Thursday, 28 February 2013

Paper C EQE 2013 - Our solution

Three of our tutors, Sander van Rijnswou, Joeri Beetz, and me, independently made the exam. We all had exactly the same solution.
We made it a bit fast; errors can never be ruled out; some other attacks may have been intended too, or at least be awarded some marks. For that we have to wait until the exam committee publishes their model solution and comments.

Check out our solution by reading further.

Jelle Hoekstra


A1 is a divisional of a divisional. No priority, effective filing date of claims 1-4: filing date A1: 25-4-05.
A2-A5: all published before, useable under Art.54(2)
  •  Description [017]: Added subject-matter; filed A1 extents beyond its direct parent Art.100(c), Art.76(1)
    The whole chain of parents should disclose the matter. Not the case: the specific ratio of 3:1 is not in direct parent (but in grand-parent and in filed A1). [016] is broader and no basis for more specific ratio.
  • Claim 1: Novelty A5 (via direct reference to A2)
    A5 misses cuzinal, but has clear reference to A2 for 'any suitable metal for die-cast containers'. A2 discloses cuzinal in a single list, so novelty attack.
    In principle Inv. step A3+A2 is also possible; probably not required for claim 1.  
  • Claim 2(1): Inv. step A3+A2
    In principle choice of using A3 or A5 as closest. A3 has most and is related to the whole idea of claim 2 of using elastic valve, making A3 closest. A5 is not-elastic and uses different approach. A3 misses  cuzinal; we take cuzinal out of A2 for same reason as indicated in A1 [13]. 
  • Claim 3(1): Inv. step A5+A2
    Again, a choice of using A5 or A3 as closest. Now we go for A5. Discloses everything of claim 1, the coated fabric can be taken out of A2  for same reason as indicated in A1 [12]. A3 is problematic. Misses already cuzinal for claim 1 (not  a real problem) but actually does not really like the approach of claim 3 (seems to be a teaching away in A3 [0006]). So, A5 is better starting point.  
  • Claim 4(ind) - two options, separate attacks but both Inv. step A2+A4
    A2 seems a good starting point as closest prior art. Cuzinal is preferred. discloses the igniter, discloses  the desired options for the gas generating composition, but in 3-list form; so no novelty attack. A4 discloses the two preferred choices for desired effects indicated in A1 [14], [15]. 
  • Claim 5(4) - two options, both added subject-matter
    Same reasoning as for the attack on the description. Seems strong enough not to attempt other attack. Difficult to continue with the IS A2+A4 attack of claim 4: in principle A4 discloses the ratio, but it does not seem to disclose the effect of A1 [017] - clean combustion, small amount of toxic gas. Difficult to find a good other attack and probably time was gone by now anyhow.


  1. Before the beer clouds my mind:
    Clm 1 Nov A5(with A2); IS A3+A2(to set up clm 2 attack;
    Clm2 IS A3+A2;
    Clm3 IS A5+A2 (A2 not incorported in A5 for clm 3)
    Clm4 nitrate and sulphate& Clm5 IS A2+A4

  2. I had:
    clm 1: IS A3+A2 IS A5+A2 (for specific section of A2 indicated; no support that alloy = metal, cusinal is the "any metal")
    clm 2: IS A3+A2
    clm 3: IS A5+A2
    clm 4: both alternatives IS A2+A4
    clm 5 - A100(c), G1/06

    1. I agree with you for the IS attack on Clm 1 on the basis of A5+A2. Cuzinal is not a metal but an alloy and no support is given for considering it a "metal".

    2. Indeed it does not seem to say it, and with hiodsight it may have been better if it had stated it somewhere that alloys are seens as metals, because that is the case. It is clear that cuzinal is made of metals copper and zinc.
      To be honest, it is extremely well-known (or should be) to all candidates in the exam that most things we call metals are not pure metals, e.g. the coins you use.
      It is too far fetched to say that something which is clearly what you are looking for is not it because it does not literally state it. You could have just stated that cuzinal is a metal or otherwise that you interpret it to be a metal since it is made of metals.

    3. to Jelle Hoekstra: I can't fully share your view since A2 discloses a metal (aluminum) and alloys (so explicitly defined). The question to me was to decide whether the reference to "any metal" of A2 was including - clearly and unambiguously - also alloys or, in the light of CGK, the latter should have been regarded as equivalents (this being a matter of I.S. indeed). In my understanding the lack of this definition was decisive since in two other cases of this paper an explicit definition was provided, for Nylon e PET though it is well-known that they are respectively a polyester and a polyamide.

    4. Clearly it would have been better had it stated it, but it does not seem to have done that, unlike for instance C2011 where it stated that the term aluminium in the art also includes aluminium alloys.
      This then causes a few candidates who spot this (most will have totally not seen this) with an awkward choice. I would have argued that I interpret an alloys of metals to be a metal. If you make clear you do not know that, you could go for inventive step.
      Please be aware that information taken from the common general knowledge can be used in novelty if it is related to definitions/interpretation as here was the case.

    5. I agree, in principle, with you. In a real case I would have drafted a novelty attack. Being in EQE, however, I have decided not to rely on considerations regarding cgk if not explicitly mentioned in the paper (also on the basis of past papers where, if necessary, a definition from cgk was provided).

  3. I did:
    clm1: A5 Nov (I thought reference in A5 to A2 was specific enough in itself to have a novelty attach on based on A5 alone), and A3+A2 IS
    clm2: A5+A3 IS
    clm3: A2+A3 IS (did not use A5 since I thought it was a teaching away concerning the resin)
    clm4: A2+A4 IS, (two different but similar attacks due to "or"-claim)
    clm5: added SM, did not have time for another attack
    I am quite sure there were some more attacks to do on most/all claims but I didn´t have time.

    1. Now I remember I also did attack Description on Added SM Art. 100(c) /Mary

  4. My solution:

    Description: Art. 100(c)
    Claim 1: N A5 (clear Ref. to A2)
    Claim 2: IS A5 + A3
    Claim 3: IS A5 + A2
    Claim 4S: IS A4 + A2
    Claim 4P: IS A4 + A2
    Claim 5(S/P): Art. 100(c) and IS A4 + A2

  5. I did:
    Claim 1: A5 novelty, A3+A2 IS
    Claim 2: A3+A2 IS (would have additionally done A5+A3 if I had more time)
    Claim 3: A5+A2
    Claim 4S/P: A4 novelty (just because I had time. Argued that the lists are "not long enough.." etc..)
    Claim 4S: A4+A2 IS
    Claim 4P: A4+A2 IS
    Claim 5 S/P: Art. 100c), 123(2) G1/06
    Claim 5+4 (if 1:2-1:5 amended): A4+A2 IS

    1. be careful: Art.76(1) extension is a different violation of the EPC than a Art.123(2) extension. As the client's letter indicates the part is added in the application as filed, the correct legal objection is under Art.100(c) + extension beyond earlier application (Art.76(1)).

    2. you are right, I did this one not correct. I argued in line with Art. 100c), Art. 76(1) and G1/06 but then wrongly concluded that there is thus an Art. 123(2) extension. Hope it will cost me not too much points..

    3. I think A123(2) also applies, as there is no basis for claim 5 in the application as filed (i.e. para [0016]).

      This means, claim 5 can be attacked on the basis of both A76,G1/06 and A123(2)

  6. And here is mine:

    Claim 1: Novelty A5. IS A3+A2
    Claim 2: IS A3+A2
    Claim 3: IS A5+A2
    Claim 4: IS A4+A2 (two partial problems)
    Claim 5: Art. 100(c)

    Claims 2 and 3 were tricky; There was a well hidden teach-away in A4, that some component in A5 in combination with guarinine produced poisonous gas, which would make the result of A5+A2 unsuitable for the purpose as an airbag. Did it anyway...

    Also, I found it hard arguing for the choice of CPA for both claims 2 and 3. A3 and A5 seemed just as suitable as CPA.



  7. oh, please change "A4+A2" above into "A2+A4"

  8. I don't think that the combination of A5 + A2 is unsuitable for an airbag, since the feature of A2 which is to be incorporated into A5 is the nylon resin (and not A2's powder composition). So the resulting combination A5 + A2 still uses A5 (unspecified) composition, which should be OK for obvious reasons.

    1. I agree. Negative statements should be analysed starting from the system of D1, focussing only on the sub-module you want to take out of D2, and then check if that sub-module technically would seems to work in D1.
      If you would only take the nylon out of Annex 2, there seems to be no negative influence by the 'explosives' not liking one another.

    2. (Stefan)
      And what do you think of rather attacking claim 3 by a combination of A5 and general technical knowledge as stated by the respective "Nylon-coating" passage of A2? I deem it difficult to argue why a man skilled in the art, in order to solve the underlying problem (higher heat resistance), would consult a document relating to "pyrotechnical gas generators" as A2. Further, the respective paragraph of A2 seems to refer to different technical teaching (not related with the direct topic of A2) well known in the art (wording: "usually").

    3. The coating gives a beter heat resistance, see A1 [0012] which is clearly desirable for airbags with chemical gas generators which get hot.
      I think it is acceptable to argue that the skilled persons would consult a magazine on automotive safety. The title of the article A2 is "Pyrotechnical gas generating systems". A5 uses a pyrotechnical system and gets hot. It is a fair argument that the skilled persons will quickly check further to see if this pyrotechnical system of A2 deals with pyrotechnical systems for air bag. It does, see A2 [0001].
      To be honest, I see no difficulty in arguing this. This holds even more since A5 refers to A2, although for the housing.

  9. cdling:

    Yes, you are right, I did A2+A4 for claim 4.


  10. What about added subject-matter for claims 2 and 4 as additional attacks?

    Claim 4 does not say that the igniter is IN THE HOUSING as required by [0013]. Otherwise it wouldn't have the benefits being listed at the end of [0013]

    Similarly, claim 2 does not specify that the elastic membrane is made of silicone, as required by [0010] to have a "increased strenght".

    I did the IS attacks as well for these claims, but also objected them with added subject-matter.

    1. The claims seem to have been there on filing; no reason to believe they were not always there (with excpetion of claim 5); so seems no added matter.

    2. Ok, thanks! Wasted time for them then.
      Hopefully the commitee agrees with you on the attacks, so passing is possible regardless on those useless objections.

  11. My solution:

    Art. 100(c) added matter in description and claim 5

    1. A5, A3+A2
    2. A3+A2
    3. A5+A2
    4. A2+A4 and A2+A4 (for the two options)
    5. A2+A4

  12. Here's mine:

    1. A5
    2. A5+A3 (sadly I missed the teaching-away argument against PET cushions in A3 [0006])
    3. A5+A2
    4. A2+A4 (for the two options, although with different problem-solution arguments)
    5. 100(c) (I'm not sure that the A2+A4 attack was possible, since the effect/problem disclosed in A1 [0017] was not clearly specified in A4 [0010])

  13. Have to challenge the novelty attack of claim 1 on the basis of A5. A5 lacks the control unit included in the module. In A5 the "safety processing unit 1" i.e. the control unit is in the vehicle i.e. not in the module, like the Claim 1 defines.

    1. And how is the "module" defined?

    2. In my opinion you can call any combination of the three elements that work together to function as an airbag as being the airbag module. There is nothing in claim 1 that limits them to a specific form/combination of a module.

    3. Ok. Does this mean that one must use the "suitable for" -argumentation in this connection (for control unit)?

    4. The control unit is not defined further in claim 1 at all. This gives quite some freedom. The strongest argumentation is where you base it on what the description of Annex 1 says about the control unit, that would also destroy any possible limitation based on the description. A1 [0009] states 'a control unit to control activation of the airbag'. You can argue that the safety processing unit 1 in A5 does this, see A5 [0004] - activate is mentioned in the third sentence.

  14. 1st and 2nd line of par. [0002] of A1.

  15. Claim 3: I thought A3 + A2 provided a better argument. A3 teaches that (non specific) coated polyester is unsuitable as it isnt flexible. However A2 teaches that polyester specifically coated with polyamide(nylon) is both flexible (unlike the unspecified coatings) and flame retardant, hence overcoming the problem identified in A3 and providing an additional benefit. Therefore there is motivation to combine these two documents.

  16. A3 is restricted to driver's air bag. A2 is not restricted to driver's air bag. A3 insists in the difference between passenger and driver's air bag. In other words, in my opinion, if I look for a document I would choose one that is a driver's air bag as A3, because there are differences with passenger's air bag (A1),as the same A3 mentions. A2 as closest prior art, in spite of not comprises the valve, it is not restricted to driver.

    So it would be illogical to choose A3 as closest prior art when the same A3 shows manufacturing differences with passenger's air bag (one mounted on steering wheel, the other in dashboard and one is smaller than the other).

  17. I agree with Alice on claim 3 : A3 + A2 seems a more straightforward combination. Even if from A3 there are 2 differences, they are not synergistic ( I did partial problems ) and involve a choice of material Of housing (cuzinal) and a resin coating. Starting from A5, the skilled person would need to ditch the PET , otherwise He would end up with a bulky , non flexible bag, which I believe is not suitable for the claim ( not being able to fold as shown in A1 ).

  18. A further reason for choosing A3+A2 for claim 3 is that there was no hint in the paper to replace the bag of A5 with a flexible one. A5 can't be the best starting point for claim 3 if you have to replace the whole bag (which does not fold as in A1 and A3) as well as coating it. I believe A3 gave enough motivation to coat its material, therefore addressing the purpose of claim 3. Cristina

    1. But you do not have to replace the whole bag of A5 in order to get to a airbag having all features of claim 3. If the Nylon coating as taught by A2 is adapted to the bag of A5, all features are present (no matter whether it folds differently). Further, there is a motivation in A5 to look for an alternative for the "mesh" which is used in A5 for avoiding "any small glowing particles of non-consumed pyrotechnical powder rupturing the airbag". The problem of protecting the airbag from glowing particles is already mentioned in A5. And A2 cites the general technical knowledge that nylon coatings of polyester "ensures good heat
      resistance to avoid problems with the flame produced", such adressing the same problem...

  19. The C paper is now (Sat, Mar 1) available on the EQE Compendium website:

  20. I do not understand the relevance of "otherwise He would end up with a bulky , non flexible bag, which I believe is not suitable for the claim ( not being able to fold as shown in A1 )". I do not recall any of the claims specifying that the bag (cushion) must be (relatively) flexible, foldable, non-bulky, or anything else that would exclude any of the dashboard, steering wheel, driver, passenger, etc. airbags - provided the airbag is suitable for protecting a vehicle occupant in a frontal collision (which I think that they all are).

    Accordingly, I believe that merely coating the PET bag of A5 results in an airbag with all of the features of claim 3 (since the cuzinal housing material is taken from cross-referenced A2). A2 also teaches of the advantage of the OTP of the coating; and the advantage would be applicable to the PET bag of A5.

  21. (Kuifje)

    I'd love to see Jelle's opinion on both alternatives of claim 4 requiring a partial problem approach: First pp: selection of main components, second pp: selection of additives.

    If not needed: penalty points for partial problem approach?

    1. I also had 2 partial problems for each IS attack: it was stated somewhere in annexe 1 that both additives had no influence on gaz quantities, and the oxydiser and fuel had no influence on gaz temperature or flame formation...

  22. Claim 5 (sodium nitrate): I had another attack A2 with A4; both discuss problem of toxic gas in airbags; ratio given in A4 as "most gas per unit" = "cleanest combustion"(?); alternatively, I argued "cleanest combustion, least toxic gases" as "bonus effect" of the combination A2 with A4. Both a bit of a stretch for a paper C, though.

    1. Don't think you needed another attack and this seems indeed far-fetched.

    2. Ha! I scribbled a quick bonus effect argument too.

    3. Bonus attacks are in general weak and very grey. The only recognized strong version is the 'one-way street scenario'. That seems not to be the case here.

  23. I didn't do it, but would A4+A2 have worked better for claim 5 then? They do like changing the CPA; and if A2+A4 worked best for claim 4, then perhaps they were looking for A4+A2 for claim 5? I think that claim 5 would then require the cuzinal from A2; and the particular igniter from A2 - which should be possible using partial problems approach?

    1. A4 seems not a good starting point. Gives no good details of a gas generator for an airbag; focusses more on seat belts. Misses a housing with outlets of cuzinal and misses the specific igniter. You would have to change a lot. Not a good starting point.

  24. Claim 4 discloses 2 embodiments (the 'or' in the gas generating composition - sodium nitrate or potassium sulphate). The embodiments have got two features in common - the housing and the igniter.
    The igniter is simply disclosed in [0004] as a single choice and can thus be argued in a novelty style (as part of features in D1).
    The housing is shown as a list. Had the composition not been disclosed in D1, in the form of a 3-list selection, we would have a choice from a single list, the choice not being new. Here the problem can be easily avoided for the housing material since cuzinal is indicated as the preferred embodiment, thus a separate individual embodiment and no longer a selection from a list.
    This leaves the gas generating composition. A2 discloses this in the form of a 3-list selection. No individual choice of the fuel agent, oxidizer and additive is given. So, the choice has to be done under inventive step.
    The agent and oxidizer seem to determine the amount of gas A1, [0014]. Sodium nitrate additive also gives a lower temp. Using instead potassium sulphate as an additive prevents formation of flames (and still produces a lot of gas).
    A4 discloses that the combination of guanidine nitrate (agent) + ammonium perchlorate (oxidizer) produces a lot of gas [0008]. The additive sodium nitrate works as a catalyst and coolant [0008]. Instead of sodium nitrate, potassium sulphate can be used. This avoids flames [0009].
    In my opinion, the choice of the 3 ingredients gives a single working embodiment for the composition. So, I consider it inappropriate to slice it into two steps with a partial problem approach. Both embodiment in the 'OR' have a different combined effect (lots of gas + lower temp; lots of gas + no flames).

    1. Could not agree more.


    2. The only place partial problems seemed appropriate was in an inventive step attack on claim 5 (A2+A4).

      Guanidine nitrate + ammonium perchlorate = larger amount of gas than other combinations (A1 [0014])

      {N.B. wt ratio determines speed at which gas is generated and amount of sodium nitrate and potassium sulphate don't change this (A1 [0016])}.

      Thus OTP starting from A4 is provision of gas-generating composition which generates large quantity of gas.

      This is independent of the problems solved by sodium nitrate (coolant) or potassium sulphate (no flame). Therefore can use partial problems.

      OTP is solved by ratio of guanidine nitrate and ammonium perchlorate (A4 [0010]).

    3. And for the ratio of claim 5 (pre or post-amendment)? Would you then continue the A2+A4 attack of claim 4 that you have indicated? How does the particular ratio fit into the problem-solution analysis used for claim 4? Or would you choose the same ratio, but for a different advantage, and arrive at the same invention of claim 5?

    4. The attack I indicated was for claim 5 (unamended).

    5. I have not seen in any C exam of the last ten years that marks were awarded for an attack after amendment. Sometimes the strongest attack pre-empts the amendment, but still the issue of amendment is not discussed.
      I do not expect a further attack on claim 5 and also do not see a strong one.

  25. sorry, Sarah: my reply had been intended for Jelle's previous post - I was too slow in submitting.

    I thought that A1 taught that the ratio was useful for generating gas quickly ("fast"); whereas A4 for was for generating a large volume of gas. Accordingly, I was unsure whether the SP would use the ratio of A4 when faced with the OTP of claim 5's feature.

  26. Is there any chance of getting marks for attacking claim 1 for lack of inventive step using A5+A2? After all, claim 1 is not inventive.
    Louise T

    1. It is always a bit unclear how the committee marks in such situation. In a most positive extreme form they would give the same marks for all features found (the same for the novelty attack as for the inventive step attack), subtract some marks for it being the wrong type of attack, and more if the inventive step attack is badly argued.
      However, they may also take the stand-point that that was exactly the test and missing it leads to a total loss; but only for claim 1, not for dependent claims. Part of the inventive step reasoning (closest prior art, features in CPA) are required later and will still get marks there.

    2. I wrote both an inventive step attack to claim 1 (A5 + A2) and a novelty attack (A5). Do you have any idea how this will be evaluated in terms of marking? In other words, will they subtract marks for giving both solutions?

    3. The exam tests certain issues. In general there will be two options of solving it and the committee wants to see if you are aware of the issue at all and if you can make the right choice.
      Not seeing the issue and performing the wrong attack will, in my opinion but not officially stated by the committee, result in a zero, even if some parts are identical to the right attack.
      Seeing the issue, explaining why you consider it to be grey and then performing a main attack and the other attack auxiliary, may very well result in awarding a reasonable number of marks, but of course not full marks. It would depend on the explanation on doing two attacks.
      In general doing a novelty attack based on Ax and auxiliary an inventive step using Ax as the closest prior art, without a good justification will be severily punished.
      It should not look like a shot-gun approach: just do any attack that might work without really thinking it through and arguing it well.

    4. The question asked for an opposition to be drafted. In drafting an opposition would it not be a good idea to include a novelty attack and an inventive step attack as back-up. I don't think this is a shotgun approach as the two attacks are not inconsistent, one is just a back up in case the first attack fails. Actually, to properly represent my client shouldn't I file both attacks?

    5. It is not a shot-gun approach if you do it a very limited number of times.

      However, if for many key issues in the exam you just do both options, a reasonable assumption is that you do not know enough to make a choice.

      A person is not a good weather (wo)man if
      every day the prediction is: it could rain or not.

      The exam is in several aspects not real-life, e.g. we do not usually draft an opposition on an unknown case in five hours. This thus has an impact on how to approach this 'opposition'; you need an exam-oriented approach and acquire indeed some knowledge on how the exam deviates from a real opposition.

  27. Do you think there would be any marks given for the IS attack based on A5 + A3 for claim 2 ? The problem solved would be how to find an alternative way of implementing a pressure regulating valve. I realise in retrospect that this is a weaker attack than A3+ A2, but do you think it would get zero marks ? Thanks, Robin.

  28. Difficult to judge.
    The exam committee is usually not clear how they deal with such situations. In principle you get marks for the attacks in the marking table of the committee.
    For inventive step there is usually only one attack on a claimed embodiment. If that is the case, the default is that it is zero for a wrong attack.
    In some situations marks are awarded (but of course less) for an acceptable but not preferred solution.
    Best to prepare for the worst, can only be better then.

  29. Jelle!

    Thank you very much for spending the time and making the effort to discuss the C paper and sharing your knowledge about it on this forum.

    Much appreciated.


    1. Hi Martin,

      Thanks for your appreciation. Glad it was of use.

  30. Any points for noting that the parent was EPC 1973 but the opposed patent was EPC 2000?

    I couldn't find any consequence for the opposition, but wrote it down nonetheless.

    1. I doubt it; it was not relevant, because there is no Art.54(3) Annex.

    2. Moreover, as mentioned in A1 :

      "Date of publication of application:
      02.11.2006 Bulletin 2006/44"

      therefore it seems wrong...

    3. Ah, there we have an interesting discussion.

      Considering that the filing date published is the filing date of the grandparent, the publication date published is in line with a normal publication date for the grandparent. So 02.11.2006 is the publication of the grandparent, I think.

      Even though not impossible, it is not normal to file divisionals, and especially 2nd generation divisionals, before publication of the (grand) parent.

      Considering the application number 08....., the divisional must have been filed in 2008.

      I wasted about 10 minutes of precious time during the exam mulling over this, to decide whether EPC 1973 or 2000 was applicable, only to find out much later, when no 54(3) doc showed up, that it was irrelevant anyway.

      I do stick with my analysis though: A1 was filed in 2008.

    4. ok, so let's take the following example (from the G1/09) :
      divisonal application : EP1635262 (A2)

      from the european patent register, we know that the EPO received a Request for grant of a European patent (divisional application) the 14.12.2005

      Now, having a look to the publication of the divisional application, we have :

      date of filing : 31.01.01 (= the date of the parent)

      and date of publication : 15.03.2006

      Hence, in my opinion, the date of publication is only related to the discussed application (not the parent).

    5. Actually, the discussion is not relevant. The publication date of a patent to oppose is irrelevant.
      The filing/priority date is relevant.
      In this exam the publication date seems to be nicely 18 m. after filing. Most likely both divisionals were filed within that period and all 3 published at the same time. Even if it wasn't: it is not a ground for opposition;
      Avoid examining issues which cannot be opposed.

    6. I agree with you, usually we do not focus on the publication date. But, as we didn't know in the exam the date of receipt of the divisional application at the EPO, knowing that the application was published before the 13.12.07, it is clear that the divisional application was received before that date, and therefore, the EPC 73 should be used. It would have been important in case of documents 54(3) EPC. But it wasn't the case the discussion is not relevant.

    7. Jelle,

      your scenario is possible, except: how can A1 then have an application number staring with 08?

      There is a contradiction there, A1 can not have an 2008 application number as well as a 2006 publication date.

      Not relevant, agreed, but annoying if you try to work out which EPC is applicable.

      Considering how easily they take away points from the candidates, these contradictions should not happen. These things cause confusion and frustration without testing ANYTHING.

  31. Seen a couple of times a situation like this in the C exam (e.g. candidates getting confused if no priority is claimed; in the EPC2000 transition priority claimed from India, but actually no relevant event in the priority year).
    Apparently, the best approach is to first quickly collect the data (make your timeline) but do not interpret anything while doing that.
    Then: investigate. For example: If no 54(3) candidate: discussion on EPC1973 is irrelevant. If no relevant event in the priority year: no detailed discussion of validity of priority required. So, investigate any possibly confusing data is only in the broader context and then only if required.

  32. The results are near...And panic is here. How important for marking is choosing the right attacks? I did all attacks according to your solution (except the inadmissible extension in the description, just the one in the claims, with reference to the description - "there is no basis in the description..."), nevertheless, I panic that I might have failed again. Time became short after half the exam and what if you see that in my text...So: Is choosing the right attacks enough or is there still a high risk to have failed?

  33. The examiner's report is out. See the EPO website (e.g. via the links in the right column of this web page). Good to see that the exam committee fully agrees with our solution.

    Two interesting remarks:
    - "A complete reasoning required reference to the decision G1/05 or G1/06, because
    they construe the meaning of "earlier application" in Art. 76(1) EPC in a series of
    - "A supplementary attack based on the combination of Annex 2 and Annex 4 was not
    expected, since the objection under Art. 100(c) EPC cannot be overcome by any
    possible amendment".

  34. Surely claim 5 could be easily amended to the range rather than the specific ratio? Claim 5 is a dependent claim and although the amendment would be broader than claim 5 as granted, it would be narrower than claim 4 as granted and therefore allowable under A100(c) EPC?


    This suggests that some candidates may have been denied marks unfairly for a valid, useful attack on claim 5!

    1. An additional argument against doing the A2+A4 attack is that the arguments for proper application of the problem solution approach were lacking.

      The effect of the range mentioned in A1, which should be used for determining the objective technical problem, was different from the effect mentioned in A4. In practice, I would not worry about that and would use the effect mentioned in A4. In the exam, however, it is a clear hint that they might be expecting something different.

      Whether this is fair or not, I don't know. To be on the sure side, it's advisable to only perform 'bonus attacks' after you have attacked all claims at least once.

  35. It is surely worrying if the Examiner's comments contain statements that are factually incorrect: the the objection (to claim 5) under Art. 100(c) EPC CAN be overcome by a possible (obvious, easy) amendment. Accordingly an opposition SHOULD contain an attack against such an easily amended claim.

    1. I am not so sure whether the Examiner's comments are wrong. G1/93 mentions some situations in which the trap can be avoided, but does not cover this situation.

      It is true that the overall scope of protection may not be extended by your proposed amendment, but that itself does not make the amendment allowable. For example also T127/85 limits the possibility to amend your application during opposition (no tidying up) in situations where there would not be any extended protection.

      Your proposed amendment would still somehow improve the position of the patent holder. More embodiments would fall within the scope of claim 4 AND claim 5. As long there's a chance that claim 4 will be invalidated, the proprietor might like that.

      Following your line of reasoning, a dependent claim could never get into the 123(2)/(3)-trap. I cannot accept that without some clear case law decision.

      From an exam point of view: This discussion is far to complex to be relevant for finding the right solution. You were certainly not expected to seriously consider this 'possible' amendment and you don't need the additional attack to score full marks. All the other attacks in the exam are more useful and should have been performed first.

    2. I am unsure of the relevance of T127/85, since we are dealing with possible amendment of the claims in response to Article 100(a)(c) EPC objections (not just 'tidying up' for the sake of it).

      There is an abundance of case law where patents have been maintained in amended form essentially based on an amended dependent claim. As an example, T 0582/91 relates to the allowability of an amended claim containing only selected features from a dependent claim, but not all of the features of a dependent claim. Essentially this is still an Article 123(2) EPC issue since it is the (correctly interpreted) independent claims that define the scope of protection (relevant for Article 123(3) EPC).

      It appears very straightforward to allow maintenance of a granted patent based on an amended dependent claim, where the amended amended dependent claim is a narrowing limitation of the granted independent claim.

    3. I agree that T127/85 is not very relevant here. It doesn't even really have to do with Art 123. It's only an example of the EPO not allowing the proprietor to improve his position during opposition.

      Broadening the range of claim 5 would improve the proprietors position (not the overall scope of protection). As a patent proprietor you prefer an infringing product to infringe more than one of your claims. In court you may always lose a claim and then you would still have another one left. To be clear, it's just my expectation that broadening claim 5 might be unacceptable. I cannot back this up with case law.

      There isn't much case law about amending dependent claims in opposition because that's usually not an issue. You always amend the independent claim up to the point that it is accepted.

      Adding the full range to an independent claim is, of course, not a problem. That clearly limits the scope of protection of that claim and worsens the position of the proprietor. But luckily, you don't have to attack all possible limitations for which there might be a basis in the description.

    4. I don't see the relevance of this line of reasoning: claim is dependent on claim 4. In the event that claims 1 to 4 are deemed invalid (e.g. due to a lack of novelty or inventive step) then amended claim 5 could be the only remaining claim left (and would be an independent claim explicitly reciting all of the features of claim 4).

      The concept of a dependent claim is that it contains all of the features of the claim/s on which it depends. Claim dependency is merely a shorthand way of preventing the repetition of features common to multiple claims. Whenever an independent claim lacks novelty/inventive step, then the most straightforward curative amendment to the independent claim is to to incorporate a feature from a dependent claim into the independent claim.

      I think that perhaps Joeri is focussing too much on the broadening of claim 5: perhaps it would be easier to consider the amended claim as being an amendment to introduce the feature of the range into claim 4?

  36. Therefore candidates that identified the possible amendment and attacked amended claim 5 SHOULD recieve marks. Just because the Examiners failed to recognise the easy amendment does not mean that candidates with a better understanding of Art 100(c) EPC than the Examiners should be penalised.

    For information: I fell into the same trap as the Examiners and probably incorrectly received marks for suggesting the amendment was unallowable under Art 100(c) EPC!!!

  37. I can't agree with the reasoning that claim 5 with the range instead of the specific ratio COULD breech Art 100(c) EPC. If claim 5 was not present as a claim in the granted patent; and claim 4 was found to be invalid due to a lack of inventive step; then it would be perfectly reasonable for the proprietor to amend claim 4 to include the range to provide novelty/inventive step to claim 4 to allow the patent to be maintained in amended form.

    There is no repercussive effect on claim 4 of the specific ratio in claim 5.

    There is no possibility of covering additional embodiments with the range not already covered by granted claim 4.

    If claims 1 to 4 were deemed invalid and amended claim 5 is the only valid claim, the patent proprietor's position is not improved, and less embodiments are covered than in the granted patent. Of course, the patent proprietor would like to be able to maintain the patent in amended form rather than have the patent entirely invalidated. In the present example, maintenance of the patent in amended form (based on amended claim 5) appears to be a realistic, reasonable posssibility - if the prior art does not teach that the OTP can be addressed by the range.

    This does not seem to be a complex issue: the Examiner's comments should merely state that "A supplementary attack based on the combination of Annex 2 and Annex 4 was
    expected, since the objection under Art. 100(c) EPC can easily be overcome by amendment to the range".

    The existence of the range and not the specific value is already required to substantiate the Art 100(c) EPC objection (I assume there was a mark for mentioning the range in the application as filed?), so the allowable amendment is BY DEFINITION very straightforward.


    It is fundamentally wrong to say that "the objection under Art. 100(c) EPC CANNOT be overcome by any possible amendment". Joeri seems to think that this "'possible'" amendment isn't straightforward. Even if the amendment wasn't straightforward (which it is), then the Examiner's comments should state that "the amendment to overcome the Art 100(c) EPC objection was too complex and no attack based on amended claim 5 was expected".

    I believe that the 'possible' amendment was a very straightforward amendment and there should be marks awarded to candidates who identified the 'possible' amendment and spent time mounting an attack.

    In any case, I believe that the Examiner's comments should be investigated where there is even a possibility that the law has been incorrectly applied to an EQE paper. The EQE's are intended to be a test of whether candidates are fit to practice: not whether the Examiner's are fit to practice.

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