Friday, 4 March 2011

EQE C 2011: a solution

Ok. This is my solution. Please note that this is just my provisional opinion. I didn't write down any of the attacks, but just went through the annexes to find features and arguments. All the notes I made are in the margins of the exam paper.

If you don't agree with me, please let me know. If you use the comment option of this blog, please choose some identity. It is difficult to discuss with multiple persons having the name Anonymous simultaneously. Of course, you can also send me an e-mail if you don't want to talk about this in public.

Again: This is just a solution provided by some tutor who thinks that he doesn't need to use six hours and empty paper to make the exam. The real solution will not be available until the compendium comes out (August 2011). You can still pass this exam if you do not have the same attacks and you can also fail having the same attacks.

Claim 1:A6+A2
Claim 2(1):A6+A2+A3
Claim 3:Nov.A5(54(3)), Nov.A6
Claim 4:Nov.A5(54(3)), Nov.A6
Claim 5(4):A6+A4
Claim 6(5), 2gr:Art.123(2), (A6+A4)
Claim 6(5), 4gr:A6+A4
Claim 7(4):Nov.A5(54(3)), Nov.A6
Claim 8:A3+A4 A4+A3


  1. We have already discussed this matter over E-mail, but I hope you are wrong about A5. There is nothing in Paper C that even implies that the PCT publication of A5 actually entered theEuropean phase, which is necessary for it to be regarded as a 54(3) document.

    In my opinion, the C committee has done a severe error if they award marks for 54(3) attacks based on A5, simply because there is no basis in the paper that the PCT application ever entered the European phase; moreover, the 31 month time limit for entering the European phase was almost a year and a half overdue.

    In many old Examiner's reports, it is emphasized that candidates should stick to the facts provided in the paper, and not make own assumptions. If A5 is used for 54(3) attacks, it must be assumed that the applicant of A5 validly has entered the European phase, and assumptions are not supposed to be made.

    I know Joeri's opinion on this matter (and I am afraid he is right), but it would be interesting to read other comments concerning the matter of the usability of A5 as a 54(3) document...

  2. Hello Joeri,

    I agree with everything you indicate except the attack against claim 8: I have A4 + A3 and not the other way around.

    The claim object is a tube suitable for a heat exchanger of the type of claim 4. Hence it is best if the tubes are in aluminium and if they are brazable. A3 discloses channels that have the same function as the tubes but are not really tubes, they are not in alluminium. A4 discloses tubes in aluminium which are brazable.

    By the way, your course has been very useful for me.


  3. Also, they are two embodiments in A5: the radiator and the condensor. Each could be used to attack claim 4 (and 7).

  4. Hi Christophe,

    Both A4 and A3 disclose tubes for heat exchangers. If the tubes with a planar surface in A1 are tubes, then also the channels in A3 should be considered tubes. The fact that the tube of A3 already has the planar surface makes it structurally more similar to the claimed object.

    I have been watching the discussion on the EQE-forum and was very surprised that everyone there seems to use A4 as closest prior art. I see know, that I completely forgot to look at the aluminium.
    Taking that into account, I think you are right in selecting A4 as closest prior art. Just making a planar surface in the tube of A4 is much easier than replacing the core material of the channel of A3 (when you remove the material from the channel of A3, there is nothing left).
    In addition, the arguments for problem-solution are nicely provided in A1 and A3. But of course, the paper was designed in such a way that the arguments for adding manganese to the A3 channels are also present.

  5. In response to your second comment, I don't think that they are expecting 2 additional attacks. We already have 13(!) attacks.
    The radiator and the condensor in A3 together form one embodiment (one heat exchanger assembly). They also use the same tube. It is not so easy to separate the heat exchanger into two separate embodiments.

  6. They indeed are only one embodiment of A5 but don't you wonder why they provide us with a device comprising two heat exchangers (a radiator and a condensor)? If you look at A1 [0002], both radiators and condensors are listed as examples of heat exchangers. Furthermore, two linked elements of a device can be considered separately. Imagine a hybrid car with a thermic motor coupled (and sharing a rotation axis with) and an electric motor... each motor could be used against different claims or (why not?) against a single claim on a motor...

  7. Small question for you Martin: You are at the last day of the opposition period for A1 and your client just asked you to file this opposition (the case of this year's paper). He provides you with 6 documents, amongst which a PCT application which is potentially a 54(3) document (31 months expired, published in a EPC language, designates EP). You do not have access to the internet (up to there, still this years scenario). What do you do? You decide not to use the PCT document because you have no proofs that it entered the EP phase?

  8. Well, I get your point. However, a pct publication will never ever be a Europan prior right. If only the pct publication is filed, and the possible document that constistute the European prior right is not, I wonder whether the opposition division would consider the actual prior right document as duly filed...

    In for example T550/88, the board stretches that only European patent applications are prior rights in the meaning of Art 54(3). In the present case, the opponent had only filed documents concerning national prior rights within the opposition period.

    In my opinion (I have not found any articles, rules or case law supporting this), providing evidence that a pct application has entered the european phase after the opposition period is not more allowed than filing the actual European application after the opposition period.

    However, if mark are awarded for 54(3) attacks based on A5, my main objection is the difference between the "instruction to candidates", where it is stated that "Candidates shall accept the facts given in the examination paper and limit themselves to those facts".

    It is a fact that the PCT publication was not published at the priority date of A1. It is also a fact that a PCT application cannot ever be a prior right.

    It is, however, not a fact that the pct application actually entered the European phase, and candidates are supposed to limit themselves to fact given in the examination paper.

    If candidates are to speculate on such matters, then points could also be awarded for attacks based on A7 (an imaginary publication that might exist), which comprised all features of all the claims. Of course, A7 was not mentioned in the C paper, but neither was it mentioned that A5 entered the European phase...

  9. Good news for Martin :)

    One of our candidates pointed me to a sentence in A2 that seems to indicate that A5 is not novelty destroying for claim 3.
    Later this week I hope to find some time to write about product-by-process claims and how to attack them. Then I will discuss this issue in more detail.

  10. Yes Joeri, A2 lines 16-17! Now I remember why on my summary sheet the mention "54(3)" is striked through for claim 3 :-) But I don't want to spoil your next post.

  11. Hi Martin & anonymous,

    I sympathise with you (a bit) over the Art.54(3) issue, but I think you are unlikely to be happy with the outcome. Hope you pass regardless of this, or have a good appeal - could well be a winnable point you have

    Not having all the facts?...It was common in the past to use an Art.54(3)/(4) '73 attack & specify that it was for overlapping states where designation fees had been paid (as you generally didn't know this information), so it's not 'unhead of' in EQE to require more facts than given, or to specify a check.

    And to be honest, the 'fit-to-practice' point is important here - in real life what do you do? If you weren't sure, and couldn't check, you get the document in the opposition procedure (then it is not late filed) and worry about proving it's prior status later with supporting evidence. And remember you are the opponent here, shouldn't you make the attack when you are not sure?

    The only downside is that you waste some time, but then if you spend 15mins debating whether it is usuable or not, then you waste the time anyway without any output.

    @anonymous - 7/3 10.37pm - the situation is that either A5 validly entered the regional phase or it didn't - i.e. it is factual. The document itself is the prior art (or not) - but you may supply evidence at a later date (like when you have a prior use situation, and offer Mr. x as a witness, or an affadivit later on in the procedure - this is very common in EQE - so it is not a stretch to do the same for the checking on the Art. 54(3) issue)

    For the future (if you need it)...

    As the exam is the only contact with the examiners, an answer that is blank for the Art. 54(3) issue catches those who had no idea that it 'could' be prior art (the people who it was meant to catch) but also those who considered it, knew it could be prior art, but chose not to use it due to unclear entry to EP phase - i.e. better candidates.

    If you are not sure, and the choices are either put in the attack, or leave it out - is it not best to make the attack with a proviso that you check about validity - because if it is expected to make the attack and you have only blank pages, then how can the examiner give you points?

    Good luck to all, looks like a pretty tough & long paper this year