How to tackle paper B Chemistry

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How to tackle Paper B Chemistry

When: second day, afternoon

Duration: 3 hours from 2013 (formerly 4 hours)

General approach

Until EQE 2012, there were generally 50-55 marks for the amendments and 45-50 marks for the argumentation. From 2013 it is to be expected that there will be a higher proportion of marks for the argumentation because candidates will be provided with draft claims (which may or may not satisfy the requirements of the EPC). The proportion of marks from 2013 has been 30 marks for the amendments and 70 marks for the argumentation.

In order for this paper to pose a reasonable test of a candidate's ability it is unlikely (but not impossible) that any suitable amendment will be found entirely in the original claims. It is therefore most probable that it will be necessary to review the description and examples of the application to find a suitable amendment.

It is suggested, therefore, that one way of proceeding is first to identify in the description, examples and claims potential distinctions from the prior art, ideally consistent with the client's instructions. Note all distinctions and then select the best.

Sometimes, but not always, this can be done by reading through the paper and highlighting relevant words such as "preferably", "advantageously", "improve", "desirable", "problem", "disadvantage". These and other similar words all give hints as to possible sources of amendment. Also identify any statements in the prior art that appear to lead away from statements in the application.

Having identified a solution, prepare amendments to the independent claims. Bear in mind the solution for one independent claim may differ from the solution for another independent claim. That is, you may be able to avoid one or more of the restrictions required for a product claim in a corresponding method claim and vice versa. Do not restrict the claims unnecessarily and pay attention to the requirements of Article 123 EPC.

Once new independent claims have been drafted they should be considered from a number of aspects:

is the claim novel over each piece of prior art,
can inventive step be supported with suitable arguments,
is the claim limited in any unnecessary respect (i.e., will it catch potential infringers), and
is the claim consistent with any instructions from the client?

Check the client’s instructions to see whether you are expected to present any further independent claims. In all cases, though, use your judgment.

With satisfactory independent claims, it should be possible to draft amended dependent claims.

Finally, prepare your response, but do not leave this too late because the arguments for inventive step carry the greatest proportion of marks allocated to argumentation and come at the end of the response. Also, from 2013 there is a greater emphasis on the argumentation so far as marks are concerned. If necessary, cut down on the time allocated to providing a basis for the dependent claims and/or provide a basis for the independent claims only in the response and return to these aspects later if there is time.

Ensure your arguments are consistent with your amendments to the independent claims. Arguments in respect of a feature not present in a claim will lose many marks.

Remember to check the Communication from the EPO Examiner and ensure you respond to any specific matters (e.g., ex post facto analysis, unity or clarity) that require attention. Bear in mind the arguments presented in the Communication could be wrong.

Amendments

Independent claims

About 45 marks have been allocated to the independent claims up to and including 2012, but this has reduced to 30 marks for the claims as a whole from 2013. The EQE Examiners will generally allocate a maximum mark for each potential solution, with poorer solutions being capable of securing fewer marks. Poorer solutions are those which provide the client with reduced cover for the invention. Often, poorer solutions will only be capable of securing up to about 50% or less of the marks available for the best solution.

An independent claim which is considered to lack novelty will generally lose all of the marks available for that claim. If the claim is considered to lack inventive step then the claim will lose about 50% of the available marks. Claims considered to lack inventive step do not often arise.

Unnecessary limitations and statements lacking clarity and added subject matter are penalised according to the severity of the problem. A minor problem will lose about 5 marks, while a major problem can lose 10 marks or more.

Generally, it is advisable to follow the recommendations in the client's instructions, but to ensure the resulting claims satisfy the requirements of the EPC.

Dependent claims

About 3-8 marks of the total of 30 marks for the claims are usually allocated to the dependent claims. Very few of these marks are available for retaining existing dependent claims, and most marks are for identifying new features to incorporate into dependent claims.

Usually, those dependent claims that are not made redundant by the amendments to the independent claims should generally be retained.

Subject matter for new dependent claims can often be found in the examples.

You are generally not required to draft arguments in support of the patentability (novelty and inventive step) of the dependent claims, but you are expected to provide a basis for the subject matter of any new or amended dependent claims.

Divisional applications

Candidates are not generally expected to make an issue of divisional applications, but there can be a few bonus marks available.

In any event, you are not expected to draft claims for any divisional application.

Description

There is no need to propose amendments to the description.

Argumentation

The total marks for argumentation is now about 70 and the majority of these marks are for establishing inventive step. Clear, logical and convincing arguments are required in order to gain high marks. Remember to deal with any specific issues, such as lack of clarity, raised in the Communication.

Draft letter of response

European Patent Office
Dear Sirs
Patent Application No. ...
in the name of ...
With reference to the Communication received from the Examining Division, I enclose amended claims.
BASIS FOR AMENDMENTS (14-20 marks)
For each claim, whether independent or dependent, state clearly what amendments have been made and from which parts of the application they have been derived (e.g. "Claim 1 has been amended by incorporating the feature(s) of original claim(s) ..." and/or "Claim 1 has been amended by incorporating the subject matter from page .., lines .. to .., of the description").
If an additional independent claim is introduced, remember to explain why there is unity.
Also deal here with any issues, such as clarity, raised in the Communication.
NOVELTY (18-20 marks)
Demonstrate that the subject matter of each independent claim is novel with respect to the available prior art that has been cited against that claim. That is, briefly summarise the prior art and demonstrate that the claim contains at least one feature of distinction with respect to each of the prior art documents. A claim may have different distinctive features for different documents.
INVENTIVE STEP (30-38 marks)
Demonstrate that the subject matter of each independent claim possesses an inventive step over the available prior art.
In this respect, the EQE Examiners, just as EPO Examiners do, expect you to use the problem/solution approach which involves the following steps:
(a) Establish which one of the prior art documents is considered to constitute the closest state of the art for the claimed invention and why and identify the differences between the claim and the prior art (5-10 marks).
The closest prior art document is normally one disclosing subject-matter conceived for the same purpose or aiming at the same objective as the claimed invention.
(b) Derive the objective problem to which the invention is addressed, taking into account the effects achieved by the differences between the claimed invention and the closest prior art (8-12 marks for the technical effects and 8 marks for the objective technical problem). Ensure the problem you derive is indeed solved by the claimed invention.
That is, based on the differences you have established, discuss the resulting effects or advantages. Explain in detail how the differences actually achieve the effects or advantages you have identified.
Then define the objective problem that is solved by the effects and advantages you have identified and which is, therefore, solved by the claimed invention.
(c) Consider whether there is anything in the prior art that would prompt the skilled person faced with the objective problem to modify or adapt the closest prior art to arrive at something falling within the scope of the claim (5-15 marks). You should present all the arguments you can and not rely on a single argument.
Do this in a number of stages.
Starting from the closest prior art alone, apply the objective problem to the teaching of this document. What are the deficiencies of the closest prior art and how would the skilled person adapt or modify it? Is there any suggestion that the skilled person would adapt or modify the closest prior art to fall within the scope of the claim? At a basic level, it might be that the prior art contains no teaching that is relevant to the objective problem solved by the claimed invention. Alternatively, does the prior art lead the skilled person away from the claimed solution?
Next consider the closest prior art in combination with each other prior art document in turn.
Is it reasonable to combine the two documents? If not, explain why the two prior art documents would not be combined by the skilled person. For example, you can look for inconsistencies between the disclosures and teachings of the two documents. The documents may be in different fields or one may contain subject matter which is contrary to subject matter in the other. Always give reasons.
You should not rely solely on this type of argument.
Even if the combination is made, what is the disclosure and the teaching of the other prior art document? Is the teaching consistent with the objective problem? If not, why not? What would the combination give rise to? Does the resulting combination fall within the scope of the claimed invention? If not, what is missing? Consider not only what the skilled person might reasonably be taught, but also what the skilled person is not taught. Can you therefore conclude the claimed invention possesses an inventive step?
Very often it is not necessary to repeat this exercise for each independent claim because the objective problem is the same, but you do need to consider whether this is so.
There are no marks for requesting oral proceedings or interviews.

Revised: August 2014