this website is to provide an online source of information related to the EPC. Articles, Rules Guidelines and further information is all (hyper)linked so it is easy to navigate and find the provisions that you need. All that said the website was not primarily developed for EQE candidates.

CyberEPC has today expanded it's scope also to those looking for information and tools related to the EQE. You can find the "EQE Workspace" here.

A nice thing about the CyberEPC is that it is available in all three official languages of the EPC. For those wondering what these languages are, click here :-)

Have a nice weekend!

G1/09 : Refused but still pending ...

The excellent IP weblog IPKat reported the publication on the EPO register of G1/09. The summary on this weblog tells the story so I will limit this post to the decision itself:

In the case where no appeal is filed, a European patent application which has been refused by a decision of the Examining Division is thereafter pending within the meaning of Rule 25 EPC 1973 (Rule 36(1) EPC) until the expiry of the time limit for filing a notice of appeal.

To read the whole decision, click here.

The end of Swiss type claims

In G2/08 the use of Swiss type claims was said to be no longer allowed 3 months after publication of the decision in the Official Journal.

The EPO has published a note on their website with more information, click here.
The three month period as determined in G2/08 expires January 28, 2011.


This means that Swiss type claims are no longer allowed in European aplications filed after that date, or having an earliest priority date of January 29, 2011. If any such application contains Swiss-type claims, the applicant will be invited to correct this deficiency.

The paper A tool has been corrected in view of this decision.
Read G2/08 here.

Adjustable D1 timing sheet

Apparently the timing sheets for D1 are appreciated and some people even want to have more control over the tables. Recently I received this timing sheet which offers a bit more options than the one that is already available for some time. Needless to say that passing D1 will never depend on a correct timing sheet, yet I believe it really helps in managing your time during the exams and/or your preparations.

Good luck and thanks for sending me this file !

US patent law for the EQE: A closer look at Section 102(b)

This post deals with some aspects of US Law and is based on how I understand it works.

Section 102(b) says that a person shall be entitled to a patent unless

"the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States"

This section as I understand it, although it does not say so explicitly, refers to acts by both the inventors and third parties.
An important aspect of this provision is that it refers explicitly to the "date of application for patent in the United States". This date is the actual US filing date and not the priority date in case priority is claimed from a non US patent application.

A further important aspect is that the provision allows a "grace period" of one year from "disclosure" of the invention. This grace period only applies if the disclosure was done by the inventors. Note that in case of public use, this public use needs to be in the US. So, public use outside the US does not fall under the provision of 102(b).

An interesting situation arises when the invention concerns a process and where the products from this process are sold more than one year before filing of a patent application. Here is what the Federal Circuit Court of Appeals said (D.L. Auld Co. v. Chroma Graphics Corp.):

"An inventor's commercial sale of a product produced by a novel or patentable process prior to the critical date not only results in the forfeiture of patent rights to the product itself; but, also forfeits any patent rights in the underlying process. Interestingly, if the process remains secret, however, the sale will not bar another inventor from patenting that very same process."

A nice and more complete overview can be found here:
http://www.zuberlaw.com/lawfirm/articles/protecting_your_process_patent/

So, let's consider the following example:

Product A was made using method B for a long time. At a certain moment in time method B is improved to (patentable) method B', the improvement resulting for example in a higher yield. Product A has not changed. By disclosing (for example selling) product A made with method B' in the US a one year period is triggered for filing a patent application on method B'. If this application is filed later, no valid US patent right on method B' can be  obtained.

It becomes even more interesting if method B' is carried out outside the US. Does the same reasoning as above then still apply? Unfortunately I did not get a definitive answer on that so far. However, assuming it does apply, most probably a lot of US method patents would be invalid for the reason that these are typically filed in the US near the end of the priority year (assuming the priority application was not  filed in the US). It is very likely that the inventive process is a few months older than the priority date and that some products made with this process have already been sold. Again, the catch is that 102(b) refers to a US filing date.

To overcome this potential problem one could (or should) consider filing a US provisional application a.s.a.p. after filing of the non US priority application. Doing so will result in an "early" US filing date, which by the way will also be beneficial in view of Section 102(e). (I'll come back to this provision later)

I'm not sure if you should you know all of this for the EQE, but at least I hope it is a bit more clear how this "grace period" works......

As I mentioned above, this post is based on how I understand it works. There is probably a lot more to say, so feel free to comment ...

ABC/D comprehensive by Patskills

Brian Cronin from Patskills has recently published the ABC/D comprehensive, which is available from unibook.com, click here.

Short description (copied from the Unibook website):

This book is a comprehensive analysis of the European Qualifying Exam for European Patent Attorney candidates preparing for the exam.
The book’s title alludes to the fact that paper D lays a legal foundation for the legally-oriented practical papers A, B and C.
It is designed principally for candidates who are embarking on their EQE preparations, to enable them to lay the foundations of effective exam preparation and enhance their professional performance. It will also be useful for candidates and resitters who need to review what they have achieved so far in order to consolidate and continue successfully. ABC/D Comprehensive is more than a primer to introduce beginners to the EQE. It provides a thorough understanding of the exam so candidates can orient effectively their exam preparation in order to optimize their return on the considerable investment involved.
According to the website the book costs 36 euro and probably a bit more for shipment.

Updated version of the Cross-Referenced PCT available

Please note that the 2010 edition of the book “The Cross-Referenced Patent Cooperation Treaty” has been issued. The new edition of the book has been updated taking account of the amendments of the “Regulations under the PCT” on 1 July 2010.

In the 2010-edition all references to the PCT Applicant’s Guide – International phase and the PCT Applicant’s Guide – National Phase have been renumbered in keeping with the re-structuring of the Guide by the International Bureau.

The 2010 edition of the “X-Ref PCT” is the one needed if you are preparing for the European Qualifying Examination (EQE) to be held in March 2011.

The new edition of the “X-Ref PCT” also provides reference to the Articles and Implementing Regulations of the EPC [1 April 2010], the Rules relating to Fees [1 July 2010] and to the new edition of the “Guidelines for Examination in the EPO” [April 2010] in as far as relevant for the PCT. As of 1 July 2010, the EPO will start acting as Authority competent to carry out Supplementary International Searches (SISA).


In addition, all references and appendices have been updated in the new edition.


Click here to go to the website.


Learning the PCT is not an easy thing to do. A possible (yet probably not the ultimate) way is to read the chapters on the PCT in Visser using the X-Ref PCT to actually read the articles and rules whereas you make further annotations and/or notes at the same time (both in Visser as in the X Ref PCT). Likewise it is advisable to get to know the Applicant's Guide. Learn how it's organised and learn how to use the index.

If you read through the Visser part at least once it is then also a good idea to take a look at the PCT forms  and to read/check the Articles and Rules that apply to each box in each form. Ask yourself questions like "what would happen if I tick/ untick this box", "why is this box here in the firt place", "if I make a mistake, what would happen, what would be the remedy and what do I need to do". I only found out the usefulness of doing this after having read through the part in Visser at least twice, but can really recommend doing it in an early stage. In fact doing this may even be the start of your "PCT experience".

The same basically goes for the practical advices that are published in the PCT Newsletter. Use the X-Ref PCT to follow the explanations on the subjects you find in these advices. Making notes and further annotations will help you in understanding how it all works.

Hope this helps a bit ...

Bits and pieces

T1423/07 : Double Patenting
The Blogs EPLaw and K's Law report recent Board of Appeal decision T1423/07 concerning the subject of double patenting. In reason 2.3.2 the Board basically says it will not follow the reasoning applied in T 0307/03. You may want to annotate your Guidelines, C-IV 7.4 (April 2010 version)

New Guidelines
This should be "old news", yet for those who are not yet aware : The new version of the Guidelines is available from the EPO Website, click here.
You can order a paper copy at the EPO, yet I recommend you download, print and bind it yourself as an A5 booklet, see here.

CEIPI Courses for the EQE
The Official Journal provides an overview of EQE courses that are organised by CEIPI, click here.

T 2017/07 : Extension of protection conferred

This case, which recently published, is an example of how things can go very wrong for a patent proprietor when claims directed to compositions which contain both open language (comprising) and generic terms of the "Markush type" have to be amended.

To refresh the memory, Article 123(3) EPC reads:
"The European patent may not be amended in such a way as to extend the protection it confers."

In this particular case claim 1 as granted reads:

"A hair dye composition which comprises
                 (A) an acid dye and
                 (B) an alkylene carbonate having 3-5 carbon atoms in total,
                 wherein the content of (B) is 0.5-50 % by weight
                 [..]"

During opposition this claim was amended to read :

"A hair dye composition which comprises
                 (A) an acid dye and
                 (B) an alkylene carbonate having 3-5 carbon atoms in total,
                 wherein the content of (B) is 0.5-50 % by weight,
                 the alkylene carbonate being propylene carbonate
                 [..]"

At first sight such a claim seems acceptable. However, the opponent and the Board further examined the case and found that by limiting the claim to a species of the genus "carbonate" at the same time maintaining the "comprising" language the scope of protection was in fact not limited but extended. The Board basically reasons that because of the "comprising" nature of the claim the hair dye may still contain carbonates falling within the genus "carbonate having 3-5 carbon atoms in total". As the amount of these further carbonates is not defined in the claim, one may end up with a total of "carbonate" well over 50%. This would result in a broader protection than the protection conferred by the claim as granted.

The Board of Appeal formulated the following headnote :

A composition which is specified in a claim to comprise a component in an amount which is defined by a numerical range of values is subject to an implicit proviso excluding the presence of that component in an amount outside of that range.


An amendment restricting the breadth of that component, for instance by narrowing down a generic class or a list of chemical compounds defining that component, has the consequence of limiting the scope of this implicit proviso.


A composition which is defined as comprising the components indicated in the claim is open to the presence of any further components, unless otherwise specified. In a claim directed to such an openly defined composition, the restriction of the breadth of a component present therein may have the effect of broadening the scope of protection of that claim, with the consequence that in opposition/appeal proceedings such amended claim may extend the protection conferred by the granted patent (Article 123(3) EPC).

To me the decision makes sense, but at the same time I have to admit that this is a scenario I have never considered before when drafting claims.

Article on problem-solution-approach updated

I recently updated the article on the problem solution approach in view of the new version of the Guidelines. All references to the Guidelines now apply to the April 2010 version.

Some additional remarks were added w.r.t. reformulation of the objective technical technical problem.

The article can be downloaded/viewed from the download area, or simply by clicking here.

PCT Newsletter - April 2010 (No. 04/2010)

The latest issue of the PCT Newsletter (No. 04/2010) is now available on
the PCT Resources page in:

http://www.wipo.int/edocs/pctndocs/en/2010/pct_news_2010_04.pdf

Although interesting to read, w.r.t. importance for the EQE you can skip the practical advice in my view as it does not relate to the law as such but more or less is aimed at providing strategic advice for applicants. More in particular the advice is aimed at whether or not is appropriate to file a demand. I personally wonder why the WIPO decided to do this.

Anyway, I've copied the items which I think are important to the PCT summary.
- EPO will be SISA as per July 1st 2010
- Notifications by e-mail
- Example request forms
- Updated ISA and IPEA agreements
- Power of Attorney waivers

Editable copy of EPC Implementing Regulations updated

The Editable version of the Implementing Regulations has been updated. Download here directly or go to the downloads section. The update concerns the amendments that entered into force on April 1, 2010.

The following Rules were amended/ inserted :

Rule 36 (1) and (2)
Rule 57(a)
Rule 135(2)
Rule 62a
Rule 63
Rule 64, paragraph 1
Rule 69
Rule 70a
Rule 137
Rule 161

T 0961/09: Legal framework w.r.t. Article 76(1)

T 0961/09 and T 0962/09 relate to decisions by the Examining Division refusing a divisional application for non-compliance with Article 76(1). To refresh the memory, Article 76(1) reads:

A European divisional application shall be filed directly with the European Patent Office in accordance with the Implementing Regulations. It may be filed only in respect of subject-matter which does not extend beyond the content of the earlier application as filed; in so far as this requirement is complied with, the divisional application shall be deemed to have been filed on the date of filing of the earlier application and shall enjoy any right of priority.

In both decisions, the Board of Appeal summarizes the legal framework with respect to this Article :

[..]

In summary, as follows from reasons 5.1 of G 1/05 (OJ EPO 2008, 271) and G 1/06 (OJ EPO 2008, 307) the main criterion for assessing compliance of Article 76(1) is essentially the same as that applied when assessing compliance to Article 123(2) EPC. 

Thus, subject-matter of the divisional must be directly and unambiguously derivable by the skilled person from the disclosure of the earlier, parent application as originally filed, as determined by the totality of its claims, description and figures when read in context. 

Moreover, it is normally not admissible to extract isolated features from a set of features originally disclosed in combination, see T 1067/97, T 714/00 or T 25/03.

Following T 770/90, an unduly broad filed claim cannot justify new feature combinations. Nor, the Board adds, can the content of a document be regarded as a reservoir for combining features from separate embodiments, see e.g. T 296/96. 

The Board further refers to decisions T 1500/07, T 1501/07 and T 1502/07 in particular reasons 2 thereof.

Although specifically directed to Article 76(1) I'd say this is a very useful summary.

Delta Patents increase their presence on the net

Following the initiative of Pete Pollard, Jelle Hoekstra, Rolf Suurmond and Joeri Beetz have joined Pete's blogging activities with respect to the EQE. The new Blogs, specifically directed to papers C and D can be found by clicking the links below :


EQE Paper C

EQE paper D

Patent Law updates


Given the high quality courses Delta Patents provide (for those wondering: no, I'm not affiliated in any way) I'm sure these Blogs will be a valuable source of information to EQE candidates.