Tutors' Report on the EQE 2017 Papers
Luis Ferreira (PT), Andrew Hards (DE), Margaret Mackett (BE), Harrie Marsman (NL), Sander van Rijnswou (NL), and Roel van Woudenberg (NL)
Each year in September-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, already on September 8. The participant list showed 80 registered participants (tutors and further registered EPO and epi members from the Academy, EQE Secretariat and epi institute) and 14 registered Committee and Board members.
This Tutors' Report appears each year in the end of year edition of epi Information.
It contains the following sections:
- Pass rates EQE 2017
- General remarks
- Paper A
- Paper B
- Paper C
- Paper D
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 Luis Ferreira, Andrew Hards, Margaret Mackett, Harrie Marsman, and Sander van Rijnswou for finding time to prepare the individual paper summaries. As the A and B papers were for the first year common papers (the same for e/m and ch candidates), the summaries for the common A paper by and the common B paper were each made by two tutors, one with an e/m background and one with a chemistry background, such that the experiences from both technical backgrounds could be reflected in this report.
We all wish you good luck in 2018,
Roel van Woudenberg (editor)
1) Pass rates EQE 2017
In 2017, 672 candidates out of 884 (76%) passed the Pre-Exam, and 595 out of 1665 candidates that took at least one paper passed the Main Exam. The official results for each paper, as published on the EQE website and dated 13 July 2017, are as follows:
|EQE 2017||# Candidates||PASS||COMP.FAIL||FAIL|
*Note: These numbers do not include the results of any appeals. A pre-exam candidate appealed successfully (D 2/17) and got a pass after an initial fail after the DBA considered his appeal, in particular a translation issue with statement 18.2 - it is not known whether also candidates who did not file an appeal on this issue but in the light of these considerations would have passed, upgraded and informed accordingly, as was done in earlier years such as in 2015 (as published on the EQE Pre-Exam compendium pages in an "Addendum").
2) General remarks
Introductions by Nicolas Favre (Chair of the Examination Board), Paolo Rambelli (epi) and Giovanni Arca (Academy) addressed several points of general interest and advocated some topics that were on the agenda. Giovanni Arca and Paolo Rambelli commented on the continuing changes in the EQE: the common A and B papers as of this year, the 30 minutes additional time awarded by the Supervisory Board for main exam papers to compensate the language disadvantage, the various amendments to Rule 28 IPREE for pre-registration. Giovanni mentioned supplementing class-room teaching with mentoring, next to the daily supervision. Paolo Rambelli remarked that the Candidate Support Programme has shown that coaching is an essential tool. Paolo Rambelli wants to increase epi studentship registration.
Katerina Hartvichova and Margaret Mackett, both from the Professional Education Committee from the epi, gave a presentation on mentoring (long-term support), tutoring (specific training events), and coaching (the last few months before the exam): all three types of training support are needed, but not (necessarily) by the same person. epi Coaches have shown their value in the CSP; epi is setting up epi mentorship. Apart from looking for mentors, Katerina and Margaret called for our views on epi mentorship (refer to the epi forum).
3) Paper A by Andrew Hards and Margaret Mackett
EC I (AB) representatives: Wim van der Poel (EPO), Jens Sebastian (epi)
This is the first year for the new format where the technologies, chemistry and electricity/mechanics were combined to form general exam papers A and B, and it has taken the Examination Committee I between 3 and 4 years' work to prepare each of the papers.
We reported last year that this combination of technologies could be disadvantageous for students who major in chemistry, since the combined paper no longer focusses exclusively on chemical specialties, but also includes functional definitions of elements with mechanical interactions. In addition, students who major in electricity/mechanics will need to address the requirements i.e. for "essential features" and multiple independent claims.
Whilst at the annual Tutors' Meeting the critique was voiced that the new combined paper may no longer test the specialised techniques of each technical field, it was also pointed out that candidates from both chemistry and electricity/mechanics needed to adapt and master at least the basic aspects typical of either chemical and E/M prosecution.
This year's paper was about a dishwashing product, made up of several different detergent compositions wrapped in a polymer film where each detergent composition was required for only one interval or part of the dishwashing cycle. The crux of the invention was to provide different layers around the different detergent compositions, so that each layer dissolves during the relevant interval or part of the dishwashing cycle to release only the detergent composition required for that interval or part of the cycle.
Document D1 gave a brief description of a dishwashing tablet of two compositions (no packaging). Document D2 described a dishwashing tablet enclosed in a single pouch made of a PVA polymer film. The dishwashing product is also sold as either strips or a row of tablets.
From this, candidates should have come to the conclusion that simply claiming multiple layers of PVA film with the same thickness would not provide novelty over document D2, because for each tablet in a row or strip of tablets may be considered to have a double layer (one on the top and one on the bottom). Claims which were not novel did not attract any marks as usual.
Candidates were expected to consider the technical effects shown in the experiments and draft claims to the dishwashing product, which solves the problem of releasing dishwashing components at different intervals of the dishwashing cycle. The solution was to claim a dishwashing product comprising of at least two pouches made of PVA film, where the pouches should have different thicknesses.
A highly controversial point this year was the inclusion of features, which were explained by the applicant to be "essential". Especially, candidates not used to such restrictions, which are germane to the chemical field, of undoubtedly "necessary", but possibly implicit features, may have found the paper challenging. Thus, it was considered essential that the polymer is PVA and the film has a thickness of 10 to 50 microns; candidates who did not mention either were heavily penalized with losses of 16 and 8 marks respectively. A total of 35 marks were available for the independent product claim.
Furthermore, this year's paper is unusual as two independent process claims needed to be drafted in addition to an independent product claim and dependent claims. Normally, two independent claims of the same category are not allowed; this year, however, it was considered that two such claims were defendable under Rule 43(2) EPC. A total of 32 marks could be obtained for the process claims, whereby 10 marks are available for the general process and 22 marks for the rolling process.
A use claim could have earned an additional 2 marks with 15 marks being available for the dependent claims and 15 marks for the description.
An important point to note is that there were no "double" deductions for missing features in the independent product claim and the independent process claim(s). If a feature was missing from both claims, points were only deducted once.
In conclusion, Paper A 2017 had many aspects of a classic chemical-style paper, albeit without true chemical specialization aspects such as two-list issues or medical use claims, and thus, attention was needed for patterns such as essential feature and multiple independent process claims.
4) Paper B by Luis Ferreira and Harrie Marsman
EC I (AB) representatives: Nicolas Favre (epi), Andreas Böhm-Pélissier (EPO)
Wim van der Poel, Sebastian Jens, Andreas Böhm-Pélissier were present on part of EC I.
This year, we had the first combined A and B papers; combined in the sense of one paper for both the fields of mechanics and chemistry.
There was 30 minutes additional time; this is now made "official".
Passing rate: 68.0%, 12.6% compensable fail.
Main drafter Andreas Böhm-Pélissier gave the presentation.
The paper was on a pulse oxymeter for long-term monitoring of the 4 vital signs in a reliable and controllable manner.
The main challenges were time management, handling the prior art documents, managing the multiple embodiments and, of course, the amendments and argumentation.
Time management was not seen as demanding with the additional 30 minutes.
There were 3 prior art documents. One in the exact same technical field; one baby monitor and one more medical apparatus. However, D1 was not adapted for long time monitoring; D2 was not suitable for directly monitoring vital signals; D3 was mostly a sensor.
One embodiment was only described in the original claims of the application, not in the description and similarly one embodiment was only described in the description, not in the claims.
Three clarity objections were raised by the Examiner. The holding means was considered unclear; glove was only used in the claims, not in the description; and a trademark was used in the original claims and a clarity objection was raised to that fact.
It was needed to rather strictly follow the instructions of the client. This required in claim 1 to remove the "wireless" option, broadening the claim scope; this had to be argued even now the "essentiality test" is no longer mentioned in the Guidelines in the context of an intermediate generalisation. However, even if it is considered that the three-point or essentiality test is unhelpful or even unsuitable in this regard, it remains critical to argue any removal of a feature. Most candidates did so, providing a link to the Guidelines and arguing correctly.
In addition, the client wished to maintain the glove embodiment. One had to closely check and adapt the dependencies of the claims. board expressed the view that the three-point or essentiality test was unhelpful or even misleading (see also T 1118/10; compare also Guidelines H‑V, 3.2.1 - June 2012 edition, which referred to the essentiality test in the context of an intermediate generalisation, and later versions, which no longer do
For inventive step, there was a situation of two partial problems: one dealing with comfortable and reliable attachment, and one with a noise problem.
This required a quite detailed discussion of all three documents of the prior art. In particular, the combination of the closest prior art with all the other documents needed to be argued.
The client's suggested claim 1 was already novel and involved an inventive step. Only formal issues needed to be solved.
For the claims, one could get 30 marks.
It is not needed to amend the description and thus no marks were available for amending the description. There were no marks for a letter to the Applicant, for a letter to the marker, for dependent claims that are not explicitly requested by the client, for amending the description, for amendments against the wishes of the client, making introductory remarks, comments, and for requesting oral proceedings. Proposing alternative claim sets does not attract marks either. Of course, theoretically speaking, the possibility for divisional subject-matter remains for future papers.
There were very strict and detailed wishes and instructions of the client. The Examiner was clearly pointing to problems and the application was using clear wordings to assist to find the solution.
The feedback was that this paper B was fair. There was no difference in the passing rate for chemistry and mechanics candidates. There were hints in the paper and potential basis for amendments was also suggested by the client in the letter or in the draft claim set. For example, for added subject-matter, practically all the candidates did provide more than just listing paragraph numbers, by supplying reasons and explanation to support the amendments.
Like the last years, the argumentation and motivation is very important. You really need a structured approach to deal with all requirements. Support needs to be discussed by not only giving the exact part from which amendments come, but also why that can be amended, and in particular generalized. Clarity objections need to be discussed. And finally, the problem-solution approach must be followed in all steps.
5) Paper C - by Sander van Rijnswou
EC II representatives: Paolo Provvisionato (epi), Celia Martinez Rico (EPO), Joanne Moore (epi)
Present from the Exam Committee for Paper C were: Paolo Provvisionato (Paper C chairman), Joanne Moore (co-drafter; replacing the main drafter today), and Celia Martinez Rico (Paper C coordinator). Joanne Moore gave a presentation on paper C of 2017. During and after the presentation, questions from the tutors were answered. This report combines discussions that relate to the same part of the paper into a single section.
The Committee reported the following results:
The candidates should not just use standard type of phrases. One should not just say that you can combine two documents. Instead, you should argue how and why you would modify one to arrive at the other.
In principle, only one correct attack per claim is needed. However, if the attack is weak -such as an Art.54(3) novelty attack-, there often is a second attack. According to the Committee, whether there is one or more is "a matter of understanding".
According to the Committee, it is a sign of the quality of the marking sheet that the two markers are often very close together. It is not a surprise if two markers give identical marks. The Committee explained that the examiner's report emphasizes what they would like to see. All those lines in the report were used to mark. It doesn't matter where the information turns up in the candidate's answer. The Committee thanked the bench-markers since they were used to test the marking scheme.
The Committee asked if the tutors were happy with the new way the marking results are summarized per claim. The majority was.
Effective dates and prior art
There were not many problems for the candidates. This section was straightforward. Also, the assessment of documents A2, A3, A5 and A6 did not give problems.
A tutor asked if it would be sufficient to give information such as dates without sentences but in a table. According to the Committee this would be enough, so long as it is understandable what the candidate meant, and as long as it is a reasoned answer. The reasoning why you give a date to a claim should be present. The marker cannot guess what is in the mind of the candidate.
Annex 4 is a non-patent article and is useful to claims 5-7 only. The "what, how and the circumstances" needed to be discussed. The document is too late to be prior art itself. It has been constructed so that it can only be used as evidence of public prior use. The document cannot be used as evidence of an oral disclosure. The document is not a written description of an oral disclosure. It was also not enough to explain that the cork screw was shown at the wine fair, since the composition of the coating cannot be seen. Candidates were expected to remark that it is the corkscrew sold at the wine fair which is the prior art and that a single sales makes all its features publicly available.
A4 is published after the filing date. Candidates were expected to recognize the public prior use by sale, and to cite the relevant portion of the Guidelines. Because of the sale, the composition of the coating is public. This is why oral disclosure is not enough.
If you miss everything of A4 in this section, you lost 5 marks. Some tutors had expected this aspect to be worth more. The Committee explained that only 50 points are available to give to those who are possibly fit to practice. It has to be balanced what to give points for. The Committee had expected most candidates to realize that A4 represents prior art by sale, but not many went into this. This was also taken into account. The balance between the general part and the attack part, may be different next year.
The letter of the client remarked that the priority applications were deemed withdrawn. In spite of it being in the client's letter, the Committee did not expect discussion of the withdrawal of the priorities. If the candidate did write something about it, it did not attract marks, although it could help to put the candidate in a better light.
According to the Committee: There is no more legal part in paper C. This is more for paper D. The instruction is to file a notice of opposition. It is not a requirement to write a letter. We try not to test legal questions for paper C. Although there may be a legal position that needs to be discussed, such as the admissibility of prior art (A4).
It is not compulsory to use the opposition form. This information can also be given without the form. The commission does remark that this is an important part: if you don't refer to the patent by number, or pay the opposition fee, then it does not matter how good you are, since the opposition is not validly filed.
The expected attack was A6+A2. All annexes referred to cork extraction devices, and were considered to lie in the same field. All have the same purpose: removing corks. How many features are in common - or rather, the one needing the least amount of structural modifications - determined the closest prior art. When discussing the closest prior art, an argumentation based on the most shared structural features was therefore expected.
A6 is the closest prior art because it needs the least amount of structural modifications.
A5 is the closest prior art since it is of the same type: a lever type cork screw. A6 would not work because of the spring. A5 is the closest prior art despite the fact that there are two distinguishing features over A5.
In the context of claim 2, alternative solutions were discussed. In particular, how much the CPA impacts the answer.
According to the Committee: This relates to what is written in the Examiner's report, that other 'well-reasoned attacks' will attract marks. It means what it says. There are alternatives. We cannot write all variations that were possible. We use what the majority used for the Examiner's report. For example, consider A6 as CPA for claim 2. There were several answers like that. There is a strong problem to start with A6, because of this spring. It is a technical hindrance. We considered such attacks if they at least acknowledged the problem with the spring. Those who were able to identify this, were considered and got marks.
Features are already disclosed in A6.
An article 123(2) attack was expected. There are two parts in A1 that disclose materials for the housing, and both needed to be discussed. Section  had polyethylene but not the combination with levers. Section  only discloses metal. Furthermore, it is mentioned that metal is needed for structural support, so plastic would not work. The support given by the housing was picked up well.
The claim represents a different technical effect so partial problems were needed. The claim has an aesthetic and a technical effect. Both effects must be addressed for full marks. That the technical effect is achieved by a flower-shaped structural element does not take away its technical character.
The Committee was not generous to people who said that A4 itself is prior art. An explanation how the composition is available to the public (by sale) and the features visible from the photograph is expected.
The corkscrew sold is the closest prior art, not document A4 itself. Again, candidates often confused A4 as such, the fair (see - visible features only publicly available) and the sale (product and all its features publicly available).
6) Paper D by Roel van Woudenberg
EC III representatives: Dimitrios Roukounas (epi), Charlotte Nessmann (EPO), Simone Fausti (DI, EPO), Scott Roberts (DII, epi)
The Exam Committee was thankful for all the questions submitted prior to the meeting, even though not always positive. The Exam Committee answered all questions submitted, except for those relating to details about the marking and number of marks for specific alternative answers.
General - pass rates and design considerations
For D 2017 the rates for pass/ comp/ pass+comp / fail for paper D were 40%/ 14%/ 54% / 46% of 1003 candidates. In 2017, the average score was 46, the maximum score 81.
In earlier years, the corresponding rates were 44%/ 11%/ 55% / 45% in 2016, 55% / 11%/ 66% / 34% in 2015 (about all-time high), and 39% / 9%/ 47% / 53% in 2014.
The pass+comp fail rate was thus similar in 2017 and 2016 (about 55%), despite the 30 minutes extra. The pass rate seems to be difficult to control.
The D 2017 has many more words than the two earlier Ds, which two earlier Ds suggested that the Ds has become shorter compared to the years before. For example, the DII 2017 has approx. 1330 words, compared to 870 in 2016, 970 in 2015, 1500 in 2014 and 1420 in 2013
The Committee indicated that there is no target as to the number of words, but only as to the length of the paper in time - the paper is designed to do in 5 hours (with the Supervisory Board having given an extra 30 minutes to do it in). Understanding information is sometimes more easy with more words.
A tutor asked the Committee why no questions are drafted relating to the Rules of Procedure of the Board of Appeal, especially as more-and-more appeals fail due to non-compliance with the RPBA. There was a wide consensus among all tutors that it would be fair to asked questions about the RPBA. The Committee indicated that they will consider, but it will need some time as it is expected that the RPBA will change in the near future and it needs to settle first before questions can be included in the exam.
A tutor asked whether effects can be seem in the two parts of starting with the DII-part rather than the DI-part when sitting the exam. The Committee said that they cannot see from the answers where a candidate started but guessed that they will be equally successful.
The DI-part had 6 questions, Q.1 of 6 marks, Q.2 of 6 mark, Q.3 of only 4 marks, Q.4 of 6 marks, Q.5 of 10 (!) marks and Q.6 of 8 marks.
The Committee indicated that the number of marks for question as an indication as to how much detail is needed. E.g., in Q.1, no individual details of all R.159 acts were needed - some do not relate to the topic of the question, others are already mentioned in the question. An "advise how to" is an indication to not give too much detail.
In DI, to help candidates, the Committee used wording from the official documents, e.g. the first two lines of Q.2-b) are from G 4/88. This sometimes leads to a question having more words than the average.
A tutor commented that the DI part has too many topics which are in daily life executed by formalities officers / patent administrators. The Committee responded by indicating that it may be true that formalities officers do some of the acts tested but it is relevant for the work of a patent attorney and the patent attorney bears the final responsibility.
There is no target as to the relative number of marks for EPC, international PCT and Euro-PCT.
Q.1 - Non-unity, entry for fast grant, extra search
PCT application, EPO = rO, EPO = ISA, no additional search fee paid after partial search report, IPRP with non-unity objection and positive opinion for first invention.
Q.2 - Transfer of patent during opposition, transfer of opponent status
Question 2-a) addressed the transfer of a EP patent during opposition proceedings from a US company D represented by Ms Y to another company D: the new company want to file amended claims by the final date set in summons to oral proceedings.
Question 2-b) addressed the transfer of opponent status from company B, together with all business assets, to company E represented by Mx X.
T 1421/05 was cited in the Examiner's report as legal basis for "Mr X has to file supporting evidence of the transfer and request that the EPO recognizes the transfer of opponent status to company E". T 1421/05 is not mentioned in the Guidelines (2016) and could only be found in the Case Law Book (2016) IV.C.2.2.3. The Committee indicated that the Case law Book is in the syllabus, and that the model answer is indicated to be a "possible solution", aims to be complete, and may have more than what is needed for full marks. I.e., there may be more answers that attract full marks. In this case, the reference to T 1421/05 was not needed for full marks.
Q.3 - Filing by reference
A situation that should have let quite straightforwardly to filing-by-reference. Much like D 2011, Question 5 (Icelandic earlier filing).
No marks were available for calculating the 12m term "as the question stated that the application had to be filed today". A tutor submitted that this seems to be inconsistent with Q.6-a): in Q.6-a) there were marks for legal basis and calculation of the 1 month period although also there the question asked what had to be done within one month.
The Committee commented that the dates are given to make straightforward that they are not needed, avoid speculation on postponements or so, indication of number of marks, 12 month period trivially correct as no R.134(1) needed: can just do what the client asks. Also in Q.6, the calculation was not needed for full marks, even though in the possible solution.
There was a discussion whether the question was unambiguously asking for the acts to be done only today, or also to acts incurred by those, but to be done later to secure a filing date - the certified copy of the earlier application (JP not excluder under R.40(3), OJ 2009, 486 / GL (2016) A-IV, 220.127.116.11) - and to get it into the procedure - the translation of the earlier application. Also, a tutor commented that the reference to a JP application rather than a En/Fr/De-language translation is a clear pointer to a candidate that he needs to discuss the effect of the JP language: non-standard facts must somehow appear in the answer. The Committee commented that they considered the question ("instructed to file today"; "how to proceed?") was just directed to the acts to be done today. The Committee also commented that bonus marks were available to discuss the translation, to award candidates for the time spend on it.
Q.4 - Admissibility and teaching of prior art, novelty and inventive step
Answering required a discussion of various type of prior art and how they could/could not be used in novelty and inventive step assessment. Not difficult, but easy to miss out some topics.
Q.5 - Priority under PCT: adding priority declaration, restoration before EPO as rO, recognition by EPO as dO
A 10-point PCT question, which will have scared off many candidates. However, the question tests R.26bis.1 and R.26bis.3 PCT (making/adding/correction priority declarations and restoration of priority before the rO) in detail but in a rather straightforward way when using the PCT Applicant's Guide and/or the Euro-PCT Guide.
Q.5-b - Legal basis PCT-EPC interrelationship
The comment in the general part of the Examiners report concerning the legal basis for the PCT-EPC interrelationship related in particular to this Q.5 (e.g., OJ 2007, 694 as legal basis for EPO using all due care in restoration as rO). It was noted that a reference to Art. 153(2) EPC was not needed with R.159(1) for full marks: a mere reference to R.159(1) EPC was sufficient - but it is good practice to in include the article.
Q.5-c - Legal basis all due care by EPO as rO
OJ 2007, 694 was given in the Examiners report as legal basis for EPO using all due care in restoration as Ro, but this reference was difficult to find. OJ 2007, 692 (first page of the OJ publication); Euro-PCT Guide (2017) 133; Euro-PCT Guide (2017) 135; and AG-IP Annex C EPO were exceptionally also accepted.
Q.6-a&b) - Fees on filing
Candidates were tested on fees on filing (filing fee incl page fee, search fee), fee reduction due to nationality/residence and entity-type, fee reduction online vs paper.
Straightforward question. Main risk is missing the 1 page for the abstract.
Q6-a): Why was it needed to calculate the 1m expiry? The question already says that the filing needs to be today and the 1m is already given in the question (see also Q.3, where it was not required to confirm that the act could be done in time).
Q.6-c) - FP and AAD
Candidates were tested on the effect of a shortfall on the deposit account, the effect of replenishment, and how the missed payment resulting from the shortfall can be remedied. The ADA and/or AAD are almost every year on the EQE in the last couple of years, but still many candidates do not prepare for them.
For full marks, it was needed to identify FP and its EPC articles, and the nature of the FP fee. No details were required as to how to pay it, i.e., not needed whether and how it could be paid under ADA, AAD or by bank transfer.
Very nice DII paper with dependent patents, various jurisdictions, opposition, product-by-process claims, transfer of priority, non-patent disclosures, Euro-PCT as potential Art.54(3) prior right, lost applications and further processing. The questions clearly and explicitly identify the topics a candidate needs to discuss.
Q1 could attract 35 marks (patent situation as/is: Q.1a 10 marks, Q.1b 5 marks, Q.1c 11 marks, Q.1d 9 marks, Q.2 18 marks (improvements) and Q.3 7 marks (FTO conclusions).
General comments from EC
The Exam Committee commented that this DII paper was a conventional paper with usual situations that could well be practice, requiring the candidate to analyse the situation as to novelty, inventive step, priority and validity of patent applications/patents, ownership of priority, practical measures, freedom-to-operate.
Abbreviations were given in the paper to simply the marking (uniform references).
Attention will continue to be given to short sentences and short phrases. Not planned to include any figures in the DII, as technical aspects are not tested and the attention could move away from what is wanted.
Q.1 - Outline the patent situation as it currently stands for beams having projections formed by a rolling process where:
a. the projections are of any shape; b. the projections are of SHAPE-A; c. the projections are of SHAPE-B; d. the projections are of SHAPE-B1
The Committee commented that the term "patent situation" was also used in the past and refers to the patentability situation as it stands, which is a theme in every DII paper: identify applications, identify disclosures, discuss novelty, step, enablement and also their status (such as deemed to be withdrawn).
If a PCT application is still in the international phase, it a germ waiting the germinate. "Currently it may be regionalized and then..." EP: (Euro-PCT application, Art.54(3) effect).
If an EP application is /can be Art.54(3) against a Euro-PCT application, possible prior right effects in other jurisdictions need not be discussed.
All claims were formulated as product-by-process claims. This appeared not to be a major hurdle to scope of protection discussions, but its novelty discussion was not always done correctly: that required addressing that the claim is a claim to the product per se and does not get its novelty by the mere reference to the new process - the resulting product from the rolling process has distinguishable differences from the prior art beam made by a stamping process (no visible stress).
Q.2 "What can be done to improve our patent situation vis-à-vis CHINABEAM?"
The Committee remarked that a question asking about further processing is almost a gift. In Q.2, apart from requesting further processing, it is also needed to discuss how to get a grant: delete claim 2. So, not enough to say "respond to the R.71(3) and pay the FP fee", but need to answer with "do FP by filing the claims translations and the fees for grant and publishing, and pay the flat FP fee with 2m from the to be received loss-of-rights communication", or with "remedy the missed disapproval of the R.71(3) text by requesting FP by filing just the amendments, and the flat FP fee with 2m from the to be received loss-of-rights communication, and then wait for the next 71(3)".
It was noted that the Examiner's Report has an error on page 14 where it says "File third party observations with WIPO pointing out the invalid claim to priority in CB-PCT and citing the trade journal article dated 11 April 2016. The observations will be communicated to the EPO as ISA". Third party observations can only be filed after publication and the EPO as ISA will under ECfS normally have finished the ISR within 6m after CB-PCT is filed, so before its publication. They will thus not be communicated to the EPO as ISA but (later) to the EPO as dO.
Q.3 "Which types of metal beam are we or CHINABEAM free to produce, sell and use in the future?"
The Examiner's Report emphasizes: "Candidates are urged to ensure they answer the question posed. If a question asks for positive statements (e.g. what can be made, used and sold), discussing only negative statements (what a party can prevent) may risk not earning all available marks." and "A great number of other candidates elected to discuss how STEELCO can prevent CHINABEAM and vice versa without addressing the specific question: which types of metal beam are the companies free to produce, sell and use."
This year, a FTO analysis was needed with positive conclusions as to what both parties can do. No specific cross-licensing proposals were needed for full marks, but marks were awarded if a specific proposal was given.
7) Pre-Exam by Roel van Woudenberg
EC IV representatives: Stefan Kastel (epi), Francesco Rinaldi (EPO), Isabelle Caillet
The Exam Committee commented on questions submitted by tutors prior to the meeting and expressed their appreciation of the evaluation of the statements.
General - pass rates
884 candidates enrolled for the Pre-Exam 2017, out of which 860 also sat the paper (97%).
672 candidates passed, corresponding to 76% of all enrolled candidates and 78% of all candidates that sat the exam. Congratulations!
188 candidates failed, corresponding to 21% resp. 22%.
The pass rates are thus similar as in 2016 and 2015.
As in 2016, many candidates commented that they needed the full 4 hours and they reposted that only very few candidates left the exam room before the end - quite different from the years before 2015.
The Exam Committee commented that they give a lot of attention on keeping the difficulty level adequate and on the language, also for non-mother tongue language candidates. The consistent pass rates from 2015-2017 and stable pass rates of 75-80% show that the difficulty level is stable.
The pass rate is considerably lower for resitters (e.g., 105 Pre-Exam 2016 candidates were resitting: 53 passed, 52 failed again) and for multiple resitters (36 resitters that failed Pre-Exam 2015 and 2016: 17 passed, 19 failed again, of which 9 resitters failed Pre-Exam 2014, 2015 and 2016: 6 passed, 3 failed again).
The Exam Committee commented that the purpose of the pre-exam is an early start of preparation. Candidates need to study the EPC and PCT Articles and Rules, Guidelines and RFees, G-decisions and to do patent work; if they do all of this, they should be able to pass. The Guidelines pay a key role for candidates to give the right answer. Although the legal syllabus is the same as for the main exam, the difficulty level for the Pre-Exam is considerably lower than for the main exam: for the Pre-Exam, candidates need to recognize whether the situation is correct; in the DI-exam they need to formulate their answer.
General - Calendars: availability and style
For the Pre-Exams 2016 and 2017, the calendars were made available on the EQE website a few months (January 2016 and December 2016 resp.) before the exam by and under the responsibility of the Exam Secretariat. The Exam Committee does not know whether this will continue to be the case.
Legal part - introduction
The legal part covered a wide range of topics. Absent were standard topics as filing date and languages. Non-standard topics were, e.g., interlocutory revision, interruption, and second medical use.
Question 1 - state of the art and priority; novelty not tested
Good question, pre-exam type topic, right level, should not have imposed difficulties.
Some candidates confused state of the art and novelty: these candidates went wrong because they considered the catalogue not to be state of the art if it was earlier than the claim but the claim was novel. Error also made often in paper DII.
Question 2 - entry in the EP phase
Good question, pre-exam type topic, right level, should not have imposed difficulties, some have been in earlier exams (e.g., 2.1 with same wording).
Statement 2.1 (T) raised some comments of candidates on the DeltaPatents' Pre-Exam blog, as some candidates considered that the renewal fee fell due today (31m expiry), but that payment could be done up to 6m later with an additional fee, and for that reason answered F. However, the statement was whether the fees fall due ("requirement for entry", not what the time limit to pay them was.
Question 3 - pendency
Good question, pre-exam type topic, right level, should not have imposed difficulties.
Question 4 - formalities examination
Good question, pre-exam type topic, right level, most statements should not have imposed difficulties.
Statement 4.3 (T) is essentially the same as Pre-Exam 2014, statement 8.2. Difficulty with the statement is that R.6(1) EPC requires the translation to be filed within 2m of filing, but R.58 EPC -i.e., another "provision of the EPC"- provides for an invitation to file it within 2m from its notification without any sanction (esp. no additional fee). So, one may defend that "according to the provisions of the EPC", the translation does not need ("must") filed within 2m, but at least 10d+2m more are available; even more because the failure to file the translation within 2m from filing does not lead to a loss of rights. So, less-fit-to-practice candidates that are not aware of the formalities check invitation will surely answer T, whereas better-fit-to-practice candidates that know of the R.58 system had the risk to wrongly answer F.
Statement 4.3 (T): on the blog, some candidates suggested "must" as used in 4.3 having a different meaning than "shall" as used in R.6(1) and 2014-8.2. Also, some said that in French, "devoir" was used in 4.3 as well as in R.6(1). The Committee commented that this was extensively discussed before the exam in the Committee, and that "must" and "shall" are considered to mean exactly the same.
Question 5 - appeal
Good question, partly pre-exam type topic, 5.1-5.2 right level, 5.3-5.4 (too) difficult for pre-exam level.
Statement 5.4 was a hinting that 5.3 related to interlocutory revision.
Statement 5.4 (F) tests whether a certain submission will lead to the grant of interlocutory revision. This is a very difficult topic for candidates at pre-exam level and pre-exam experience, but see above for the remarks about the difference between Pre-Exam and DI.
Question 6 - opposition
Good question, pre-exam type topic, 6.1-6.2 right level, 6.3-6.4 difficult for pre-exam level but fair.
Statements 6.3 and 6.4 are difficult, but they relate to key principles of first instance opposition proceedings and are documented well in the Guidelines.
Question 7 - amendments in opposition
Good question, pre-exam type topic, right level although difficult.
Statement 7.1 (F) tests the difference between admissibility and allowability. Pre-exam candidates find this a difficult conceptual difference.
Statement 7.2 (F) tests G 3/14 (extent of clarity examination of amendments in opposition) which was issued 24.03.2015, published Official Journal of Nov 2015 and in the Guidelines since the Nov 2015 edition, so it tests an important recent decision.
Question 8 - interruption
Good question, but quite difficult for a pre-exam type, esp. 8.4.
Interruption is an exotic topic that does not even occur frequently at the main exam paper D. It is a very difficult topic for candidates at pre-exam level and pre-exam experience. The Committee commented that interruption is not a typical topic, but the question has a clearly set-out situation and the Guidelines are very clear as to how to deal with it.
Question 9 - second medical use
Good question, pre-exam type topic except 9.1 (Swiss-type), in principle not difficult.
For the first time in the pre-exam, second medical use was tested. Some candidates considered this a too exotic topic, but second medical use is a key concept in the EPC and statements 9.2-9.4 are very straightforward tests of Art.53(c) and Art.54(4)&(5), which is also well-documented in the Guidelines. Also Swiss-type claims are mentioned in the Guidelines as a non-example.
It was discussed whether a claim "complies with a G-decision" (G2/08, Question 3) equates to testing "compliance with the requirements of the EPC", and whether this may have led candidates to answer wrongly.
Question 10 - international preliminary examination, and PCT Art.19
Good question, pre-exam type topics, not too difficult
Statements 10.1, 10.2 and 10.4 are standard topics for Art.34 and Art.19 PCT and should not have imposed any problems. However, as only very few demands and only very few Art.19 amendments are filed, candidates cannot base their answers on their practical experience.
Statement 10.3 (T) is difficult. R.66.6 PCT seems to give this right as an absolute right, but the OJ 2011, 532 par. 5 / Euro-PCT Guide (2017), 385 limits this as EPO allows only once, only by phone, and only after written submission. So, the applicant is entitled to oral communication, but under conditions and not unlimited - so one might also argue that the answer is F, as there is no such right anymore if already used. The Committee considered the statement to be unambiguous.
Claims analysis part
The claims analysis part related to toothbrushes for human use.
The client's application described that a drawback of known toothbrushes is that the users need to be trained by dentists in order to achieve optimum dental plaque removal. Remaining dental plaque can give rise to dental caries, which is highly undesirable.
The invention is presented as being based on the surprising finding that the amount of dental plague removal can be increased by transmitting additional vibrations to the bristles of the toothbrush, generated by an electric vibrator inside the brush body, preferably in the handle together with a controller and a battery. The controller acts as a switching device for selectively supplying electric energy from the battery to an electrically operated element, because the controller connects and disconnects the vibrator from the battery.
Four embodiments are described and shown in four figures. In some embodiments, the controller uses a push button to turn on&off the vibrations; in other embodiments, a pressure sensor in the bristle zone is used. Some embodiments have a replaceable brush and a connection section to connect it to the handle. A LED can be incorporated to emphasize the technical character, which makes users think that the toothbrush has a higher cleaning efficiency.
The toothbrushes must have a length of less than 30 cm, or between 18 and 25 cm when having a replaceable brush head for ergonomic reasons.
Two prior art documents were found by you (D1, D2); two more prior art documents were found by the EPO (D3, D4).
The questions were related to three claim sets:
- Q11-13 to a first claim set composed of an independent claim and one dependent claim directed to a body of a toothbrush for increased dental plaque removal,
- Q14-17 to a second claim set composed of one independent claim and 4 dependent claims directed to a brush with a body comprising an electrically operated element, the electrically operated element being an electrically operated vibrator,
- Q18-20 related to one independent claim directed to a toothbrush with a body, [...], a connection section, the electrically operated element being an electrically operated vibrator, the connection section comprising a connection hole and a connection protrusion, and the toothbrush having a total length of between 18 and 25 cm.
Tested is scope of the claims, distinguishing features, role of dependent claims, novelty, selection inventions, claim feature issues such as "for example", extension of subject-matter including introduction of a undisclosed disclaimer (not allowed, D4 is not an Art.54(3)EPC prior right -- here it became clear why the dates were given), technical effects, formulation of two-part form, inventive step aspects such as closest prior art, formulation of the objective technical problem, considering to combine, and obviousness of the combination.
There were surprisingly few questions about closest prior art this year. The Committee commented that they are the most difficult to design, as they requires a really black-and-white situation for the Pre-Exam.
Question 17 - amendments
Amending the independent claim may give rise to Art.123(2) problems in the independent claim itself, or to the resulting dependent claims. The question does not specify what is done with the dependent claims while amending claim II. The Committee indicated that only the amendment to the independent claim itself has to be tested; no check is required whether the dependent claims are effected by the amendment to the independent claim in the Pre-Exam.
Statement 18.4 - Loudspeaker vs vibrator
D2 describes that, as long as a child holds the toothbrush in his hand, a sensor transmits a signal to a controller which energizes a music module. It plays a melody over a loudspeaker, the vibrations of which are converted intro vibrations of the air. In the German version, this sentence was phrased subtly different as "...spielt es über seinen Lautsprecher eine Melodie ab, deren Vibrationen..."
Statement 18.4 read "The technical feature "the electrically operated element is an electrically operated vibrator located in the handle" distinguishes claim III from document D2". The answer to statement 18.4 relied on whether D2's "loudspeaker, the vibrations of which are converted intro vibrations of the air" could be considered a type of "electrically operated vibrator".
This topic got an extensive discussion on the DeltaPatents' blog, including a discussion on the differences between the English and the German wording.
The Committee commented that the exams need all to be translated in 3 different languages, all with the same meaning and difficulty level. Many checks are done on the translations, but some differences sometimes occur. Decision D 2/17 is noted by the Committee, and prevents the Committee from commenting in 18.4 now. Also the Examination Board could at this point (and still in early November) take note of D 2/17, but could not comment as to whether other candidates that failed due to 18.4 would be "promoted" as they were in, e.g., 2015 (see Addendum to the Examiner's Report on the EQE Compendium pages).