Tutors' Report on the EQE 2018 Papers

N. Cordes (NL), L. Ferreira (PT), A. Hards (DE), J. Hoekstra (NL), M. Mackett (BE), H. Marsman (NL), S. van Rijnswou (NL), and R. 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. The Tutors' Report appears each year in the last edition of epi Information.

This year's meeting was held in the Isar building of the EPO in Munich, on October 18. The participants list showed 85 registered participants (tutors, other EPO and epi members from the Academy, EQE secretariat and epi institute).

This Tutors' Report contains the following sections:

  1. Pass rates EQE 2018
  2. General remarks
  3. Paper A
  4. Paper B
  5. Paper C
  6. Paper D
  7. Pre-Exam

On behalf of the tutors present in Munich, I would like to thank all the members of the Examination Board and Committees as well as the EQE department and Exam Secretariat 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 -in alphabetical order- Nico Cordes, Luis Ferreira, Andrew Hards, Jelle Hoekstra, Margaret Mackett, Harrie Marsman, and Sander van Rijnswou for finding time to prepare the individual paper summaries. The summaries for the common A and B papers 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 2019,
Roel van Woudenberg (editor)

1) Pass rates EQE 2018

In 2018, 689 candidates out of 935 (73,7%) passed the Pre-Exam, slightly lower than last year (76,0%) and 2015-2016 (76%). 528 out of 1696 candidates that took at least one paper passed the EQE (similar as last year).

For the individual main exam papers, paper A and B showed similar pass+compensable fail rates as last year; the pass+compensable fail rate for C is 4%-point higher; the pass+compensable fail rate for D is 8%-point lower than last year and the lowest since we have the 5-hour single-paper format.

The official results for each paper, as published on the EQE website and dated 2 July 2018, are as follows:

Pre-Exam (4h)93573,69%**--26,31%*
A (3½ h + 30 min)99251,61%10,58%37,80%
B (3h + 30 min)80472,76%6,84%20,40%
C (5h + 30 min)107746,70%11,51%41,78%
D (5h + 30 min)112332,86%12,47%54,67%

*note: as last year, the ABCD papers were designed according to Rule 23-27 IPREE as 3½h, 3h, 5h and 5h respectively, but all candidates were granted an additional thirty minutes per paper to these durations (by Decision of the Supervisory Board of 17 November 2016).

**note: the initial Pre-Exam results showed a pass rate of about 70% where two statements were neutralized (12.2 and 12.4; see Examiners' Report of 22 March 2018); the statistics on the EQE webpages seem to reflect the pass rate after interlocutory revision, where three more statements were neutralized for all candidates (4.4, 5.3, 13.1; see examiners' report of June 2018). It is not known whether some appeals have led to neutralizing answers for a specific candidate only; it is also not known whether there are still any pending appeals on other statements.

2) General remarks

On the evening before the meeting, all participants were invited to a networking dinner, hosted by the European Patent Institute, in a Bavarian restaurant at walking distance from the EPO.

The meeting opened with words of welcome and introductions by Nicolas Favre (Chair of the Examination Board), Paolo Rambelli (epi) and Giovanni Arca (Academy). Other presentations were given by Pete Pollard (European patent attorney: "Using DII to become "fit to practice" at the exam"), Yolanda Sánchez García (Product Marketing Manager, Patent Information, EPO: Patent Information essentials for patent attorneys), and Christoph Machwirth (Head of department, EQE Secretariat, EPO: Matters of general interest and statistics of the 2017 Examination).

Christoph Machwirth pointed all participants at the need for candidates to register at the beginning of professional activities, and not only when close to enrolment to the Pre-Exam.

Christoph Machwirth showed some facts about the Candidate Support Program, for candidates from (23) states that have only few EQE-qualified European patent attorneys. The limit of 10 was increased this year to max 20 candidates per country that can participate in the program. CSP is entering its 7th year. Since 2012, 154 students enrolled. 46 student from 16 countries have passed the EQE; 8 of the CS alumni are now coaches in the program. Courses are given by CEIPI (A, B) and DeltaPatents (Pre, C, D); coaching is done by epi coaches.

An open discussion followed on the longer-term future of Pre-Exam, in which various possibilities were discussed, including a possible reform of the Pre-Exam. As part of the discussion, the format of the Pre-Exam was discussed, and it was considered that in principle the format of the Pre-Exam may be changed if desired by all parties (EPO, epi, tutors, etc), for example to the form of a computer-based exam with online questions from a pool and debug questions (similar to the US); that could allow the candidates to receive the result immediately after exam and to choose a time slot to sit the Pre-Exam. However, various challenges were identified, such as how to create and maintain a question pool (e.g., past papers, accepting questions from external tutors/attorneys); should the pool be publicly available or not; should the Pre-Exam be fully open-book without annotations as now, or closed book or only clean EPC/PCT Art and Rules and Guidelines? No conclusion was reached, other than the expectancy that this will be an ongoing discussion for the near future for which also input is solicited from the various parties.

3) Paper A by Andrew Hards and Margaret Mackett

This year (2018) was the second year, in which the technical fields of chemistry and electricity/mechanics were combined to form the exam papers A and B. Generally, it takes the Examination Committee between 3 to 4 years of work to prepare each of the papers. Notably, both papers A and B 2018 entailed chemical and mechanical/physics elements.

As usual, the Examination Committee provided an excellent Examiners' Report and we urge candidates to study the comments therein. Unusually this year, the Examiners also prepared a revised report.

From the client's letter, the candidates should have been able to derive that the invention related to making protrusions directly on a glass pane using a laser, the protrusions being monolithic and having a convex shape.

The prior art describes both the use of lasers to form protrusions as used in Vacuum-Insulated-Glass (VIG) where the protrusions form a spacer which provides improved transparency.

The invention has two distinguishing features over the prior art, namely, the use of cooling air to form the convex protrusions with respect to D1 and the improved transparency due to the protrusions being monolithic with respect to D2.

Candidates do not always write the description correctly as there is no need to apply the problem-solution approach in the same way, as one would do when responding to an official communication in Paper B.

There was no 'double penalisation' for the same mistake made in more than one of the claims. However, if the claims were not novel, no marks were awarded. In addition, if candidates had multiple independent claims in the same category, marks were awarded for the worst of these claims.

For the description, there is no need for a complete description text as this would be a repetition of the client's letter. Instead, candidates needed to indicate the field of the invention, discuss the prior art, discuss the problem(s) to be solved and state how each of the independent claims addresses or solves the problem(s). The dependent claims also need not be discussed in the description. This should be the same for future papers.

A question was asked about whether candidates would be penalised for not using the two-part form for the independent claims. The same marks were awarded irrespective of whether the two-part form was used or not. The only effect of not using the two-part form appears to have been with respect to the description, as more detail needs to be provided relating to the prior art. (Use of the two-part form effectively reduces the discussion of the prior art in the description.). Only one or two marks were deducted for an incorrect two-part form claim.

Finally, it is to be noted that the final marks and deductions are decided at the Examiners' pre-marking meeting which is held after each marker has marked 10 papers (In total there are around 600 marked papers). Trends in the answers by the candidates are, therefore, taken into account in the final marking scheme.

4) Paper B by Luis Ferreira and Harrie Marsman

In a joint session with the discussion on Paper A, the Committee was represented by Jens Sebastian (coordinator for Paper B), David Cousins (drafter Paper B), Wim van der Poel (chair and coordinator for Paper A), Elisabeth Schober (drafter Paper A). The B paper presentation was authored by David Cousins and Tom Vermeulen.

For Paper B the passing rate was quite high with 73%; duration of the Exam: 3.5 hours

David gave a general presentation on the intention and issues with the Paper. The discussion focused on points which were already present in the Examiner's Report, but with particular emphasis on specific points.

The Paper was directed to a fuse for protecting the components of an electronic circuit from damage by too high electrical currents. The fuse comprises a fuse track of an aluminium-copper (AlCu) alloy. In a preferred embodiment, it is covered by a cover layer. The AlCu material makes that when the fuse track melts and ruptures it will not easily reform. The preferred embodiment further reduces the chances of reforming by melting and filling up the space between the broken fuse track parts. This was emphasised by a discussion on the problem of metal reflow into the gap and how current flowing again is dangerous for electronic components.

The prior art consisted of 3 documents. In the Communication of the Examining Division, novelty objections, inventive step objections and clarity objections were raised. The client proposed to limit the independent fuse claim to fuses having a quality score of at least 60 to argue novelty and inventive step. In addition, the client makes proposals to overcome the clarity objections.

In the working examples of the application, there are two tables, Table 1 and Table 2, which give data for embodiments that have a cover layer of epoxy resin (Table 2) and that do not (Table 1). Table 2 shows that when the percentage Cu in the AlCu alloy is 10, 15 and 20%, the quality score is higher than 60. When the Cu percentage is 5% and 25%, the quality score is also higher than prior art fuses. The client gives reasons why a percentage of 5% Cu and of 25% Cu are not preferred.

There were clarity issues and intermediate generalization issues with the client's claims. Because the quality score feature in client's claim 1 is determined by a not further specified own method of the client, this parameter is not suitable to be used as a functional claim limitation; it is a so-called unusual parameter.

In claim 1, candidates were expected to limit the AlCu alloy to those having 10-20% Cu. If you limited to a range of 5-25% Cu, you lost 3 marks. To avoid an unallowable intermediate generalisation, the cover layer needed to be an epoxy resin cover layer. Such a claim was novel over the prior art. The example amendments to claim 1 were explained focusing on how the amendment could be initially motivated by obtaining novelty over D1 and to satisfy Art. 123(2). For the dependent claims, it was simply highlighted how the amendments were, for the most part, a consequence of the amendment to claim 1.

For inventive step, one was expected to start from D1. The motivation for this selection is essentially based on D1 having the most features in common with the amended claim 1. You had to argue that there are more differences in D2 and especially D3, which has the same subjective problem as D1 and the patent application. A remark was that D3 could be closer, because it would come closer to the subjective problem in the patent application. The committee answered along the lines that D1 was seen as the more promising springboard. It, however, also noted that marks were given for good arguments starting from D3 as closest prior art. The Objective Technical Problem (OTP) was heavily stressed: "further reducing ..." and the unnecessary limitations received particular attention: AlCu alloy having 15% by weight Cu or the fuse track having a neck portion.

To overcome a clarity objection in a claim using the terms "the upper layer" not having antecedent basis, this term could be replaced by "the cover layer".

To overcome a clarity objection in respect of the relative term "smooth", candidates were expected to introduce an upper limit for the "well-known" standard reflow index.

The marking also received special attention. Again it was stressed how the penalisation for failing an exam item, does not spill-over to other items. For example, while adding the desired features to claim 1 provided a maximum of 20 marks and adding unnecessary limitations or non-compliances with the EPC could deduct 5 to 10 marks, the overall marks per claim cannot be negative.

Inventive step, as expected, attracted a large number of marks - 36 marks.

It was again strongly stressed how marks are not available (and thus a waste of exam time) for writing a letter to the applicant, writing a letter to the examiner, providing additional dependent claims, making amendments against the wishes of the client, requesting oral proceedings, or making any other kind of submissions like introductions, comments, etc.

We understand that a broader background of candidates is advantageous for the 'mixed' papers, but EM candidates should be able to process a table to obtain numerical results relevant for inventive step and Chem candidates should be able to recognise an unallowable intermediate generalisation when splitting features that were only disclosed in some combination.

It was also felt that the methodologies for extracting information from the exam documents are, at their core, the same as for the old 'mixed' papers, but an increased critical eye is required as the papers seem to have more condensed information. For example, cutting and paste based on the suggested claim set does not seem to be useful, and cutting and paste based on the originally filed claims does not give focus to the client wishes or the full inventive step argumentation being required. Of course, methodologies are based in the past experiences, not future experiences, so candidates are best to be systematic, but also be flexible.

It was highly recommended that candidates review the Examiners' Report. This can only be stressed by us tutors, given the extension and detail provided - 'decoding' the exam is indeed possible by giving directed attention to the Examiners' Report and this should be a very important part of the exam preparation.

In summary, with the correct set of claims, it was rather straight-forward to motivate support in the application as filed, obtaining clarity, novelty and inventive step.

It was felt that this paper was not too difficult, which is also reflected by the rather high passing rate.

5) Paper C - by Sander van Rijnswou

The tutor meeting discussed the suggested solution in the Examiner's Report and questions were answered.

During testing of the paper, the paper was modified to help candidates unfamiliar with the subject matter. For example, a definition of soaking was added to the paper. It was not present in a first draft. Disclosure was also added in case candidates did not know what teats and udders are.

Any time a candidate finds useful information in the description he should refer to A1 to reinforce his argumentation. For example, section [0018] of annex 1 describes what marking is. This section must be used to evaluate if the prior art discloses marking or not.

It was noted by the audience that the paper was longer than past year, but that the pass rate was the same. It was explained that the paper is extensively tested. Moreover, the paper was made before the half hour of additional time was added. Also, claim 6 was an easy attack if the priority issue was spotted.

The examination report is to train future generations. It is to show what the straightforward way to attack the paper is. But each paper and solution is marked individually. Every statement is taken in to account. The marking scheme tries to consider all alternatives.

Opposition form
It was pointed out from the audience that the Notice of opposition form that was supplied to the candidates is not the current version of the form. The current form does not have boxes to indicate the type of payment. It was explained that Paper C is prepared long in advance of the EQE, which is probably why the old form was included in the Exam. In any case, there is no obligation to use the form, the only requirement is make the opposition admissible.

Apart from that, it was noted that many candidates filed the opposition notice in the name of the signer, not of the company.

Effective dates and evidence
For claim 5, one should remark that the priority of the first variant is valid and that it has no extension of subject matter.

A6 has the same applicant and discloses all of claim 6, so it is a first application issue. Many candidates noticed that A6 did not enter the EP regional phase. Marks were available for stating that A6 was not a 54(3) document.

Claim 1: A novelty attack based on A2 was expected.
The suitable-for in the claim needs to be argued. Where are cleaning and soaking detailed? Annex 2 observes that it is for inside use, but also that it could be used for outside use. So, A2 satisfies the suitable-for of claim 1.
If claim 1 was attacked with inventive step, then the corresponding marks are awarded for the dependent claim.

Claim 2: An inventive step attack based on A4 + A2 was expected. A3 cannot be the closest prior art since it uses a single motor and rails.
For the inventive step, it is important to argue why a skilled person can combine them. In this case, the brush of A2 is suitable with A4 since both are controlled by a computer

Claim 3: An inventive step attack with A2 as closest prior art was expected. A2 is the only device with a specific amount of water to use for cleaning. A3 is not the closest prior art since it has fewer features in common with claim 3. Moreover, the cameras of A3, [0010] are not suitable for use outside a milking robot.
There are various reasons why A4 is not the closest prior art. A4 does not need to remove dirt with liquid, since dirt is removed before measuring temperature by ultrasound.
In A2 we have brushes that cooperate. So starting from A4 we have features with effects that are synergetic so inventive step attack would be weak. Starting from A4 would increase reservoir times two and times the number of cows. So the reservoir would become too large. Some tried to use A3 to argue for a larger reservoir, but A3 is not applicable. A3 is indoor and uses rails. Also, A3 is not an autonomous device

Claim 4: A novelty attack based on A5 was expected.
It needed to be argued why A5 has all the features in the correct order. If the claim was attacked with inventive step, then marks were awarded under the dependent claim.

Claim 5: An inventive step attack to the first alternative in the claim was expected as well as an added subject matter attack to the second alternative.
The Exam commission could not comment how the 22 available marks were distributed between the added subject matter attack and the inventive step attack that were expected for claim 5.
Clearly both alternatives must be attacked. It is complex to give a division of the marks since there are several alternative ways in which a candidate can answer. For example, some identify the two parts, but attack only one. Some attack the claim as a whole, but really attack only one part. There are many alternatives. Full marks are given if it is identified that there are two parts and that both parts are attacked. But the other alternatives are a bit blurred. The only certainty is what is needed for full marks. If something is different, then it is specific for that candidate.

Alternatives in a claim are often not clear to many candidates. Candidates do not know the approach for or-claims. That is why we have a pool of marks for the claim. We need a flexible approach.
Some marks were available for recognizing the two alternatives in the claim.

Claim 5 (1st alterative): An inventive step attack based on A3+A2 + A4 was expected.
A3 is the closest prior art, since it discloses a method of cleaning and requires few modifications. A5 cannot be the closest prior art since the only fluid disclosed in A5 is the river. So starting from A5 would require one to provide a river through the nozzle. This is unlikely.
A4 cannot be the closest prior art because it treats only sick cows, that can't be milked. Disinfectant is not suitable for milking

Claim 5 (2nd alternative): An added subject matter attack was expected. In particular, it needed to be argued why the basis of [0021] or of [0022]+[0023] is not sufficient.

Claim 6: The challenge was to analyze the priority. Features were disclosed in an immediate manner.

6) Paper D by Jelle Hoekstra and Roel van Woudenberg

Representing Examination Committee III: Tiem Reijns (chairman), Constantijn van Lookeren, Olivier Kern

DI-part: summary of the paper
The DI part, of 40 marks, consisted of 5 questions addressing a variety of EPC and PCT topics. In the first, 10-mark question, missing parts under PCT in combination with a client's wish for fast provisional protection in EPC states was tested (incorporate missing part from pri, early publ, national requirements: claims translations). The second, 8-mark question required intervention using new grounds of opposition and required G 4/91, G 1/94 as well as G 3/14. The third, 8-mark question, was directed to signatures/representation requirements when and after filing an EP application in Spanish by/for an applicant from Argentina. The fourth, 6-mark question addressed the (im)possibilities to remedy the missed time limit to file appeal in opposition; two situations had to be discussed: where you were the representative for the patent proprietor (re-establishment), and where you were the representative for the opponent (no possibility). In the fifth and last, 8-mark question, it was to be discussed how the subject-matter for which protection was sought could be restricted, without and with paying fees to the EPO, after the applicant became aware of new prior art, novelty-destroying for claim 1, only after the R.71(3) acts were performed.

The answers to the questions are given in the Examiners' Report. It also indicated that "Candidates are reminded that they should pay attention to the way the questions are asked", "Answering more than prompted by the question merely causes loss of time but is not awarded any marks", "Full marks were only awarded when the full legal basis was cited to support the analysis. However, alternative relevant legal bases also attracted marks.", "An unexpected amount of points was lost due to miscalculation of time limits." and "It has become a trend that candidates skip entire questions from D1. However, these candidates typically do not pass." Most of these points were also emphasized at the meeting (see below).

DII-part: summary of the paper
The DII-part related to methods of preparing a fried food product (FFP), in particular "Oliebollen" (balls of dough), and apparatuses for forming the balls of dough. The methods used different fruits and/or different temperature ranges. The apparatuses includes nozzles of various shapes for shaping the balls of dough.

The DII-part started with an appeal in opposition. EP-BB1 addresses a concern that all fried products have high levels of acrylamide, a substance some studies have indicated is carcinogenic in high doses. EP-BB1 had claims directed to a method of preparing a fried food product (FFP) with an acrylamide level below 225 ppb, by frying a ball of dough containing at least 5 % by weight of dried fruit, wherein the fruit comprises fruit A. Dependent claims required the fruit to comprise fruit B and/or C. The patent was maintained in amended form on basis of granted claim 2 after the opponent showed that the method according to the patent using only fruits A as dried fruit did not result in a product having the claimed acrylamide level. The opponent appealed and included the results of tests in his grounds in which a method according to the patent using only fruits A and B as dried fruit also did not result in a product having the claimed acrylamide level. The proprietor appealed with the grounds of appeal in the form of a letter that merely refers the Board of Appeal to our submissions made at first instance - the appeal was thus, inadmissible, and the proprietor was consequently only a party-as-of-right in the appeal.

The client also filed EP-BB2 describing and claiming a method of preparing a fried food product (FFP) by frying a ball of dough at a temperature in the range of 150-220°C. The description states that the preferred range is between 175°C and 200°C. The claimed range was novelty-destroyed by EURO-PCT-FK1, in particular by the lower endpoint of the range 155°C to 250°C described in PCT-FK1 (see below). The claimed range could be amended using the preferred range endpoints to, most optimally, 175-220°C (or, less optimally, 175-200°C).

EP-BB2 also discloses an apparatus including a dough mixer and a trumpet-shaped nozzle mounted thereon for forming the balls of dough. A PCT-BB2 was filed an -invalid- priority claim to EP-BB2. EP-BB3 was filed with a trumpet-shaped nozzle. The client intended to file a new PCT-BB3 claiming priority from EP-BB3. A careful priority (same invention, first application) and novelty assessment was expected.

A research institute offered the earlier, EURO-PCT-FK1 application to our client which claims an apparatus comprising a dough mixer having a nozzle arranged to deposit balls of dough into a bath of frying, with the description showing (only) a conically-shaped nozzle. Its second claim is directed to a method of preparing a fried food product (FFP) containing fruit D by frying dough at between 155°C and 250°C. The chosen fruit and the temperature range in combination make the products crispy on the outside and fluffy on the inside for longer.

The client wanted to use fruits A, C and D in the mix of dried fruit and any temperature between 160°C and 210°C, as that leads to their latest variety of tasty "Oliebollen" that recently won a competition.

Answering required understanding of admissibility of appeal, prohibition of reformation in peuis, novelty of ranges, novelty of sub-ranges (narrow, far from examples, purposive selection; GL (2016) G-VI, 8), amending ranges, priority and first application, protection conferred.

A possible solution to the DII is given in the Examiners' Report.

Comments from Committee
The D paper is a single paper with a DI part (legal questions - to test legal knowledge) and a DII part (legal assessment - to test ability to implement the knowledge), as described in Rule 26 IPREE.

The pass rate for paper D in 2018 was lower than normal (33% pass, 12% compensable fail). The committee has looked into the matter and comes to the conclusion that the paper does not seem more difficult than in previous years, and that the lower pass rate is puzzling. Some of the questions submitted by the tutors however indicated that some tutors considered the DII part more difficult than earlier 5-hour papers, especially in view of the topics tested and in view of its different style (not starting with a patentability investigation but with a complex legal assessment of an opposition appeal case). The committee observes that more candidates start with DII and quite some seem to run out of time for DI. This strategy may not be wise for candidates who are weak in DI. The committee has the feeling that candidates spend less time in preparing for DI than in the past. The underlying idea of paper D is that candidates should have sufficient knowledge of the theory (primarily DI part) and be able to apply this (primarily DII part). Since DII is based on applying the theory and also can have some more theoretical issues, a drop in knowledge of the theory also affects DII negatively.

During the discussions some speculation took place whether the drop in theoretical knowledge might be a consequence of the Pre-Exam. Candidates have already spent time on studying the theory for the Pre-Exam. They may (mistakenly) think that they are already at the level for the DI part or find it difficult to study the same material again.

The D committee wants to stimulate candidates to raise their knowledge of the theory. The committee does not expect big changes for the 2019 D exam compared to the papers of the last years. As before, the D paper will be a 5 hour + 30 minutes paper. The committee indicated that it can be expected that D 2019 will have, as before, about 40% of the marks for the DI part and 60% for the DII part. However, no specific ratio is indicated in Rule 26 IPREE and both parts are equally important. The D committee indicated that after 2019, there will still be ONE Paper D, but the ratio between DI and DII may vary: "any reasonable variation (e.g., between 40:60 - 60:40) should be expected". Shifting the marks is expected to take place gradually.

Legal basis in the DI part
Full marks for the legal basis can be obtained by citing the relevant part of the syllabus given in Rule 22(1) IPREE (as amended per 29/7/2017 by OJ 2017, A88). Marks may also be awarded if not the most optimal legal basis is given.

In general it is not required to cite the full legal tree. Legal basis should be provided for every aspect of the answer. If all these aspects are given in a rule, it is not required to additionally cite the article which gives the basis for the rule.

For the EPO Guidelines the version valid at October 31st should be cited. Marks were also be awarded for citations from the version valid from November 1st if the version is indicated.

Questions in the DII part
The questions are intended to guide the candidates efficiently through the paper. However, it is the task of the candidate to provide a legal opinion for a complex industrial-property law case. Some 'holes' left by the guiding questions may need to be filled by the candidates; they still have to think for themselves. For any useful comment given by a candidate, marks are awarded irrespective of for which question the comment is made.

Some suggestions for candidates

  • Avoid wasting time. Mere copying of the question of facts given in the paper attracts no marks. Focus on the question and do not answer more than required. Read the question properly.

  • Do not speculate based on own ideas.

  • Ensure to score the easy marks, e.g. for discussing priority mention that the priority application is the first application, show the calculation of the time limits (time limits are often miscalculated), in DII mention the effect for discussing inventive step.

7) Pre-Exam by Nico Cordes and Roel van Woudenberg

EC IV representatives: Julia Mills (epi), Stefan Götsch (EPO), Stefan Kastel (epi)

General remarks (Stefan Kastel)
The 2018 pass-rate was stated by the Committee to be 80%.

The Committee reiterated that the Pre-Exam is aimed at basic knowledge. To illustrate this point, the Pre-Exam should be answerable by Committee members in a closed-book setting in two hours (rather than the four hours given to candidates). Statements are only considered for inclusion in the final exam if 80% of Committee members provides the correct answer.

Nevertheless, the Committee recognizes that, despite the elaborate testing of statements, some statements are considered as ambiguous by candidates. Feedback, e.g., by tutors, is appreciated, as the Committee continues to strive to avoid ambiguities in the statements.

There is no recommendation from the Committee on how a candidate should distribute his/her time between the legal and claims-analysis part. However, the Pre-Exam is designed and tested to be 'doable' as a whole within the available four hours.

Some candidates appear to use personal answer sheets or write answers on the exam paper itself, and only transcribe their answers on the official answer sheet in the last minutes.

  • Candidates often fail to do so on time, or make mistakes in filling in the answer sheet.

  • In view of this, the Committee recommends against using personal answer sheets.

  • Nevertheless, in consideration of this problem, the end of the paper will be announced 10 minutes before the closing signal (previously 5 minutes before) to give candidates more time to fill in the answer sheet. This only applies to the Pre-Exam, not to the Main Exam.

The Committee considers the effect of the Pre-Exam on the preparation of the candidates for the Main Exam difficult to assess, as this would require two groups (double blind testing). However, the Committee is open to feedback, e.g., on improvements or perhaps reform.

Legal part (Stefan Götsch)
This year's Pre-Exam had legal questions directed to allowability of amendments (Q.1), missing drawings (Q.2, EPC), opposition/ priority / fresh grounds (Q.3), R.71(3) communication with amendments by the examining division / late third party observations (Q.4), EP entry just before the 31m time limit, i.e., early entry (Q.5), translation for entry / representation on entry (Q.6), infringement/ rights conferred / national renewals (Q.7), R.161/162 requirements after entry / amended R.164 (Q.8), appeal / pendency / interlocutory revision (Q.9), and oral proceedings/ written submissions (Q.10).

Questions 1, 2, 4-8 and 10 were generally well answered.

Question 3 showed that some candidates had difficulties in determining the ground for opposition.

Question 7 contained two general statements of which the answer was not in the Syllabus per se (statements 7.2 and 7.3, which read "The patent proprietor is entitled under all circumstances to produce in Germany any matter that is covered by the claim of EP-X" and "The patent proprietor is entitled under all circumstances to sell in Italy any matter that is covered by the claim of EP-X." where EP-X was validated in Germany and Italy) but was nevertheless thought to represent basic knowledge, namely which tested that a patent is not a right to use but a right to exclude.

Question 9 showed that some candidates had difficulties with statements involving interlocutory revision.

Claims analysis part (Julia Mills)
In the claims analysis part, the client's patent application related to jugs or filter carriers for mounting on jugs with replaceable filter cartridges for filtering water. In such jugs or filter carriers the filtering capacity of the cartridges is subject to exhaustion, and therefore the cartridges must be replaced after a certain number of filtering cycles and/or after a predetermined period of activity of the cartridge.

[003] of the paper indicated that jugs or filter carriers provided with counting devices are known. Typically the counting devices are installed on the lid and are incremented manually when the jug is filled thereby indicating the number of filtering cycles. Drawbacks are that the counting device requires an operation to be carried out manually by the user and that the opening of a flap on the lid also involves manual operation. Thus, filling the jug requires the use of both hands, one to hold the jug and the other to open the flap and to increment the counter.

[004] indicated that it would be desirable to provide a jug where the amount of water filtered and therefore the level of exhaustion of the filter could be determined accurately. It would be desirable if the jug were easy to manipulate when filling and also when incrementing the counter indicating the number of times water has been added to the jug.

The application described 3 embodiments relating to a lid on a jug in detail, and mentioned an alternative embodiment wherein the lid may be a lid on a filter carrier in its last paragraph.

Two prior art documents D1-D2 were introduced after resp. the client's application, D3 after claim 16, and D4 after claim 18.

D1 described 3 embodiments of a jug for filtering water, D2 described 2 embodiments providing jugs in which the amount of water treated by the filter cartridge is accurately determined. D3 disclosed a container lid with an opening for filling the container. D4 disclosed a water filter jug with a replaceable cartridge.

The statements were testing scope of protection, novelty, two-part form, Article 84 EPC, correctness of dependency (neutralized after appeal), amendments, Rule 43(2) EPC's interrelated products and different uses, unity, common special technical feature, aspects of the problem-solution approach: effect of distinguishing feature, objective technical problem, arguments as to combine or not, arguments for assessing inventive step, closest prior art, and (lack of) inventive step assuming D4 to be the closest prior art and assuming a formulation of the objective technical problem .

The claims analysis part is designed to be relevant for Paper A and B but with 'black & white' questions. Scope questions are thought to be relevant for preparation for Paper A. Novelty questions are thought to be relevant for preparation for Papers A and B.

Statements on inventive step were considered to be difficult to phrase in 'black & white' but seen as particularly relevant for the preparation of the candidates for paper B. In consideration of the choice of closest prior art document often being arguable, the questions are designed not to directly ask which document is closest prior art.

There are no tricks in the claims analysis part; the Committee is not 'trying to be clever'. Candidates should try not to overthink the questions of the claims analysis part. However, there are also no trivial questions. It is seen as an ongoing challenge to design questions and statements which are answerable without ambiguity, as there are always different opinions.

In general, it is attempted to derive the wording of the statements from parts of the Guidelines so to be recognizable to candidates familiar with the Guidelines.

2018 paper
The 2018 Pre-Exam paper is thought to contain technically easy subject matter.

Regarding the prior art: D2 was functionally similar, but structurally different, and introduced in the paper as a relevant document for scope and novelty questions. D3 was functionally similar, but has a different purpose/field, and was introduced as relevant document for inventive step assessment. D4 also introduced for inventive step.

The first questions were expected to be easy. It was therefore surprising to Committee that this part contained statements to be 'neutralized', i.e. both answers counted as correct.

In response to a tutor's question on the phrasing of statement 12.2 ("Claim II.1 is in the correct two-part form with respect to the third embodiment of document D1"): this was considered to be a useful way of asking about what features a document contained and which it did not.

In response to a tutor's question on the phrasing of 18.4 ("For the assessment of inventive step of claim V.2 it is a valid argument that none of the documents D1, D2 or D3 disclose a water level detector"): the phrasing "a valid argument' merely refers to the reason being correct and relevant ("worthwhile"). Nothing else was intended by the phrasing, i.e., it does not need to be the most complete or only argument.