Paper DII
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Contents |
Exam Details
When: First day, afternoon
Duration: 4 hours
Purpose
The purpose of Paper D is to assess the ability of candidates to answer legal questions and to draft legal assessments.
Paper DII comprises an enquiry from a client requiring an answer in the form of a legal opinion. Emphasis is on strategic questions and less formalities issues. The candidate has to advise his client of the route which results in the best position of the client for his own applications and the most favourable position with respect to his competitors.
Candidates are expected to use the legal opinion they draft to explain the legal consequences of the situation as described. Candidates are expected to demonstrate their ability to deal with a complex industrial property law case involving fundamental issues of patentability, rights of inventors, inventions as property and third party rights, for example as in Articles 52 to 89 EPC, the corresponding articles in PCT, any legislation relating to Community patents, the Paris Convention, and the relevant laws of the contracting states.
Methodology
The use of a time line is strongly advised, it is fundamental to the answer. The time line (date display) should also be handed in at the end of the exam to show the marker the basis of the candidate’s answer. A wrong date in the answer may be regarded as an incidental error that is not regarded as a sign of “unfit for practice”. However, use of a wrong provision of the law is far more serious.
Approximately half of the points in a DII Paper is given for a reasoned analysis of the situation; crucial aspects are:
- effective dates of claims,
- priority claims,
- subject-matter in the description,
- relevance and effect of prior art on the patentability,
- ownership of the patent rights,
Approximately the other half of the points is given for a reasoned advice to the client based on the analysis of the situation; important aspects are:
- indication of threats;
- how to improve the position of the client,
- actions against the competitor,
- resolve conflicts with the competitor,
- exploitation.
Citation of the legal basis is not required in the DII Paper; the legal basis may be given but no points are given. Sometimes the Model Answer in the Compendium cites the legal basis, but this is done for explanatory reasons only.
Candidates should use the facts as given and seek to use all the facts. The DII question is unlikely to contain redundant or irrelevant information. Significant facts or scenarios are included for a purpose. While candidates are generally expected to accept the facts presented to them, when those facts indicate the need for specific enquiries, they should say what those enquiries would be, and what they would hope to demonstrate from those enquiries.
The arguments must be given completely: this is the best way to score points. The candidate must show that he understands the problems and knows how to deal with them. Citation of the correct legal basis without correct advice to your client gives no marks.
Start with reading the client's letter fully and attentively. Sometimes a later paragraph contains a remark which sheds a different light on information in an earlier paragraph. Try to use all information in the letter.
Upon reading, mark the inventions: take note for which inventions patent applications have already been filed: establish the effective dates of subject-matter for each of these applications. Consider filing patent applications for inventions which are described by the client using sentences as: "Recently, we found out that ..."
Recurring Issues in DII Papers
Most DII Papers have problems with priority.
Frequently, there are problems with the successor in title [see Art.87(1) EPC]: a subsequent application can only validly claim priority if the applicant when filing the subsequent application, is the applicant of the priority application or the successor in title of the applicant of the priority application. The Guidelines A-III, 6.1 extensively deal with this situation.
A priority claim is valid only if the priority application and the later application relate to the same invention. The Enlarged Board [G2/98] has given a strict/narrow interpretation of the same invention.
Another problem with priority is a problem with the first application in the sense that an applicant can only claim priority claimed from an earlier priority application from the same applicant describing the subject-matter for the first time.
Most DII Papers incorporate a prior-right situation. In particular for an international application which has not been published in English, German or French (but in Japanese, Korean, Spanish or one of the other international publication languages), such application can become effective as prior right only if the international application duly enters the regional phase before the EPO and the requirements of Art.153(5) and Rule 165 EPC have been met (payment of the entry fee = filing fee).
Disclaimers are also sometimes an issue. According to the Enlarged Board of Appeal [G1/03 and G2/03], a disclaimer may be allowable to restore novelty by delimiting a claim against a prior right [state of the art under Art.54(3) EPC].
Be alert for non-prejudicial disclosures in the sense of Art.55(1) EPC and ask yourself: has the 6-month period for filing a European patent application lapsed already?
In many DII Papers there are problems with enabling disclosure: make sure you know how to deal with such subject-matter. Note that the requirements of Art.87 EPC that the same invention claimed in the priority application and the later patent application are fulfilled only if the priority application disclosed the invention claimed in the subsequent application in an enabling manner. According to established case law [T193/95], the priority document must disclose the invention claimed in the subsequent application in such a way that it can be carried out by a person skilled in the art
Remember the 12-month grace period in the USA if your client also desires protection in USA.
Be aware. that your advice to the client falls under the provision of the attorney evidentiary privilege [Art.134a(1) and R.153 EPC]. By adding such a statement to your advice, the professional representative is bound to not to disclose information accepted by him in confidence in the exercise of his duties.
Marking
As compared to Paper DI, marking in Paper DII is more liberal.
The smallest entity of points is 0.5 points.
Normally, up to 3 bonus points can be scored, but the total of the marking will not exceed the maximum number of points.