Wednesday, 13 July 2016

Comparing the committee's solution to our solution

It seems that our solution is matching the committee's solution with only the following issue.

The committee expected for claim 1 a novelty attack based on A2 and an Inventive step attack based on A3+ A4. The inventive step attack is continued for dependent claim 3 (I.S. A3+A4+A6).
We showed the same novelty attack on claim 1 and the same inventive step attack but only for dependent claim 3.

In the Examiner's report it was stated for claim 1: "An inventive step argument was also expected based on Annex 3, because in this case it is a good ground of opposition".

A situation like this where the novelty attack cannot be continued for a dependent claim and an inventive step attack is required starting from other prior art is pretty normal in the C exam.

In the move of the committee to having less attacks but more thoroughly argued ones, it had become normal since 2008 not to do the inventive step attack on the independent claim if that claim could reasonably be attacked under novelty. Candidates who already did the inventive step attack on the independent claim were only awarded marks for the attack on the dependent claims.

At this moment it is not really clear if this approach has been broken and if/how many marks candidates lost who only did the inventive step attack on claim 3(1). Hopefully the committe will clarify matters at the tutor meeting.

Here follows a quick analysis I made of the papers since 2008 for similar situations and remarks made by the committee in those years.

  • C 2008
    Cl.1 Nov A5, I.S. A4+A2
    Cl.2(1) I. S.. A4+A2
    “The same number of marks was awarded for raising the inventive step attack regardless whether claims 1 and 2 were attacked independently or together”. 
  • C 2009
    Cl.3 (indep): Nov A5, Nov A6
    Cl.5(3) I.S. A3+A5+ common general knowledge
    “An inventive step attack starting from Annex 3 as closest prior art in combination with Annex 5 was not necessary for claim 3 per se. Corresponding marks were awarded for attacks on claim 5”. 
  • C 2010
    Cl.1 Nov A4, I.S. A5+A2
    Cl.2(1) I.S. A5 + A2
    “It was expected to provide an inventive step attack using Annex 5, as closest prior art, in combination with Annex 2. If the inventive step attack on claim 1 was not provided, marks were awarded if a corresponding attack on claim 2 was made, giving appropriate arguments”. “Claim 2 has two distinguishing features over Annex 5. These can either be dealt with explicitly under claim 2 or a reference to the first difference can be made in respect to claim 1 and the additional feature (latex) being dealt with fully”. 
  • C 2012
    Cl.1 Nov.A3, Nov.A5
    Cl.2(1) I.S. A2 + A6
    Cl.3(1) I.S. A4+A5; I.S. A4 + A6
    No remarks given by the committee 
  • C 2013
    Cl. 1 Nov A5
    Cl.2(1) I.S. A3 + A2
    No remarks given by the committee 
  • C 2014
    Cl.1 Nov.A6, Nov.A4
    Cl.3(1) I.S. A3+A5; I.S. A3 + A6
    “Claim 1 Novelty attacks were expected based on Annexes 4 and 6.
    This year, a novelty attack based on Annex 4 was not straightforward based on the French text, since Annex 4 uses different terminology in relation to the resilient foam … (translation error). In view of this, in the absence of a novelty attack on claim 1, this year, an inventive step attack could be made using Annex 3 combined with Annex 5.” 
  • C 2015
    Cl.1 Nov.A2, Nov.A5, Nov.A6
    Cl.2(1) I.S. A3 + A4
    “Claim 1: An additional argumentation as to lack of inventive step of claim 1 was not expected” 

32 comments:

  1. As far as I've understood, the novelty attack on claim 1 was based on a 54(3) document, which may be regarded as being a "weak" attack as it can be countered by the patentee by means of a little and obvious change of the wording of the claim. Thus an inventive step attack is necessary.


    As far as I remember, each 54(3) novelty attack had ever required an additional inventive step attack which could have been avoided only in the case of "strong" novelty destroying reference.

    Summarizing: if you have a 54(3) document, pick up another reference and prepare an inventive step attack.

    Mr. Trust



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    1. This may very well be (part) of the reasoning (no committee showed no reasoning), but is not very strong. In the past C papers there are many situations where a claim can easily be saved by the proprietor; it is not expected to pre-empt such an amendment. Candidates have to attack a claim as it stands. If the applicant amends and a dependent claim has already been attacked before on inventive step, the proprietor will be allowed to adjust this attack for the now amended claim. So, there is no need to pre-empt this.
      The legal situation which respect to 54(3) changed with in 2007 due to EPC2000. Before that most 54(3) attacks were weak in not covering all states. That is now gone and a 54(3) novelty attack is just as strong as a 54(2) attack. Yes, easier to circumvent by amendment, but that is not really an issue in the C exam (quite some 123(2) attacks would then also require an auxiliary attack)

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  2. When I was writing the EQE I thought of the inventive step attack based on A2, but I found that that attack had claim 3 written all over it. It was more reasonable to write the attack for claim 3, as it was more obvious that A2 was closest prior art, than for claim 1. Therefore I did not write the attack on claim 1. I still passed C with 69 points, so they probably did not deduce many points for not making the attack on claim 1.

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  3. It is a settled EQE practice that when a 54(3) attack is possible, another one (on novelty or inventive step) is also possible. Each of those attacks will generate additional points

    2015: Claim 1 It was expected to argue for lack of novelty based on Annex 5 as prior art under Art. 54 (2) EPC and Annex 6 as prior art under Art. 54 (3) EPC

    2011: Claim 4 - Lack of novelty (Art. 54(3) EPC ) of claim 4 over Annex 5; and Lack of novelty (Art. 54(2) EPC ) of claim 4 over Annex 6

    2010: Lack of novelty (Art. 54(3) EPC 2000) of claim 1 over A4 {Marks for Use of Information: 4. 5 / Marks for Argumentation: 3}
    Lack of inventive step (Art. 56 EPC) of claim 1 over Annex 5 in combination with Annex 2 {Marks for Use of Information: 7
    / Marks for Argumentation: 7}

    Dino

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    1. Not convinced that this is a settled practice after EPC2000.
      Multiple novelty attacks are normal in the C exam. If you would investigate that deeply you will see thta that is typically done to test candidates on claim interpretation. So, yes 54(3) is normal in combination with other 54(2) novelty attacks. The only example post EPC2000 you give is 2010 which I already discussed and where the committee was clear that it was OK to do the attack for the dependent claim only.
      It would be nice if the committee gave a statement of the 54(3) treatment in the EPC2000 situation. Analysis all papers since then and looking at their statement in the compendium and having been present at all tutor meetings, I do not think there is a basis for stating that this is settled, but it may very well be the intention.

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  4. "It is a settled EQE practice that when a 54(3) attack is possible, another one (on novelty or inventive step) is also possible."

    And those who do not this "fit to practice" criteria, straight from the EQE semi-gods' secret protocols, are welcome to invest their time in attacking claim 6 for 5 points (merely about 6 times smaller than the points available for claim 1)

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  5. "As far as I've understood, the novelty attack on claim 1 was based on a 54(3) document, which may be regarded as being a "weak" attack as it can be countered by the patentee by means of a little and obvious change of the wording of the claim. Thus an inventive step attack is necessary."

    The same logic could be applied to Art. 123(2) attack: why not to perform the second attack if the patentee can evade the first attack by a little and obvious change of the wording of the claim? However, the examiners do not expect such a second attack and would likely give about zero points for it rather than 17.

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    1. Each time that a 54(3) attack was possible, the EQE Examiner required an additional one. No exception to that rule. The Compendium (see 2015, 2011, and 2010) are quite clear on that 54(3) issue.

      Besides: in the true life, it is not advisable to attack an independent claim only on a 54(3) basis as the patent owner would react merely by adding a feature not disclosed in the 54(3) document, even a not-very-limiting/cosmetic/clearly-obvious one.

      The same reasoning applies to EQE exam. The EQE was coherent in that matter about 54(3). I cannot find an exception to that rule.


      I agree with the EQE Examiners on that matter.

      Turning on the 123(2) attack, thisis one of the strongest one in view of the 123(3) trap. This is vhy in paper B you loose plenty of marks (i.e: you reasonably have to resit the Exam) if you make the claims infringing art. 123(2).


      Dino

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    2. "Besides: in the true life, it is not advisable to attack an independent claim only on a 54(3) basis"

      From here it would follow that such a basis is not "good grounds" in terms of Rule 25(5) IPREE: "The omission of good grounds for opposition will lead to a loss of marks commensurate with the importance of the grounds in question."

      However, the Art 54(3) attack on claim 1 is 12 points, and the Art 54(2) attack on claim 2 is 5 points. Does not it seem like a violation of the EQE rules?

      In true life the client would tell you what he wants: how dangerous are different claims etc. For example, a relatively narrow claim, such as claim 3, will more likely be of no importance to the client. Also, in true life, a novelty attack is typically at least in some sense better than an inventive step attack. However, in the EQE examiners' world, an inventive step attack on claim 3 is worth 20 points, but a novelty attack (with Art 54(2) prior art) on broad claim 6 is worth 5 points, i.e. four times less.

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    4. Exam is not real life. You get marks for argumentation, not for how strong or important your attack is. On the contrary, the weaker your attack, the more arguments you will need and the more marks you get. Also, you don't know the products and business of the client, so you can't take them into account.

      The exam tests whether you are fit to practice. Can you use the tools needed for dealing with the EPO and EPC? What you do with those tools is between you and your customer.

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    5. "You get marks for argumentation, not for how strong or important your attack is."

      Yes, and this is a problem, because according to the Rules: "The omission of good grounds for opposition will lead to a loss of marks commensurate with the IMPORTANCE of the grounds in question."

      So, the importance has to be determined and it should rule.

      BTW, nothing prevents the examiners from indicating the importance, maybe in aggregate terms. For example, they could write: claim 1 and its dependent claims 2-4 are worth 70 points; claims 5 and 6 together are worth 22. Because some other examiners might have a different opinion: claims 1-4 would be worth 22 points for them, claims 5 and 6 would be worth 70 points.

      Without such indications, if you work on claims 4, 5, 6 first and then do not finish claim 3, then you lose both 17 points for the unnecessary inventive step attack on claim 1 and 20 points for claim 3. If you work on claim 3 first, then you get double points: for claim 3 and claim 1 as well.

      "The exam tests whether you are fit to practice. Can you use the tools needed for dealing with the EPO and EPC?"

      Well, my employer and I have many reasons to believe that I can use the tools, since I have like ten years of experience, four of them with focus on the EPO prosecution, local license, and a law degree. Hence, I do not believe that the exam is tailored for checking if I am fit to practice. This is off-topic, since it concerns exam D, but according to almost any law textbook, a legal opinion should refer to legal basis. However, in CEIPI class they teach that the EQE examiners give 0 points for such things. How should a person feel who got a legal degree, but did not go to the CEIPI class?

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    6. Importance is a subjective term. I would expect that they mean importance for the strength of your argumentation. Missing an argument for why copper is a metal is less important than an objective technical problem that involves hindsight.

      They cannot give an indication of how many marks you can get for two reasons:
      - Flexibility. The marking scheme is adapted in view of the answers in the first set of papers they correct.
      - Part of the test is whether you can find out how many arguments you have to contest the patentability of the claims. When they say 'claim X is 7 points', you know that you don't have to look for a complex inventive step attack. When they say 'claim Xis 25 points' you know that your simple novelty attack cannot be correct or the full answer.

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    7. "Importance is a subjective term."; "They cannot give an indication of how many marks you can get for two reasons; - Part of the test is whether you can find out how many arguments you have to contest"

      This is why I suggested that importance should be indicated in aggregate terms. Otherwise, why not to give 90 points for some claim 3, and 2 points for each of claims 1, 2, 4, 5, 6? If some EQE candidates do not realize during the exam that the distribution will be like this, this is their problem, they are simply not fit to practice and should stay out of profession for at least another year...

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    8. Sure the exam can not test a candidate ability to practice.
      It would not be neither professional nor profitable for a patent firm to conclude a consultation in so little time.
      In normal life a C paper would be charged at least 5 work days to a client.
      So the exam is just a kind of filter for a professional title.

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  6. I do remember an example of a claim that could only be attacked based on 54(3). It was, however, for one of two alternative embodiments in a dependent claim. I have to go through the older papers to find out which one it was.

    As already argued above, under EPC 2000, a 54(3) attack isn't less strong than a 54(2) or other type of attack and it is impossible to already prepare attacks on claims that the proprietor may come up with later in the procedure. Moreover, your client may already be happy with killing the granted claims and the amended version may not be a problem.

    Also 54(2) attacks on claims with a fully optional feature are very easy to amend and do not require an additional inventive step attack. If 54(3) attacks, in this respect, should be treated differently, the exam committee should explain this in the examiner report.

    I think this year's examiner report comprises a hint for why they expected an additional attack and it is given in the section about claim 3: "It is noted that the first difference regarding the thermally active composition, and the associated technical effect, between claim 3 and Annex 3 was not the same as for claim 1, because it further required a cooling action upon activation with water."

    This could mean that they expect a separate attack on claim 1 when the objective technical problem is different than in the dependent claim. How candidates should have prepared for that, I don't know. But if this theory is confirmed at the tutor meeting, they will know this for the coming years. It is also unclear how many marks were lost when not performing the additional attacks. There are 17 marks for this attack in the 'possible solution', but maybe you can recover some of those marks later on when attacking claim 3.

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    1. I see that the EPO forum has been shut down so there is no possibility to ask other tutors about that matter

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  7. "Turning on the 123(2) attack, this is one of the strongest one in view of the 123(3) trap."

    The claim may be trapped or not trapped, depending on the factual situation. For example, a claim, which is an intermediate generalization, is not trapped. Does any past Examiner's report suggest checking if the claim, attacked via Art 123(2), is also trapped? I doubt.

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  8. "Each time that a 54(3) attack was possible, the EQE Examiner required an additional one. No exception to that rule. The Compendium (see 2015, 2011, and 2010) are quite clear on that 54(3) issue.", "Besides: in the true life, it is not advisable to attack an independent claim only on a 54(3) basis"; "the novelty attack on claim 1 was based on a 54(3) document, which may be regarded as being a "weak" attack"

    In 2011, the 54(2) attack on claim 4 was 6 points, and the 54(3) attack on the same claim was 7 points. This year, the 54(2) attack on claim 6 is 5 points and the 54(3) attack on claim 1 is 12 points, It does not seem that the examiners consider Art 54(3) attack as "weak".

    Also, according to the Rules, "Candidates shall accept the facts given in the examination paper and limit themselves to those facts." Hence, there should be no rule that each 54(3) attack should be supplemented with another attack based on the "potential to amend" logic.

    The problem is that the distribution of points for different attacks unfortunately makes no sense whatsoever. If you work on claims 4, 5, 6 first and then do not finish claim 3, then you lose both 17 points for unnecessary inventive step attack on claim 1 and 20 points for claim 3. If you work on claim 3 first, then you are lucky because they would give double points: for claim 3 and claim 1 as well.

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    1. Well - shortly checking the Claims it becomes apparently and immediately clear that Claim 3 is somewhat complex and will be rewarded with big marks. If you are looking for marks, then make it properly.
      If you just start and do it step by step and you have experience in doing These exams it is as well rapidly clear where you'll get most marks.

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    2. Shortly checking the Claims it becomes apparently and immediately clear that Claim 4 is somewhat complex as well. However, tackling it would not give you double marks like for claim 3. And if you check the previous discussions, many people had difficulty with claim 6 due to the difference in terms in the claim and prior art, and with claim 5 due to the difficulty with choosing the closest prior art from among two almost equally suitable candidates. Hence, these claims require pretty much time, but do not lead to the double points, which were unexpected. See what Jelle wrote in the posting: "In the move of the committee to having less attacks but more thoroughly argued ones, it had become normal since 2008 not to do the inventive step attack on the independent claim if that claim could reasonably be attacked under novelty."

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    3. And it had become normal since ever not to Focus on PCT in paper D ... right?

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  9. BTW, with regard to claim 6, the examiners do not give a damn about the difference between "in presence of" and "upon activation with". Who would have guessed?

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  10. At the very last of the Exam, I did realize that an additional attack on claim 1 was required. I recognized that A3 was the cpa but I was short of time and I used A3 and c.g.k. Sadly I had only to past and copy the attack on the first part of claim 3. Peraphs the Board appreciate the effort and gave me some marks.
    Anyway, I did pass and I am so proud of that. Paper C is something of so challenging that only those who tackle it can understand.

    Mr Trust

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    1. cannot pass C because it is tacklebackle. If we Need to Combine attacks there is no defense. This defense is lacking attackable Claims. Though, NO!

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  11. Hi

    When I prepared the 2016 EQE C I noticed that some model solutions used abreviations. I decided to use some on the paper to have a good time management. I used them mainly to shorten the time spent in writing inventive step attacks. I used the method of the C-book and attended the CEIPI training.

    I noticed that the list of abreviations was placed behind the signature paper, then came the opposition form, and then the paper itself.

    I obtained 36 but the solution on the eqe website is really close to what I marked in the paper.

    My question is : is it possible that the correctors missed the list of abreviations? And how can I check this information.

    What is your opinion about these list of abreviations considering that some where used as parts of phrases in my case, and there were 5 more than what is usually used in the past model solutions.

    VTY

    Eric TZEUTON

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    1. Dear Eric,

      Abbreviations may be used, but you should avoid that reading your answer becomes too cryptical. I do not know if you had the balance right.
      It looks to me that the instructions to the candidates state that you have to hand in an opposition which in principle complies with a real opposition. If in a real opposition you would use abbreviations then this list must be in the front of your opposition otherwise the division cannot understand your opposition, unless you use self-explanatory abbreviations only (e.g. Art. = article). I do not know what you did.
      I fear that most of the marks may be lost beacuse of not providing enough argumentation.
      We do offer a service of marking a paper.

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