How to tackle paper A EM
About : This is an introduction on how EQE candidates should tackle the EQE
- 1 How to tackle Paper A E/M
- 2 Independent claim(s)
- 3 Dependent claims
- 4 Introduction
- 5 Proposals for separate applications
How to tackle Paper A E/M
When: Second day, morning
Duration: 3 1/2 hours
The first task in Paper A is to draft the independent claim(s).
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 claim(s). There is no formula for suitable claims, but the following should be borne in mind:
Claims should be in two-part form with required features from the single closest prior art document in the preamble and the inventive features in the characterising clause. About 2 marks can be lost for a claim in an incorrect form.
Claims should include reference numerals. About 2 marks can be lost for omitting some or all of the reference numerals.
For apparatus claims the EQE examiners generally prefer “means plus function”. That is, always explain how the various features interact.
Always seek to include positive restrictions rather than negative ones. That is, say what is present, not what is absent.
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.
At all times bear in mind the type of claim(s) required to give the client best protection. For example, consider the possibility of a method claim as well as an apparatus claim. However, do not draft claims in more than one category simply for the sake of it. Where a second claim is required, and this is quite often, the first claim is often worth up to 40 marks and the second claim up to 10 marks. Where only a single independent claim is required, this generally carries about 50 percent of the marks.
One way of drafting an independent claim is to set out all the required features and then to re-arrange them into the preamble and characterising clause after you have selected all the features you need.
Perhaps a better approach is to select the inventive feature for the characterising clause and to set this feature out in a means plus function form. Once you have done this you can select for the preamble only those features which are essential to support the characterising clause and which can be found in the closest prior art.
Once you have drafted your independent claim(s) 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 claim(s) 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 embodiments?
- Does the claim catch infringers?
- Does the claim contain any unnecessary limitations?
- Is the claim clear?
The EQE examiners generally grade independent claims according to the invention covered. One or two solutions will be preferred as meeting all the requirements and will qualify for full marks, but inferior solutions will only qualify for a lower number of marks, generally up to about 75 percent of the marks available for the preferred claim.
If you have chosen a solution which is not the best, you are likely to be able to recover a few marks by proposing a separate application to the correct invention.
A claim which clearly lacks novelty will be heavily penalised and could lose 50 to 60 percent of the marks for that claim. Best advice is to 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 of the available marks.
Covers all embodiments
You must ensure all embodiments described by the client are covered by the independent claim(s). If any described embodiments are not covered the claim will be heavily penalised, scoring at best the maximum marks available for an inferior solution.
This is a way of looking at a claim to check 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. 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. Unnecessary limitations can lose up to 50 percent or more of the marks available for that claim. Major unnecessary limitations are generally penalised by about 20-33 percent of the available marks for that claim, while minor unnecessary limitations are generally penalised less severely and may, for example, lose 10-15 percent of the marks available for that claim.
Lack of clarity is penalised in a manner similar to unnecessary limitations, depending on the severity of the fault. Lack of clarity can lose up to about 50 percent of the marks available for that claim.For example, a claim drafted in a manner which simply sets out a problem to be solved (rather than the solution of that problem) will be heavily penalised, while the presence of method steps in an apparatus claim will generally be less heavily penalised.
General comments on independent claims
It may be possible to generalise the client’s proposals and this can lead to a slightly higher mark where appropriate. However, in most cases you should be cautious about broadening a client’s disclosure.The client usually knows its own field (at least in EQE).
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.
As an observation, many candidates still pass Paper A even though they are awarded less than 50 percent of the marks available for the independent claim(s).
The second task in Paper A is to draft dependent claims. The dependent claims generally account for about 35 to 40 percent of the total marks and are, therefore, very important.
Dependent claims are assessed for content and structure.
With content, each dependent claim should have only a single additional feature in the characterising clause. Avoid including multiple additional features in a single claim. Also avoid claims to trivial features.
With structure, the EQE examiners are looking for a claim structure which provides as many useful fallbacks as possible. Include dependent claims generic to all embodiments, and which can therefore have extensive dependencies, and dependent claims specific to each embodiment, and which will have more restricted dependencies. Organise your claim dependencies to preserve as many options as possible for the client.
One way of establishing satisfactory structure is first to outline each proposed claim with a single word or simple phrase. Progressive dependencies can be indicated with indentation. Such an outline might appear as follows:
- Feature A
- Sub-feature AA
- Sub-sub-feature AAA
- Sub-feature AB
- Feature B
- Sub-feature BA
- Sub-feature BB
Once you have completed the outline it is a simple matter to draft a good set of dependent claims. Remember to include reference numerals.
Do not include an excessive number of dependent claims. Generally, the number of claims should be in the region of 10-15. Very rarely, and most often in the case of multiple independent claims, the number of dependent claims can be a little higher.
The third task in Paper A is to draft the introduction. The introduction usually accounts for about 10 to 15 percent of the total marks. General requirements for the introduction are:
- Introductory paragraph
- Description of relevant prior art
- Explanation of problem/solution
- Basis for independent claim(s)
The introductory paragraph must be consistent with the independent claim(s). You can ensure this by simply reproducing the first few lines of the independent claim(s). You should not include any limitation in the introductory paragraph that is not present in the independent claim(s). If you consider it essential to include additional material,do so by way of example. Keep this part short.
The background prior art provided is generally for your own benefit. It should not be necessary to include this in your answer.
Describe the prior art in your own words. It is advisable not to cut and paste. By using your own words 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. A paragraph or two is all that is required.
Use the material from the prior art or, more usually, from the information provided by the client to establish one or more problems or disadvantages associated with the prior art and solved by the invention as set out in the characterising clause of the independent claim(s). Do then explain how the or each problem is solved by the invention. This is effectively the same as stating the advantage(s) of the invention.
Often about 3-5 marks are awarded for discussing the relevant prior art, while 7-12 marks are available for discussing problem/solution.The solution can also be expressed as advantages resulting from the invention as claimed. Remember, where there are two independent claims,to discuss problem/solution separately for each independent claim.
You then need to present a statement which provides a basis for each independent claim. You can do this in a number of ways, for example by referring to the invention as defined in claim 1, or by repeating the entire subject matter of the claim.
There is no need to provide a basis for any of the dependent claims.
Proposals for separate applications
The final task in Paper A is to consider whether you wish to put forward any proposals for separate applications. Where they arise,these are often marked as bonus points, with up to 5 points available for each properly presented proposal.
As previously explained, you are not expected to propose significant numbers of further applications.