Our solution for Paper A 2024 - Deploying liquid into a well
Here's our attempt at this year's paper A.
The topic was a device for deploying a liquid into a well, and to a method of treating a well using the device. While the device is quite structural/mechanical, aspects of its use (e.g., use of glue as the deployment liquid) were more chemistry-themed. A main problem seemed to be to draft the device in such a way that it is novel over D2 (which actually is from a more remote field, namely turbines).
You can find our attempt and discussion at the 'read more' below.
Comments are welcome in any official EPO language, not just English. So, comments in German and French are also very welcome!
Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 02-03-2021 22:23"), whereas using your real name or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in or make an account - it is OK to just put your (nick) name at the end of your post.
Nico and Sander
Device deploying
a liquid into a well.
The invention relates to a device for deploying a liquid
into a well, and to a method of treating a well using the device.
D1 describes a cylinder-shaped device to deploy acid into a
well. The device has a container, separated and sealed by a moveable piston into
an acid chamber and a very high-pressure gas chamber.
A disadvantage of the device of D1 is that the container of D1 must be pressurized to a very high pressure (more than 10 atmospheres (1
000 kPa)) to drive the acid out of the container, against the high pressure
in the well. Handling such pressurized containers at the surface before deployment
in a well is very dangerous, because if they collide with other objects at the surface
and/or have leaks, they could explode.
D2 describes a turbine apparatus to generate electricity in
a well. The turbine device is in the form of a cylindrical container having a
first drive chamber, a second liquid chamber and a third low-pressure chamber for
gas.
While the device of D2 avoids the use of a high-pressure gas
chamber, the device of D2 is not configured for deploying liquid into a well.
An object of the invention is to provide a device for deploying
a liquid into a well, which can be handled more safely.
This object is addressed by the device according to claim 1, namely by (...skipped for now...)
Claims
1. A device for deploying a liquid into a well, the device comprising a container (11) which comprises:
- a first entry chamber (21)
- a second chamber (22) for the liquid to be deployed
- a third chamber (23) for gas
- a static disc (17) which separates the second chamber (22) for liquid from the third chamber (23) for gas;
- a movable piston which comprises a piston head (14) and a column (15), where the piston head (14) separates and seals the first entry chamber (21) from the second chamber (22) for liquid, wherein the column (15) is attached to the piston head (14) and extends through the static disc (17), wherein the column (15) engages in the static disc (17) and seals the static disc (17) to seal the second chamber (22) for liquid from the third chamber (23) for gas;
- a first valve (19) provided between the inside of the first entry chamber (21) and the outside of the container
- a second valve (29) provided between the inside of the second chamber (22) for liquid and the outside of the container
Remarks:
- Novelty over D2 is established by the italic part above.
- This claim sticks very closely to the literal wording/phrasing contained in the paper, but as a result, arguably covers some non-working embodiments. If one were to deviate a bit more from the literal wording/phrasing in the paper, the claim could perhaps be written to avoid such issues.
- The static disc indirectly limits the device to having a cylindrical container. If this is to be avoided, one would have to choose a different wording, such as 'static wall', but this wording is not given in the paper (so probably not expected?).
- D2's main embodiment simply uses an opening instead of a 'first valve'. This could perhaps also work for the invention (the operation is then controlled solely through the second valve). We didn’t implement this in the claim since [010] mentions that the valves are "necessary”, which we took at face-value.
2. The device according to claim 1, further comprising a nozzle (35) at the valve (29).
3. The device according to claim 1 or 2, wherein the container (11) is formed from a metal or metal alloy such as steel. [essential? we decided against it being essential...]
4. The device according to any one of claims 1 to 3, wherein the liquid capacity of the second chamber (22) for liquid is 5-10 litres when the moveable piston is in its starting position.
5. The device according to any one of claims 1 to 4, wherein the total volume of the container is 15-50 litres.
6. The device according to any one of claims 1 to 5, wherein the column (15) has a diameter of from 5 to 15 cm.
7. A method of treating a well using the device according to any one of claims 1 to 6, comprising:
- sealing gas in the third chamber (23) for gas at a given pressure, wherein the given pressure is selected to obtain a pressure difference of at least 500 kPa between a deployment location in the well and the chamber (23) for gas, wherein the given pressure in the third chamber (23) for gas is lower than at the deployment location in the well;
- adding the liquid to be deployed to the second chamber (22) for liquid;
- deploying the device into the deployment location in the well using a line (L);
- opening the first valve (19) and the second valve (29).
Remarks:
- The italic part is a late addition to our claim set. We agree with candidate's comments that it seems needed, at least for inventive step, that the pressure in the gas chamber is lower than the pressure in the well; the previous phrasing allowed this to be higher
8. The method according to claim 7, comprising sealing the gas in the third chamber (23) for gas at 100 kPa +/- 10%.
9. The method according to claim 7 or 8, wherein the pressure difference is between 700 kPA and 900 kPa.
10. The method according to any one of claims 7 to 9, comprising reducing the pressure in the third chamber (23) before deployment.
11. The method according to any one of claims 7 to 10, wherein the liquid is glue or acid.
12. The method according to claim 7 to 10, wherein the liquid is glue and comprises:
- 30-60 wt% of bisphenol A epoxy resin,
- 30-40 wt% of a sulfone polymer having a weight average molecular weight of 50 000-100 000 g/mol, preferably 60 000-90 000 g/mol, wherein the weight average molecular weight is measured by light scattering according to ASTM D4001-20,
- 5-15 wt% of a toughening agent comprising liquid polysulfide rubber,
- 5-15 wt% of a curing agent comprising amines.
13. The method according to claim 12, wherein the glue comprises 40 wt% bisphenol A epoxy resin, 40 wt% sulfone polymer, 10 wt% toughening agent and 10 wt% curing agent.
14. The method according to claim 12, wherein the glue comprises one or more polymer additives, preferably phenolic antioxidants.
15. The method according to any one of claims 7 to 14, comprising treating a vertically extending fracture by positioning the device at top or bottom of the fracture, activating the device, and moving the device along the fracture using the line (L).
Another (dependent) claim could be directed at applying the method to make an old well suitable for geothermal usage.
We debated whether to add a separate independent claim directed to a specific variant of the glue, for example as below. This seems be a claimable invention but runs the risk of a non-unity objection.
X. A glue comprising:
- 30-60 wt% of bisphenol A epoxy resin,
- 30-40 wt% of a sulfone polymer having a weight average molecular weight of 50 000-100 000 g/mol, preferably 60 000-90 000 g/mol, wherein the weight average molecular weight is measured by light scattering according to ASTM D4001-20,
- 5-15 wt% of a toughening agent comprising liquid polysulfide rubber,
- 5-15 wt% of a curing agent comprising amines, and
- one or more phenolic antioxidants.
[edit: I corrected claim 14 to refer back only to claim 12]
[edit 2: Added further limitation and remark to claim 7]
[edit 3: Corrected typo in claim 5 to read "15" instead of "5" litre as lower boundary]
I think the client letter said "to coop with the conditions in the well... the container is made of metal or a metal alloy".
ReplyDeleteSo if the container is not made of metal or metall alloy is not suitable for wells. Therefre it is an essential feature, no?
I agree
DeleteI agree. No other material was mentioned even
DeleteI think the claim would be too weak, a competitor could come up with a new, non-metallic material. A device for (suitable for) a well implicitly includes all possible materials.
DeleteI included this limitation. Although obviously incredibly limiting and not something you would do in practice, we have
Delete(i) a device intended for use down a well, and
(ii) something in the clients letter telling us that in order to work / survive the conditions of the well, your device needs to be made of metal / metal alloy.
I would be very surprised if they werent expecting you to include this as a limitation.
> Tony
DeleteI agree with you, especially we have another sentence telling us that "we have competitor manufacutre this device where no well is concerned. Therfore we would like to have a claim in the device itself, rather than a method of using it in the well"(Somehow)
I believe that it means not to mention the well in the device claim.
I did not include it in the independent claim, because a device for deploying a liquid into a well implies that it is suitable anyways.
DeleteI made it dependent on when the "deployment liquid is an acid" because it was the second sentence after referring an acid liquid in that paragraph. I interpreted as a condition for the acid and not a general situation.
DeleteI agree, not in metal seems not enabling to me.
DeleteImpressive. Mine looks a bit similar, It was a real struggle with so many mechanical parts and their interactions. The glue part was easier for me: I had your claim X plus 4 dependent claims to the optional polymer additives from [016], the glue of [017] and the two of [018[.
ReplyDeleteWould you consider "A method of treating a well using the device according to any one of claims 1 to 6" the same as "Use of a device according to any one of claims 1 to 6 for treating a well"?
The paper writes in [15]: To cope with the well conditions, the container 11 is formed from a metal or metal alloy such as steel.
DeleteI read this as the necessary disclosure for enablement. Something like: Out of all the materials we could have chosen, we selected metal to cope with the well conditions. The statement in the paper doesn't seem to rule out that some polymere or other would also be able to withstand the well conditions.
Hello Mr. van Rijnswou,
DeleteAs I understood, if this sentence aims not to exclude other material which would also be able withstand the well conditions. It should use the wording "to cope with the well conditions, the container may be formed from a meal or a metal alloy or any material can wishstand the high pressure".
Without this, it requires special technical knowledge of a candidate to derive that other material can also be used which appears out of the expectation of the exam.
I only wrote "wherein the column (15) engages in the static disc (17) and seals the static disc (17)" is this ok?
ReplyDeleteMe too. I think that if the static disc separates the chambers and the column seals the disc, then the second part of the italic passage is redundant (although comforting to avoid getting a 0 for non-novelty).
DeleteYes, I think this is sufficient! I did the same!
Delete‘The method according to claim 12, wherein the glue comprises 40 wt% bisphenol A epoxy resin, 40 wt% sulfone polymer, 10 wt% toughening agent and 10 wt% curing agent’ - does this specific embodiment not add to 100% so that it cannot further comprise the polymer additives of claim 14?
ReplyDeleteIsn't claim 12 already a problem since it doesn't allow the optional ingredient if the amount of the first component is the maximum, i.e. 60%? Then the amounts add up to 100% when all other compulsory components are present in the minimum amounts, meaning you can't add anything anymore. This bothered me in the exam but since nothing else was given I decided to ignore it.
Deletegood point. I changed it
DeleteNo need to indicate that movement of the piston can expel fluid?
ReplyDeleteThanks so much for the suggested solution! I have one minor addition: I think the dependency of your claim 14 is not correct. Claim 13 specifies a total of 40+40+10+10 = 100%. So, claim 14 being dependent on a "full" claim 13 cannot add a further ingredient, right?
ReplyDeleteGood point. I changed it
DeleteI had one claim as comprising (with all the long list of components) and one for consisting (where all added up to 100%). I think they tested this minor point
DeleteDid it really have to be directed to a well, didn't they say other environments should be protected?
ReplyDeleteI agree, in this case, for deploying liquid in a well is not only suitability, but requires adaption in the size and material for the using in a well.
DeleteI struggled to decide on whether to have the glue claims dependent on the product or the method (considered some sort of dependency on both, allowable per the guidelines, but didn't think it would work here). In the end I had them dependent on the product (better scope), and had a dependent claim on the method referring back to the multiple glue product claims. Any reason why you went for dependency on the method?
ReplyDeleteAlso, just a thought, doesn't your method include uses with 'very high-pressure' gas such that the pressure in the device is higher than the external pressure? I included the gas at 90 - 110 kPa in the method, thinking it was essential for inventive step, and added an dependent claim to an additional step of further reducing the pressure before deployment..
And "preferably" in claim 12/14 - isn't that usually disregarded in the mark scheme?
Hi Sam,
DeleteI also wrote glue claims that were dependent on the product rather than method to give better scope. Glad someone else thought this!
I don't think the product claims should have any reference to the fluids whatsoever, only to the mechanical structure of the device itself. The pressure part in the method is a tricky one for me too, since a pressure difference says nothing about whether the pressures are high or low. I guess the main argument is that the letter clearly said that the absolute values did not matter.
DeleteI also went for the dependent glue product claims to provide wider scope.
DeleteI also did this, because I wanted to claim the intermediate of the device loaded with glue, I am hoping if they penalise it, it will not be a lot
DeleteI think the wording in claim 7 is not clear, since a pressure difference between the deployment location and the chamber includes two embodiment:
ReplyDelete1. the chamber has a 500kPa higher pressure and
2. the chamber has a 500kPa lower pressure.
I think it should be use that the give pressure is 500kPa lower than a pressure in the deployment location.
Exactly, I made that limitation as well :)
DeleteGood point, I've added a note to our claim set above
DeleteThis model solution is very helpful, thank you for providing it for us here. When I attempted the paper I wanted to focus on covering the embodiment of the figure where the device was filled with glue, so I had dependent claims to the device with glue, and others to all the features of the glue, and then a method claim that depended on these claims. I was worried about having too many method claims because the client emphasised that they wanted device protection in countries where the method would not be performed, so I thought fallbacks should ideally be device/product rather than method claims. What do you think about this approach @DeltaPatents?
ReplyDelete(Name: glad it’s over)
In my view, claim 1 should be already novel if it states that „the position head separates and seals the first entry chamber from the second chamber for liquid“ and that „the column extends through the static disc“ („extends through“ is therefore a mandatory feature) , since D2 does not discloses this combination (in fact the column in D2 cannot extend through, because it is too short).
ReplyDeletein D2 the column extends through the static disc when the column stops the rotor.
Delete@Verena In my opinion, this is the crucial point "namely only when it stops the rotor". If it says "the column extends through the static disc", this means no matter in which position. And since "the position head separates and seals the first entry chamber from the second chamber for liquid" is required for the whole position head, it must also have such an effect in any position, which automatically means that the column contributes to separation and sealing.
Delete... of course I meant if claim 1 also states "a static disc (17) which separates AND SEALS the second liquid chamber (22) for liquid from the third sealed chamber (23) for gas", otherwise it makes no sense (copy-paste error :)). In this case, the addition "engages in the static disc (17) and seals the static disc (17) to seal..." for the „column that extends through the static disc“ seems redundant, since a column that extends through the disc must automatically seal and seperate as well - otherwise the disc itself can‘t seperate and seal the 2. and 3. chamber.
DeleteI agree with this.
DeleteD2 states : A static disc 117 generally delineates the second liquid chamber 122 from the
third low-pressure chamber 123, but includes a neck 142 with a valve 143 which
connects the second liquid chamber 122 and the third low-pressure chamber 123 for gas
when the valve 143 is open and seals them from each other when the valve 143 is
closed.
This means that the valve 143 is part of the static disc in D2.
In D2, when the column extends through the static disc, the valve 143 is open and the static disc does not seal the second liquid chamber 122 and the third low-pressure chamber 123.
In the client's invention, when the column extends through the static disc, the static disc still seals the second liquid chamber and the third low-pressure chamber, and that's what you have written in your claim 1
I made a stupid mistake. My solution is 99% the same, but as a 15th claim I wrote "Use of the device according to any of the claims 1 - 6 for deploying a liquid into a well, wherein the liquid is glue or acid."
ReplyDeleteI vaguely remember the tutor in last years Delta Patents course saying that if you have two method claims they could probably only award points for the less good one." Since my use claim is basically another method claim, not even including the essential features of the method claim this would be very bad for me. Could such a marking happen in that case? Thanks for your reply.
I think you 15th claim is not à method and not a use claim. So they wont apply this to you I guess
DeleteI have similar worries, because I went for the glue as a sepearte independent claim. Besides that, my solution is very close to the DP solution.
DeleteCould they really subtract all the marks for the device claim just because a second independent claim was added?
Also, what you say is when à candidate writes two device clairs when only when is expected. In that case they will consider thé weakest one. If they allocate points to two method or devine claims because two clairs of that kind were excepted, you will be getting points for both. In your case, if à use claim was not excepted, you juste lose time to draft it but will be given points for your method claim
DeleteAs I say to venera dont worry Marco. If the indépendent glue claim was not excepted you juste lose time in drafting it, but will be getting point for your device product. What you say would be True only of you had drafted two separated device claims
DeleteSo you think the glue claim won't take any marks from the device claim? I really hope so.
DeleteThank you. I understand, if I would have drafted two parallel device claims, this could have been problematic.
DeleteBut still... can the Delta Patents team confirm this? This has me a bit worried...
DeleteI'd be glad to get an answer from Delta Patents as well. I've seen Nico Cordes commenting, who was my tutor last year. As I've written, this is just a very vague memory of what was said in the course.
DeleteKing of EQE: I'm not sure if you're right, since glue and device are both "product" claims. And the use of a device to perform a process is basically a "process" claim.
@Marco: The thing with the glue is, that in my opinion, it is lacking unity. In real life they would just search your first invention (R.64 (1)). So it would seem fair to me to only grade your first written invention.
@Verena: see R43(2) Without prejudice to Article 82, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use). Imho the glue is a product claim, the device is an apparatur claim. The method is a process claim and the use of the device is a use claim. So, four different categories.
DeleteHeyr Verena, I went through some exreps yesterday.
Delete2022 says: The set of claims must meet the requirements of Rule 43(2) EPC. In the case that more than one claim was directed to the same subject matter, only the worst claim
was marked.
2021: If the set of claims submitted contained multiple independent product claims
directed to the same product (e.g. two different claims to engine components), that do not fulfil the requirements of Rule 43(2) EPC then only the claim which will receive the lower
number of marks is marked.
2019: The claims should meet the requirements of Rule 43 (2) EPC. Therefore if two or
more independent claims were filed for the same subject matter, only the claim
attracting the least marks was assessed.
So I think we both did not claim the same sjm twice. Probably this will lead to a penalty of some marks (I suppose 5-10), but not to the loss of the main claim.
@Verena: I just saw your commenting on not searching the glue. This sounds reasonable, so the marks for the glue might be lost, but not those for the device.
DeleteI think your case might indeed be problematic with regards to the method. I heard from some colleauges that they claimed your claim 15 instead of the proposed method claim. So then this situation might apply, that only claim 15 will be regarded. After thinking about this again, you might have indeed claimed the same sjm twice.
@KingofEQE: Use claims and process claims are the same category.
@Marco: see R43(2) Without prejudice to Article 82, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use)
DeleteThanks for your work Marco. I would get zero points for the method claim and zero for the use claim since my use claim is completely useless (lol). This could make me fail although I have basically the exact Delta Patents solution otherwise. I just hope the process claim is not worth 40 pts..
DeleteDo you think they will also cancel all my dependent method claims? Funny how one sentence too much in the worst case scenario can decide between +/-50 points.
DeleteHier noch eine Passage aus 2017 Chemie: Bewerber, die zwei oder mehr unabhängige Erzeugnisansprüche abgefasst haben, verloren 20 Punkte aufgrund eines Verstoßes gegen Regel 43 (2) EPÜ oder Artikel 82 EPÜ. Bewerber sollten nicht einfach mehrere unabhängige
DeleteAnsprüche in der Hoffnung formulieren, dass ein guter Anspruch dabei ist.
Ok, aber das scheint dann aber (hoffentlich) wirklich nicht auf die Konstellation Vorrichtung - Erzeugnis zuzutreffen, wie im Fall vieler hier, wie mir, bei der Konstellation Vorrichtung - Kleber. Aber ich denke nicht, dass das in deinem Fall so problematisch sein wird. Der Vorrichtungsanspruch ist sicher wesentlich wertvoller als das Verfahren, mein Tipp wäre 40 Punkte Vorrichtung, 20 Punkte Verfahren.
DeleteSo in 2017 Candidates drafting two independent product or method claims directed to same subject Matter did lose half the points allocated to the expected single claim.
DeleteHi Verena. I don’t think it should be penalized such that only your “useless” use claim is marked. In 2013 Ch exam there was a method of making artificial snow using the granule claim 1 and also marks were awarded for use of the granule of claim 1 for making artificial snow.
Delete@confused: wow, this is the exact same thing!!! And they even expected the use claim in 2013 Ch 👏🏻 thank you so so much, it's a great relief right now!
Delete@marco: ich würde für fehlende Einheitlichkeit gefühlt 20 Punkte Abzug erwarten, wie im oben zitierten Bericht (art.82).
Meinst du den Bericht von 2017? Aber war nicht auch da die Situation, dass die Ansprüche auf den gleichen Gegenstand gerichtet waren? Das wär bei Kleber - Vorrichtung ja nicht der Fall.
DeleteIch denke der Absatz gilt allgemein, weil nicht nur 43 (2) EPÜ, sondern auch Artikel 82 EPÜ zitiert wurde, der ja erstmal nichts damit zu tun hat, ob zwei unabhängige Ansprüche auf denselben Gegenstand gerichtet sind, sondern, dass nur eine Erfindung geschützt wird.
DeleteAber dann macht es doch null Sinn, dass das 2013 in Ordnung war?! Also ich wünsch dir das natürlich, aber ist das logisch?
DeleteAber ich verstehe deinen Punkt… Ja blöd irgendwie, ich hab wirklich nicht gedacht, dass ich mir da so die Probleme aufreisse. Da ist doch so viel gestanden zu dem tollen Effekt mit der Temperaturbeständigkeit, und spätestens bei der Norm war ich mir sicher, dass ich das beanspruchen soll. Weil die Verwendung im Bohrloch beschrieben war, hab ich gedacht dass das schon ok sein wird… sowas ärgerliches.
DeleteNein, es ist für mich nicht logisch! Ich versuche lediglich eine rote Linie in den Prüfberichten zu finden. Die Hinweise verdichten sich aber, dass es eventuell ein Verständnisproblem auf unserer Seite bezüglich Verwendungsansprüchen geben könnte.
DeleteFür die Prüfungskomission scheint ein Anspruch auf die "Verwendung des Gegenstands zum..." entgegen dem, wie ich RiLi IV 4.16 lese nämlich kein Verstoß gegen 43(2) zu sein, denn es heißt im selben Bericht aus 2013:
"Der Anspruchssatz hatte die Erfordernisse der Regel 43 (2) EPÜ zu erfüllen. Wurden
zwei unabhängige Ansprüche für denselben Gegenstand eingereicht, wurde
unabhängig von der Reihenfolge der Ansprüche nur der schlechteste Anspruch
bewertet. " -> Entweder wir wissen nicht was ein Verwendungsanspruch ist, oder die Prüfungskommission? Weiter unten hat zudem jemand geschrieben, der Verwendungsansprüch könne breiteren Schutz bieten. Das stimmt mit dem Prüfbericht 2013 überein, denn der Verwendungsanspruch:
"Verwendung des Granulats aus Anspruch 1 für die Herstellung von Kunstschnee."
enthielt nicht einmal die essentiellen Merkmale des Verfahrensanspruchs:
"Verfahren zur Herstellung von Kunstschnee umfassend das Inkontaktbringen der Granulate nach Anspruch 1 mit Wasser, bis die Granulate mindestens das fünffache
Gewicht an Wasser bezogen auf das Gewicht der Granulate absorbiert haben, sowie
die anschließende Kühlung."
Das ist im Prinzip genau was ich gemacht habe, ohne einen Gedanken an 43(2) zu verschwenden. Vermutlich weil ich das Schneegranulat Beispiel tatsächlich kurz vorher auch geübt hatte.
Ich drücke uns die Daumen, dass wir maximal die Punkte für den vergeudeten Anspruch verlieren. Ich würde wohl eine Beschwerde einreichen, wenn ich negativ wäre, weil die Prüfberichte sollen ja dazu dienen uns einen Anhaltspunkt zu geben, was erwartet wird. Und ohne den Fehler würde ich mit >90% rechnen aktuell, also das kanns nicht sein..
Das Kapitel Einheitlichkeit könnte am Dienstag übrigens essentiell sein, da gibt es ganz einfache Tests um diese festzustellen. Vielleicht hatten in diesem Fall echt einmal die Chemiker (ich) einen Vorteil, weil die tendentiell wissen, dass thermische Beständigkeit jetzt keine ungewöhnliche Anforderung an einen Klebstoff ist.
Man sollte vielleicht nochmal festhalten, dass die DP Lösung auch keine offizielle ist, insofern ist die mangelnde Einheitlich lediglich meine persönliche Meinung. Vielleicht wollten sie den Klebstoff doch hören, wer weiß :-D
DeleteGenerally, the Exrep of 2013 appears to be a great piece of evidence for an EQE-appeal! :-)
DeleteTout n'est donc pas si noir, les amis..
DeleteMy product claim was very similar but I put a functional feature in it, “when the valves are opened in a well, this happens” does this mean I’m likely to get 0 for this claim now because it’s claimed in use? T_T
ReplyDeleteI think it depends on the wording. Formulations like "arranged/configured to do X when Y" have appeared in previous A papers. See e.g. the model claim 1 in the examiner's report for papers A 2023 - there's a peart which reads "arranged to apply electro Force when worn on the skin" or something along the lines.
DeleteAlso I suppose that 0 points are awarded only when the claim Is not novel or extremely limited.
Certainly not, Katie. Without the "arranged/configured to" it is probably a clarity issue, which is not penalized much. If you wrote "arranged/configured to move, when the valves are opened in a well" to me it is not even limiting much.
DeleteThe client explicitly asked to not claim for the method of treating the well with the device but should we had to include it? I thought the Exam this time wanted to focusing on product claims..
ReplyDeleteI think it means not only
DeleteI agree with anon. I believe what the client said was that not all EU countries have wells, hinting that a method claim of using the device inside a well would not be enough by itself to provide the required protection to the client - I.e. telling you that alongside the method of use, you also need a separate claim just for the device in isolation.
DeleteI definitely think a separate independent claim relating to the method of using the device was expected.
Yeah I think you guys are right.. but I think the term “not just” can be also interpreted as “don’t just” which implies only device claim. For examples, if someone says “not just standing there, come over here”, it can be interpreted as “don’t just standing there but come over here”. But regarding the context of the patent situation described by the client, I think you guys are right.
DeleteI wrote the same as the suggested answer above, although I explicitly limited the claim to “A cylindrical device…”. I note you believe the cylindrical shape is inherent because of the static “disc” - do you think my explicit limitation to cylindrical will be penalised?
ReplyDeleteI don’t think you will be penslised for this. From my point of view, cylindrical is implied and implicit features are usually not penalised (because they are ”obvious” what is meant or has extrinsic qualities). For example in 2023 the presence of gaps was not penalised because it was implicit and both with and w/o were accepted.
DeleteThanks for your model solution. Like some others I also claimed the glue composition in dependent product claims rather than dependent method claims.
ReplyDeleteI further included the 'pressure difference of at least 500 kPa' in the independent device claim rather than the method claim, because the client letter explicitly mentioned that the pressure difference needs to be at least 500 kPa for the device to be workable.
I claimed this as "wherein the moveable piston (14, 15) is configured to compress the chamber (22) for the deployment liquid when the pressure difference between the first entry chamber (21) for well fluid and the third chamber (23) for the gas is at least 500 kPa."
Any thoughts on this?
Personally I've decided against adding the pressure into the device claim because I couldn't come up with the right wording. Regarding your solution, I don't think that the piston "is configured to compress the chamber...when the pressure difference is at least 500 kPa" because it will start compressing even with much lower pressure differences, just not enough for the device to function adequately.
DeleteI agree with Martin. I couldn't figure out the wording for including a pressure limitation in the device claim that I was happy with - everything seemed to relate to the device in use (I.e. Just before or during the device being placed inside the well) which suggested to me that including that limitation in the device claim wasn't what the examiners were after
DeleteD2 specifies in the last paragraphs that instead of a opening 19, a control valve can be used.
ReplyDeleteI think you might be misremembering - I thought the last part of D2 talked about a controller of some kind being used to control when the valve opens, not including a separate control valve
Delete> Tony
DeleteI checked.
[009] of D2: In an alternative embodiment, a control valve may be provided instead of the opening 119 to control ingress of fluid into the drive chamber 121.
Thus this is a second valve controlling the pressure in first chamber so as to control the ingress of fluid
Just double checked any you're correct - my mistake!
DeleteThe device claim is almost the same as mine, only I've specified that the column is arranged to seal the static disk so that the liquid from the chamber 22 for liquid cannot enter the chamber 23 for has, WHEN THE DEVICE IS IN USE. Do you think this is acceptable?
ReplyDeleteNeutralization for the metal feature? Since the exam material is misleading?
ReplyDeleteYou can dream about it
DeleteI think that if métal is considered à useless limitation only a couple of points will be lost here
DeleteI don't think it's misleading, I think DP have gotten it wrong. At least in the EN version of the exam, it was pretty clear that the device needs to be made of metal / metal alloy for use in a well
DeleteUnnece. limitations are usually penalized with -5 to -10 points. So, not just a couple of points.
DeleteFor Tony,
Deletethe english version did not say "need to be made of". I think you got it wrong
Losing 5-10 points for a clearly unnecessary limitation seems fair enough, but here it seems that half the candidates added it and the other half did not.
DeleteMain request: neutralize for all
DeleteAuxiliary request: - half the points compared to clearly unnecessary limitation
🙏
As a comment to Tony as well. Did they not say that they also wanted to protect other environments than wells as their competitors were operating in other types of environments?
DeleteMaybe I overthought that but I went a bit broader, somthing like "... deplyoing liquid into a deployment location, preferably a well"
@Mike
DeleteSorry if my language was unclear. I dont recall the exact language used in the paper.
The english version said something along the lines of "to operate in the conditions of the well, the container must be made of metal / metal alloy". I understood this to mean that in order for the device to work inside of a well, it must be made of metal/alloy. Based on the language used in the english version, I dont understand how you could justify not having the device be made of metal/alloy.
Additionally, although this sentence was next to another sentence discussing the use of acid as liquid, I think that's a red-herring, as the sentence discussing the metal/alloy was explicitly discussing the conditions of the well.
@Magnus
I dont recall the language used in that discussion enough to comment. I thought that was the paper prodding candidates to avoid explicitly claiming parts of the well in their device claim (i.e. the device can be used in holes in the ground which arent wells and therefore dont have features such as metal casings, so including this in your claim as it is too limiting). But that the limitation of metal / alloy would still apply for the device to work in the claimed conditions.
The A paper is now available in the compendium. The exact wording of the paper implies that a metallic structure of the recipient is an essential feature for the device to be used in a well. Regarding the fait that some competitors produce devices in countries without wells, it is Just an indication for the candidates to draft a product claim and not only a method claim. It does not imply that the device is to be used anywhere elle.
DeleteWhy not adding a claim directed to a use for the device of claims 1 to 6 to treat a well ? It would give a broader protection than the method claim..
ReplyDeleteUse of the device ..
DeleteCan you explain why the use claim would give a broader protection?
DeleteBecause it does not include the step of the method as limitation. It only implies usine the claimed device to treat a well
DeleteDoes a use claim not need the limitation of the pressure difference and all the other essential features?
DeleteWere they only essential? A skilled person intended to use the device of claims 1-6 to treat a well would not by himself: "take the gas in chamber 3 to the appropriate pressure value given the pressure in the target well, fill the chamber 2 with glue, take the device to the appropriate place in the target well, open the valves?
DeleteAren't these steps obvious for the skilled person, especially in view of the existing device (D1) in the field that work similarly (except indeed for the pressure value).
Otherwise, the device itself is novel and inventive and so is the use of it for treating a well.
Danke für eure Lösung. Ich habe eine Anmerkung zum dritten Punkte unter dem Delta-Musteranspruch: Eine "Scheibe" impliziert nicht, dass die Scheibe und damit auch Behälter zylindrisch/rund ist. Der Begriff Scheibe kann sich auch nur auf das Dickenverhältnis beziehen, was hier egal ist. Der Kolben könnte genauso in einem Quader entlanggleiten, auch wenn die Abdichtung schwieriger wäre.
ReplyDeleteWas meines Erachtens im Musteranspruchsatz fehlt ist das Merkmal, auf welcher Seite die Säule am Kolbenkopf angebracht ist. Erst damit ist eindeutig definiert, dass die erste, zweite und dritte Kammer auch in dieser Reihenfolge angeordnet sind. (sonst wären auch Varianten eingeschlossen mit einer ersten Kammer in der Mitte.)
Im Verfahrensanspruch habe ich die explizite Angabe der Leine weggelassen. Mit welchem Mittel das Ablassen heraufholen erfolgt ist unwesentlich.
Hey Antje, ich bin auch so vorgegangen, und habe die Unter- und Oberseite mit aufgenommen, und festgehalten, dass die Säule an der Unterseite angeordnet ist. MMn ist das keinesfalls einschränkend, jedenfalls aber präzisiert es den Anspruch.
DeleteI had the glue in the method as "consisting of" with the additive being optional. The delta solution now covers glues that may have all other kinds of ingredients as well, something that is not supported by the client's letter.
ReplyDeleteThank you, DeltaPatents for providing your attempt at the solution and your valuable comments. It helps to put a mind at ease during this stressful situation!
ReplyDeleteAlso: I think metal was not mentioned by either D1 or D2 as material for the device and thus at least new and based on the SotA alone also inventive in my eyes ("alternative device"). But I wasn't brave enough to try this :-P
ReplyDeleteThanks DeltaPatents for providing the answers.
ReplyDeleteA few points which I would like to raise for discussion, but also for attention of the examining committee in case they are monitoring the blog.
1- There were many discussions so far about whether the nozzle is necessary or not for novelty. I concluded, wrongly, that the sealing of the column is not enough for novelty over D2. However, D2 indeed says that there is a loose fit, therefore there is on sealing. However, the drawing Fig. 1b of D2 implies both cases where there is a loose fit and where it is sealed. Have a look at Fig. 1b of D2 and judge for yourself. For me, sealing is disclosed, because the piston is completely closing the neck as shown by the figure, and although this is not disclosed by the text, it is disclosed by the drawing, and therefore is prior art. Admittedly, however, if you go with this logic, Fig. 1b does not disclose that the column is sealing, but rather the piston head is sealing. As a result of the above, Fig. 1b completely misled me to add the nozzle in claim 1.
2- It is arguable whether the proposed device claim is workable without having the feature of one surface of one side being larger than the other surface, thereby allowing a force from one side to the other. Without this feature, the device would not work. You may argue that this is implied by the fact that the device has a column which is extending through the third chamber, thereby implying the surface is lower on the "lower" side. However, this is assuming the device is perfectly cylindrical, and not for example, conical, or shaped such that the surface on the "upper" side is not automatically higher than the "lower" side merely by the presence of a column.
3- I think the claims above miss to cover a device which has acid or glue inside. Such subject-matter is only added the method claims, and therefore the coverage is when the device is used in the well, and not when the device is on the shelf having glue inside thereof. Therefore, in my view, the subject-matter of claims 11-14 should be included as dependent device claims, not as dependent method claims, to increase the scope of protection.
4- DeltaPatents is concluding that the disk implies a cylinder, but this is not completely true. I think the cylinder should be part of claim 1. Claim 1 includes the case that the device is conical, for example, which goes beyond the client's instructions.
5- Although I also did the same, I think the wording "is in its starting position" in claim 4 is unclear, what is a starting position?
JOHN/MAHMOUD, There were not many discussions about the nozzle. From what we could read, only one candidate (you) choose to include it in claim 1, which is obviously and clearly a useless limitation.
DeletePlease answer my comment instead.
DeleteJust did it. The nozzle is clearly not needed. The third chamber is only sealed in D2 when the valve is closed, the Rod is not used to seal the chamber
DeleteYou're not answering my comment :-) and I'm not repeating myself. Thank you.
DeleteRegarding your 2. You give the ans wer yourself, claimong that the column cross the static disk to enter the third chamber is enough to make the device work.
DeleteMahmoud, I’m sorry but it seems that you are overthinking and trying to justify your ”nozzle solution”. Regarding nr 1, you overcomplicate what is shown and what is not shown in the figures. You know well based on a Case Law that you cannot derive dimensions from figures, so you have to rely on the text supporting the figures. It says ”loose fit”, so you cannot assume anything else. I am sorry you did not do as good as you wanted to, but it feels a bit agressive attityde.
DeleteRegarding nr 2, you also seem to overcomplicate things. You should not use any own knowledge in this paper, and derivations about forces etc seems to be overdone.
Regarding nr 4, I tend to agree with DP.
Regarding nr 5, yes, that step might be unclear, but there was not anything else given, hence = ”accept the fact”.
Thanks for responding "my 5 cents"
DeleteSure, we can agree or disagree, and I admit that my interpretation is too creative, but it is not false. Also I am not sure why you consider my argumentation "aggressive attitude"? We all have the right to argue and think :-) It's in the profession.
Point number 1 may indeed be my fault, no shame in admitting a mistake, but points 2-5 are well justified, in my opinion :-)
For point number 2, I am not overcomplicating things at all, the paper itself described how the device works and that it needs to have the "upper" surface bigger than the "lower" surface, putting "upper" and "lower" in parenthesis because it can also be the other way around. The device would definitely not work, based on the paper, if the surface areas would be identical. I am not using any general knowledge here.
For point, I'm sure there would be a better way to describe it also based on the paper, unfortunately we don't have the paper yet to prove this.
I also think it is a bit of a stretch to say that disc means cylinder, I also think that "disc" does not unambiguously imply just a solid flat surfaced circle with a set thickness as a frisbee would also typically be referred to as a disc, same with old CD/DVDs which has a hole in it and the rim is not entirely shaped similar to the reading area etc.
DeleteRegarding your 3. What added protection do you get claiming glue or acid contained in the second chamber when most of the time the device is free of glue/acid? It is specifically explained that the liquid is added juste before use...
ReplyDeleteYou gain protection of the device containing liquid, which is an important embodiment that the client was talking about the whole time, I think he referred to if as "unused condition" or something.
DeleteIn other words, you can also sell the device having liquid already.
So in this case you have both protection without liquid (first claim) and protection with liquid (this claim)
With the above drafted claim 1 you get protection for the device with or without à liquid in chamber 2.
DeleteAnd look i am with you on your point 4. All devices in the paper are cylindrique so i reckon we should claim this shape and the présence of the station disk does not implies it in my opinion.
ReplyDeleteAnyway if the disk implies a cylindrical shape of the device then claiming à cylindrical shape is not really a limitation so shoud not make you lose any point
ReplyDeleteIs it just me or this claim 1 doesn’t really solve the problem over D1 of dealing with a very high pressure device on the surface? The gas chamber in claim 1 above can have any pressure, it may have the very high pressure as in D1 that would push the piston up as in D1 thereby expelling liquid if the valve and nozzle is on the upper side as in D1. In my opinion, some definition of pressure in the gas chamber and some definition of the column diameter was needed for the claim to be inventive. Some definition of pressure lower than the defined “very high pressure” would solve the problem over D1. The column diameter would ensure that there is always an imbalance in the pressure even at not greater depths in the well. Note also that D2 said something about the device working at at least 800 kpa pressure depths.
ReplyDeleteI agree.. also limited as it seemed to be an essential feature to me
DeleteHey,
ReplyDeleteThe method claim as phrased now does not rule out high pressure.
So the “given pressure” can equally be high pressure with risk of explosion, so not safe, hence technical problem not solved.
So pressure of 100 kPa plus minus 10% is needed to ensure safety
The essential appears to be: pressure in gas chamber is at least 500kPa lower than pressure in deployment location.
DeleteThe letter says: actually the exact pressure used is not important somehow
Yes, I thought 500 kpa or less. There was something in D2 that indicated that even less than 100 kpa down to 50 kpa is possible. So 500 kpa or less might be essential as it would always allow a difference of 500 kpa even at the deepest working area of the well (which according to the letter was 1000 kpa).
ReplyDeleteAlso the column size explanation was cryptic. The letter said that it should be relatively broad like 10 cm. And then said they “expect” 5cm to work which means not tested yet and the “certainty” is around 10-15 cm. It was very cryptic around the diameter. But it seems like some sort of diameter definition might be needed because D2 last paragraph made the device also suitable in geothermal field and it can in principle expel liquid, the claim also covers acid. The sealing and extension of the column seems inconsequential for inventive step. So where is the inventive step without the diameter definition?
Quite a tricky exam.
D2 does not say that less than 100 kpa down to 50 kpa is possible. It discloses the following:
Delete"Before deployment, we evacuate the low-pressure chamber so that it is at 0.5 times
atmosphere pressure (50 kPa). To be worthwhile, the pressure in the well at the depth of
deployment should be at least 8 times atmospheric pressure (800 kPa)."
Thus, before deployment pressure 100 kPa + or - 10% is sufficiently far from 50kPa and is required to avoid the high pressure inside the device before deployment, and is
provided with a sealed chamber 23 containing gas (usually air) at a pressure that is
around 1 atmosphere (100 kPa). This is as per paragraph 007 of the client's letter. As for 500kPa, it is not the feature that makes claim 1 inventive. Since method or use claim 7, as drafted by deltapatents, is taking all the features from claim 1, the feature of 500kPa is only needed for the adequate performance as per paragraph 0013 of the Client's letter. The reduction of pressure is recommended only before the deployment as per 0013 in the gas chamber. An alternative feature is to let the environmental high pressure at lower depths to play its role for ensuring the reduction in the pressure (see para 0013 of the Client's letter).
Hi Marinate. Thanks. I agree that the pressure only might not make claim 1 inventive over D2 that’s why I think the column diameter might be necessary?
DeleteAlso I meant that D2 confirms that even less than 100 kPa in the gas chamber is possible for example 50 kPa. Even though the client did not mention this low value, it was useful in realizing that a claim to a device having a pressure 500 kPa or less makes sense.
What did you do to make the device claim 1 inventive over D2?
Same for the method claim. Simply saying that the difference is 500 kpa is not enough. The gas chamber could have a higher pressure. It had to be defined that the difference is 500 kpa and the gas chamber is lower than the outside.
ReplyDeleteRegarding the difference of 500 kPa being such that it is lower in the gas chamber - good point, I've added a note to our claim set above
DeleteMy independent device claim is almost the same as yours. However, I did also add a functional feature defining the position to be movable from a first position to a second position so that the second chamber is compressible resulting in the liquid being ejectable from the second valve.
ReplyDeleteI added this feature to improve clarity. However, I tried to formulate it very functional to not add a method step into the claim.
My independent device claim is almost the same as yours. However, I did also add a functional feature defining the piston to be movable from a first position to a second position so that the second chamber is compressible resulting in the liquid being ejectable from the second valve when the piston moves from the first to the second position.
DeleteI added this feature to improve clarity. However, I tried to formulate it very functional to not add a method step into the claim.
Delta patents, thank you for your solution.
ReplyDeleteMy device claim is similar as that in your solution, but I did make some mistakes by not mentioning the disc (17) as a component comprised by container (11). In my claim the disc comes up only after "wherein..." in the context of piston column (15):
1. A device (D) for .... comprising
a container (11) formed from a metal or metal alloy,
a moveable piston (14, 15) comprising a piston head (14) and a column (15),
two valves (19) and (29),
wherein the container (11) is divided into a first entry chamber (21), a second chamber (22) for liquid and a third low pressure chamber (23) for gas,
...
wherein the column (15) is attached to the piston head (14) and extends through a static disc (17) so that the column (15) engages in the static disc (17) and seals the static disc (17), which separates and seals the second chamber (22) for liquid from the third chamber (23) for gas,
....
(I just disclosed the relevant part)
I am worrying now, how bad my mistake (mentioning disc only in the "wherein....") would be... Would it cause a clarity issue or more worse one such as novelty issue?
Regarding the discussion whether the feature "the container (11) is formed from a metal or metal alloy" is essential, I am the opinion that this feature is essential, as otherwise the device would not work for well condition. However, The device is "for deploying a liquid into a well", which is to be interpreted as suitable for deploying a liquid into a well. Thus, this functional limitation already implies that the container is formed from a metal or metal alloy, because the device with a container made from other material than metal or metal alloy would be not suitable for deploying liquid into "a well". I think defining the device only with "for deploying a liquid into a well" might provide still a bit broader scope but limiting the container with metals and metalalloys, which make the container "working" in a well condition would be not unnecesary limitation.
ReplyDeleteI agree with you, and I like your conclusion that it doesn't make a great difference if you put the "metal" feature in the claim or not. I decided in the exam that it was not essential, because D1 and D2 did not mention metal, and because the text only said "to cope with the well conditions, that device is made of metal" or so. I interpreted this such that selecting metal is one way to cope with the well conditions, but not the only way, thus I decided that it was not a mandatory feature. But I agree that it is also justified to conclude that metal is essential.
DeleteI also think it is essential. I just checked part A of the 2021 EQE. In this exam they expected us to add “the ceramic oxide layer has a thickness of at least 25 um” to the claim. Back then, the client only wrote “the ceramic oxide layer preferably has a thickness of at least 25 um, otherwise thermal insulation is insufficient.”
DeleteEqE2021 specified that otherwise was insufficient. In 2024, it is not written anywhere that if it is not made of metal it will not cope with the well conditions. EQE2021 rational does not apply
DeleteIt said "preferably" meaning there may be other ways to make it sufficient. It's the same reasoning as here.
DeleteIf it really is not considered essential and results in a loss of points, then it's just guessing imo. There was no indication anywhere that it could be made of other materials. Apart from the fact that it is also logical: what other material should the container be made of, plastic or wood?
You can play around as much as you want. The fact is that nowhere in the clien letter is written that the container needs to be made of metal.
DeleteLiterally the clien letter states: "To cope with the well conditions, the container 11 is formed from a metal or metal alloy such as steel".
however, your interpretation is "to cope with the well conditions, the container 11 MUST be formed from a metal or metal alloy such as steel".
As you can see, both sentences are not the same, niether have the same meaning.
You are right. They are not exactly the same, thus we are having this discussion here. Also these have not the exact meaning:
Delete"To cope with the well conditions, the container 11 may be formed from a metal or metal alloy such as steel".
"to cope with the well conditions, the container 11 is be formed from a metal or metal alloy such as steel".
Also here, not the exact meaning:
"the ceramic oxide layer must have a thickness of at least 25 um, otherwise thermal insulation is insufficient."
the ceramic oxide layer preferably has a thickness of at least 25 um, otherwise thermal insulation is insufficient.
of course you can play it as, if it is completely obvious, that we have an optional feature here, but for sure it is not.
> Done
DeleteI follow your logic here
The Examiner's report in 2021 A states explicitly: A claim which is only supposed to differ from that of document D2 by being configured to be useful at 1600°C, but which did not contain the essential features (thickness, superalloy) making it suitable for this use lost 20 marks (no marks are deducted if the essential features are present). This formulation is considered to be unclear, as the limitations implied by the feature cannot readily be determined.
For the same logic it is also not clear to simply stating that the device is used for well without claiming a metal container, since the essential feature (metal container) making it suitable for using in well condition is missing.
I think the metal feature also solves some person's doubt about whether it is necessary to specify that the device is suitable to be used in high pressure environment. It is not clear from the claim now that how the device is suitable to be used in a deployment location with high pressure, since in a well, there is also place with low pressure (see D2).
DeleteFurther, I went to an indepent claim of glue comprising all the components of the commercial product as well as the phenolic antioxidants (without percentages of each component). I thought, this glue claim would be new (within the prior arts given in this exam, i.e. over the commercial product) and inventive (technical effect is given w.r.t thermal destoration). I also worried about the unity issue... but I thought the device, the method and the glue share a common inventive concept, as they are to be applied in a well condition characterised by a high temperature (this condition deals with thermal destoration).
ReplyDeleteI also claimed the "preferred" glue with the fixed weight percentages as an independent claim. I also felt that the phenolic antioxidants deserved a dependent claim (dependent on the glue claim). However, I was also initially troubled by the fact that the given weight percentages for the "novel" glue already amounted to 100% (40%, 40%, 10%, 10%). However, I think one could argue that e.g. 40 wt% covers a range from 39.5 - 40.4%, and so on. Thus in total one may include up to 2wt% of the phenolic antioxidants. I didn't include any "wt%" of the antioxidant though because in my view this is not required as it is clear from the wt.% of the other ingredients.
ReplyDeleteAny thoughts on that?
The trickey part for me was:
ReplyDelete- D2 DOES eject liquid on the way up, so it can be deemed suitable for well treatment / liquid deployment
- D2's gas chamber is also "sealed" at some point when the turbine is closed
- Therefore, the only difference with D2 is the "sealed" gas chamber which doesn't let liquid in via the column/static disc arrangement
- I couldn't find a tech effect of this, so said that pressure close to atmospheric pressure is more safe than both low and high pressurised containers
I also think the gas chamber is "sealed" when the turbine closes.
Deleteclaim 5 should state "15-50 litres", not 5 to 50
ReplyDeleteThanks, that was a typo, corrected now.
DeleteAlso very confused how a known branded glue can be an independent claim?
ReplyDeleteAlso the preferred values of the glue composition need a specific tehcnical effect shown in the letter for it to be a selection invention.
Dear All,
ReplyDeleteDo you all know how much is it going cost me for having the following features in the independent product claim:
the "sealed chamber (23) configured for holding gas at a pressure of 100 kPa with +/-10% deviation on the pressure, wherein the pressure within the sealed chamber (23) has at least 500 kPa of pressure difference with respect to the pressure at the deployment location outside the container (11)"
Otherwise my product claim 1 has all the features from Deltapatents solution of independent claim 1.
Nobody knows that. But I see a clarity problem here rather than an unnecessary limitation. From the exam reports I have read, clarity problems are generally not assessed so strictly. Most times 5 points deduction, maybe 10 points.
DeleteAfter some consideration of formulating the method claim similar to your model solution, I decided on a broader usage claim. Because I didn't see any useful way to define a method without reference to the device and therefore didn't see any advantage in the limitations.
ReplyDeleteI would appreciate a short comment on how the claim is assessed and whether a few points can be expected.
The claim was something like:
Use of the device according to any one of the preceding claims, wherein there is a pressure difference of at least 500 kPa between the application point in the wellbore and the gas chamber.
The reasons for choosing the claim:
Novelty and inventive step is provided by the new and inventive device.
The pressure difference is described as essential for use.
However, a similar device is known from D1. The person skilled in the art thus knows the essential process steps that are necessary to use a device for dispensing liquid. The person skilled in the art therefore knows that the gas chamber must be filled as intended, that liquid must be filled and that the device must be moved to the desired position.
Therefore, it does not appear necessary to include such steps in the claim so that they are clear and executable.
I also saw unnecessary restrictions due to the individual procedural steps.
As can be seen from [007] and [011], gases other than air can also be provided in the chamber 23. It can therefore be assumed that the gas will not be filled for every use. Nor does it say anywhere that this is necessary.
As can be seen from [006], the patent is intended to provide protection in several EU countries, although the countries in which such devices are manufactured and the countries in which they are used do not completely overlap.
For these reasons, it seemed to me to be too restrictive to require the gas to be trapped in the chamber (as part of the claim). This would allow the device with a filled gas chamber to be distributed (and serviced) in countries without protection, so that they can be used elsewhere without falling within the scope of the method claim.
Furthermore, the leash seemed to me to be an unnecessary restriction, as alternatives, such as a rod (compare rod 15), are well-known.
Michael from March 08, 2024 2:11 pm, I think method claim 7 formulated by Deltapatents is a "use claim". But I don't understand why they consider use claim 7 needs to have the feature that the given pressure in the third chamber (23) for gas is lower than at the deployment location in the well. Use claim 7 takes all the features from claim 1, at least that is what is described in Guidelines F, IV, 3.8 and F-IV, 4.16. If claim 1 is novel and inventive, then use claim 7 should also be novel and inventive. Maybe someone from Deltapatents can clarify.
Delete@Marinate - You are correct that the proposed claim essentially amounts to a use claim. But regardless of whether it is called "use" or "method", I would be interested to know whether the procedural steps are really necessary and how the other interpretation affects the evaluation.
DeleteIn the French version of the paper, there was at least one missing word in D2, Paragraph [0006] second sentence:
ReplyDelete"la tige 115 ensuite à travers la soupape 143 dans le réservoir basse pression 123...".
The sentence as it is in the paper does not mean anything.
One had to guess what was meant here (obviously getting confused and losing time on it, in comparison with other candidates taking the exam in DE or EN, and taking the risk to misinterpretate).
Furthermore, it has an impact over the exact teaching of D2 since the sentence could be given a different meaning based on the chosen missing word(s).
I think this sentence was an important one of D2.
Candidates are not supposed to fill in blanks in the paper, and all candidates should be given the same opportunities, which was not the case here.
I am considering reporting the problem to the EPO, what is the best way to do it?
They have a complaint form:
Deletehttps://forms.office.com/pages/responsepage.aspx?id=PW17qF7Ym02HBGrtdqSURNkmJkEpg0dKjz2LkZIu9UhUNDVMV0RFV0hGSUNCR0pRMkxDTzZNVzNXVi4u
That is a serious disadvantage actually.
https://www.epo.org/en/learning/professional-hub/european-qualifying-examination-eqe
Deleteunder "EQE online" is a link to a form for each paper.
(However, this blog is about Paper A. Maybe you want to post it in de blog about Paper D)
indeed a word is missing, report it as soon as possible. You should do it yesterday. Not sure if today will be valid
DeleteThanks guys for your answers.
DeleteFor information to all, this is from the EPO form:
Delete"Candidates wishing to lodge a complaint pursuant to point I.8. of the Instructions to candidates concerning the conduct of the examination must do so at the latest by the end of the day on which the last examination paper takes place (15 March 2024, 23:59 CET), by filling in this form."
Any neutralizations?
DeleteCompensation for french speaking candidates shall be fair enough. How one is to guess a missing word or more?
DeleteSorry. Just saw that you are talking about document D2. I thought you were talking about the D2 Paper at first.
ReplyDeletesimply would like to know how much points could be deducted in the device claim for not specifying "in a well" but limiting "the container is made from metal or metal alloy".
ReplyDeleteI dont think metal feature will result in a loss of point given the paper wording.
DeleteReminder: Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 06-03-2024 06:03"), whereas using your real name, your initial or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in, not make an account, nor give your email address; you can us post Comment As --> Name or URL: Give your name, nickname or your initials and use them consistently.
ReplyDeleteHi Roel, what do you think about the missing word in the French version of D2 document reported by some here? Do you believe the exam jury will take this fact into account during correction or do you recommend fill in a complaint right now?
DeleteAre you sure that a Word is missing? Which word is missing?
DeleteWhat is the effect on the meaning of the sentence? What is the effect on your answer?
The missing word is “s'étend”. The comparison between EN and FR is:
Delete“the rod 115 then extends through the valve 143 into the low-pressure chamber 123…”
“la tige 115 ensuite [s'étend] à travers la soupape 143 dans le réservoir basse pression 123… ”
I sat the Paper A in French.
In my opinion, there is indeed a missing word in FR.
I remember that during the exam it seemed that a word was missing in that place, but I thought I didn't realize it well because I am not a French native.
However, I interpreted the missing word as “s'étend”.
I think a compensation for French speaking candidates shall be fair enough.
Cristina
@Roel 100% sure. Hola Cristina, did you fill a complaint about that? I filled one myself the Day after the Exam since the sentence was really not understandable. As a french native speaker, it was not even obvious for me which word was missing (and why not several words), as the ones which quickly came to my mind (passe, traverse) were meaningless.. as a consequence, I started to believe the teaching of D2 was wider than it was actually and started to amend my claim 1 with in the end unnecessary limitation : for exemple i started to include the upper and lower surfaces of the piston head... and forgot to rénové it afterwards...
Delete@Timo: Yes, I filed a complaint about the missing word.
DeleteWhen you sit the exam in French or German, you could also read the English text when something seems unclear. The text in the other two languages can be accessed during the exam.
It seems that topics are designed in English and then translated into the other two languages. That's why the English version is the clearest.
Another possibility is to print out the text in another language after printing out the text in the language in which you are sitting the exam. And you have the papers in another language at hand just in case.
Cristina
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@Cristina: that's true, but it honestly did not come to my mind to check the English version when this missing word problem arose. I just tried to figure out what was meant in the French version, and ended getting confused.
DeleteAlso, candidates are supposed to take the exam in one of the three official language of the EPO, and one is not supposed to be familiar with the other two official languages. That's why the three versions of each paper must be sufficient and clear per se.
@Timo: Indeed, the three versions of each paper must be sufficient and clear per se.
DeleteCristina
Neutralization perhaps? Thoughts?
DeleteThis comment has been removed by the author.
ReplyDeleteIt would not have been good to write:
ReplyDelete"the piston head (14) arranged to separate and seal the first entry chamber (21) from the second chamber (22) for liquid, wherein the column (15) is attached to the piston head (14) and extends through the static disc (17), wherein the column (15) is arranged to engage in the static disc (17) and seal the static disc (17) to seal the second chamber (22)"?
Namely, to use the wording "arranged to..." in order to comply with the product-claim characteristics?
Cristina
Dear Anonymous from March 08, 2024 4:18 pm,
ReplyDeleteYes, I consider that the steps should recited in method or use claim. GL states the following
„The same is true for a claim which says "Method for using an apparatus According to claim 1". The method claim, formulated as a use claim, lacks the steps that are carried out in order to use the apparatus (see F‑IV, 4.16) and is therefore not clear.“
GL-F-IV-3.8; although the pressure is smaller than the outside for the method claim is not possible to be performed deployment of the device. The pressure difference of 500 kPa occurs when the device is lowered to a certain level below surface, during use. The only thing an alleged „use“ infringer can do is keep the sealed chamber pressure at 100 kPa + or - 10 %. This will ensure that 500kPa difference between the pressure at the deployment location is achieved vis-â-vis the sealed chamber‘s pressure.
Hi, Thanks for your proposed answer! Will it cost me if I wrote "a static disc, wherein the column extends through the static disc and seals the static disc, so that the static disc separates and seals the second chamber from the third chamber". I.e., I did not write that the column ENGAGES the static disc because I thought this was implicit from "the column extends through the static disc and seals the static disc"?
ReplyDeleteI am not so sure about the note you wrote concerning the non-unity objection : "We debated whether to add a separate independent claim directed to a specific variant of the glue, for example as below. This seems be a claimable invention but runs the risk of a non-unity objection."
ReplyDeleteIf you consider Rule 23(5), it is clearly stated that "the application shall meet the requirements of the EPC as to unity. If, however, candidates seek to protect further inventions by filing one or more separate patent applications, they shall, in a note, clearly identify the features of the independent claim in such separate application(s), for example by referring to selected portions of the claims, or, alternatively, they shall draft the claim itself."
Considering that a side note to the client is not expected, I believe you can simply draft the independent claim for the glue.
You can refer to paper A 2022, where several different subject matters were claimed in a single application...
I am not sure whether our situation in fact applies to Rule 23(5), I understand it such that one can draft a claim in the note.
ReplyDeleteHowever, 2022 is particularly interesting: They allowed to claim just a hammer, which I did when I did the paper. The exrep says:
A set of claims comprising as an apparatus claim only a claim to a hammer for a
stamper machine alone, i.e. not arranged in connection to the other elements of a
stamper machine, attracted up to 22 marks for this claim. However, a set of claims
comprising both a claim to a hammer and a claim to a stamper machine could attract
the full 28 marks awarded for the apparatus.
So if a HAMMER and PAPER PULP do not have a unity problem, glue to be used in a device in a well and the device also do not have a unity problem.
Should they subtract more than 10 points for this, I will certainly file an appeal based on the 2022 exrep.
"I understand it such that one can draft a claim in the note."
DeleteCorrect, but my understanding is that the side note is not to be written anymore (it was never required in a compedium since 2017).
If there is no side note, how would you write down the independent claim in a side note ?
That's why you write it down in the application. Substracting points for this seems unreasonable. Especially given EQE A 2022.
Well, that’s reasonable, actually. After carefully reading the rule again, it says: They shall add a note, …, OR draft the claim.
DeleteDid you draft a glue claim?
There may also be an argument that the range of sulfone in the glue composition 60,000 - 90,000 g/mol is a narrow, selection range compared to the prior art of the commercial product (50,000 - 100,000 g/mol), given this relatively recent decision T 1688/20 and the case law that has removed the requirements for this range to be a purposive selection to meet the requirements of novelty (in the clients letter it was a preferred range so probably leads to some benefit over the known range of 50,000 to 100,000).
ReplyDeleteGiven the case law currently is not particularly clear on this matter, would seem harsh to go one way on this regarding novelty (appreciate the whether they are plurality of interrelated products / unified is another discussion).
I made a stupid mistake by adding a claim directed to a kit comprising the device and glue (but without phenolic antioxidants). During the exam I thought that by doing it I would avoid problems with unity of invention. But right after the exam I realized that a kit protects each of the elements separately, so it can be treated as another independent claim, so the exam committee may potentially award 0 marks for all product claims (because the glue in the kit is not novel) even though the device claim is good. Do you think it is likely?
ReplyDeleteMaybe, as you have a non-novel claim set. They might be happy they found something they can punish you for to lower the pass rate.
DeleteI was hesitating about "a third chamber (23) holding gas" vs "a third chamber (23) FOR holding gas". Finally I kept the 1st option, because the structure of the device/container does not allow to fill it with gas during use (also in [007] it is stated that "To avoid the high pressure inside the device before deployment, it is provided with a sealed chamber 23 containing gas"). So I thought that "for gas" or "for holding gas" results in non-workable embodiment. What do you think about it?
ReplyDeleteBTW, the method claim in my solution consequently has a step of providing the container filled with gas, instead of sealing the gas.
I agree that one cannot see how the third chamber is filled with gas since the structure of the device (as showed in fig 1 and fig 2) does not seem to allow such a filling as the piston column seals the static disc and the third chamber. But claim a third chamber for holding gas is not wrong in my opinion.
DeleteI also wrote "holding gas".
ReplyDeleteCristina
better suitable to holding gas
DeleteI disagree (a bit)...
ReplyDeleteYou are claiming a device for deploying a liquid into a well, but your claim does not explain how your device deploys the liquid... Even if all the structural parts are claimed, no function is mentioned, thus I think your claim is considered as unclear.
Also, as the client did not want to use it only for wells, the word "well" shall be avoided in the container. Moreover, in the method I replaced "well" by the expression "channel in the ground" as defined in the beginning of the document, to make it clear as well.
it was easy this year
ReplyDeleteI wouldn't say easy but well drafted and fit to evaluating a patent attorney skills
DeleteMy Claim 1 is almost the same as DP solution, but I further add this feature into Claim 1: „the bottom of the column is exposed in the third chamber“. Would this addition cause a huge lost of mark?
ReplyDeleteI did the same and i think that in any case it is not a limitation since you can argue that the third chamber begins at the bottom of the column.
DeleteMy Claim 1 starts with "A container for..." instead of "A device for..., the device including a container...". Does it lead to lose of mark? My Claim 1 does not mention "device" but "container".
ReplyDeleteI do not think so. As long as you have all the essential features the protection scope should be the same.
DeleteDP of Claim 15 is: "15. The method according to any one of claims 7 to 14, comprising treating a vertically extending fracture by positioning the device at top or bottom of the fracture, activating the device, and moving the device along the fracture using the line (L)."
ReplyDeleteHowever, I make it into two "independent" claims referring to the method of Claim 7: one is from top, the other is from bottom.
How do you guy think?
I make it into two dependent claims referring to the method: one is from top, the other is from bottom.
ReplyDeleteCristina
This was a good Paper anyway
ReplyDelete