Sunday, October 27, 2024 Meeting with Exam Committees - Questions asked by DeltaPatents

On 22 and 23 October 2024, the 2024-edition of the annual meeting between the Exam Committees and EQE-tutors took place. Of course, several of the DeltaPatents tutors were present to hear what the Committees had to say about the 2024 papers and the New EQE.

Questions could be submitted in advance, until 1 October 2024, via a dedicated form available on the webpage of the event Annual meeting of EQE tutors and members of the EQE committees. Both Roel and I submitted questions to the Exam Committees. Some were answered, others were not or just partly. We think it’s worthwhile to share our questions with others, in particular with other tutors. Therefore, you can find our questions below. Your comments are welcome!

Below you find:

• Questions Foundation paper / F Mock July 2024
• Questions A 2024
• Questions C 2024
• Questions D 2024

Foundation paper

In July 2024, a MOCK paper of foundation paper F in English language was made available by the Examination Board for testing and preparation purposes. The MOCK was made available under https://link.epo.org/elearning/Mock_Paper_F.

We presented some observations, comments and suggestions below to the paper as a whole, each of the two parts as well as several individual questions. It would be appreciated if these are carefully considered when the actual F 2025 is prepared or reviewed and if they can be commented on in the Annual meeting of EQE tutors and members of the EQE committees on 22 and 23 October 2024 (event PC04-2024, organized by the European Patent Academy of the EPO together with epi).

It is assumed that the Mock has been stable since it was made available. However, in case changes were made while the Mock was active, please be informed that our comments are based on the version that was live on 14 August 2024.

 

F-1 General impression of the mock F 

PART 1

As general impression, PART 1 (LEGAL QUESTIONS) was similar in level of difficulty as the Pre-Exam, which targeted candidates with two years of professional experience rather than one (see Communication dd 6 June 2024 of the Examination Board. updated on 5 August 2024).

However, where the legal part of the Pre-Exam was designed as 10 questions of 4 statements (so total 40 statements) to be answered in 2 hours, the F Mock has 15 questions of generally more than 4 statements: one may wonder whether the paper is not too long?

Also, several topics were without any doubt very challenging for candidates with only one year of professional experience.

A careful evaluation -and adjustment- of the length and difficulty level of the legal part of mock paper as well as of the F 2025 paper (for which a complete draft is presumably already available to the Examination Board and the F committee) is requested, also in view of the lower level of professional experience required for F.

 

PART 2

As general impression of PART 2 (CLAIMS ANALYSIS): the compact description and prior art in the part 2, i.e., the claims part of just one case, is appreciated. Clarity, novelty, inventive step and amendments were expected, but the effect of priority (and even for only some of the claims claims) was not. Also unity was not a regular topic in the claims analysis of of the Pre-Exam, and therefore not really expected in F. In inventive step, the balance between the different steps of the problem-solution approach was poor, as it only tested closest prior art, but not the subsequent steps - it is noted that the Pre-Exam often tested the various stages if inventive stop in detail. In addition, multiple questions seemed to address the same topic (novelty of an or-claim, see Q.4, Q.5, Q.6 and fist 4 statements of Q.10), which results in double penalization (which the Disciplinary Board of Appeal has indicated should be prevented).

However, where the claims part of the Pre-Exam was designed as 10 questions of 4 statements (so total 40 statements) to be answered in 2 hours, the F Mock has 15 questions of generally more than 4 statements, each of which often requiring quite extensive tests (e.g., for assessing novelty or CPA, a set of features needs to be compared): one may wonder whether the paper is not too long?

Even more than for the legal part, a careful evaluation -and adjustment- of the length and difficulty level of the claims part of mock paper as well as of the F 2025 paper (for which a complete draft is presumably already available to the Examination Board and the F committee) is requested, also in view of the lower level of professional experience.

Answer

F is a new exam. Not the same as Pre-Exam. Can sit after 1 yr in the business; can avoid via fast track which many may choose. Have 657 candidates for F 2025.

F 2025 needs to be first-time right: not too easy, not ridiculous, not passable without preparation, do not want candidates to enter M1 and M2 too easily. But in view of the candidates having only 1-1,5 yr experience: not too difficult. But can expect that serious preparation of complete F syllabus is needed for be able to pass.

 

F-2 Declarative knowledge

Art. 1(5)(a) REE provides: "Paper F assesses whether a candidate can apply legal concepts and provisions of the EPC and the PCT." and  Rule 22(1) IPREE provides "The competences tested in paper F concern declarative knowledge. Paper F is defined in Article 1(5)(a) REE.".

It is observed that the claims analysis part of the mock goes beyond declarative knowledge. To give some examples:

·        a) Q.2 of part. 2 " Claim 2 is not clear as required by Article 84 EPC because... it is not clearly defined in claim 2, which specific metals are falling under the term “noble”", could not be answered based on the claim alone or based on the description of the application, but required a candidate to consider whether there could be other reasons for lack of clarity (the most clear reason possibly being that all other options in the claim were not unclear...) - and that that could originate from a term not being unambiguous, for which the candidate had to check the prior art!

A candidate thus had to understand that document D4 is not only a prior art document but also, or rather in particular, presents common general knowledge (indicating that the term noble metal is not uniquely defined for the skilled person) as to what noble metals are/can be. However, Q.2, which relied on this, had no reference/ hint/ trigger at all to let the candidate look for common general knowledge.
Such non-triggered step of a multi-step reasoning and the multi-step reasoning needed to answer Q.2 of Part 2 can not be understood to concern declarative knowledge.

·        b) Part 2 did not just test the same scope of claims aspects as were tested in the Pre-Exam, but included priority aspects (part of the description and claim 5 not being included in the priority application).

A candidate thus had to:
i) determine that the different claims/parts of the application have different effective dates and
ii) that they (thus) have different prior art, wherein
iii) they also have to recognize that the 4 documents are of different type,
iv) for which they need to determine one-by-one whether they are Art.54(3) or Art. 54(2) prior art (or none). 
Such multi-step analysis can not be understood to concern declarative knowledge, but goes beyond that.
This issue was particularly prominent in Q.11 of part 2, in which the candidate had to determine which prior art document is closest prior art. The candidate had to spot that the document with the disclosure of same purpose/effect as the claim for which CPA had to be determined, was actually a prior art according to Art. 54(3) EPC. No hint or guidance was given to the candidate pointing to checking the dates of the documents, nor to the type of documents (EP application or different).

·       c) Novelty of an OR-claim is not testing the basic concept of novelty, but is testing an additional element, requiring a multi-step argumentation which can not be understood to concern declarative knowledge. The same applies to Q.15 of part 2, in which for a correct answer the candidate has to understand that the combination of two different embodiments is not disclosed, so the combination of those two embodiments in a single claim violates Art. 123(2) EPC. This is a level of understanding the concepts of Art. 123(2) EPC that goes beyond declarative knowledge.

a) It seems necessary to adapt the claims analysis part of this mock to require no multi-step reasoning, but to concern declarative knowledge acc. Rule 22(1) IPREE.

b) The scope, meaning and relationship of/between Art. 1(5)(a) REE ("apply legal concepts and provisions") and Rule 22(1) IPREE (" concern declarative knowledge.") will need to be clarified further.

Answer

Observed what was on the blogs, some questions that were send directly and/or to this meeting – mainly by Nyske and Roel.

Most of Mock can be directly answered based on EPC or PCT, directly.

Working on level of one year of experience.

Cannot expect all candidates to have full marks. But “a well-prepared candidates must have a sure pass”; “a candidate with poor preparation shall fail”.

Comments came from tutors saying it was too difficult, too much reasoning needed. to answer the questions.

A tutor observed that the REE/IPREE say "declarative", so a multi-step reasining does in my view not belong in F.

The Examination Board indicated that in general that is not disputed. The question is what "multi step" means. The ED considers that making a timeline as a starting point is to be expected; from such a timeline, there are no multi step reasonings.

Jakob Kofoed (Examination Board) invited for more comments: please email those to the Examination Board via the EQE secretariat.

 

F-3 One year experience level

On 6 June 2024, the  Examination Board published a communication concerning paper F 2025, which was updated on 5 August 2024 - hereafter referred to as "the Communication".

The Communication indicates:

"Candidates are further reminded, in accordance with Rule 22 IPREE (OJ 2024, A25), that they are expected to be familiar with the documents listed in [...], to the extent expected of a candidate with one year of professional experience*. paper F will not contain topics beyond this legal basis "

(*Note: The "to the extent expected of a candidate with one year of professional experience. Paper F will not contain topics beyond this legal basis." has to be read in combination with Art. 1(5)(a) REE " Paper F assesses whether a candidate can apply legal concepts and provisions of the EPC and the PCT." and Rule 22(1) IPREE " The competences tested in paper F concern declarative knowledge. Paper F is defined in Article 1(5)(a) REE.")

However, the multi-step reasoning discussed under item 4, requiring a candidate to argue, without clear triggers and guidance, in respects of topics with multiple aspects (even up to the combination of priority, 54(3) and inventive step) does not only go beyond declarative knowledge, but also goes beyond what a candidate with one year of professional experience can be expected to be familiar with.

Such reasoning was not even expected from Pre-Exam candidates with two years, so with one additional year, of professional experience, but rather reflects what may occur in the main exam, e.g., paper C.

a) It seems necessary to adapt the claims analysis part of this mock to be at a level of a candidate with one year of professional experience acc. to the Communication.

b) It seems necessary to clarify the meaning of  "to the extent expected of a candidate with one year of professional experience", esp. if the actual F 2025 may be of a similar level and character as this mock and/or if the Examination Board and the Supervisory Board would consider the current Mock to be within reach of what can be expected of a candidate with one year of professional experience.

Answer

Mock is also a learning for the Examination Board.
Do want some variation between successive exams.

See also above.

F-4 Syllabus for F - States

On 6 June 2024, the  Examination Board published a communication concerning paper F 2025, which was updated on 5 August 2024 - hereafter referred to as "the Communication". The Communication (see item 5) indicates:

"Candidates are further reminded, in accordance with Rule 22 IPREE (OJ 2024, A25), that they are expected to be familiar with the documents listed in Rule 21(1)(a), (b), (e), (g), (h), (i), (j), (m) and (o) [Note from the author: as defined in Rule 22(5) IPREE], to the extent expected of a candidate with one year of professional experience. paper F will not contain topics beyond this legal basis."

So, Rule 21(1)(k) "the lists of EPC contracting states, extension states and validation states, of contracting states to the PCT and of states which have ratified the Agreement on a Unified Patent Court" is not part of the syllabus for F.

However:

a) Q.3 does not indicate that Italy is an EPC state, which is a necessary legal requirement for the application of Art. 14(4) EPC.
So Q.3 does contains a topic of Rule 21(1)(k) and thus extends beyond the legal basis specified in Rule 22(5) IPREE.

b): Q.12 did indicate that " Argentina is not a PCT member state", but it did not indicate that Germany is a PCT state. However, for answering Q.12, 2nd and 3rd statement, it was necessary to know that Germany is so.
So Q.12 does contains a topic of Rule 21(1)(k) and thus extends beyond the legal basis specified in Rule 22(5) IPREE.

c) Q.14 does not indicate that China and the USA are not EPC state, nor that Greece is an EPC state, which candidates that have an incorrect understanding as to whether a professional representative is needed for filing/entry need to be able to conclude on mandatory representation under Art. 133(20 EPC or Art. 27(7) PCT.

So Q.14 can be considered to contain a topic of Rule 21(1)(k) and thus extends beyond the legal basis specified in Rule 22(5) IPREE.

It seems necessary to include Rule 21(1)(k) into Rule 22(5) IPREE to prevent these issues.

Note: We do not consider it sound of one would argue that the list of states is included via an alternative entry, i.e., via (i) the PCT Applicant's Guide (which is in the F syllabus): that would actually make (k) an empty provision in Rule 21(1) and such interpretation would go counter the principles of interpretation of legal texts and of legitimate expectations.

F-5 Amendments

For Q.8 ff of part 2, amended claims were presented. However, these amended claims did not indicate the amendments made by strikethrough and underlining.

We think that that shall be done, so that candidates do not be required to spend valuable time on administrative or kind of trivial things. Moreover, as the questions shall concern declarative knowledge, an extensive analysis as to WHAT has been changed in the claims is not appropriate - but the amendments shall be clearly indicated and the questions shall focus on whether an indicated change satisfies Art. 123(2) EPC.

F-6 Marking

The marking seems not always well-balanced between different questions in the Mock F.

E.g., in part 1, 2 marks for Q.2 seems imbalanced with 2 marks for Q.8.

E.g., in Part 2, Q.13/14 has 5 marks for two 123(2) statements and Q.15 has 4 marks for just one: Q.15 awards more than 60% more marks for a 123(2) statement than for Q.13/14 do per 123(2).

Further, the all-or-noting marking in this mock F (a 5 mark question scores either 5 or 0, but not something in between although several different things are being tested) has some degree of unfairness. E.g., in Q.10 of part 2 having 8 novelty statements, awarding 0 marks if only 1 of 7 is answered wrong cannot be considered fair.

A review as to careful and fair balancing is requested.

F-7 Marking Scheme

In the F-Mock of Summer 2024, all 30 questions were scored either with full points or zero.

This also applied to questions which have multiple sub-questions, for example up to eight sub-questions in Question 10 of Part 2. Answering only one sub-question incorrectly resulted in the loss of all marks for the entire question.

Our questions:

• Is this same way of scoring (i.e. either full marks or zero marks, and getting zero marks if only one of multiple sub-questions is answered incorrectly) envisaged for the actual Foundation paper of March 2025?
• If so, what is the reason for opting for this way of scoring?

Answer: 

There is no final decision on the marking system for paper F yet. It could be that the system of the mock will be adhered to. If so, the reason is to discourage guessing. 

F-8 Question types/formats

 The Mock F only had Yes/No, True/False and multiple-choice selection (plus Q.2 and Q.10 of Part 1, which is equivalent to a series of selections) question formats, whereas Rule 22(4) IPREE specifies a LARGER VARIETY of question types/formats (Rule 22(4): "Paper F may comprise different types of questions, such as multiple-choice questions, multi-select questions, true or false questions, drag and drop questions, questions requiring a fill-in answer and/or questions requiring highlighting of relevant text passages.").

Can candidates limit their preparation to the formats shown in the Mock? Or shall candidates also prepare for other formats such as drag and drop questions, questions requiring a fill-in answer and questions requiring highlighting of relevant text passages?

F-9 Clear and unambiguous

 The questions in the Mock F were generally very carefully worded, but -as indicated above- this nevertheless sometimes led to slight unclarities and/or not always were all necessary facts present (also in view of the somewhat limited syllabus).

(E.g., Q.1 of part 1 used "eventually" and "in due time", which could be considered inconsistent or unclear in view of R.6(1) and R.58; Q.4 of part 1 seems to ignore G 1/22 / the corresponding paragraph in GL (2024) A-III, 6.1; Q.14 of part 1 ignored possible complications of national requirements of GR and CN, requiring filing with the national offices; Q.15 of part 1 did not indicate that EPO was IPEA, which is necessary to know the closure dates of the IPEA; Q.45 of part 2 indicates "Q.4 starts with: "The subject-matter of claim 4, notwithstanding any issues of clarity, is novel over the prior art D1-D4" in the question, which seems to ask for novelty over the prior art as a whole, but the statements are directed to individual novelty; similar in Q.13 and 14 of part 2.).

Although it has been suggested that the drafting of unambiguous questions would be easier for the F paper than for the Pre-Exam, this may be doubted and some neutralizations may also be necessary in this mock and in actual F paper. The Disciplinary Board of Appeal has emphasized multiple times that "It follows from the setup of the pre-examination with its multiple-choice questions that they must be formulated clearly and unambiguously, and that remaining doubts which cannot be sorted out at the time of taking the examination, but only by way of the appeal, cannot be to the detriment of the candidate (cf. D 5/16, D 6/16, D 15/16, D 2/21, D 7/21)" (cited from D 2/24, reason 15), which will clearly also apply to F paper questions and its question types.

As not all questions and individual statements have the same weight in the F paper (while they were all had the same weight in the Pre-Exam), unambiguous drafting seems even more important for the new F paper.

F-10 Progressive level of difficulty

As indicated in another submitted question, the rather high level of difficulty of the Mock F paper seems to go beyond what can be expected from a candidate with one year of professional experience - and beyond  what was expected by tutors. This makes one wonder what the level of difficulty of the M1 paper, for candidates with at least two years of professional experience, and of the M3 paper, for candidates with at least three years of professional experience, will be. One of the aims of the New EQE is to provide a progressive level of difficulty. However, the presented level of the current Mock F seems to be too high for a gradual, kind of linear progression. It remains to be seen whether the progression is gradual and appropriate for the claims part of F once M1 and M3 mocks become available - without these it is not possible to get a clear picture as to how the difficulty level of F fits in the New EQE structure. The same applies for M2 and M4 and the legal part of F.

It is requested to make Mocks for M1 and M3 (claims part) as well as of M2 and M4 (legal part) available quickly, so as to understand the degree of progressiveness and to comment on the level of the F paper in view of this progressiveness.

Answer

See F-11

F-11 Level of paper and step towards M1

Progressive development of knowledge and skills is at the core of the design of the New EQE. We support this vision and aim to build it into our EQE training as well. However, in order to be able to properly reflect this progressive development into our training programme, we need to know what the expected knowledge and skill levels are for the consecutive papers.

Progressive learning and testing implies that a candidate does not have to “know everything” when sitting paper F. So, what are the steps e.g. from F to M1 to M3? What may pop up in M1 or M3 but not in F? In particular for the substantive papers F-Part 2, M1 and M3, the syllabus as defined in R. 21 IPREE and R.22(5) IPREE doesn’t give much of a foothold. The Guidelines tend to be at the core of all substantive papers and the entire Guidelines is already part of the syllabus for F.

We could see a progressive learning and testing scheme for the substantive papers F-Part 2, M1 and M3 to be designed as follows:

• F-Part 2: knowing/applying fundamental knowledge of common substantive topics (e.g. novelty, inventive step, priority, amendments, clarity, sufficiency) in standard situations. The questions need not be easy in themselves, but should be limited to standard situations. For example inventive step with a single feature missing in the closest prior art, general application of the “gold standard”, genus-species novelty, “suitable for”, clarity situations of Guidelines F-IV, 4), same invention in view of priority, basics of patentable subject-matter;
   
• M1: knowing/applying more in-depth knowledge of common substantive topics (e.g. novelty, inventive step, priority, amendments, clarity, sufficiency) on situations that include exceptions to standard situations or special cases thereof, limited to relatively small cases only. For example, intermediate generalisation, claims with multiple alternatives, selection inventions, inventive step with partial problems, claims with non-technical features/mixed-type inventions, undisclosed disclaimers, maybe even partial priority, but only in the format of short cases. Testing knowledge and skills rather than creativity and deep insight;
   
• M3: one large case per part, with requires creativity and in-depth insight in the substance of the substantive topics as such and in the interrelation between these topics to solve.
  However, the mock F paper of Summer 2024 contained topics that according to such a scheme would not come up until M1, such as intermediate generalisation. So maybe the above scheme is not what the Exam Committee and/or the Exam Board have in mind.

Our questions are therefore:

• is the expected level knowledge and skills for candidates sitting the F paper in March 2025 the same as the level reflected by the F-Mock of Summer 2024?
• If the expected level for F-Part 2 is that of the F-mock of Summer 2024, then how would you define the levels for M1 and M3?
•  If the expected level for F-Part 2 is different from that of the F-mock of Summer 2024, would the progressive learning and testing scheme as described above be in line with what can be expected for F-Part 2, M1 and M3? If not, how would the steps in the progressive learning and testing scheme be best described?
• Are similar steps in required knowledge levels applicable to the legal papers, from F-Part 1 to M2 to M4?

We are of the opinion that your answer to these questions is important for all tutors who are currently setting up training programmes for the New EQE, and aim to do so in alignment with the fundamentals of the design of the New EQE.

Answer: 

Paper F will deal with the basics. Soon, a Mock M1 will be published to so that it becomes clearer what the step in level of knowledge and skills will be. For M1, more analysis and more complicated situations can be expected.

Candidates will have to study seriously to pass paper F. Good knowledge of the fundamentals will be required to pass the paper.

Paper A 2024

A-1. Paper A – Essential feature of device vs. wishes of client

Paper A contains instructions to claim the device per se (par. [006]).

However, par. [013] of the paper says:

“in use we do need a pressure difference of at least 5 atmospheres (500 kPa) between the deployment location in the well and the chamber 23 for gas for the device to perform adequately.”

The wording “for the device to perform properly” could well be interpreted as indicating an essential feature of the device, in particular as explicit reference is made to “the device” instead of to “the method” or, more general, “the invention”.

However, according to the final sentence of page 4 of the Examiner’s Report, including this pressure difference resulted in a deduction of 30 marks, which is a very substantial deduction.

Our questions:

• On what basis should the candidate have balanced the wish of the client to claim the device per se against the addition of a limitation to the independent device claim by a feature which is indicated as being necessary to make the device perform adequately? Why would the wish of the client prevail in this case?
   
• Would the deduction also be 30 marks if a candidate had added a feature of the device being suitable for the pressure difference of at least 5 atmospheres (500 kPa) between the deployment location in the well and the chamber 23 for gas?

Answer 

A clear distinction between method claim and device claim is required. Essential features of the method are not necessarily also essential features of the device.

In case a candidate had used a clear “suitable for”- formulation, the 30 marks penalty would not have been imposed because such a feature would not effectively limit the claim.

Paper C 2024

C-1. Paper C – marks for analysing A2-A5 in relation to claims of part 2?

Paragraph 6.2 of the Possible Solution in the Examiner’s Report pertains to the section on prior art in Part 2. This paragraph of the Possible Solution only mentions documents A6 and A7, which were provided in Part 2 for the first time.

However, for a full analysis, the candidates also have to evaluate the prior art status of the documents A2 – A5 as provided in Part 1.

This is supported by paragraph 3.1 of the Possible Solution, in which it is said:

“For part 2 of the exam the information provided in the second letter from the client was to be used to establish the effective dates of claims 4 – 7 as well as the status of A2 to A7 as prior art with respect to these claims”.

Our questions:

• Were marks awarded for a proper evaluation of the prior art status of A2 – A5 (i.e. the prior art as provided in Part 1) in respect of claims 4 -7 (i.e. the claims of Part 2)?
   
• If so, how many marks were awarded as a maximum?
   
• If only A6 and A7 were discussed in the answer to Part 2, were there any marks lost? If so, how many?

This question was not answered by the Exam Committee

C-2. Paper C – alternative solutions claim 5

We have seen several alternatives for the second attack on claim 5. The candidate’s answer has one (A6Q + A5), but there are more, at various levels of being convincing.

For example, we have seen a novelty attack in view of A6Q, in which it was argued that also the feature that the processing unit causes the electrical connection outside the vehicle to be inactive is included in the standard RFC-7511-x, and therefore implicit in the Model Q (A6).

The main reasoning in this respect is as follows:

• A7[6] discusses features of charging terminals adhering to the standard RFC-7511-x
• 7[7] then continues:
• “Such charging terminals contain a programmable microprocessor which is able to communicate wirelessly with the car’s on-board computer. They also contain power switches which enable or disable the electrical connection to the electricity grid…”
• “Such charging terminals” in A7[7] clearly refers to charging terminals in accordance with the standard
• So, a charging terminal in accordance with the standard has switches for enabling/disabling the electrical connection outside the car, AND the microprocessor in the charging terminal communicates with the on-board computer of the car (on-board computer = processing unit).
• Therewith, it can be argued that A6Q has all features of claim 5, including the feature that the processing unit causes the electrical connection outside the vehicle to be inactive, so claim 5 lacks novelty in view of A6Q.

Our questions:

• Were marks awarded to any alternative second attacks on claim 5, different than the one in the Possible Solution?
   
• Would marks have been awarded to an attack for lack of inventive step based on a combination of documents as used by the candidate of the candidate’s answer, assuming that such an attack was well argued/explained? If so, about how many marks would generally be awarded as a maximum?
   
• Would marks have been awarded to an attack for lack of novelty based on Model Q (A6) with the feature of the processing unit causing the electrical connection outside the vehicle to be inactive is included in the standard RFC-7511-x, generally along the lines as indicated above, assuming that such an attack was well argued/explained? If so, about how many marks would generally be awarded as a maximum?

Answer

This question was only answered in very general terms, saying that alternative solutions could get marks if they were reasonable and well argued. The model solution in the Examiner’s Report is to be regarded as one of the possible solutions.

C-3. Paper C – Relying on technical effect mentioned in relation to prior art only?

With respect to the difference between claim 5 and the closest prior art (Model Q of A6) and the related technical effect, the Possible Solution in the Examiner’s Report says:

“Therefore claim 5 differs from what is known about A6Q in that the processing unit causes the electrical connection outside the vehicle to be inactive.

The opposed patent states in A1§2 that this has the technical effect that the cable between the car and the charging terminal is kept free of electrical tension, thereby solving the technical problem of enhancing safety. '

A1[2] gives information about the admitted prior art:

“Plug-socket systems have several safety features. For instance, protective reinforcements of the cable ensure mechanical resistance. In addition, switches in the charging terminal make it possible to keep the cable free from electrical energy unless the battery is being charged.”

(A1[1]: “The conventional way to charge such a battery is using plug-socket systems..”, so the plug-socket systems of A1[2] are admitted prior art)

The general part of the Examiner’s Report already for several years includes the following instruction: “The technical effect associated to this difference is an advantage which has to be identified in the patent to be opposed and the appropriate basis must be cited.” (see page 2, 8th paragraph of the Examiner’s Report 2024)

We have always interpreted this phrase as that the technical effect had to be presented in A1 as being directly linked to a feature that is described as part of the claimed invention. However, even though the technical effect that the Possible Solution relies upon is mentioned in A1, it is mentioned there only in relation to the admitted prior art, not linked to a feature that is part of the claimed invention. The technical effect that A1 attributes directly to the distinguishing feature of claim 5 in the context of the invention is found in A1[30], being “preventing inadvertent field exposure”.

Our questions:

• How should candidates interpret the instruction “The technical effect associated to this difference is an advantage which has to be identified in the patent to be opposed”? Does this include the entire patent to be opposed (i.e. including the admitted prior art) or only those parts of the patent that relate directly to the claimed invention?
   
• If a technical effect of a claimed feature can be derived from the description of the admitted prior art in A1, what is the legal basis for treating the admitted prior art in the patent to be opposed different from the prior art documents?

Answer

Formulaic approaches to the paper have to be avoided, and effects of features can be found anywhere in the paper. However, this is not expected to be the case in the upcoming C-papers. In this case, the closest prior art was clearly related to the plug-and-socket type of charging so the technical effect had to match that.

Paper D 2024

D-1) D1, general - Legal basis EPO closure in time limit calculations

 The Notice from the Examination Board dd 19 November 2021 indicates that "A notice listing the dates on which the EPO filing offices are closed is published each year in the Official Journal. For the purposes of applying Rule 134(1), first sentence, EPC and Rule 80.5 PCT, CANDIDATES SHOULD REFER TO THE RELEVANT NOTICE ON EPO CLOSING DAYS. They will be able to access the EPO website for this during the exam." (emphasis added)

We expected that the emphasized sentence means that it would be needed to cite the appliable OJ when using R.134(1) EPC, e.g., in Q.3 as

29/1/24 [Rule 126(2) ≥ 1.11.2023] + 2m [GL (2024) D-IV, 1.2.1(ii)] -> 29/3/24 (Fri) [Good Friday, EPO closed, OJ 2023, A80; R.134(1)] -> 2/4/24 (Tue)

However, the Possible Solution in the Examiners' Report does not mention OJ 2023, A80, despite the notice saying "candidates should refer to the relevant notice on EPO closing days".

a) So, it is not necessary to cite OJ 2023, A80 for full marks, and was the "refer" only meant to mean "consult"?

b) Were any bonus marks awarded if a candidate cited OJ 2023, A80?

Answers:

a) to “consult”, no need to cite OJ 29023, A80 in the answer

b) No

 

D-2) D1, Q.5: renewals needed for "to obtain"?

Q.5 a) and b) asked "What steps have to be taken and by when to OBTAIN patent protection ...".

However, the Possible Solution in the Examiners' Report also includes the renewal fees payable to the national offices for the classical validation in a) and payable to the EPO for the unitary patent in b).

The Examiners' Report also commented that "Points were mostly lost with respect to when and where renewal fees need to be paid."

In my view, the wording of the question excluded renewal fees as the question said "OBTAIN" which just relates to the steps of GETTING protection, but not to MAINTAINING it subsequently,.

There was also no indication in the question how long the client wanted to HAVE protection, so that there was no trigger in the client needs/wishes to discuss maintaining protection - and paying renewal fees.

(Compare Q.3 of DI 2013: "continued validity")

a) Why was it nevertheless needed to discuss renewal fees? What was the trigger?

b) As points were mostly lost due to not discussing the renewals, it is clear that the trigger was too subtle. For such a key aspect of the expected answer, should be trigger not more visible?

c) How many marks out of the total of 9 did a candidate loose when not discussing renewals?

Answers:

a) Triggers: Filing date (month) as well as grant date were given. Further, Renewal fee to be paid soon after grant, so need to consider it as otherwise the obtaining was only for a very short period of time, which seems not to meet the client’s implicit wishes/needs.

b) Was considered clear enough. Was the reason why the filing date was given – that was not necessary otherwise.

c) Committee usually does not indicate specific marks for specific comments. But when considering the answer in the possible solution, tutors can be expected to give a reasonable estimate.

 

D-3) D2, Q.2: extending to Bosnia-Herzegovina.

The possible solution says:

" The time limit for requesting further processing in response to the communication of loss of rights has expired on 14 February 2024.It is possible to request re-establishment of rights in respect of the missed further processing time limit. In the request, it should be explained why the time limit for requesting further processing could not be observed despite all due care having been taken.
[...]
A possibility to get patent protection there is to request extension of the Euro-PCT patent application when completing the omitted acts.
[...]
Once Xeracno obtains a European patent, and all the requirements for validation are met in Bosnia-Herzegovina, they will be able to prevent Prosilk from harvesting spider silk with a method comprising feeding of spiders with tiger mosquitos in that country."

However, RE is not possible for the missed grace period for the extension fee for Bosnia - see GL (2024) A-III, 12.1 "The provisions of the EPC, its Implementing Regulations and the Rules relating to Fees do not apply to the extension and validation systems unless and only to the extent that those provisions are referred to by the applicable national law. Thus, the EPC provisions concerning applicants' legal remedies and appeals DO NOT APPLY in respect of any action taken by the EPO under the extension or validation procedure (see J 14/00, J 4/05 and J 22/10), e.g. where the extension or validation fee has not been paid within the applicable time limit indicated (A‑III, 12.2)."

Thus, A-III, 12.1 indicate that RE is not available for the missed grace period, which, in this case, is when not paid along with the filing of a valid request for further processing concerning the designation fee within 2m from the loss-of-rights communication.
A-III, 12.2 also provides that "A request for re-establishment of rights according to Art. 122 and Rule 136 is not possible in respect of payment of the extension or validation fee."

 So, it will not be possible to extend the EP patent to Bosnia- Herzegovina when applying A-III, 12.1.

a) Can the Committee please comment on the above? Can the Committee indicate why they nevertheless believe that re-establishment of the missed graced extension can be used?

b) Have full marks been awarded for candidates that indicated that it is not possible to extend the EP patent to Bosnia-Herzegovina?

Answers

a) A-III, 12.2 indicates that, in case designation fees have not been paid, it is always possible to pay extension fees along with the designation fees afterward when a valid request for further processing for the latter is filed, due to the accessory nature of the extension fee vs the designation fee.

The GL section may indeed have been misunderstood. Committee checked it with DG5: the “EPC remedies not available” applies to the 6m period itself as well as to the grace period in case the designation fee was paid. However, when the designation fee was not paid and also a request for FP for the designation fee was missed, re-establishment is available in respect of the missed FP period. As in that case, the extension fee may be paid (+50%) along with the valid request for FP of the designation fee, the re-establishment of the FP period may have effect for the missed designation as well as missed extension fee.

Roel commented that it was somewhat odd that candidates has to rely on a specific interpretation of the Guidelines, which seemed to be at odds with what A-III, 12.1 says. He announced that he would bring it into the Guidelines revision discussion in spring 2025 (next consultation), so that the Guidelines are clarified and can no longer be misinterpreted.

b) Committee usually does not indicate specific marks for specific comments. But: only a few.

  

D-4) D2, Q.3 and Q.4

The wording of these questions, e.g., "In view of patent EP-P2, can Prosilk prevent Xeracno from freely... (a) harvesting spider silk in Spiez, Switzerland?" etc did not clearly indicate whether any method of harvesting spider silk in Spiez, Switzerland had to be addressed or only the specific method disclosed in [011], i.e. for AA spiders at 16% CO2 plus 1% NO2. Similarly for (b) and [013], as well as (d) and [013]. Similarly in Q.4.

The Examiners' Report shows that only the specific methods were expected. Thus, candidate that discussed also other methods -any within the scope of EP-P2 for Q.3- could have spend considerable effort and time with their (different, but also reasonable) interpretation of the question.

Was the latter awarded with (bonus) marks?

Answer

Questions 3 and 4 were formulated in a way that candidates are expected to discuss the current production methods in these specific locations.

Considering other harvesting methods would involve speculation and was therefore not triggered by the question.

Therefore, no bonus marks were awarded for such discussions.