Tutors' report on the EQE 2016 papers
L. Ferreira (PT), A. Hards (DE), M. Mackett (BE), H. Marsman (NL), S. van Rijnswou (NL), and R. van Woudenberg (NL)
Each year in October, the European Patent Academy and the epi arrange a meeting between EQE tutors and the Examination Committees. The goals are to discuss last year's papers, to improve future EQE's by openly exchanging ideas and to help tutors prepare candidates for next year's exam.
The Examination Board has kindly given the tutors permission to publish their own report of the important points so that candidates can more easily find this information. In addition, the comments can greatly assist when reading and interpreting the official EQE Compendium.
This year's meeting was held in Munich on October 21. The participant list showed 84 registered tutors, 20 registered Committee and Board members, and 8 further registered EPO and epi members (Academy, EQE secretariat, epi).
This Tutors' Report appears each year in the end of year edition of epi Information.
It contains the following sections:
|1. Overview of the passing rates in 2016||2. General remarks|
|3. A - E/M||4. B - E/M|
|5. A - CH||6. B - CH|
|7. C||8. D|
|9. Pre-Exam||10. The combined AB Papers (EQE 2017)|
On behalf of the tutors present in Munich, I would like to thank all the members of the Examination Board and Committees for their openness, for listening to our opinions and comments, and for providing their feedback thereto. This meeting is our yearly opportunity to learn from each other. My thanks also to the tutors who asked questions and contributed to the discussions.
My special thanks to Harrie Marsman, Andrew Hards, Luis Ferreira, Margaret Mackett and Sander van Rijnswou for finding time to prepare the individual paper summaries.
We all wish you good luck in 2017,
Roel van Woudenberg (Editor)
1) Overview of the passing rates in 2016
In 2016, 619 candidates out of 821 (75%) passed the Pre-Exam, and 514 candidates passed the Main Exam out of 1669 who took at least one paper. The official results for each paper, as published on the EQE website and dated 19 August 2016, are as follows:
|EQE 2016||# Candidates||PASS||COMP.FAIL||FAIL|
|A - E/M||532||52,63%||10,15%||37,22%|
|B - E/M||545||68,44%||8,62%||22,94%|
|A - CH||324||62,65%||6,79%||30,56%|
|B - CH||259||55,98%||7,34%||36,68%|
2) General remarks
In introductions by Jakob Kofoed (Chair of the Examination Board), Paolo Rambelli (epi) and Giovanni Arca (Academy), the following items were mentioned:
The EQE is an EPO-epi cooperation, aiming to have a fair exam, with the same level every year (not too big fluctuations). The EQE is meant to let people pass who are fit to practice
This meeting aims to also provide an understanding of the new AB (one-for-all). The epi and the Academy also recorded a webinar about the new AB format, in the form of an interview with Nicolas Favre, available as of mid November on the website.
The EQE has been largely the same since it was introduced for initially 20-25 candidates. The intention is to modernize it while maintaining the quality and guarantee high pass rate.
The Academy published the "Terminology training manual for professional representatives" and an accompanying book for teachers - order via EPO website. It clarifies terminology for an EP patent training, and used a.o. EQE papers and Examiner's Reports. The manual can be ordered free of charge via http://www.epo.org/learning-events/materials/terminology-manual.html.
Nicolas Favre (epi; chairman EC I) commented on the benchmarking.
Benchmarking is already used for years: Committee members sitting the main papers of the EQE in the EQE exam hall with the candidates. This year also EQE-passed EP attorneys participated (invited via an epi mailing), without specific preparation.
Ideally, a benchmarker gets around 50 marks. The results of the benchmakers are used to gauge the answers, where it makes a difference for the candidates. The obtained grade is not given to the benchmarker, and the benchmarking is fully anonymized.
Benchmarkers are not used for the Pre-Exam, as the answers there are either black or white. It was asked by a tutor whether it would not be useful to identify possibly ambiguous or unclear questions, but it was not considered useful.
3) A - E/M by Luis Ferreira
EC I (AB EM) representatives: Christophe Chauvet (EPO), Sabine Hillebrand (EPO), Tom Vermeulen (EPO).
The paper was about a "siphon" or, more precisely, about improvements to a conventional siphon. It was not overlooked by the Examination Committee that siphon has the same wording in English, German and French, and it was probably anticipated that this would give candidates a familiar everyday starting point. The points addressed by EC were mostly contained in the Examiner's Report, but particular points were emphasised, as follows.
As usual in E/M papers, the prior art and the invention were clearly mapped into the drawings (Fig. 1 vs. Fig. 2-4). An approach based on the functions performed by the different parts (connecting, draining, storing, blocking) provided a sound basis for understanding the paper and the invention to be claimed.
It is noted that a small deduction was foreseen for mentioning that an aesthetic problem is solved - however, positively, no candidate relied purely on this.
There was a piece of "private" prior art - Fig. 1C - which was not expected to be cited. This was used also as a means to look for other aspects having a more nuanced view of the candidates' competencies and training. Although it would not be necessarily a good idea to reveal "internal" prior art in the real world, the candidates were not penalized by this. Only a "couple" of candidates actually identified this "internal" prior art as CPA. However, compounded with other mistakes, this could be an indicator of not yet being fit to practice.
Although the mistakes present in the Report were actually not that common, only roughly a third of the candidates came up with the correct answer of feature (d2). This was not fatal however and other points could be obtained from the rest of the paper. Taken into consideration the average score of the exam, 5 point differences had a large impact of "saving" a number of candidates, provided if no other major mistake was committed.
It was mentioned that a wall 'ending freely' - which covers all embodiments but, in fact, is more limited (for example, a wall could go to the bottom but have holes to accomplish its function) - had no deduction.
It was expected that an inventiveness discussion would start from conventional prior art and not be described in the context of private prior art e.g. how the R&D Dept. reached the invention, etc.
An approach based on the different functions performed by the different parts, recognising how these functions were split in a different way compared to the prior art again was a sensible way to tackle the paper.
It was commented on how the two-part is getting to be less and less important - depends on the papers, sometimes it is crystal clear it should be used, but often may not be important or even required. It may even be said that more mistakes appear when candidates try to draft in 2-part form.
Lack of clarity was as important (-30) as lack of novelty (-30) and this may reflect a trend. It certainly was noted how poorly drafted claims will normally accompany a patent application throughout examination and opposition.
4) B EM by Margaret Mackett
EC I (AB EM) representatives: Christophe Chauvet (EPO), Sabine Hillebrand (EPO), Tom Vermeulen (EPO).
This year's paper, the last of its kind, related to raising traffic awareness with the invention having two embodiments, both of which needed to be covered with any amendments made to the claims.
A summary of the invention was presented followed by an analysis of the three prior art documents and the objections raised in the Communication.
The invention had two embodiments, namely, a garage exit with pavement sensors for pedestrians and a display for the driver in the garage, and, a weight sensor for the vehicle with warning signals for the pedestrians.
For the prior art, D1 was directed to a garage exit but having only a driveway sensor; D2 was directed to a hospital exit with weight and pavement sensors; and D3 was directed to a driveway crossing in an alley having vehicle and pedestrian sensors.
The proposed draft claims were based on a combination of claims 1, 4 and 2 (in part) as originally filed and needed to be revised to meet the requirements of the EPC.
In the letter of reply, candidates needed to address intermediate generalisation and why it was allowable as only claim 2 (in part) was included in new claim 1. As usual, full basis for the amendments needed to be provided and arguments needed to be provided to address all of the objections raised in the Communication. In addition, candidates were expected to argue for any changes in claim dependencies.
More information can be found in the Examiners' Report published in the Compendium.
5) A - CH by Harrie Marsman
The presentation was given by Nicolas Favre (chair of EC-I; epi), Wim van der Poel (Coordinator; EPO), Harald Schmidt-Yodlee (EPO) and Josep Enric Giménez Miralles (EPO). Mr Giménez Miralles was the main drafter for paper A. Mr Schmidt-Yodlee was the main drafter for paper B.
Further, Kaisa Suominen gave a summary of the chemistry papers for the AB Mech group.
Passing rates for paper A 63%; for paper B 56%.
Paper A was dealing with biodegradable nanoparticles and the use thereof in the oral administration of insulin.
The marking was based on 70 marks for the independent claims, 15 for the dependent claims and 15 for the description.
The problem and solution were already sketched in the first paragraphs of the paper.
The problem has two aspects: the passage through the stomach and the absorption in the intestines.
Important aspects are the polymers, wherein the length of the alkyl groups is relevant for the degradation. In addition, a process for the preparation of the polymers is described, with emphasis on the pH.
There were 2 documents of prior art both dealing with particles having entrapped therein insulin. D1 discloses in detail an anionic polymerization method. The claims of D1 were good examples on how to claim in the field of the paper.
D2 is from the client and discloses also a preparation method using different pHs. D2 discloses that when using a pH of 1.9, the polymers are not stable. Moreover, D2 teaches that insulin behaves different from other peptides.
D2 contains quite some teachings which was to be used to come to good claims.
In the client's letter, it is taught that stabilizers in combination with the alkyl chain length have unexpected effects. It was important to realize that not only the exemplified dextran stabilizer could be used but any pharmaceutically acceptable stabilizer, since a number of stabilizers were mentioned in the client's letter. If the stabilizer was not present in the product claim, this caused major novelty problems with D2.
The paper clearly contained an indication of which types of claims were expected.
On the nanoparticles, it was important to realize, which features needed to be restricted and which features could be kept general. Thereto, there were clear remarks in the letter, which were illustrated in the examples and the figure.
When you used product-by-process language to define the product, you could only get 22 marks instead of the 32 marks for a claim that used only product language. The important point was to use the term "non-covalent complex".
On the method claim, the only method described is dealing with anionic polymerization. It was advised to use the wording from the client's letter and add the features of having a stabilizer present and keeping the pH 2 or lower.
If you made the same mistake in the product and the process claim you would not get a double penalty. It was indicated by Mr Favre that this would also apply for future papers.
When you have two claims in one category, the worst one is marked. Candidates should make a clear decision where they want to go for.
Two points were emphasized by Mr Favre "also with an eye on future papers": the categories of the claims expected are in the letter; and read the letter of the client up to what the invention is, read the prior art and continue with the client's letter.
Interesting remarks on paper B which may have a bearing on future papers B: it is not expected in the new format of paper B to completely rewrite the claims.
The remarks in the paper are intended to help the candidates to come to the desired solution. These are not made to complicate matters.
In this paper the Examiner raised quite a number of clarity objections. It was not necessary to consider that the Examiner is always right. You were allowed to counter some of the clarity objections, based on the application and especially definitions therein.
For support in the application as filed, it is needed to give also arguments as to why the various passages on which the amendments are based could be combined.
6) B - CH by Andrew Hards
EC I (AB - CH) representatives: Nicolas Favre (epi), Wim van der Poel (EPO), Harald Schmidt-Yodlee (EPO), Josep Enric Giménez Miralles (EPO).
This year's paper B was the last of a long series of highly successful EQE chemistry papers that have been used to train candidates in the profession for decades. As you know, this long and rich tradition is ending, very much to the detriment of chemical practitioners. As of next year, there will be a joint mechanics/chemistry paper, which will likely no longer cover important chemical aspects such as product-by-process claims, Markush groups or second medical use claims. How can a practitioner in the chemical arts be cleared as fit to practice, if such essential elements are not even on the curriculum? We will see how the Committee tackles this daunting task in next year's exam papers A and B.
However, not all is changing for the worse and we might see some new ideas and fresh concepts injected into the examination. The intermarriage of mechanics and chemistry might help to cross-pollinate the different professions and lead to a more unified concept regarding issues such as ranges and the requirements of Art. 84 EPC.
For all those chemists preparing for the exam, beware of functional definitions in mechanical devices. I doubt that there will be a rude awakening, since the first exams will be drafted by chemical Committee members to ensure that they are comprehensible at the most basic level. Nevertheless, drafting or amending such functionally-defined claims may be challenging to chemical patent candidates that have never laid hands on mechanical features (although this itself might not be good preparation for life as a patent attorney). To facilitate those taking the exam 2017, most likely the elements relevant to the solution might be found in the text itself (maybe even in Paper A), so candidates must not attempt to find quixotic mechanical terminology, they just need to spot the decisive features.
Personally, I would also expect the trend toward increased emphasis on argumentation to continue. Naturally, finding the right features to amend a claim is paramount in Paper B, but there are hefty points to be earned for arguing each step, e.g. of the problem-solution approach. In addition, the argumentation should go beyond mere rote phrases; points can be earned for spotting facts that can be interwoven into the argumentation, such as push or pull arguments for inventive step.
Anyway, this year's paper B was about a dog or cat repellent that can be applied to walls and fences. The expected solution was to restrict the paint to a composition wherein the cyclohexylurea derivative is embedded in a polymer matrix and has a specific Markush formula.
Plenty of marks were given for arguing that the clarity objections were overcome and the basis for the amendment. In addition, novelty and inventive step argumentation (with showing how the problem is credibly solved) afforded 40 marks. Thus, 70 marks were awarded for argumentation!
As so often in the past, the applicant's letter contained suggestions that would violate Art. 123(2) EPC. However, in contrast to past papers, the solution deviated slightly from the applicant's wish in that he desired ready-to-spray dispersions. Candidates had to distance themselves from these wishes, which many found difficult, and perhaps rightly so, since the applicant's economic goals should normally be respected.
However, in line with previous papers, the effects are important pointers to the solution and by referring to working example 3, candidates could derive that the polymer matrix embedded paint had superior adhesion to the wall and thus longer efficacy. As always, it is thus important to cross-reference the working examples for advantageous effects. How such effects will play out in the joint mechanics/chemistry paper next year will be interesting to follow. Good luck!
7) C - by Sander van Rijnswou
EC II representatives: Celia Martinez Rico (EPO), Jen Le Mière (epi), Christoph Ritter (EPO).
The Exam Committee for Paper C 2016 discussed the paper and answered questions.
The Committee explained that re-use of the cooling device is an important aspect of the invention. For users of cooling devices re-usability makes an important different in the cost of using the device.
In the annexes A2 was an intervening application. An analysis of the dates was expected.
A discussion on the public availability was expected. One mark was available for saying that further evidence could be provided.
The Committee wanted to do something different with A7. Attorneys spend a lot of time comparing text, and this aspect is hardly tested in paper C. Originally, the client's letter did not give a hint in which section A7 differed from the granted patent. This hint was later added, and explains why A7 comes across as a bit confusing.
Effective dates section was done quite good and is straightforward.
For the novelty A2 attack, a link with A1 had to be made to explain that A2 satisfies the definition of thermally active composition.
Both a novelty 54(3) and an inventive step attack was expected. The novelty attack under 54(3) is considered a weak attack since it could easily be overcome by adding a non-essential feature. If the inventive step attack for claim 1 is only made for dependent claim 3, a candidate would get most of the marks available for claims 1 and 3; At most 3 marks may be lost. The lost marks relate to the technical effect which is different for claim 1 and claim 3. Full marks could be gained by only doing the inventive step attack for claim 3, and explaining that the attack also applies to claim 1, but that the technical effect has to be modified.
It was remarked that both for claim 1 an additional attack was required because the attack could be overcome, but for claim 2 no additional attack was required because the attack could not be overcome. The Committee indicated that it is not the intention that candidates need to ask for each claim if the attack can be overcome in opposition or not. However, it was emphasized a few times that no recipe can be given. Candidates each year have to find the way of the paper. Future Committees are free to do it differently.
The added subject matter attack for claim 2 was discussed. In particular, the Committee discussed if it was clear that no additional attack was required for claim 2. According to the Committee, if an attack cannot be overcome, we do not expect another attack. There was no way to overcome the Art.123(2) attack on claim 2. Some candidates were not able to distinguish between added subject matter and lack of priority, as added subject matter attacks were received on claim 6 on the basis that it was absent in the priority document.
A question was asked regarding the difference between paper C and D with respect to added subject matter. According to the question, paper D assumes that a date must be accorded to a claim with added subject matter, and additional attacks are required, but in paper C for a few years now it is assumed that no date is assigned to a claim with added subject matter. The Committee promised to discuss the point internally.
The Committee advises candidates to first attack all claims before considering if an additional attack is possible on a claim that contains added subject matter. In this paper, no additional attack was possible, but also the attack could not be overcome. If a candidate thinks he can do it, he should leave it to the end.
The Committee explained that they cannot make marking sheets for every possible attack, because an objective marking is needed.
Candidates generally do very well on added subject matter attack and receive a lot of marks for it.
There were two possible closest prior arts: A3 and A5. In real life, multiple closest prior arts do occur, but candidates are in an exam situation and need to pick the best attack. The Committee wanted to get away from past papers that gave the impression that purpose is the sole determinant of closest prior art. Both A3 and A5 have the same purpose, so that in this case an examination of the structural features is needed.
Attacks that started off from a different prior art could get marks, if the attack makes sense and is well reasoned.
Closest prior art needs to be reasoned. We need to see your thinking. Why did you choose this attack and not another? They must explain why they choose a closest prior art. The Committee did not answer how many marks there are available for closest prior art argumentation, but did mention that a candidate who never argues his closest prior art selection could still pass the exam.
Only positive arguments are required for CPA selection, not negative ones. The Examiner's report does mention negative reasons, i.e., why some documents cannot be the closest prior art, but these are for completeness and are not expected from the candidates.
Claims 4 and 5
These claims were done quite well.
This claim is anticipated by A2 because it inherently has the claimed property. Novelty and inventive step attacks starting from A4 were also accepted. The Committee was generous in allowing different attacks for this claim.
The Committee drew attention to the examiner's report for claims 1 and 5 which gave a lot of explanation of what is expected in a good inventive step attack.
8) D by Roel van Woudenberg
EC III representatives: Dimitrios Roukounas (epi), Charlotte Nessmann (EPO), Magali Degrendel (EPO - main drafter DI), Gabriele Gislon (epi - main drafter DII).
This D paper got a high pass rate again, even though not as high as in 2015. But there is also still very badly scoring people, with very big mistakes. This year no major issues were missed by all candidates.
The Examiner's Report indicates that candidates are reminded that they should pay attention to the way the questions are asked and should not simply repeat information from the paper in the answer. Repeating information per se is not awarded any points.
The Committee is thankful for all the questions, as it helps the Committee too.
No answers will be given to questions directly addressing the number of marks - but actually many answers given indicating that a certain item was needed or not to get marks
There is no intention from the Committee to put the DI questions in a multiple-choice or True-False form, despite some rumours.
It was asked whether the amount of PCT in DI this year let to a lower DI score. This was not the case: this paper shows the same DI average as in 2014 and 2015. Further, PCT is very important. Note that only 1 Q was really a PCT question, needing PCT provisions for answering; all others were Euro-PCT questions for which the EPC was needed for answering.
The Examiner's Report indicated that surprisingly many candidates failed to apply the 10-day rule of R.126(2) correctly. No statistics is available, but the markers commented about this.
The Exam Committee emphasized that too many candidates loose points on basic topics such as R.126(2).
Q.1 - appeal:
Q.1 was the best answered question from this paper.
The numbering of the questions as a), b1), b2) is meant to clarify which parts belong to which "preamble"
Many candidates missed the recent amendment of R.103 (refund of appeal fee) and consequently answered wrongly.
R.132(2) was needed for full marks when indicating that the time limit would be at least 2 months. In response to a question of a tutor whether the Boards is not free to deviate from R.132(2) as it would be bound by its Rules of Procedure, the Committee answered that R.132(2) also applies to time limits set by the Boards of Appeal.
Q.2 - languages for PCT applications:
Q.2 was not so well answered.
Most did validity of priority correctly.
But language of the PCT application gave problems: transmittal to IB and translation for EPO as ISA.
Candidates were expected to understand that "filed online" did not need to be further addressed, as the method of filing has nothing to do with the real topic of the question (language issues). Tutors commented that it is usual that a candidate uses all information in the question, and would thus comment on it. If they did, they could have attracted bonus marks: marking is always done in favour of the candidate, if a correct but non-expected answer is given.
Although the answer to Q.2-b) in the Examiner's Report indicates also Art.16(3)(b) PCT and Art.152 EPC (in connection with the EPO being ISA, EPO-WIPO agreement OJ 2010, 304), these were not needed for full marks.
No specific article or page of OJ 2010, 304 was needed (EPO-WIPO agreement).
The Committee emphasized that the Examiner's Report's Possible Solution has no teaching function. Requirement as to how complete the legal basis needs to be may be different in a future year.
Q.3 - direct entry into national phases; early entry into the EP regional phase
As it was not clear from the PCT Newsletter and the PCT Gazette whether the international filing date or the entry date was the relevant date for the old or new provisions of Lithuania to apply (national route closed per 4/9/2014; was filed before, entry was after), both answers were accepted.
A reference to the relevant paragraphs in the Euro-PCT Guide for early entry was not accepted as an alternative for OJ 2013, 156.
Only Art.45(2) PCT gives full marks for legal basis for closure of the national route.
Q.4 - effect of non-payment of claims fees on EP entry
Abandonment of claims on entry if no claims fee paid has the result that they cannot be reintroduced if no further basis in the application.
It was not expected, for full marks, to discuss whether a divisional can be used to revive the subject-matter of claim 16: the questions asks "…this patent application".
Q.5 - opposition based in a Euro-PCT Art.54(3) application
For full marks, grounds and related documents for opposition need to be indicated.
For Art.54(3) effect for a successful opposition, just Art.153(5) and R.165 is enough (and both are needed), not needed to do full entry with all the acts of R.159(1).
The DII part of the D paper related to coffee capsules with ribs of various shapes and various material, as well as a coffee powder with an additive.
The client, coffee maker San-Antonio (SA) from France, developed a plastic coffee capsule with reinforcing ribs. The ribs make the coffee capsule more rigid leading to a more reliable piercing step. SA established that coffee capsules having ribs with a cross-section which is triangular or elliptical can be made of any plastic material. A complication arises as it is impossible to produce coffee capsules having ribs of other shapes of the cross-section unless they are made of plastic material X. They have filed national French applications as well as a PCT-application directed to plastics cups with ribs.
The client's main competitor is Swiss company "Big Coffee" (BC). They have a national Swiss application and a PCT application (a bit earlier priority date than that of the client) describing and claim a plastic coffee capsule having a rib and a plastic coffee capsule having an elliptical rib. Material X is not disclosed in the applications from BC. The competitor's PCT application also discloses and claims a coffee powder containing additive G, which results in a surprisingly good coffee because the aromas are extracted very well. Our client already filed an earlier French application directed to capsules with additive G, and this text is also included in the client's PCT application.
BC also has a granted European patent, which has a single claim relating to coffee capsules made of material X. No mention of ribs is made in that patent. The opposition filed by the client against it was recently rejected, but their Dutch professional representative before the EPO just found a new novelty-destroying document and filed an appeal, in Dutch, and paid the appeal fee. The candidate had to deal with this.
The questions addressed the different subject-matters explicitly:
"Please let us know:
- What is the patent situation as it currently stands with respect to
a- plastic coffee capsules having an elliptical rib,
b- plastic coffee capsules having a triangular rib,
c- plastic coffee capsules having a rib,
d- plastic coffee capsules made of material X,
e- coffee powder containing additive G?
- What actions can we take to improve our situation with regard to each of the above products?
- After having taken these actions, can Big Coffee stop us from selling any of the above products in Europe, or can we stop Big Coffee from selling any of the above products in Europe?"
The Examiner's report indicates: "Some candidates did not follow the scheme that was given in question 1. Instead of discussing the patent situation by subject matter, as was requested, they discussed it by patent application. This approach often resulted in an incomplete analysis for a particular subject matter and earned fewer marks. If the conclusions were not present, e.g. "elliptical rib takes away novelty of rib in general", the relevant points were missed."
Main issues were validity of priority, lack of enablement of the priority application and the applications from the clients and the competitor, the (im)possibility to overcome the enablement objections, (lack of) novelty over 54(3) prior art, entitlement to use a certain language when filing an appeal.
When discussing validity of priority, an explicit indication is needed that applicant and subject-matter are the same, and indicate which subject-matter (e.g., 'elliptical ribs').
Preferably organize the answer as the question is organized: here, per subject-matter and not per application. In this DII, Q.1 addresses the current situation, Q.2 addresses what to do. The questions thus explicitly ask for an analysis of the present situation as it is and as it will be if nothing is done, as well as what the proprietor shall do. If the answer to Q.2 is given under Q.1, full marks can be attracted, as long as it is there. However, the order of the questions is expected to be optimal, so answering in the order of the Qs is encouraged.
Not all possible future scenarios need to be discussed. E.g., no unsuccessful oppositions.
A detailed structure of the questions (1 a-e, 2 a-e) can be expected in other D papers, as far as possible.
Many candidates repeat a lot of information from the paper in the answer without any argumentation.
Neither the Examiner's Report nor the Possible Solution is a training tool.
Possible Solution is at least 100 marks. May, or actually has, have a bit more.
The order of a few sentences in the answer to Q.1(b) was incorrect (page 8), and will be corrected in the online Compendium ("If …" should be moved after the second paragraph "PCT-SA validly… Monday"), if possible.
It is enough to argue "elliptical ribs in PCT-BC are novelty-destroying for ribs in PCT-SA", it is not needed to explicitly mention "elliptical ribs" to be a species of the genus "ribs".
Key was enablement: in PCT-SA, the coffee cup with ribs can be repaired by adding "of material X", but not in PCT-BC.
Some info was presented to prevent speculation, and did not require attention in the answer: "The representative left for the South Pole" (so, cannot be reached, cannot be involved), "Material X is known to the person skilled in the art" (so, can use it, enabled), "validly filed".
(The same) Lack of enablement made the priority from CH-BC invalid, as well as the application PCT-BC not enabled. Marks were available for both items.
9) Pre-Exam by Roel van Woudenberg
EC IV representatives: Stefan Kastel (epi), Francesco Rinaldi (EPO), Stefan Götsch (EPO).
Pre-Exam: General remarks
Raison d'etre for the Pre-Exam: "is a candidate fit to sit the main exam?"
When drafting the Pre-Exam questions, considerations include:
- Is the topic relevant for patent practice before the EPO?
- Is legal situation and Guidelines clear?
- Is it an elementary element in advice?
- Can one expect a candidate to know when at pre-exam level?
- Equally fair to electricity/mechanics and chemistry candidates?
Trying to get questions as clear and unambiguous, trying to avoid any doubt.
There is no target for a certain pass rate, the priority is to ensure suitability to sit main exam.
No detailed statistics are produced by the Committee, so no statistics on legal score vs claim score, why resitting, scores per country, …
- The pre-exam is made with the following process:
- Legal and claims analysis drafting sub-groups
- First drafts for both parts by main drafters
- Meet with the Committee, test exam: 2,5 hours, all make it: issues show up, discuss statement-by-statement
- Presented to Examination Board: receive suggestions
- Incorporate suggestions
- Guinea pig sessions: members from other Committees; analyze, discuss, improve
- Translations into German and French
- Present to Board
- Review in light of all information available, including what goes on on the internet
- Marking meeting
- Marking, by hand with a transparency and by a computer
- As marking is done on copies and not on the originals, a clear indication of the answers on the answer form is needed
- Meet in Examination Board
Appeals based on statement 5.4 were successful (D 1/16, D 2/16, D 13/16 in German; D 4/16 in English) due to an error in the German translation.
- It was asked whether the Committee can also share the opinion as to other appeals, esp. why those were not successful, as the information may be useful for candidates to understand when it makes (no) sense to file an appeal. Committee cannot comment on appeals that are pending or are withdrawn
- In 2014 and 2015, successful appeals also let the Examination Board to decide that candidates who did not appeal but who otherwise would have passed, were awarded a PASS. The Examination Board will decide, the Committee cannot comment.
Legal part of the Pre-Exam:
The legal part addressed a variety of subjects.
Question 1 was related to third party observations during opposition.
Question 2 was related to the R.71(3)-stage of examination.
Question 3 was directed to calculating time limits for responding to a communication, testing R.126(2), R.134(1) and further processing.
Question 4 addressed correction of the designation of inventor (inventor missing).
Question 5 tested various aspects of representation in the international phase.
Question 6 tested aspects related to a granted patent: renewals after grant, opposition, infringement, rights conferred.
Question 7 was related to validly claiming and transferring priority.
Question 8 was related to the scope of protection of a process claim and various aspects of a product-by-process claim.
Question 9 addressed renewal fees and re-establishment of a missed renewal fee payment.
Question 10 tested various aspects of opposition, in particular to language aspects, including fee reduction, time limit for translation, and languages in oral proceedings.
The answers are discussed in the Examiner's Report. Some questions were submitted and discussed at the meeting:
The questions are not arranged in a certain order based on, e.g., alleged difficulty level. The order of answering the questions is left to the candidates.
Only statement 5.1 related to the case introduction, all other statements 5.2-5.4 were generic. Candidates may expect questions to have specific as well as generic parts in a single question also in the future.
Statement 5.2: it was asked why the wording "as a general rule" was used, as the statement relates to an exception of a general requirement - the waiver of a PoA. The wording "as a general rule" was meant to let the candidate focus on the daily practice at the EPO.
Statement 6.4: for the first time in the pre-exam, it was tested whether a candidate knows what rights are really conferred by a patent, with the statement "The patent proprietor is entitled under all circumstances to produce and sell in France any matter that is covered by the claim of EP-I". Although not in the (non-exhaustive) list in Rule 22(1) IPREE, this is considered a key topic of the patent system and not specific for one technical area. Further, a correct understanding is very crucial for a successful DII in the main exam.
Claims analysis part of the Pre-Exam:
The claims analysis part related to a saucepan with an integrated strainer. Three embodiments were shown in three separate figures. The lid of the saucepan can be rotated in the cooking position and in the straining position while keeping the lid on the container of the saucepan. When the pieces of cooked food are bigger than the dimension of the opening of the skirt, the lid can be lifted off the container to pour out the contents from the circular upper opening of the saucepan.
The four prior art documents related to a kitchen utensil for washing vegetables (D1), a prior art saucepan wherein the lid can be pivoted by an angle from the container (D2), another prior art saucepan with an annular straining portion that is in communication with the spout in any seated position of the lid on the container (D3), and another prior art saucepan having an opening which is large enough to permit the vapour to escape from the saucepan when the pressure inside the saucepan exceeds a threshold pressure, i.e., one that functions as a pressure cooker.
Questions 11-16 related to a first claim set I comprising claims I.1 to I.13: one independent claim directed to a saucepan and 12 dependent claims. Questions 11-13 largely related to scope of the claims; questions 14-15 largely related to novelty w.r.t. D1-D4 and clarity. Question 16 related to amendments and extension of subject-matter, testing three proposals for amending the independent claim, and one proposal for amending one of the dependent claims.
Questions 17-19 related to a second claim set II comprising claims II.1 to II.6, directed to a saucepan and a lid for a saucepan. Questions 17-19 related to aspects of the problem-solution approach, such as distinguishing feature, its effect, objective technical problem, and arguments for (lack of) inventive step, esp. arguments for combining two prior art documents.
Question 20 related to another independent claim III.1, and addresses further arguments for (lack of) inventive step, esp. effects and combining documents.
The answers are discussed in the Examiner's Report. Some questions were submitted and discussed at the meeting:
This year, the exam has 23 claims (3 independent, 20 dependent). Most claims were single-feature claims. According to the Committee, the number of claims is not an indicator for the difficulty level.
Statement 12.1-12.4: it was observed that there is no clear order in the embodiments referred to, nor in the order of the claims referred to, e.g. none is monotonous: 3-2-3-nothing resp. I.4-I.4-I.8-I.6. The Committee commented that candidates have to bear with this kind of sets of statements. Sometimes the order of statement results from editing history.
Statement 18.2 and 18.4: these statement are still subject to appeal. The Committee can hence not comment on these
Candidates can expect that future exams have a similar type of claim sets as in 2015 and 2016, i.e., e.g., 2 sets of about 6-10 claims, and 1 other independent claim.
10) The combined AB Papers (EQE 2017) by Margaret Mackett
The Chairman of Examination Committee I, Nicolas Favre, provided information relating to the important points that will be needed for the future Papers A & B. He also mentioned that there will be a video interview posted in due course where these points are discussed.
The Mock Papers A & B are not representative of the real papers as they were only tested on 20 to 30 people compared to the 2000 answers normally received during the EQE. However, they were prepared to give an indication of the type of subject matter that may need to be addressed in 2017 and subsequent years.
The basic intention of the new papers is to streamline the EQE and make it fairer for all. Everyone will need to adapt to the new papers, and, candidates are reminded that, if it appears that groups of candidates have the same issue during the pre-marking meetings, the marking schedule may be adapted accordingly.
The new papers are prepared by teams of experienced drafters from all specialisations in mixed Committees composed of both members of the former sub-Committees (one for chemistry and one for electricity/mechanics). The subject-matter of the future papers is intended to be suitable for everyone, and, the papers will concentrate on the basic principles of patentability.
Specifically, in relation to new Paper A, whilst the drafting of functional claims cannot be excluded, there will be hints in paper, and, candidates are required to use all the information in the paper as a whole. Comparative examples may need to be considered when drafting claims but it would be evident from the paper how such comparative examples should be used.
The good news for non-chemists is that they will not need to draft Markush claims as these claims are considered to be too specialised. However, they will need to draft more than one independent claim in accordance with the information provided in the paper, for example, a device or apparatus claim and a process claim. Essential features will be indicated in the paper and candidates should not try to outsmart the client.
All candidates must remember that an independent claim which is not novel will not be given any marks. If the same mistake is made in more than one independent claim, the candidate will only be penalised once.
Whilst the EPC states that independent claims should be drafted in two-part form, candidates will not fail by not doing so. The marks that will be deducted for a claim not in two-part form will be determined during the pre-marking meeting where the marking schedule is finalised. Similarly, for lack of reference numerals, a candidate will not fail if he/she is fit to practice.
Turning now to new Paper B, candidates will need to prepare a response as they have done in recent years but must not forget to address all the objections raised in the Communication.
When providing basis for the new features or new combination of features in a claim, candidates need to say why it is possible to add these new features or combination of features, and not simply list the relevant paragraph or lines where the feature can be found in the description as originally filed.
Naturally, candidates will also need to provide arguments in support of novelty and inventive step, and, the problem-solution approach must be used when arguing in support of inventive step.
Finally, do not be 'too smart' and to stay within the framework of the papers, and, you can look at suitable papers in the other field of technology to assist with your preparation for the change in subject-matter.