D 14/23 - Successful A 2023 appeal: "(suitable) for"
Appeals against decisions on EQE Paper A results are only rarely successful, due to the limited competence of he Disciplinary Board of Appeal in handling these appeals (see reason 2 of the decision below). But this one was! The reasoning from the DBA seems to fully follow the reasoning provided by the candidate, and the Examination Committee gets a clear message in reason 3.3 (and, in view of the message being so explicit and clear, one may also consider it to be addressed to the Examination Board which could/should have granted interlocutory revision, which would have given a positive result already by September 2023, well before the next EQE, rather than in May 2024, well after the next EQE).
Summary of facts and submissions
I. The appeal is directed against the decision of the Examination Board that the requirements of Article 14(1) of the Regulation on the European qualifying examination for professional representatives (REE, applicable version published in OJ EPO 2019, Supplementary publication 2, 2 ff) had not been fulfilled such that the appellant did not pass the European qualifying examination (EQE) 2023.
II. The appellant sat the main examination in the EQE 2023 consisting of all four papers A, B, C and D.
III. By letter dated 4 July 2023 from the Examination Secretariat, the Chairman of the Examination Board informed the appellant that, while the appellant's answer papers to papers B, C and D were awarded 93, 82 and 78 marks respectively, her answer paper to paper A was awarded only 41 marks and that, on the basis of these marks, the Examination Board had decided that the requirements of Article 14(1) REE had not been fulfilled such that the appellant did not pass the EQE 2023.
Among other things, the letter contained the details of the marking of paper A as an attachment, according to which Examination Committee I agreed on 41 marks for the appellant's answer to paper A (device claim 0 out of a maximum possible 40 marks, use claim 10 out of 10 marks, dependent claims 18 out of 35 marks and description 13 out of 15 marks) and recommended the grade FAIL.
IV. By her letter dated 18 July 2023, received by the Examination Secretariat on the following day, the appellant filed notice of appeal, including her statement of grounds of appeal, to challenge the decision of the Examination Board. She had already paid the prescribed appeal fee on 13 July 2023.
The appellant submitted that her answer to paper A had been incorrectly marked as a result of mistakes which were serious and so obvious that they could be established without re-opening the entire marking procedure. These mistakes led to her failing paper A and, as a result, the EQE in its entirety. This was therefore an infringement of the provisions of the REE and the Implementing provisions to the Regulation on the European qualifying examination (IPREE, applicable version published in OJ EPO 2019, Supplementary publication 2, 18 ff). She believed that an objective evaluation of her answers to paper A should have led to her answer paper being awarded a higher grade (at least a COMPENSABLE FAIL).
V. The Examination Board forwarded the appeal to the Disciplinary Board of Appeal of the EPO (DBA) without rectifying their decision.
VI. By letter dated 13 September 2023, the Examination Secretariat informed the appellant that her appeal had not been allowed by the Examination Board and that consequently her appeal had been forwarded to the DBA.
VII. In accordance with Article 24(4), first sentence, REE in conjunction with Article 12, second sentence, of the Regulation on discipline for professional representatives (RDR, Supplementary publication 1, OJ EPO 2022, 142 ff), the DBA consulted both the President of the EPO and the President of the Council of the Institute of Professional Representatives before the EPO (epi), neither of whom presented any comment in writing on the merits of the appeal.
VIII. The appellant's arguments can be summarised as follows.
The appellant's independent product claim was awarded 0 marks despite the fact that it was novel, inventive, clear and concise. Since the claim deviated from the model answer only with regard to the second part of feature d1) and did not contain any unnecessary limitations, the only explanation for the marking could be that the Examination Board considered her claim not novel with regard to D2.
However, although she had not expressly claimed that the generated electrical field was applied to the skin when worn on the skin, novelty was assured by the functional feature "for accelerating the healing of wounds" that implied that the field had to be capable of reaching the skin. This distinguished her device from the one in D2, which was not at all suitable for accelerating the healing of wounds, as acknowledged by the examiners' report under point 2.4.2, see page 13, last paragraph.
This distinction was also reflected in the candidate's description, which proved that she had relied on it to ensure novelty.
Since the examiners' report listed several potential equivalents for the suggested distinguishing feature d1 "and arranged so as to apply an electrical field on the skin when the device is worn on the skin" and since it was established in the case law that functional features using the language "[suitable] for" were able to limit the scope of a claim, novelty should have been acknowledged.
The claim furthermore contained all essential features listed by the examiners' report and, even if this were not the case, any lack of clarity could not have led to a deduction of 40 marks.
IX. The appellant requested that
the decision under appeal be set aside,
the grade "PASS" or "COMPENSABLE FAIL" be awarded for the appellant's answer to paper A of the European qualifying examination 2023,
in combination with the marks already awarded with respect to papers B (93), C (82) and D (78), the requirements of Article 14(1) REE be declared fulfilled,
the appeal fee be reimbursed,
the registration for paper A of the European qualifying examination 2024 be cancelled and the fee according to Rule 8 IPREE be reimbursed.
Reasons for the decision
Admissibility of the appeal
1. The notice of appeal and the statement of grounds of appeal were duly filed within the one-month time limit under Article 24(2) REE. The appeal fee was also paid on time. The appeal is therefore admissible.
Extent of the judicial review by the DBA
2. In accordance with Article 24(4) REE and the consistent case law of the DBA, which followed decisions D 1/92 (OJ EPO 1993, 357) and D 6/92 (OJ EPO 1993, 361), decisions of the Examination Board may, as a rule, only be reviewed for the purposes of establishing that they do not infringe the REE, the provisions relating to its application or higher-ranking law. It is not the function of the DBA to reconsider the entire examination procedure on the merits. This is because the Examination Committee and the Examination Board have some latitude of evaluation subject to only limited judicial review by the DBA. Accordingly, the Examination Board's value judgement on the number of marks that an examination paper deserves is not subject to review by the DBA.
2.1 However, the discretion granted must be exercised appropriately and without arbitrariness. In order to make the Examination Board's decision in individual cases comprehensible to the applicant, Rule 4(1) IPREE provides as an essential element of the examination procedure (see D 13/17, Reasons 3.3) that the participants are sent assessment sheets containing details of the marks awarded. The basis for awarding the individual marks for each category of an answer paper can in turn be found in the published examiners' report, which includes information on both the solutions expected from the candidates and any shortcomings that may have a negative impact on the assessment, thereby enabling consistent marking of candidates' answers within the meaning of Article 6(2)(c) of the REE.
2.2 Appropriate marks must also be awarded for answers that deviate from the model answer, but nevertheless contain justifiable and competently reasoned alternative solutions (see D 7/05, Reasons 13, D 31/22, Reasons 1.3). This appears to be lacking in the present case, as will be shown below.
Device claim - novelty
3. The device claim as drafted by the appellant contains all of the features expected by the examiners' report except the second part of feature d1, according to which the electrical field generated by the device is to be applied to the skin when the device is worn on the skin.
3.1 Since the claim does not contain any unnecessary limiting features and any clarity issues could only lead to a maximum deduction of 30 marks, the only plausible reason for a deduction of all of the 40 marks achievable is that the Examination Board considered the claim not novel with regard to D2.
3.2 However, this assessment either ignored the fact that the appellant added the further feature "for accelerating the healing of wounds" or did not take into account that such functional features may, according to the established case law under the EPC and as acknowledged by the Guidelines for Examination in the European Patent Office (see F-IV, 4.13.1 of the version applicable from March 2022 to February 2024), limit the scope of the claim with regard to the suitability of a device to achieve the indicated effect. In the present case, the added feature thus does in fact distinguish the subject-matter claimed in the appellant's answer from the device in D2, which contains a "special rubber pad" providing "a full electrical shield between the skin and the electrical parts" and therefore does not render this device suitable to allow for any healing effect of the electrical field on the skin of the person wearing the device.
3.3 The first alternative would amount to a failure of the Examination Committee to properly mark the answer paper (on the basis of its complete content) according to Article 8(1)(d) REE, which would result in a serious and obvious mistake. The same would be true for the second alternative because not only are the candidates expected to have a thorough knowledge of European patent law, including both the case law as covered in the latest edition of the Case Law of the Boards of Appeal of the European Patent Office (Article 13(1)(a) and (d) REE, Rule 2 IPREE) and the Guidelines for Examination in the European Patent Office (Rule 22(1)(m) IPREE), but even more importantly the members of the Examination Committees are expected to base their evaluations and decisions on a legally correct premise (see D 2/14, Reasons 1). They must apply both the Guidelines and the basic case law when assessing whether alternative solutions not covered in the examiners' report are equally suitable to render a claim novel and inventive.
Device claim - clarity and conciseness
4. The claim as drafted by the appellant contains all the structural features of the device needed to create an electrical field. It also contains the healing function that the field created by the device must be able to achieve. To have any effect on wounds, the device must implicitly be able to apply the electrical field on the skin when worn.
4.1 The question of whether the claim lacks clarity could be discussed, since this is apparently an essential feature which should be expressly, not just implicitly, included in the claim.
4.2 However, according to the examiners' report, a potential clarity issue due to a single missing feature could lead to a deduction of 10 marks and, as mentioned above, even more severe issues, as well as all clarity issues together, would not lead to a deduction of more than 30 marks.
4.3 Therefore, as the claim as set out above did not contain any other shortcomings, such as unnecessary features, there is no alternative explanation for the deduction of all of the 40 marks achievable for the device claim.
Consequence for the decision under appeal
5. As a result, the appellant was able to show that the contested decision must be based on serious and obvious mistakes which the board can take into account because the alleged mistakes are so obvious that they can be established without re-opening the entire marking procedure (see decision D 7/05, OJ EPO 2007, 378). The appeal thus appears to be well-founded and the decision is to be set aside (Article 24(4) REE).
Remittal
6. Moreover, it is clear from the guidance given in the examiners' report that, had the mistake not occurred, the result achieved in total by the appellant would have been at least 10 marks, if not 30 or 40 marks, higher than awarded.
6.1 Thus, the appellant would in any case have reached the result "PASS" according to Rule 6(3)(a) and it may remain open whether the Examination Board would have awarded 51, 71 or 81 marks.
6.2 Against this background, a remittal of the case for further examination is neither necessary nor, in view of the additional time and work involved, justified. It would amount to a mere formality. Thus, special reasons for not remitting the case arise (see D 14/17, Reasons 3.3).
Overall consequence
7. Since the appellant has passed not only paper A, but all of the examination papers, she has passed the European qualifying examination 2023 according to Article 14(1) REE.
Request for reimbursement of the appeal fee
8. With respect to the appellant's request for reimbursement of the appeal fee, reference is made to Article 24(4), third sentence, REE.
The appeal is successful, and the board considers it equitable to order the reimbursement of the appeal fee in full.
Request for reimbursement of the fee for re-sitting paper A in 2024
9. This appeal is only directed against the decision that the appellant did not pass the European qualifying examination 2023. The board is thus not competent to decide on a reimbursement of the fee regarding the European qualifying examination 2024. Such request is to be addressed to the Examination Secretariat.
Order
For these reasons it is decided that:
1. The decision under appeal is set aside.
2. The grade "PASS" is awarded for the appellant's answer to paper A of the European qualifying examination 2023.
3. The appellant is declared to have passed the European qualifying examination 2023.
4. Reimbursement of the appeal fee in full is ordered.
The decision D 14/23 can be found here (pdf).
The exact same thing happened to me. I did not get ANY score for my independent device claim. I seriously considered drafting and filing an appeal myself, but I was discouraged from doing so.
ReplyDeleteDid anybody else also get zero points for their independent device claim, despite the Examination Report revealing an example claim that's practically the same as yours, apart from certain few unnecessary limitations (novelty being unaffected at all!).
If so, this appears to have been a systematic error on the side of the EPO markers and a serious investigation must be opened to look into this again. I understand that I did not appeal, but if this was faced by so many others too (whether they appealed or not), is it not fair for the EPO to come clean about this and re-mark the 2023 paper A solutions?
I was and am still extremely disturbed by my zero mark penalization for my device claim of Paper A 2023, seemingly without ANY valid reason in view of the Examination Report.
Roel, in view of this decision and my recount above, do you see any possibility of the EPO re-evaluating the marks of candidates who faced a similar issue (if not the same)? I can tell you for a fact that, this particular decision relates to case that I too faced. The difference is, I did not appeal.
DeleteGeneral principle of law: a decision becomes final if it is not appealed (or, if appealed, once the Board of Appeal decides).
DeleteAll PASS/FAIL/COMP FAIL decisions are individual decisions for individual candidates, so if you want to have that overturned, you need to appeal - if you do not appeal, you implicitly accepted the decision as it was issued.
Some other posted comments to my LinkedIn message that brought this post to the attention of LinkedIn users:
ReplyDeletehttps://www.linkedin.com/feed/update/urn:li:activity:7195665950803640320/
I think the Examining Committee for Paper A has made some serious mistake with the marking without understanding all the limitations of claim 1. Claim 1 has been awarded zero despite having the solution and the feature quite comparable to the one for deltapatents. I am preparing for my appeal. It is impossible that my claim is not novel in view of the prior art references provided in paper A.
ReplyDeleteI do not understand how my Claim 1 was awarded only 5 out of 40; my claim 1 is practically the same as that provided by deltapatents, being novel over the prior art documents. It just baffles me how this is possible in my of the limitations of my claim 1, with perhaps just one or two of them being unnecessary limitations. I am convinced that the Examiner has made a severe mistake in this regard. I am seriously considering appealing.
DeleteSomething strange is happening. The Examining Committee for Paper A has become erratic with their marking.
ReplyDeleteI really hope I am not the only one thinking that Paper A was marked in a totally unreasonable manner, especially as regards claim 1.
ReplyDeleteI have the same results. The problem with this whole EQE is that even if we make an appeal, it will be decided after one year. I am just not convinced that I have got only 5 marks for the independent claim 1. This is unacceptable. Can't wait for the Examiner's report.
ReplyDeleteIs the exam report being delayed because the Examination Committee noticed this error?
ReplyDeleteMe neither. I do not think a lot of thinking went into the marking. I have downloaded at least the question paper, my answer, and have to wait for preparing my arguments against the decision of the Examination Committee. It is quite punishing to reveal the Examination report later than the day of providing the results. It eats into the one month appeal time, making the candidates wait unnecessarily.
ReplyDeleteSince I don't see many comments here, I think the paper A results might be good for others. Trying to understand the pass rates here.
ReplyDeleteI just found out another decision here: https://www.epo.org/en/boards-of-appeal/decisions/d230002eu1
ReplyDeleteI propose everyone to start preparing for the appealing. This is just horrible.
The Examination Committee for paper A is a joke costing us time and efforts. I will not leave any stone unturned to appeal this case.
Also for me, the marking of paper A independent claim 1 is quite strange...let us see the official answer.
ReplyDeleteI also got little points for my claim 1, but I was lucky to still pass it
Delete0 points for the method claim and only 9 for the dependents. Quite strange indeed. Failed, but passed the other papers so I'm not that sad.
DeleteHow likely is it that Examination Committee will come clean about their mistake and provide a revised version of the results in the next few days or so?
ReplyDeleteI hope they could at least neutralise something but, have you ever seen that happened in the past especially for paper A?...
DeleteCould Delta Patents or anyone "official" provide some clarity regarding this ridiculous situation..?
ReplyDeleteFYI my claim 1 is quite similar to that of DP and I got 40/40 for it. Wait for the examiner's report ..
ReplyDeleteObviously, there are always candidates who will get 40/40.
DeleteThe additional limitations to what DP solution suggests can lead to deduction of marks, and not "zero" or "five" marks out of 40 marks. Giving such marks means the Examination Committee considers the claim as non-inventive and not novel. The candidates should able to prove how their claim is new and inventive. Negative marking reasons should not go beyond 2-3 reasons, as long as the novelty and inventive step is established. If the Examining Committee comes with, lets say, 10 reasons on top of the novelty and inventive step requirements being satisfied, the Exam has flaws. And I sincerely hope, EPO Examining Committee has not employed AI for marking the papers and the interpretation of features was left only to the human beings.
So yes, while we should wait for the examination report, one should also start drafting the appeal and supplement it with marking issues and analyses from the Examination Report. This is absolutely essential for maintain some level of sanctity to the system, for it not to look ridiculous.
Examiner's reports are out.
ReplyDeleteI found multiple problems with the marking of my independent claim this time after reading the examiner's report.
ReplyDeleteSame here. The marking appears so obviously incorrect. How did these go unnoticed? It is extremely unjust that we have to bear the brunt of such a telling systematic flaw. Isn't there a speedier and more efficient way apart from filing an appeal to make the Examination Committee aware of this preposterous situation?
DeleteI have no further way to describe those who prepared this examination report, you are heartless. Shocking to say the least. 30 to 40 marks were taken from candidates for claiming some limitations which are really trivial during a trial litigation in the courts. Everyone who works in the filed knows what the doctrine of equivalents is. Apparently the competitors may "work around" these limitations. And the Examiners want a bullet-proof claim drafted during the exam time of 3 to 4 hours. To think that this is the reason for taking one more year of your career progression away from you, despite the fact that your claim 1 can be novel and inventive, is absolutely heart-wrenching. The enforcement of the claim is not the topic for attorneys who represent at the EPO, but for the unified patent court and the national courts in the EPO. Yet, this is used as a reason to fail people in paper A. Absolutely gutted. This one hurts like hell EPO. You can do better.
ReplyDeleteThey fail otherwise good candidates for these trivial reasons and penalize them with 35 to 40 marks in a independent claim that is worth 40 marks. I no longer believe this as an exam to test fit for practice. This exam is to filter solutions from candidates who think differently, albeit slightly. And I hope EPO gets a lot of support from the professionals and the society. The whole marking system is rotten, it doesn't test one's skill on anything, paper A is designed to make one fail for being a little different than others.
Delta Patents! Please help! Do not overlook this injustice
DeleteThe fit to practice principle is a joke nowadays. The only purpose of the EQE since 5-6 years is to minimize the amount of european patent attorneys
DeletePlease contact me! I am also considering appealing.
Deleteappealeqe@gmail.com
This comment will repeat some of what I wrote elsewhere. Drafting a weak claim expecting to rely on the doctrine of equivalents or indirect infringement is asking for trouble.
DeleteIf your claim is simply too narrow, which seems to be the scenario you are considering, you will probably need to consider indirect infringement rather than DoE, because DoE is for features that are equivalent to the claimed features rather than features that are simply missing. The DoE costs hundreds of thousands of pounds/euros more to litigate and adds uncertainty.
Relying on indirect infringement is a bad idea for the following reasons. In the UK, Section 60(2) of the Patents Act states that a person (other than the proprietor of the patent) infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom. There are several issues with relying on this. Firstly, this test has a knowledge element, which makes infringement much harder to establish. Even if you win in court, you've probably incurred tens of thousands of pounds of additional costs for your client which won't all be recoverable. Secondly, you lose some of the available infringing acts - making, using, disposing, offering, importing, keeping, are the relevant acts for a direct infringement, vs merely supplying and offering to supply when arguing indirect infringement. Thirdly, there is a double territoriality requirement - the means must be offered for supply and the invention must be put into effect in the UK. So, if the means are made and sold in the UK but exported to a foreign business that is intending to put the invention into effect outside the UK, there is no recourse. In such circumstances, a suitably-drafted claim could proceed with a direct infringement claim that should succeed based on the infringing act of manufacturing. Claiming the product in use, rather than on the shelf, truly is a mistake that a beginner would make. Changing "containing a liquid" to "for containing a liquid" is the bare minimum that a competent patent attorney should be doing, otherwise you might as well just let the client draft the claims.
Does anyone know the full procedure for the appeal. I mean do you email your appeal to the examining board? Is there somewhere detailed information on this?
ReplyDeleteHi, I failed the Paper A exam. I wrote this a my claim 1 but I had an independent glue claim. I got nothing for my device claim. It looks almost same as the independent claim of the Examination report with few formal changes.
ReplyDelete1. A device (D) for deploying liquids in a well, the device comprising:
a container (11) divided into three sections an entry chamber (21), a liquid chamber (22) and a low-pressure gas chamber
(23), wherein the container (11) is formed at least in part from a metal,
a moveable piston comprising a piston head (14) and a column (15) attached to the piston head (14), wherein the piston
head (14) separates and seals the entry chamber (21) from the liquid chamber (22), and wherein the column (15) extends
from the piston head (14) into the low-pressure gas chamber (23),
a static disc (17) that separates the liquid chamber (22) and the low-pressure gas chamber (23), wherein the column
(15) engages and seals the static disc 17, thereby sealing the liquid chamber (22) from the low-pressure gas chamber (23),
a first valve (19) provided between the inside of the entry chamber (21) and outside of the container (11), to control passage
of a well-liquid from the outside of the device (D) and the inside of the entry chamber (21), and
a second valve (29) provided between the inside of the liquid chamber (22) and the outside of the container (11), to control
pressure between the outside of the device (D) and the inside of the liquid chamber (22),
wherein the first valve (19) and the second valve (29) when opened causes a net downward force on the moveable piston
(14, 15) thereby compressing the liquid chamber (22) and expelling a deployment liquid in the liquid chamber (22) via the
second valve (29).
To diastotle
DeleteI know you are upset, i understand your frustration but saying that your claim is "almost the same as the Examination report" is being quite dilusional. Rest for a couple of days and then analize your answer again.
Good luck in 2025
The archer who misses his mark does not blame the target. He stops, corrects himself and shoots again.
ReplyDeleteAnyone considering appeal? Please contact me!
ReplyDeleteappealeqe@gmail.com
Who are you stranger? And what do you offer for my benefit?
DeleteYes, would be great to have a name to the email ID :)
ReplyDeleteAny post-exam neutralizations Roel?
ReplyDeleteI think this is a fair question Roel, in view of the official admission on at least two technical issues by the Examination Committee about this.
DeleteFrom the Examiner's report: they say that "Omission of a piston head separating and sealing the first and second chambers resulted in a 20-point deduction." Why this feature got substantial negative marking, any reasons?
ReplyDeletebecause without it, there is no technical effect
DeletePiston-head feature: Have you formed this feature in an alternative manner, but not exactly as claimed in this feature? Then you have a case for an appeal. If this feature is really not there at all, then the framework of current appeal system would not let you have a case because that would mean they have to reopen the marking system and providing the serious and obvious mistake is a hurdle.
DeleteEverything in this Examiner's Report is deduction of 20 marks, 30 marks. Who does that? Unless the purpose is to just fail candidates who have marginally deviated from the template answer. Even religious indoctrination does not work this way. This is to penalize you for being different, even if it is immaterial in real life. By this way, they can pick and choose which candidates to actually penalize. All you need to do is include one random sentence that this is such an unnecessary limitation that you have to cough up 30 marks out of 40 marks in a claim.
Just think about it, if you claim the container has the liquid, you lose 30 marks! The reason is, the competitor has an easier work-around solution to sell the device without liquid. Look at the absurdity of this argument. If liquid is not the core or essential part of the invention and if that is the only differentiating feature, then the competitor cannot work-around it "easily" as claimed by the Examination Report. The national courts have sufficient arsenal in the form of doctrine of equivalents or the pith and marrow test (as they say in the UK) to really see this through in a competitor's product. God forbid, should you choose Düsseldorft court as your forum, things could go really bad for the infringer.
The Examination Report also says "Claiming a device containing liquid resulted in a deduction of 30 marks. Likewise, claiming a gas pressure difference with the well had the same deduction (-30)." Why? No reasons given why it is an unnecessary limitation for costing you a pass. During enforcement or infringement proceedings, anyone would be able to see if this is the only difference between the claimed matter and the competitor's product. Just by having one feature in claim 1, you are doomed to fail.
After going through the report, it is abundantly clear that the Examination report is not to enable candidates to prepare for future examinations (cf. Article 6(6) of the Regulation on the European qualifying examination for professional representatives).
The Examination Report is to PREVENT APPEALS. Because the case law from the Disciplinary Board has made it abundantly clear what is the framework for appeal procedure resulting from the evaluation from two examiners, who by the way, are working with bullet points and deduct points without deeply reading your claim features and trying to interpret every part of it. If they see something similar, they will just deduct the mark. And they have other jobs to do. They could NOT care less about the effects of such negative marking.
So, I would say, moving to the frame work of passing the Examination based on "one" unnecessary limitation is done after careful study of finding that most of the candidates have been able to locate the novel and inventive feature in view of the prior art. So the percentage of candidates who have included the features of penalization has been studied and it has been made to the approximate percentage of the past passing rates.
This is a sign of a throe of a run-down system. There is nothing new in it. It's time is up.
I understand your point and I too believe that I should have practiced in abundance that how to match the Examiner's bullet points instead of drafting claims. I did mention that the device comprises a piston head, however, I stated the configuration of the piston head in dependent claim 2. I got 5 marks because of this mistake and I lost a year. I don't think that I will be able to come this closer to the Examiner's bullet points ever in my life.
ReplyDelete@Anon. July 03, 2024 3:03 pm: I appreciate your passion and I know what it feels like to fail, but there are so many problematic statements in your comment. Least of all, relying on national courts to broadly enforce a device claim you have drafted with unduly limting in-use features? IMO, no fit to practice candidate would ever make such a fundemental drafting error. It is more concerning that it may have been possible to gain a passmark in spite of the incluision of such features.
ReplyDeleteUnduly Limiting from July 04, 2024 11:57 am:
DeleteOn your quote:
"IMO, no fit to practice candidate would ever make such a fundemental drafting error. It is more concerning that it may have been possible to gain a passmark in spite of the incluision of such features."
I am not entirely sure whether you have actually read the examiner's report under the category "unnecessary limitations". I am just pasting one part of it here, just for illustration:
"Claiming a device containing liquid resulted in a deduction of 30 marks. Likewise, claiming
a gas pressure difference with the well had the same deduction (-30)."
Total marks for independent device claim = 40. Let us say, you have everything else in claim, but have claimed a device containing liquid. You have lost 30 out 40 marks. That means 10 marks remains.
Which means, the method claim of yours has to "perfect" to gain 10 marks and the description and dependent claims has to fetch you "30 marks" to reach the "pass marks" as you have mentions to reach 50 marks.
@Anon. July 03, 2024 3:03 pm: Unfortunately, claiming a device containing liquid is indeed a very serious mistake. It is not as easy as you claim for a proprietor to argue around this issue during infringement proceedings. As you mention the Düsseldorf courts: The relevant decision that I am aware of is OLG Düsseldorf, 15 U 43/15 - "Beheizbarer Boden". Basically, for a direct (which is what you want to have) patent infringement, you would have to argue that the liquid is a very common/not special at all additional ingredient ("Allerweltszutat"). I do not see that this would work. Sorry...
DeleteChris- my point was not about the direct infringement, at all. Düsseldorf court in the Epilady case deals with the modified means. If oil is replaced with something in the competitor‘s product, then you deal with it in the doctrine of equivalents. If the element is missing in the competition‘s products, you deal with it under indirect or contributory infringement. So oil is not that critical of a feature at all.
ReplyDeleteThe idea is that you want to enforce the patent against the manufacturer at a point in time at which there is not liquid in it at all. So the feature is not replaced, but simply missing. The doctrine of equivalents will not help you in that case (at least before a German court). Even if we assumed that it would, having to rely on the doctrine of equivalents means that the claim is much weaker than it should be.
DeleteChris- the manufacturer at the end of manufacturing has two options either to fill it with the liquid or any other equivalent fluid or leave it empty. If it’s filled with liquid, then it’s a direct infringement. If it’s filled with any other fluid performing the same function (and fulfilling the three way test), then it’s an infringement under doctrine of equivalents. If the container is left empty, you deal with it under indirect or contributory infringement. So your argument is not convincing. The point is, penalizing the claim for 30 marks and ultimately failing a candidate for this feature isn’t proportional.
ReplyDeleteI understand your frustration, but including the feature "container having a liquid" is a rookie mistake.
DeleteNow, it is a 30 points deduction justified for that mistake?
In my opinion, no, it is not justified.
But according to the "fit to practice", probably, yes. A patent attorney with a minimum experience will not make that mistake. So, even if you appeal, I do not think you would get any point.
You are glossing over the fact that the legal consequences of indirect infringement (offering/supplying means which are essential for the implementation of the invention) are much weaker.
DeleteI can understand that you are frustrated, but there are reasons why candidates are taught not to draft claims this way. Anyways, best of luck for your next try!
You seem to be unaware why relying on indirect infringement is inadvisable. Allow me to explain.
DeleteIn the UK, Section 60(2) of the Patents Act states that a person (other than the proprietor of the patent) infringes a patent for an invention if, while the patent is in force and without the consent of the proprietor, he supplies or offers to supply in the United Kingdom a person other than a licensee or other person entitled to work the invention with any of the means, relating to an essential element of the invention, for putting the invention into effect when he knows, or it is obvious to a reasonable person in the circumstances, that those means are suitable for putting, and are intended to put, the invention into effect in the United Kingdom. There are several issues with relying on this. Firstly, this test has a knowledge element, which makes infringement much harder to establish. Even if you win in court, you've probably incurred tens of thousands of pounds of additional costs for your client which won't all be recoverable. Secondly, you lose some of the available infringing acts - making, using, disposing, offering, importing, keeping, are the relevant acts for a direct infringement, vs merely supplying and offering to supply when arguing indirect infringement. Thirdly, there is a double territoriality requirement - the means must be offered for supply and the invention must be put into effect in the UK. So, if the means are made and sold in the UK but exported to a foreign business that is intending to put the invention into effect outside the UK, there is no recourse. In such circumstances, a suitably-drafted claim could proceed with a direct infringement claim that should succeed based on the infringing act of manufacturing.
Hopefully you will now see why your mistake is not just a minor error. Claiming the product in use, rather than on the shelf, truly is a mistake that a beginner would make. Changing "containing a liquid" to "for containing a liquid" is the bare minimum that a competent patent attorney should be doing, otherwise you might as well just let the client draft the claims.
Delta patents!!!! Reply NOW
ReplyDeleteDoes compensable fails qualify for transitional provisions ?
ReplyDeleteCandidate A
DeleteI mean if we obtained a 47/100 for A do we need to sit again A in 2025 or is it still possible to compensate? Thank you
ReplyDeleteFrom the guide for preparation published yesterday, I understood that one may resit A and lose the compensable fail (as currently stands), but if not passing all A-D in the present system, it will not be possible to carry it over to, in this example, to exempt from M3 part 1. At least that’s what I understood.
DeleteThis is completely unfair...
ReplyDeleteI mean if we have to resit A just because it is compensable failed in 2024 and not compensated yet in 2024. I still don 't understand
DeleteI think as long as you are still in the old system (so 2025 or 2026), you can compensate your 47 points with an exam with 53+ points from 2025 or 2026.
DeleteD 14/23 addresses the successful A 2023 appeal regarding the interpretation of '(suitable) for.' It highlights the importance of clarity in wording and intent, especially in legal and technical contexts. For further insights, visit Telkom University Jakarta: Telkom University Jakarta
ReplyDelete