Tutors‘ Report on the EQE 2019 Papers
and the Meeting between Tutors and EQE Committees
N. Cordes (NL), L. Ferreira (PT), A. Hards (DE), K. Hartvichova (CZ), 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 of EQE tutors and members of the EQE Committees , usually referred to as “the Tutor meeting”. 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 Examiners Reports. 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 18 October 2019, with a dinner on the preceding evening hosted by the epi. The participants list showed 87 registered participants (tutors, other EPO and epi members from the Academy, EQE secretariat and epi). Also, about 15-20 Committee members and Examination Board members were present.
All registered participants were invited to submit questions for the Committees by email via the Academy, at the latest one month prior to the meeting. The Academy made a compilation of 26 pages with all questions, which was distributed to the committee members prior to the meeting and available for all participants. During the meeting, additional questions were asked. The questions were addressed by the Committees when discussing the papers. The answers are incorporated in this report, and can be used to supplement the information from the Examiners Reports.
This Tutors’ Report contains the following sections: 1. Pass rates EQE 2019; 2. General remarks; 3. Paper A; 4. Paper B; 5. Paper C; 6. Paper D; 7. Pre-Exam; and 8. Concluding remarks. .
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 go to the tutors who asked questions and contributed to the discussions.
My special thanks to -in alphabetical order- Nico Cordes, Luis Ferreira, Andrew Hards, Katerina Hartvichova, Harrie Marsman, and Sander van Rijnswou for finding time to prepare the individual paper summaries.
We all wish you good luck in 2020,
Roel van Woudenberg (editor)
1) Pass rates EQE 2019
In 2019, 813 candidates out of 920 (88%) who passed the Pre-Exam, the highest pass rate since 2015 (2018: 74%; 2015-2016-2017: 76%). 672 out of 1746 candidates that took at least one paper candidates passed the EQE (compared with 528 out of 1696 last year).
For the individual main exam papers, paper A showed a much higher pass rate and B a considerably lower pass rate than last year (which showed similar similar pass+compensable fail rates as in 2017); the pass+compensable fail rate for C was similar to last year (and 4%-point higher than in 2017); the pass+compensable fail rate for D went up from 45% to 60% and is 15%-point higher than last year (when it was 8%-point lower than 2017) and is, together with the 2015 D paper, the highest since the introduction of the 5-hour single-paper format.
The official results for each paper, as published on the EQE website and dated 24 June 2019 for EQE2019, are as follows:
|A (3½ h + 30 min)
|B (3h + 30 min)
|C (5h + 30 min)
|D (5h + 30 min)
*Note: as of 2017, the ABCD papers are designed according to Rules 23-27 IPREE as 3½h, 3h, 5h and 5h respectively, but all candidates are granted an additional thirty minutes per paper to these durations (by Decision of the Supervisory Board of 17 November 2016).
**Note: the results are based on the original Examiner’s report, where two statements (19.1 and 19.2) were neutralized. It is not known whether appeals have been successful in interlocutory revision or before the DBA; at least one appeal is pending before the DBA.
2) General remarks
On the evening before the meeting, all participants were invited to a networking dinner, hosted by the European Patent Institute, in the center of Munich.
The meeting itself opened with words of welcome and introductions by Jakob Kofoed (Chair of the Examination Board), Francis Leyder (President of the epi) and Giovanni Arca (Academy). Also, there was a demo booth from Yolanda Sánchez García (European Patent Register product marketing manager, Patent Information, EPO).
Jakob Kofoed indicated that 2019 was an EQE year with no major incidents, normal pass rates and normal fluctuations between the papers. The Pre-Exam seems to meet its purpose, as “the better people pass the Pre-Exam, the better they pass the main exam”. A pilot was run for a computer-based EQE (main exam) with 15 candidates; this will be extended to 80 candidates at EQE2020 and more and more later, esp. also Pre-Exam.
Francis Leyder emphasised that the EQE plays a role in getting high caliber professionals, where preparation for the EQE develops knowledge, skills and abilities. A high pass rate is not the target: some candidate deserve to fail. Every year, about 500 new professional representatives enter on the list and about 250 leave. Today, there are about 12.750 professional representatives on the list. A computer-based Pre-Exam would be highly welcomed. With respect to the EQE2019, only a few appeals were filed.
Giovanni Arca commented on the setup of the meeting: this year, all plenary sessions were directed to EQE papers, with a demo booth in the lobby. The Academy and the meeting are also meant to maintain and develop the relationship between four parties: committee members, tutors (who submitted 26 pages of questions to the committees), Academy and epi.
A tutor observed that in recent years, the Guidelines are amended every year with often quiet relevant changes to the claims interpretation / analysis chapters. e.g., from 2016 to 2017 the introduction of summons to oral proceedings as first action in examination; from 2017 to 2018 the essentiality test was no longer considered sufficient to satisfy Art. 123(2) EPC and a change was made in interpretation of the terms “about”, “approximately” and “substantially”; and from 2018 to 2019 the deletion of purposive selection from the novelty-test for a sub-range. Thereby, the tests that need to be applied according to the IPREE (Guidelines on 31/10 of year before exam) are no longer the relevant tests when the exam is taken (which requires GL of 1/11 of year before the exam = same as valid on exam). The Examination Board and Committees were asked to comment on how the Pre-Exam, A, B, C and D committees deal with these late changes, to confirm that the test of the Guidelines of November 2018 (as being the ones in force on 31 October 2019) are the relevant tests on EQE 2020 and to indicate whether the committees would also give full marks to answers that are based on the amended/ new/ different tests in Guidelines of November 2019. The Pre-Exam committee commented that they aim to only have questions that are not affected by a change to the Guidelines in the autumn before; the D Committee commented that it is required to answer using the syllabus (on 31/10), but that usually marks are also awarded if reference is made to the new Guidelines provided that its edition is clearly indicated.
3) Paper A by Andrew Hards and Katerina Hartvichova
Liz Elmhirst gave the presentation on paper A. The presentation was authored by Liz Elmhirst, Matthias Kollmannsberger, Wim van der Poel and Andreas Böhm-Pélissier du Besset. Also present was Nicolas Favre (Chairman of EQE Examination Committee I).
2019 marks the 3rd time since the technical fields of chemistry and mechanics/electrical were combined to create a consolidated drafting paper A. This setting is still problematic due to diverging case law in the different technologies and the loss of specialisation in what is testable. On the other hand, candidates are expected to be knowledgeable about the legal practice in other fields, especially when these can be applied generically, such as the extensive jurisprudence on parameter ranges. Nevertheless, this year there was a high pass rate of 79 % (fail 15 %, compensable 5 %).
The topic was a chamber for cultivation of cells, i.e., a mechanical device with a biotechnological use. The technical problem was to improve the cell growth rate by increasing gas exchange. The solution was an upper and lower gas-permeable membrane on opposite sides of the frame. A key feature was to indicate the position of the membranes relative to the frame. However, substances still needed to be introduced to the chamber. This could be done in two ways and both were suggested in the client’s letter. Either an aperture in the frame or at least one of the membranes needed to be resealable. In a third embodiment, the alternatives were combined.
A major challenge was to formulate all three alternative embodiments in a single claim using “and/or”. Instead, drafting of three independent device claims was also accepted, but the subsequent dependent claims were difficult to consolidate, and the claim structure became messy. This is a good educational point, as such claim drafting techniques are invaluable in daily practise. The device claim(s) secured 42 marks in total.
A method of using the device (8 marks) and a method of production of the device (7 marks) were also expected, however, these must refer back to the device, as the methods themselves are known.
A difficulty that many candidates faced for the resealable membrane embodiment was failing to state the essential feature that: “the adhesive is pressure-sensitive.” On the other hand, optically transparent membranes or adhesive coatings should not be claimed as they are known in the art. The claims also required a resealable opening somewhere in the device (loss of 30 marks).
Rather unusually, 27 marks were available for dependent claims, instead of the typical 15 claims from the last years. Importantly, a dependent claim containing several alternative features is only awarded marks for the first (maybe second) fall-back position. This is surprisingly different from real life practise, where alternatives are often formulated in claims to increase clarity (and save claims’ fees). However, the exam committee does not wish to see the 15-claim limit in the exam circumvented by bunching of fall-back positions in dependent claims. Thus candidates should avoid alternatives in dependent claims as well as (overuse of) the indications „preferably“ or „optionally“. Good fall-back positions are features that do not appear in the prior art or those with an effect and a new inventive step argument, or features pinpointed by the client as important for his business.
There was an extensive discussion at the tutors meeting on the two-part form. Using the two-part form gains a couple of marks, but a correct identification of the distinguishing features from the prior art in the description was considered equivalent.
For the description, a discussion of the prior art documents was expected. Also, the technical problem underlying the invention should be defined. The features directly relevant for solving the technical problem and the way in which they solve it should be mentioned; this latter discussion is becoming increasingly relevant in paper A (5 marks). The rest of the description should support the claims. Converting the clients letter into the description, possibly by cutting and pasting passages from the paper seems efficient and acceptable. The examination committee is flexible as regards the length of the description, as long as the above elements are present. The description afforded 16 marks in total.
This year’s paper had a simple mechanics claim structure, but in a biotech setting. The solutions/embodiments were not too difficult to identify from the client’s letter, which was reflected in the relatively high pass rate.
4) Paper B by Harrie Marsman & Luis Ferrera
For Paper B, Davide D’Alessandro (EPO, main drafter) and Jens Sebastian (epi) attended the meeting. Nicolas Favre (Chairman of EQE Examination Committee I) was also present.
Davide gave the presentation on the Paper that has a pass rate of 52.6%.
Paper B was on an application dealing with solar cooking, cooking using solar radiation. The core of the invention was the use of a salt in storing heat for situations where the sun was not available. Especially, the storage of heat is associated with a phase change of the salt. Out of curiosity, the drafters shared a link where they had found initial inspiration for the invention: https://spectrum.ieee.org/energywise/green-tech/solar/solar-cookers-get-hot
The drafters gave an overview of the paper, discussed the prior art and official communication, and the client’s instructions and claims. Expected claims, expected arguments and inferior solutions were then discussed. This has also been covered in the very complete Examiner’s Report.
Main issues in the paper were the presence of 2 independent claims that needed (for full marks) two separate discussions on inventive step using 2 different closest prior art documents (20 marks to earn for each independent claim); and the construction of a range in the product claim that brings novelty and inventive step and has support in the application as filed. What was emphasised a couple of times is that it is very important to follow the client’s instructions. First, as was the case with the previous single papers B, the points for the claims are coupled to the amendments proposed by the client. Second, the comments and suggestions of the client are really intended to assist the candidates to find the solution. The client is the authority in terms of the commercial products to be protected. Rule 24 IPREE was cited for emphasising that it is the client who instructs about the way to proceed with the application: “it is about amending the claims of the client, according to the clients instructions letter, in order to meet the requirements of the EPC”.
To avoid the claims being amended in a way not intended by the client, it may be easier to work with the set of claims having the amendments proposed by the client. Thus that you do not miss the client’s suggestions. It was also felt that there was not a significant advantage by cutting and pasting. Candidates used all the possible approaches: rewriting the claim set (sometimes with the risk of incurring in added subject-matter), either using the claims as filed (sometimes forgetting client's instructions), or using the claims as proposed by the client (less to be changed).
In addition, it was confirmed that the position taken by the Examiner is essentially correct. Only if it is very clear that the Examiner is fundamentally wrong, this position should be challenged. However, it was reminded that there are not absolute rules for this and verifying the content of official communications is part of the job. For example, the client’s instructions may give a pointer to this or an abridged or even incomplete inventive step objection may invite further review.
In Rule 24 of the IPREE, it is indicated that the candidate has to respond to all points raised in the official communication. A contrario, if there is no objection of non-unity raised, you do not need to address the issue of unity-of-invention.
It was also stressed that by not responding to all the points raised in the official communication, a number of candidates were losing some marks that were relatively easy to obtain.
On the process claim, the client suggests not to introduce a temperature range. What matters is that the salt is not only present, but is able to melt. This should bring you to the correct wording of the suggested claim 1.
For the independent product claim, it was clear that the client did not wish to claim salt composition A. What was expected was that the salts to be used had a melting point in the range of 130-350 degrees Celsius. The value of 130 degrees is based on the individual number for a specific salt, but this value is not based on an unallowable intermediate generalization.
About 50% of the candidates found the temperature range in view of paragraph 7. It was nevertheless mentioned that the remaining candidates were not seriously penalised for missing this.
If you used a disclosed disclaimer for salt composition A, you did not get full marks. Reasons were that this was not as indicated by the client, the defence for inventive step was more complicated, nor would it be supported by the task to give the client the broadest possible scope of protection. The latter is a requirement for paper A, not for paper B (see Rule 24 of the IPREE).
It was also reminded that “wherever possible, the claim should be limited by a positive indication of what subject-matter remains instead of stating what is being deleted”, GL H-V 3.3. See also Case Law of the BoA - II-E 1.3.2 and T 201/83 (OJ 1984, 481) about forming a range with a value isolated from an example. We note this passage of the Guidelines was added in Nov.2018. As usual, candidates are well advised to include in their study any recent amendments to the Guidelines, in particular part H for paper B.
If you used a disclaimer, it was not expected to provide arguments why this disclaimer would be specifically allowable under G 2/10.
For the argumentation of inventive step of the independent claims, there was a total of 40 marks. 20 marks for the defence of the process claim and 20 marks for the defence of the product claim.
For the product claim, D1 was the closest prior art. For the process claim, D2 was now the closest prior art document. In the client's Letter, a hint was given by the statement on sodium chloride which would not store heat as required by the invention, because sodium chloride does not melt at the indicated temperatures - “far higher than normal cooking temperatures”. This links D2 to an effect.
All possible prior art combinations had to be discussed to attract all marks.
If other documents were selected as closest prior art or if the problem-solution approach was made for the combination of the product and process claim, you did not get all marks but at least some. As usual in the exam marking, a mistake is only penalised once and follow-up errors, as much as they relate to a previous mistake, are not penalised repeatedly.
As indicated above, the Examiner’s Report is quite detailed and should be read attentively.
5) Paper C by Sander van Rijswou
Present for paper C and answering questions were: Celia Martínez Rico, Paolo Provvisionato (chair of the committee) and Sophie Creux.
Sophie Creux gave the main presentation for Paper C 2019; introducing the topic, its problems and the expected solution. This mostly followed the Examiners' Report for Paper C 2019. The notes below focuses on the additional information provided during the meeting.
One of the challenges was to digest all the information and make sense of it. For maximum points one should:
- use the information provided
- identify features in the annexes
- need to reference where the feature was found. A specific reference in the relevant document should be given. For example:
- Paragraph number
- Line number
- Reference sign
- Claim number
- Figure number
Different terminology between claims and prior art should be addressed. For example, claim 5 requires comparing ‘steam dispersing ducts’ with ‘steam passages’. For example, one could rely on section  to argue that they are the same. One could also explain that they have the same function and that no differences are implied by the different wording. These would give the same marks.
Substantiated choice of closest prior art.
We don’t want anything more than the Guidelines.
- Purpose is a very important thing
- Minimal structural modifications
- Minimal number of difference features is less strong
Example for claim 4: Annex 6 has the same purpose of domestic use as claim 4. It requires the least structural changes, (already internal water tank).
Combination of documents, “how and why”
Argue why starting from the closest prior art, how and why you get to the claim.
How (replace an element, select a specific material, add a feature etc.)
Claim 2: skilled person would replace the KeraTix layer of Annex 2 by a KeraMa layer, and choose aluminium as a suitable low density material for making a lightweight iron without changing the intermediate layer of Yur56
Why (hindrances, incentives, etc.).
Claim 5: the tilted passages may be used in all types of ironing devices not only in the ironing press of Annex 5. At least you should argue why the secondary document has the same problem, but also give the incentives or absence of hindrances.
The novelty attack on Claim 1 based on A4 was found by about 100% of the candidates. Also, the vast majority of the candidates spotted the added subject matter in Claim 1. Wording of the added subject matter attack didn’t matter so much as long as the addition was pointed out and reference was made to sections  and .
For the KeraSi variant in Claim 1 an inventive step attack was expected starting from the first series of tests in A4. The effects of KeraMa and KeraSi are the same and so the objective technical problem should be to provide an alternative.
An alternative inventive step attack on claim 1 could start from the second series of experiments in A4. Although not impossible to attack the claim in this way, to attract marks, a candidate needed to spot two things: that the alloy is presented as essential and that Yur74 cannot be combined with aluminium. Also, the candidate needs to explain how to overcome these difficulties. An attack like this is not as good as the expected attack, since it is not straightforward.
Claim 2 was limited to KeraMa to reduce the number of attacks that a candidate needs to perform. It was expected to start from A2 and to use partial problems.
An attack starting from A4 has the issue that it is a dry iron, and has a special construction with the heating element on top. You need to create holes and change the heating element.
It was expected to build on from the attack on claim 2, using A2. For claim 3, the best starting point was much better identified. The vast majority that attacked claim 3, started from A2.
If a candidate had no attack for claim 2, or an attack that could not be understood, then the candidate would get 0 marks for claim 2, but if claim 3 is attacked in the correct way, then some of the marks of claim 2 were also awarded.
An inventive step A6+A2 was expected.
Some candidates started from A2 and argued that you could just put a water tank in the iron. But the embodiment in A2 has a thin main body. Moreover, A2 focusses on removing weight. To attract marks for an attack based on A2, you would have to identify this issue and explain convincingly how you would overcome it. For example, a candidate could argue how the skilled person would adapt the thin body to accomodate the tank.
For claim 5 it was expected to continue the attack of claim 4.
Novelty attack with A3 was expected. The main issue was the use of information in A3. A good attack needs to rely on the text to find the steam iron, also to find steam nozzles / steam outlets. Then one should consider the figure.
A3 is available. Since a novelty attack on claim 6 is already done, it is reasonable to start from the novelty attack. A candidate who tried the reverse combination could gain some points.
After the presentation, questions from the tutors were answered.
Q: Do you lose marks if you do not cite the guidelines for the product by process feature?
A: Actually, since paper C is marked positively, it’s not that you lose marks but that you do not gain marks. Sometimes legal marks are available and sometimes not. In this paper, it was expected to cite the Guidelines. A candidate should be aware that this situation is very specific and that there are special rules for this situation.
Q: How many marks are lost if Claim 1 is attacked by inventive step instead of through novelty?
A: I think they would lose marks, just a few marks. You could also get marks for claim 1 if you did an inventive step attack on a different claim starting with the same document. Novelty attacks are better since they there is less to argue.
It all depends on how it is written. It depends on the choices. For a straightforward novelty attack, one may be penalized more but if the novelty attack was overlooked because of a specific word, then it is different. It always depends on the explanations of the candidates. How it is written may also make a difference in real life, that is why what is written, and how it is written, is given so much weight.
Marks may be awarded even for a wrong attack, if the way it is written makes clear that the candidate may be a good attorney, or at least not a bad attorney. However, this does not hold for serious mistakes though. Those are penalized.
Q. What is the limit for points if you take the wrong starting point?
A: We don’t know. There is a quite detailed internal marking scheme for expected answers. But if you are not on it, it depends on how it is written.
Q: So if you have all the arguments available to you, you would get full marks?
A: The majority of candidates follows what is expected. Some unexpected attacks occur more often, e.g., switching and they also covered. Every individual answer has to be marked on its merits. That is easier if the attack was the expected one.
A good but unexpected answer could be awarded of all the marks. But it is very rare that an unexpected answer is perfect and achieves full marks. This is because Paper c is built as a puzzle. There are indications that should lead to considerations. If you start with an external tank, which has the purpose of low weight, you can never attract full marks if you don’t address that problem. [Referring to claim 4].
After the questions, explanations were given on how to deal with the notice of opposition form in the future.
Rule 25 IPREE has changed (OJ 2019, A66); the provision of the form was deleted. There have always been problems with the form (e.g., to have the correct version of the form in the exam paper), but the trigger for discarding the form was because it no longer provides the option to indicate payment. In future, candidates are still required to make their opposition admissible, following Art. 99, Rule 76, etc.
Since no form will be provided, you are not allowed to hand one in. This is quite clear. A candidate can bring a form, if it helps him, but the candidate cannot hand the form in (Instructions to the candidates, OJ 2019, Suppl 2, 36-40, I.9(d)). If you do hand in the form, it will, at a minimum, be discarded, but you may be penalized.
A candidate will need to indicate that he has paid the opposition fee, by putting it in his answer paper. For example: I pay the fee by credit card or deposit account, etc. This is essential. You also need to identify the patent, and any other essential information to make the opposition admissible.
The possible answer for paper C 2019 in the Examiners' Report does not refer to the form, so this is something candidates could look at.
6) Paper D by Roel van Woudenberg
Representing Examination Committee III: Tiem Reijns (chairman), Magali Degrendel (main drafter DII), Anja Schmitt (coordinator D2019; will leave to the Boards of Appeal), Simone Fausti (new coordinator).
General remarks (Tiem Reijns)
The pass rate of D 2019 was 49,5%, compensable fails 10.9%.
Overall positive comments from the blogs and tutor comments: fair questions, not overly difficult, not too long, even “predictable”. It seems that the exam was a little easier than the last few years.
Higher pass rate compared to the last few years, likely because the legal assessment (Part II) was perceived to be more straight forward than the last few years.
Despite a higher pass rate, many candidates focus on (and start with) the legal assessment. As observed also last year, candidates skipping entire Part I questions are generally not successful, because thorough legal knowledge is also required for a good legal assessment.
The paper length will remain similar to the last 5 years, with the 30 min extra time being extra time: 5 h + 0.5 h for revision. Only legal basis from the syllabus in REE/IPREE is legal basis; alternative legal basis is sometimes accepted too. Candidates using the latest guidelines were NOT be penalized. But the advice is to stick to the syllabus, and to indicate the GL year if a newer version is used.
Answering and marking
The purpose of the Examiners’ report is to help future candidates prepare. The Examiners’ report shall be read as the correct factual answer for 100 marks. In some questions alternative answers attracted marks, but only the best answer is in the Examiners’ report. Some additional comments were awarded extra marks (sometimes referred to as bonus marks), e.g., if part of answers in blogs.
In principle, all information in a question is relevant. Candidates should answer the question, and should not speculate. Giving both a correct and a wrong answer to the choice of the marker, will not attract any marks. Full legal basis is what is needed to support the answer in full: Article and/or Rule and/or Guidelines and/or case law, whatever is needed to support all aspects of the answer. Alternative legal basis often attracts (full) marks.
Blogs are checked as well as an extensive pre-marking to come to the possible solution and the marking sheet, and possible alternative interpretations of parts of a question or alternative answers.
As guidance to how much of “answer” is required for full marks, Tiem indicated that the Committee takes a lot of effort in choosing the wording of the question in such a way that there is a trigger for each answer aspect and there is a clear exclusion for time consuming extra answers. Advice to candidates is to address all aspects in their answer, not use own knowledge/experience, and not discuss aspects for which there is no trigger/reference in the question.
Some tutors asked if marks / bonus marks are awarded for statements like: “No fee for a third party observation”, “the (EPO as) ISA does not verify if priority is validly claimed”, “what happens if a translation is not filed?”. Generally, no marks are awarded for things that do not happen, things the
attorney/client does not need to do, and actions that are not to be taken. Candidates are advised to not write about such things that are not triggered by the question.
When answering, “Today“ is the day of the exam.
Reminder - change of the format as of D 2020
Readers are reminded of the change to the D papers as of D 2020. Reference is made to the Notice from the Examination Board of 13.03.2019 (on EQE website), and the publication T. Reijns, chairman of the D Committee, “Announcement on the EQE – Paper D” in epi Information 4/2018, page 25.
There is ONE Paper D: any reasonable variation of marks to the DI and DII parts (e.g. between 40:60 – 60:40) should be expected from 2020 onwards. Candidates can expect that the full range will be used over the next years.
DI-part: summary of the paper
The DI part, still of 40 marks, of the 2019 D paper again had a variety of topics ranging from entitlement, third party observations under EPC and PCT, missing claims under EPC and PCT, priority, to debit accounts. Scoring about 20 marks in 1,5 hours or 25 marks within 2 hours seemed feasible for a well-prepared candidate; the Committee also indicated that the average DI score was higher than usual.
The first, 9-mark question, was directed to stay of proceedings just after a R.71(3) communication was received, resumption (incl. time limits) and acts to be done after resumption to proceed to grant with amended claims and to continue with the other independent claim in a separate European patent application. The second, 8-mark question asked what a client could do while a PCT application is pending during the international phase and during the EP regional phase in view of alleged relevant prior art and in view of an alleged lack of clarity, and was checking the differences in requirements for filing third party observations between both systems. In the third, 9-mark question, the client had filed on the last day of the priority period an application X claiming priority from an earlier application, but the application X lacked claims; an article was published in the priority period describing subject-matter of the missing claims. Also in this question, the differences between PCT and EPC were tested, here w.r.t. missing parts/elements. The fourth, 7-mark question was directed to priority, in particular invalidity of priority due to a first application problem and whether a translation of the (Korean) priority application would be required during an opposition. The last, 8-mark question was directed to automatic debiting in the international phase, in particular to insufficient funds to pay the additional search fee in view of non-unity, and the effect of replenishment after the time limit as well as the effect of a timely filed order to a banking establishment in a contracting state to transfer a large amount to the deposit account (which so far failed to actually be executed in time).
The answers to the questions are given in the Examiners’ Report. It also indicated, as every year, important guidance for answering (e.g., “Candidates are reminded that they should pay attention to the way the questions are asked”) - most of these points were also emphasized at the meeting (see above under “General remarks” and “Answering and marking”).
DII-part: summary of the paper
The DII paper of 2019 related to shoe soles for running shoes. Your client is a German shoe manufacturer, FASTER, whose main markets are Germany and Austria and whose only factory is in Germany. Its owner found out that all metal nanoparticles modify the foam structure of a shoe, thereby improving the energy storage of the shoe sole. The increase depends on the type of material (any metal, in particular copper; Silica) and on the size of the nanoparticles. Slightly more than a year ago, your client had filed several patent applications, EP-F1, EP-F3, EP-F2. Only EP-F2 claims priority, from EP-F1. An Australian competitor, HIKE, is also active in the field of running shoes, and has its only factory in Austria. HIKE made several announcements of the Internet, and has two patents: a national Austrian patent AT-H with a broad claim scope, and a European patent EP-H which has a problem with its translation (EP-H was originally filed by a Chinese company, LONGRUN, in Chinese, and the English translation has a major error in it). There is also a Mr Furious, a former employee of tours, who sold information to HIKE when he was angry for not getting promoted.
In this paper, analysis of priority was a key topic, and partial priority was present very pronouncedly -as expected-. Mr Furious' acts are an evident abuse against your client, and gave the opportunity to file a new application for Silica nanoparticle soles.
Answering required a careful analysis of priority, as some of the claims benefited from partial priority (G 1/15), an addition of a priority declaration to remove some prior art and get a claim patentable, amendment to get a claim patentable, effect of wrong translation on 54(3) effect and on validity of the granted patent with the error (123(2) as well as 123(3)), opposition, London Agreement and validation, protection conferred, cross-licensing. Partial priority had to be assessed in view of combinations with genus-species metal-Cu and ranges “any”, <80, <40, 35-80, 70-80 - this made a challenging DII. The pass rate of the D-paper was nevertheless very high (one of the highest since the introduction of the 5-hour paper).
A possible solution to the DII is given in the Examiners’ Report. The Examiner’s Report also indicated that “Candidates generally did well on the analysis and spotted most of the relevant relationships between the various rights and how they affect the freedom to operate of the parties involved.”, “It is noted that candidates who immediately proposed improvements without fully analysing the situation as outlined in the paper, missed a lot of relevant issues”, “The majority of candidates noticed that EP-F2 contained subject matter that was not covered by its priority application EP-F1. Only some candidates made the right assessment and distinguished between the different parts of the “OR-claim”. Many candidates also did not recognise the consequence of partial lack of novelty for the claim as a whole”, and “The possibility of adding a priority claim to EP-F3 in EP-F2 was also generally well recognised. However, while the candidates understood that the earlier effective date added another part to the “OR-claim” they neither applied it to the partial (lack of) novelty of specific parts of the “OR-claim” in their original assessment, nor did they realise that just adding the priority claim without making claim amendments is not sufficient to get a granted patent out of EP-F2”.
Comments from Committee
The Committee commented on the questions submitted prior to the meeting and addressing various specific items in DI and DII questions.
Questions in the DI part
Tiem Reijns commented on the questions submitted w.r.t the DI-part.
Effect of stay on due date and periods for renewals: discussion (Q.1)
The answer in the Examiner’s Report to Q.1 comprises “According to Rule 14(4) EPC, the period for payment of renewal fees is not interrupted. Company B should make sure the renewal fees are paid (if not by A, then by B) during the stay”.
A tutor challenged the latter conclusion, as that tutor argued that Rule 14(4) provides what happens to time periods for renewals (running at the date of the stay), but does not indicate what happens with due dates for renewals falling due/having fallen due after the stay, nor to 6m-periods of R.51(2) that were not yet running at the stay but only thereafter. The tutor argued that, in view of the legal effect of the stay as described in GL (2018) A-IV, 2.3 (“neither the EPO nor the parties can validly perform any legal acts while proceedings are suspended (J 38/92)”), the effect on due dates should be the same as in the somewhat similar situation of R.142. There, the Guidelines as well as the case law are clear (GL (2018) E-VII, 1.5; J 902/87). The tutor concluded that, in his view, the answer should read: “The period for paying renewal fees is not interrupted – R. 14(4) -, but their due date is deferred until the date the proceedings are resumed – GL (2018) E-VII, 1.5 mutatis mutandis / J 902/87 mutatis mutandis. So, any renewal fee falling due between the date of stay and the date of resumption must be paid by the date of resumption."
The Committee indicated that is a difference between “stay” and “interruption of proceedings” in that the wording of the rules and the purpose/background is different, and, in case of bankruptcy, payment is impossible whereas in case of entitlement proceedings, that is different as anyone can pay.
The point seems to remain open. As only few candidates addressed the effect on renewal fees, the effect on obtained marks is probably anyhow small.
Effect of stay on divisionals (Q.1)
Filing a divisional (directed to the subject-matter of claim 3) can only be done after resumption (J 9/12), this is part of the required answer, not a Bonus point. The correct legal bases is J 9/12, as Case Law is “higher” legal basis than the Guidelines, but alternative Case Law or the correct GL reference was awarded full marks as well.
Third party observations in PCT (Q.2)
More candidates than expected missed the issue that third party observations in PCT cannot be directed to clarity.
Missing parts (Q.3)
Missing parts were done very well, except that some candidates wrongly used it also for missing claims under the EPC.
Translation of priority (Q.4)
Since Question 4(b) only asks if a translation is required in opposition proceedings, the only thing that needs to be discussed is if the translation is relevant to the priority claim. Candidates should then conclude that, irrespective of the exact contents of KR1, the priority claim is invalid, and therefore the translation of KR1 is not needed for determining the validity of the priority claim.
Debit order and insufficient funds (Q.5)
Was considered difficult and often skipped.
Questions in the DII part
Magali Degrendel commented on some DII-topics and the questions relating to the DII-part.
Magali indicated that the paper was designed such that if partial priority was not recognized, a candidate could continue.
Interpretation of 
The Possible Solution in the Examiner’s Report interpretes  so that the increased energy storage is only described with reference to the claimed embodiment, i.e. S + Cu < 40 nm. It was commented by tutors and, on the blogs, by various candidates that it could however also be read in an alternative manner, namely as to also refer to the first sentence of , i.e. "all metal nanoparticles modify the foam structure of a show sole, thereby improving the energy storage of the shoe sole". Various candidates and tutors have indicated that they used this “alternative interpretation”.
The Committee indicated that they consider this alternative interpretation incorrect.
Effect of different Interpretation of / improvements of dependent claims
A submitted question indicated that when  is understood such that EP-F1 discloses also that "any metal nanoparticles modifies the foam structure of a shoe sole, thereby improving energy storage of the shoe sole" and thus "S + metal NP", the priority situation changes. With that interpretation, Claim 1 of EP-F2 (S + metal NP) gets full priority from EP-F1. Prior art is CGK (foam, but no NP) and AT-H (no metal NP) as 54(2) and EP-H as 54(3). EP-H's 54(3) effect is determined by CN text, so S + Cu 70-80 micrometers, so no nanoparticles, so new over EP-H (CN). Inventive over CGK and AT-H due to increased energy storage. So, claim 1 would be patentable. (It is noted that the patentability of claim 2 and 3, which still do not have full priority over their full scope but only partial priority from EP-F1 for S + Cu < 40 nm, does not change).
The submitted question indicated that with the alternative interpretation, the same actions and amendments w.r.t. claim 2 and 3 could be done as shown in the Possible Solution, resulting in patentable claim 2 and amended claim 3 (limit to < 40 nm). However, whereas there is a need to do these actions and amendments when following the Possible Solution in view of the invalidity of claim 1, there is not really such a need when the “alternative interpretation” is followed, as claim 1 already gives a broad and good protection.
The submitted question asked whether the Committee could confirm that even if a broad independent claim is valid, candidates are always expected to try to improve any invalid dependent claim to get valid explicit protection for the dependent claims? (As was also the case in, e.g., DII 2013, where the client could protection for frying pans with 3D protection of any shape (via Art.61), but also specific protection for frying pans with cubic protrusions were to be obtained (via Art.55)).
The Committee indicated that dependent claims also need to be improved, also if the independent claim is considered to be valid.
Adding a priority declaration
The Committee indicated that, even though many candidates proposed to add the priority declaration, the analysis of the resulting situation was often missed (valid claim 2).
A tutor asked why the filing language of EP=F1, EP=-f2, and EP-F3 was specified to be German. It seemed a trigger word, but the language does nowhere appear in the Possible Solution.
The Committee answered that some facts are given to prevent speculation and/or to not make you worry.
Detail required in (cross-)licensing advice
A few tutors observed that the level of detail as to the cross-licensing advice is very different between the examiner’s reports of various years. Here, the advice was very brief whereas in other years, it was required to also indicate explicitly which claim of which application/patent and in relation to which product/activity and where.
The Committee indicated that as this year, the minimum of mentioning the relevant patents was enough.
7) Pre-Exam by Nico Cordes and Roel van Woudenberg
Representing Examination Committee IV: Stefan Götsch (EPO), Stefan Kastel (epi)
This year’s pre-exam had legal questions of similar difficulty as in the last 4 years (2015-2018), where understanding of the legal provisions itself as well as of the Guidelines was tested (who can speak at oral proc, transfers, inventors). Some usual topics, such as divisionals and EP-entry, were missing. Partial priority (G 1/15) was not tested yet.
The claims analysis part was much shorter than in 2018 and 2015-2017 in terms of total number of words (2019: about 2500 words vs 2018: 5238 words), length of client’s application, embodiments, claims, prior art embodiments and length of (independent) claims. Moreover, the claims analysis part comprised two technical cases. Each case had a short client’s application, short prior art documents, concise claims, very understandable subject-matter and five questions.
During the meeting, the Committee briefly reiterated its comments from the previous year:
- The true-false format with grouping of 4 statements into one question and a non-linear marking of the question (all correct: 5 points, -2 subtraction for each wrong answer with a minimum of zero, i.e., no negative points) is not cast into concrete. However, the 20x4 scheme is believed to work quite well.
- The Committee is open to proposals and reforms in the future.
- The Committee consists of 20 persons, so there is little manpower to test the questions. Feedback is obtained from blogs and from direct questions and comments of tutors.
- The disadvantage of the present form of the pre-exam is the need to create ‘black-and-white’ situations, and in which it is only possible to neutralize statements, for example if very good arguments exist for another answer.
- In such cases, the Committee will neutralize the respective statements.
- The questions are aimed at the basic 'mainstream' answers. The syllabus aims at the knowledge of candidates with 2-years of practice.
- Statistics: it is not easy to create statistic on whether the pre-exam increases the pass-rate of main exam. Such statistics are therefore not available to the Exam Committee. However, it was reported that candidates with a high pre-exam score often also score high on the main exam.
- Computerization would be nice in the future, preferably with the possibility to take it multiple times per year.
This year's legal part addressed several topics that were to be expected (filing date requirements EPC, time limits, time limit differences PCT-EPC, languages, filing requirements EPC and PCT -including an Argentinian co-applicant-, right to an EP patent, third party observations) as well as several less standard topics which well-prepared candidates would have been able to find in their EPC/ reference materials/ Guidelines (who can speak at oral proc, transfers -incl recording transfer during opposition period-, rights of inventors, recording changes in PCT, refunds of fees, admissibility of opposition). Some usual topics, such as divisionals and EP-entry, were missing. Partial priority was not tested.
Wording, terms and languages
In the meeting, there was some discussion as to the wording of various questions and as to the explanations given in the Examiner’s Report in the legal part.
In Question 2 of the Pre-Exam, the correspondence between terms in the question & statements and in Art. 133 EPC was not the same for all three languages (EN: “the headquarters” & “its research centre” in paper vs “principle place of business”; DE: „einen Hauptsitz“ & „beim Forschungszentrum“ vs „Sitz“ (not „Hauptsitz“); and FR : « son siège » & « au centre de recherche » vs « siège »), i.e. the FR term uses exactly the term from the law, whereas the EN version used the less legal headquarters and the DE version added “Haupt-”. It was argued that this causes inequality between candidates and it was suggested that all language versions use the authentic terms from the EPC Articles in future papers. The Committee indicated that correspondence between the various language versions has a high priority, but that is difficult to always have it exactly the same
There was a discussion on the effect of information letter “Expected start of examination” (form F2919), which was introduced when RFees 11 was amended in 2016 [OJ 2016, A48 & A49] on statement 3.1. A candidate that is aware of this form F2919 may have come to the opposite answer, while the candidate’s understanding was actually quite good; he would only answered wrongly by having considered this “information letter” to be a “communication”.
The Committee also considered the form to be an information letter, and not a communication that sets a time limit for responding. The Committee will take the form and the comments into account for the future.
In statement 4.1, the question did (in all three languages) not use the words from the law (R.6(1) EPC: “shall”), but an informal term (“must”). Some candidates (native as well as non-native EN speakers) have indicated that they consider the meaning of the statement different with “must” than with “shall”, e.g. in view of (Rule 57(a) and) Rule 58 EPC which provides for an invitation to give the translation within another 2m from the invitation and/or in view of the question not indicating whether the applicant wants to proceed with the application or just wants a filing date. It was suggested to use the words from the legal provisions. Further, it was suggested that the statement should also indicate the effect (“to prevent the application to be deemed to be withdrawn immediately upon expiry of a 2m period from the date of filing” – which would be FALSE in view of R.58). The Committee indicated that they consulted their legal experts and they considered the words “shall” and “must” to have the same meaning. The Committee also indicated that a candidate shall not think too sophisticated: a Rule 58 consideration was not expected.
In Question 8 of the 2019 Pre-Exam, a tutor observed statements 8.1 and 8.2 as well as statements 8.3 and 8.4 are coupled and not independent, contrary to item 1.(a) of the instructions for answering the paper on page 1of the exam paper. A wrong answer to statement 8.1 causes that statement 8.2 is also answered wrongly (i.e., two errors are made if one wrongly uses the EPC’s 10-day rule for notification for a PCT). In addition, a wrong answer to statement 8.3 may cause that statement 8.4 is also answered wrongly (i.e., two errors are made if a candidate considered the 10-days’ fiction of R.134 to extend to Monday if the 10th day is on a Sunday). The tutor considered the coupling of statement in one question results in unfair treatment of candidates.
The Committee indicated that statements do not always need to be uncorrelated, even though the main rule is to have them unrelated. The Committee also observed that for these related statements, the answers were not perfectly correlated.
Claims analysis part
The claims analysis part started with an invention relating to a washing composition in the form of a tablet, described in a 1-page description. The washing composition comprises one or more detergents (surface active agents), one or more builders (help to keep the water soft), one or more bleaches (to destroy coloured dirt components), and, optionally a colourant. Ranges of amounts of the various components were given. The components are contained in separate layers: a first layer (all detergents), a second layer (all bleaches), and preferably a third layer in between those (preferably comprising only a builder). The application had no drawings.
A first claim set of 1 independent claim and 8 dependent claims (some of them multiple-dependent) was to be considered for questions 11 to 14. Two very brief documents D1 and D2 were given and expected to be used as prior art documents. D1 described two embodiments of washing tablets including, as usual, a detergent, a builder and a bleach; in the first embodiment, all ingredients are mixed together and compressed to form a tablet; in a second embodiment, the mixture is divided into two separate parts, forming two layers of the tablet. D2 proposes a washing tablets comprising three layers: a first layer with a builder and a bleach, a second comprising a builder and a detergent, and a third comprising a builder and a colourant.
Questions 11-14 were directed to clarity, scope, novelty, and extension of subject-matter.
For question 15, a different independent claim was presented, and several inventive step-related statements were tested.
After this highly chemical-type first invention, the claims analysis part continued with a mechanical-type invention. A one-and-a-half page application described a composite structure having holes with reinforcing inserts for the holes in the composite structure, so as to strengthen the holes. Preferably, a support layer is joined to each reinforcing insert. The support layer is formed from a different material to the plies of the composite material. The composite fibres are preferably carbon fibres, while the support layer is made of metal such as aluminium. The single figure showed a composite structure with 10 to 100 plies of fibre-reinforced composite material and a support layer such as a support grid. The support grid has a mesh size in between 0,5 and 1500, preferably between 100 and 150 (considerably improving the fastening strength), measured according to standard XYZ.
Question 16 was directed to essential features.
After question 16, and before questions 17 to 20, a claim set was presented with 1 independent claim and 7 dependent claims (most being multiple-dependent claims in the form is "any one of claims X-Y"). D11 and D12 were cited as prior art documents, each one page and each including one figure. D11 relates to composite structures for aircraft components such as aircraft wing covers; D12 relates to a composite structure for bicycle components.
Question 17-18 were directed to clarity, scope, basis for amendment, novelty (of dependent claims).
For questions 19 and 20, a new set of 1 independent and 1 dependent claim was presented which had been filed by the applicant during the examination proceedings, i.e., as amendments.
Allowability of the new claims, two-part form, closest prior art arguments, and arguments in favour of inventive step were tested.
Although the opening paragraph of the application describes that "The present patent application relates to a composite structure such as an aircraft wing cover", none of the claims is directed to such an aircraft wing cover - all claims are directed to a composite structure.
In all, the claims analysis part was well-balanced between chemical as well as mechanical inventions, with two separate cases for both technical domains. Both cases were concise, the applications as well as the prior art documents, and should not have led to timing problems. Optional features, preferred embodiments, ranges, and correct understanding of dependent claims were tested.
Comments to specific statements
During the meeting, the Committee considered questions 11-18 and 20 to be unproblematic, as they were very well answered and there was no pattern perceived in the candidates’ answers which would indicate a problem in one of the statements.
With respect to the answers to statement 18.3 and 20.3, a tutor observed that the third criterion of Guidelines (2017/2018) G-VI, 8(ii)(c), i.e. purposive selection, is not mentioned in the answer to 18.3, even though  explicitly indicates that “using a support grid 3 having a mesh size between 100 and 150 improves the fastening strength considerably”. However, in the novelty-argumentation of 20.3, ‘purposive selection’ was included as the third requirement for novelty of a sub-range. The tutor asked what the reason for this difference was. The Committee commented that they already considered the novelty criteria of the updated Guidelines (into force 1-11-2019, which omits the purposive selection as a third criterion in the novelty test) in their answer, in part since the Committee considered the Exam Report to be published relatively nearby in time to the updated Guidelines, so it was decided to present the answer already in line with the new Guidelines. The Committee also indicated that they try to prevent to have questions dependent on or influenced by a change in the Guidelines.
With respect to statement 19.1 and 19.2, which pertained to the allowability of amendments under Art. 123(2) EPC, the Committee indicated that both statements were neutralized after it became aware of acceptable alternative answers by which the amendments would not to be allowable under Art. 123(2) EPC by representing on unallowed intermediate generalization with respect to an embodiment in the description. The Committee further remarked that they expected consistency between both statements, with the answer varying depending on whether the ‘intermediate generalization issue’ was seen, but saw that both statements were often answered inconsistently.
General comments to the claims analysis part
The Committee commented that the claims analysis part with two technical cases is easier to draft since it is easier to create ‘black-and-white’ situations which fit the true-false nature of the pre-exam. As such, the claims analysis part is likely to continue to consist of “several” technical cases in the near future. The Committee further commented that such shorter technical cases may also enable the computerization of the pre-exam, although nothing has been decided yet in this regard.
In their written questions, tutors also indicated that they thought that the partitioning of the claims analysis part in several technical cases is very adequate for a true/false pre-exam and its purposes since it allowed the understanding of claims analysis topics to be tested without candidates being hampered by a vast amount of information and a lot of reading – which was a problem for many in 2018. Also, with the first case being quite chemical and the second being rather mechanical/structural, aspects from all technical fields were tested with an approximate equal-level playing field between the various technical backgrounds.
The Committee further commented on the high pass rate this year, contemplating whether this is due to the two technical cases but also considering that the legal part had a higher average score this year even though the difficulty was similar to previous years. Ultimately, the Committee expected the improvement in pass rate to at least in part reside in better prepared candidates.
In their written questions, other tutors also considered that the fact that the pass rate was surprisingly high not to be a problem, as it will probably have filtered out the candidates that have no chance of passing the main exam the year after. Some tutors expressed that they believe that keeping this format also for future exams will be much appreciated by candidates and tutors, and strongly support the current format of the claims analysis part.
During the meeting, one tutor expressed that with 90 % pass rate the discriminatory purpose is being missed, and that, in his view, the pass rate should correspond to that of the main exam at least, which means something like 66% in order for this to be a true early selection.
The Committee is not aware of any pre-exam appeals (note: appeals are addressed to and handled by the Examination Board and the Disciplinary Board), so the Committee expects that there are none or only few. (note: on one of the blogs, it was indicated that at least one person filed an appeal w.r.t. statement 2.3 and 4.1).
8) Concluding remarks
The annual meeting of EQE tutors and members of the EQE Committees took place on 17-18 October 2019 in Munich. The EQE papers were discussed in detail. The questions submitted prior to the meeting were addressed by the Committees when discussing the papers, and several other questions were asked during the meeting.
With this report, tutors summarize the papers and provide information of the points discussed at the meeting so that candidates can also find this information. In addition, our summaries and comments can assist when reading and interpreting the official Examiner’s Reports of the EQE2019 papers.
- T. Reijns, chairman of the D Committee, “Announcement on the EQE – Paper D” in epi Information 4/2018, page 25: “Over the last 4 years we have noticed a decline in the quality of candidates’ answers to the legal questions in Paper D. The candidates appear to be less well prepared on the legal documentation in the syllabus. It also appears that candidates focus more on the preparation for the legal assessment part (part 2) of Paper D than the legal questions (part 1). […] In order to be considered “fit for practice”, candidates must know the law and be able to apply it. Only being able to do one of these, is not enough. For this reason, the point distribution between the legal questions and the legal assessment will be floating with a variation between 60:40 to 40:60 from EQE 2020 onwards. Since the purpose of the floating point distribution is to encourage candidates to prepare well for both parts of Paper D, the distribution will not be announced before the date of the exam. Of course, the point distribution will be clearly indicated on the exam papers. ”