How to tackle paper A Chemistry
- 1 How to tackle Paper A Chemistry
- 2 Independent claims
- 3 Dependent claims
- 4 Introduction
- 5 Proposals for separate applications
How to tackle Paper A Chemistry
When : second day, morning
Duration: 3 1/2 hours
The first task in Paper A is to draft the independent claims. Since there will be several independent claims, you should begin with the claim considered to be most important.
The independent claims generally account for about 60 to 75 percent of the total marks and are, therefore, crucial to passing this paper.
It may seem obvious, but the first step in this task is to read the entire paper at least once, including the information from the client and all the prior art. During your reading of the paper, make a note of possible inventions and their strengths and weaknesses so far as the client is concerned. Also note any particular requirements of the client. Bear in mind the objective is to provide the best possible scope of protection for the client in the light of all the circumstances of the paper.
After reading the paper and noting possible inventions you may well have several options from which to choose. You should choose the option which gives the client the best protection, and not, for example, the option you believe will be easiest to draft.
You should then set out the features of your independent claims, one claim at a time. There is no formula for suitable claims, but the following should be borne in mind:
- Always seek to include positive restrictions rather than negative ones. That is, say what is present, not what is absent. However, there are times where a disclaimer may be required.
- For EQE it is necessary to draft a claim that could go through to grant. Not the type of claim you may draft in real life, but one of broadest scope consistent with the client=s wishes and the prior art.
- At all times bear in mind the type of claims required to give the client best protection. For example, where available a product claim will generally give better protection than a method claim or product-by-process claim and claims to an intermediate may well improve the overall protection. Drafting a claim in the wrong category, for example product-by-process rather than simply to a product can lose about 60 percent of the available marks for that claim. Clearly it is more difficult to enforce a product-by-process claim and candidates are expected to understand this and provide the best form of protection available for their clients. Independent process or method claims can provide useful additional protection to an independent product claim. A use claim can be valuable where a product can be adapted for a particular commercial use, but beware a use limitation in your broadest product claim. However, do not draft claims in more than one category simply for the sake of it.
- An excessive number of independent claims can lose marks, for example up to about 10 marks. Candidates often draft an expected independent method (or use) claim, but then go on to draft further independent claims of the same category of different scope. This is contrary to Rule 43(2) EPC and generally loses a number of the available marks.
Once you have drafted your independent claims you should stop and review your work. One of the essential skills of a European patent attorney is an ability to criticise their own work. Consider the independent claims from a number of different aspects:
- Is the correct invention claimed?
- Is the claim novel over the prior art?
- Does the claim arguably possess an inventive step?
- Does the claim cover all intended embodiments?
- Does the claim catch infringers?
- Does the claim contain any unnecessary limitations?
- Is the claim clear?
Clearly if you have not claimed the correct invention you can expect to lose a very substantial number of marks.
A claim which clearly lacks novelty will be heavily penalised and could lose 50 to 80 percent of the marks for that claim. Ensure each independent claim is clearly novel.
This does not always arise, but where a potentially obvious feature is incorporated into an independent claim as the inventive feature, the claim can be penalised by up to 50 percent or more of the available marks.
Covers all embodiments
You must ensure all embodiments described by the client are covered by the independent claims as a whole. If a claim is required to cover multiple embodiments, then omission of an embodiment could lose all the potential marks for that embodiment. That is, for a claim required to cover three embodiments, one-third of the available marks will be lost for each embodiment not covered.
This is a way of looking at a claim to check whether the claim (e.g., product, product-by-process, process) drafted is best having regard to the protection required by the client, or whether there are any unnecessary limitations which may enable potential infringers readily to design around the claim. Always consider what is best for the client in the circumstances. Do not include anything in a claim that is not essential. Consider every word: each word in excess of the minimum necessary could lose marks.
Unnecessary limitations are assessed by the EQE examiners depending on the impact of the limitation on the resulting claim. Major unnecessary limitations are generally penalised by about 50-75 percent of the available marks for that claim, while minor unnecessary limitations are generally penalised less severely and may, for example, lose about 33-40 percent of the marks available for that claim. Consequently, unnecessary limitations can have a very significant effect on the number of marks awarded for an independent claim.
Lack of clarity is penalised in a manner similar to unnecessary limitations, depending on the severity of the fault.
For there to be unity between independent claims there must be one or more special technical feature(s) common to all the claims and the special technical feature(s) must define a contribution that the claimed invention considered as a whole makes over the prior art (i.e., the special technical feature(s) must be new and inventive)
General comments on independent claims
It is generally not advisable to broaden the client=s proposals. The client usually knows its own field (at least in EQE). Claims should be supported by the information you are given and should not be speculative.
Given the various penalties, it is very important to ensure a claim is novel and covers all embodiments. Lack of novelty loses significantly more marks than a single minor unnecessary limitation.
The second task in Paper A is to draft dependent claims. The dependent claims generally account for about 10 to 25 marks and a good set of dependent claims can make the difference between passing and failing.
A good dependent claim can score up to 5 marks, while others generally score 2 marks. Dependent claims should provide good fallback positions and trivial claims score no marks. Claim dependency can also be important.
Candidates should be careful when drafting dependent claims to an independent claim to a product "consisting of .." because no further components can be added in dependent claims.
Do not include an excessive number of dependent claims. A "shot-gun" approach is neither helpful nor well-received by the EQE Examiners. An excessive number of dependent claims can be regarded as a sign of weakness and leads to a candidate wasting time that could be used more effectively elsewhere. Generally, the total number of claims should be in the region of 15-20.
The third task in Paper A is to draft the introduction. The introduction usually accounts for about 10 to 20 marks. General requirements for the introduction are:
- Introductory paragraph
- A summary of the relevant prior art
- Explanation of the differences between the prior art and the invention
- Explanation of advantages of (or problem solved by) the invention
- Basis for each claim
As with dependent claims, a good introduction can make the difference between passing and failing this paper. Consequently it is worth spending some time writing the introduction.
The introduction must be consistent with the claims. You should not include any limitation in the introduction that is not present in the relevant claim.
Do not simply cut and paste the prior art, but instead use your own words at least in part. In this way you can describe the prior art in a manner that is most relevant to the invention and you can demonstrate your understanding of the subject matter. You need to summarise the prior art, establish the differences between the prior art and the invention, and explain the problem solved by the invention.
You then need to provide a basis for each claim in turn. You can do this by cutting and pasting the description or descriptions provided by the client, but you do need to edit the client=s material to ensure it is consistent with your claims. There is no need to present any examples in your introduction.
Proposals for separate applications
The final task in Paper A is to consider whether you wish to put forward any proposals for separate applications. Such proposals for separate applications are not often required. Candidates are certainly are not expected to propose significant numbers of further applications.
Notes to the Examiner are often seen as a weakness in a candidate, indicating lack of understanding or indecision, and are generally not helpful