How to tackle paper B EM
How to tackle Paper B E/M
When: Second day, afternoon
Duration: 3 hours from 2013 (previously 4 hours)
Up to EQE2012 there have generally been 40-50 marks for the amendments and 50-60 marks for the argumentation, but from 2013 there have been 30 marks for the amendments and 70 marks for the argumentation because candidates are provided with a draft set of amended claims which may or may not meet the requirements of the EPC.
In order for this paper to pose a reasonable test of a candidate's ability it has been unlikely (but not impossible) that any suitable amendment would be found entirely in the original dependent claims. It was therefore most probable that it would have been necessary to review the description and drawings of the application to find a suitable amendment.
In the past it has been suggested, therefore, that one way of proceeding is first to identify in the description and dependent 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 could 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 claim(s). Usually the previous characterising clause will move to the preamble. Do not restrict the claims unnecessarily and pay attention to the requirements of Article 123 EPC. For EQE it is often preferable to draft a claim which has a single means plus function statement in the characterising clause.
Once a new independent claim has been drafted it 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?
Consider whether a method claim is required in addition to an apparatus claim. If there was no method claim in the application as filed, check the client’s instructions to see whether you are expected to present one. In all cases, though, use your judgment.
With a satisfactory independent claim, it should be possible to draft amended dependent claims. From 2013, this should be a matter of checking and amending the proposed amended claims, but be aware that further dependent claims may also be required.
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. If necessary, cut down on the time allocated to providing a basis for the dependent claims and/or provide a basis for claim 1 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 claim(s). 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 or Art 84 EPC) that require attention. Bear in mind the arguments presented in the Communication could be wrong.
Up to 2012, about 35 to 40 marks have usually been allocated to the independent claim(s). The EQE Examiners 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 be capable of securing up to about 50% of the marks available for the best solution.
From 2013 30 marks have been distributed across the independent and dependent claims, the allocation of marks depending on the extent to which the draft independent claim(s) require further amendment in order to meet the requirements of the EPC.
An independent claim which is considered to lack novelty will generally lose 50% or more 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 are penalised according to the severity of the problem. A minor problem will lose about 10% of the marks available for the claim, while a major problem can lose up to about 50% of the marks.
Generally, it is advisable to follow the recommendations in the client's instructions, but in each of 2013 and 2014 there has been a need to remove subject matter from the (proposed) claim as well as to add subject-matter to the original claim. Removal of subject-matter requires justification in the argumentation based on various aspects of GL H-V, 3.
Ensure the preamble is based on features from a single prior art document. Avoid introducing unnecessary features.
Independent claims must be in the correct format. Independent claims not in the correct two-part form will lose 1 mark, while independent claims lacking reference signs will also lose 1 mark. What is the difference between passing and failing?
It is not unknown for some broadening of the independent claim(s) to be desirable, but if anything is omitted from the claim as filed, or if a functional generalisation is employed, this must be justified in the response under Article 123(2) EPC. If a claim contravenes Article 123(2) EPC you are likely to lose about 10-25% of the marks available for that claim.
Be wary of falling into the Article 123(2),(3) EPC trap. If you introduce added subject matter into a claim by way of limitation, that subject matter cannot remain in the claim because it contravenes Article 123(2) EPC. However, after grant the added subject matter cannot be removed without broadening the claim and therefore contravenes Article 123(3) EPC and the patent is invalid. If you fall into this trap, your claim will lose more than 50% of the marks available for that claim.
Negative definitions in claims, e.g., "means for preventing ...", are undesirable and should be avoided if possible.
Up to 2012 about 10-15 marks were usually allocated to the dependent claims. Very few of these marks were available for retaining existing dependent claims, and most marks were for identifying new features to incorporate into dependent claims.
From 2013 the examiners have more flexibility, including ensuring the proposed dependent claims meet the requirements of the EPC and proposing corrections where necessary. The marks, however, are distributed across the independent and dependent claims according to the nature of the problems set by the Examiners.
To obtain good marks for the dependent claims it has been essential to introduce new claims based on subject matter found in the description, but that is no longer the case and the final claim set may include more, the same or fewer claims than those in the proposed claim set. UNTIL 2012, EQE Examiners have often looked for preferred dependent claims directed to subject matter which they consider to be most significant. These preferred dependent claims attracted a higher proportion of the marks than others. Not all dependent claims were equal. While the concentration on new dependent claims has apparently come to an end, it still remains that not all dependent claims are equal and the number of marks allocated to a claim will depend on the problems to be dealt with.
EQE Examiners still require that dependent claims provide meaningful fallback positions for the client in the event the independent claim should fail. It is therefore essential to present dependent claims which provide good options both in terms of subject matter and in terms of structure.
Usually, those dependent claims that are not made redundant by the amendments to the independent claim(s) should be retained, but this is not always the case. For example, dependent claims may be cancelled where the subject matter of the original dependent claims is known from the prior art or where significant features are omitted from the original dependent claims.
Do not include an excessive number of dependent claims (say, ten to fifteen claims in total and never more than a total of fifteen claims): any claims in excess of fifteen will not be marked.
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.
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.
There is no need to propose amendments to the description.
The majority of the marks for argumentation 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 (28-32 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").
- Where an amendment is introduced which covers multiple embodiments then it is advisable to provide a basis for each embodiment.
- Depending on the nature of the amendments, you may need specifically to address the issue of Article 123(2) EPC. This is essential if you have broadened any aspect of an independent claim, employed a functional generalisation or where the amendments are of dubious admissibility. Article 123(2) EPC should also be considered where the passage providing the basis for an amended claim contains additional features not incorporated into the claim and arguments should be presented as to why these features are not essential. The three-part test from GL H-V, 3.1 is:
- (i) the feature was not explained as essential in the disclosure;
- (ii) the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and
- (iii) the replacement or removal requires no real modification of other features to compensate for the change.
- If an additional independent claim is introduced, remember to explain why there is unity between the two independent claims and why a further search is not required.
- However, other aspects of the GL may need to be addressed, such as GL H-V, 3.2.1.
- Also deal here with any issues, such as clarity, raised in the Communication.
- NOVELTY (4-6 marks)
- Demonstrate that the subject matter of each independent claim is novel with respect to the available prior art. That is, demonstrate that the claim contains at least one feature of distinction with respect to each of the prior art documents (including prior art acknowledged in the application). A claim may have different distinctive features for different documents. Bear in mind, where the prior art is not the closest prior art, the distinguishing feature can come from the preamble of the amended claim.
- INVENTIVE STEP (32-38 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 (about 7 marks). This includes discussing all the prior art documents in order to select the closest.
- It is not acceptable to say that a particular document is the closest prior art simply because it has the most features in common with the subject matter of claim 1. Generally you will have drafted your claim in this way. You need to choose the prior art document which represents the most promising starting point for the claimed invention and you need to explain why this is so. 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. What you can say is that a particular document is the closest prior art because it requires the minimum of structural and functional modifications, but you then need to explain why this is the case, for example by explaining how the closest prior art document has a similar use to the claimed invention.
- (b) Derive the objective technical 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 (7-10 marks). Ensure the technical problem you derive is indeed solved by the claimed invention.
- This involves returning to the application as filed and considering the features of the claimed invention as compared with the closest prior art.
- The first step is to identify the differences between the closest prior art and the claimed invention (1-2 marks). These should, of course, be found in the characterising clause of the claim.
- The second step is to discuss the technical effects or the advantages resulting from the differences you have identified (3-6 marks). Explain in detail how the differences actually achieve the technical effects or advantages you have identified.
- The third and final step is to define the objective technical problem that is solved by the technical effects and advantages you have identified and which is, therefore, solved by the claimed invention (2-3 marks).
- There are some points to bear in mind which may help:
- The objective technical problem must not be formulated so as to contain pointers to the technical solution to that problem. That is, the objective technical problem must not recite subject matter from the characterising clause of the claim because this gives rise to an ex post facto (hindsight) analysis of the invention.
- The objective technical problem is the aim and task of modifying or adapting the closest prior art to provide the technical effects provided by the claimed invention over the closest prior art.
- The objective technical problem that you formulate is most unlikely to be the problem originally stated in the application as filed. After all, you are now considering prior art which you were not aware of at the time the application was filed.
- Bear in mind the expression “technical problem” is interpreted broadly. The problem could be simply to seek an alternative to a known device or a known process which provides the same or similar effects or which is more cost-effective.
- (c) Consider whether there is anything in the prior art that would prompt the skilled person faced with the objective technical problem to modify or adapt the closest prior art to arrive at something falling within the scope of the claim (18-24 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 technical 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 technical 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 technical 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?
- Bear in mind that where a prior art document has two embodiments you need to consider each embodiment separately.
- If there are three prior art documents, additionally consider whether it is reasonable to combine all three documents. Such a combination usually gives rise to an ex post facto analysis provided there are sufficient differences.
- You must repeat this exercise for each independent claim (4-5 marks for subsequent independent claims).
- There have been years in which the EQE Examiners have considered there are two prior art documents which could equally be the closest prior art. In this situation, the EQE Examiners have expected arguments starting from more than one prior art document. It is believed this situation is unlikely to arise with any regularity.
- There are no marks for requesting oral proceedings or interviews.
Revised: August 2014