Friday 25 February 2011

EQEs: Some Tips & Tricks

Next week is crunch time for candidates wishing to become qualified European patent attorneys.  The European qualifying examinations (EQEs) will be held in various places across Europe between Tuesday and Thursday.  These will test important aspects of the job of being a patent attorney, including the ability to concentrate for long periods of time without falling asleep and, more importantly, clairvoyance.

In a previous one of my lives, I was mildly castigated for suggesting that there was really only one answer to look for, and that was the one that the examiner was after.  I would however stand by that view, and I think it applies to all of the papers, not just those that more obviously require specific answers.  The EQEs are, as most would admit, an entirely artificial (though not entirely unreasonable) way of assessing a candidate's ability to be a patent attorney, and different rules apply to those that normally apply in everyday life.

In relation to papers A (drafting) and B (amendment), the examiner always has a particular answer in mind when setting the paper (read the examiner's comments from previous years if you don't believe me).  Deviation from the ideal means points are lost.  A claim that lacks novelty, which no viable candidate would put forward, will lose so many points (typically 30 out of 50 for the E/M version of the paper) that there will be no hope of gaining enough back to pass.  That much is fair enough.  No patent attorney should be submitting claims that lack novelty over what is right in front of them.

Beyond that though, the issues become less clear cut. How narrow should the claims be to make sure that you ensure validity while still getting what the 'client' wants?  If you don't go far enough many points are lost, but if you go too far the cumulative cuts can become pretty bad as the claim becomes narrower and less useful.  Should you come up with a clever form of words that you have thought up yourself and which results in a nicely elegant and refined claim, even if this might take a bit of understanding? Should you even worry about sufficiency in the scope of your claims (I suspect the answer is probably no)?

My suggestion, based on the hypothesis that there is only one true answer, is that you should take what is given as read and not under any circumstances go beyond what is there in front of you.  If your answer starts to look complicated, it is probably wrong (and I know this from experience).  If you look again at your claim 1 and find that it can be read on to any one of the prior art embodiments in front of you, you will fail unless you correct it.  If you are finding yourself using words that are not in the papers you have been given, ask yourself why this is and think again (if you have time!).  Remember that many candidates have none of the official languages as a first language, so all the words you need are already, quite deliberately, there.  To paraphrase Eric Morcambe, the examiner is playing all the right notes, just not necessarily in the right order.  It is therefore your job to put them in the right order.

The following two clips are provided as a light-hearted attempt to illustrate my points in accordance with a novel and non-obvious, though probably insufficient, method.

For some more practical tips on what to take into the exams, an old post from the IPKat should still prove useful. The IPKat has also provided some guidance on what not to take in.

Now relax, and the best of luck!

Wednesday 16 February 2011

How to get the wrong invention searched

For one reason or another, a European patent application may turn out to contain more than one invention (known as a lack of unity: Article 82 EPC).  This might be evident from the outset by the way the claims are drafted (assuming this is not merely a Rule 43(2) issue), or might only be apparent once an examiner starts to carry out a search (a so-called a posteriori lack of unity: Guidelines C-III 7.6).  In the latter case, if a first claim is broad the various options in the claims may mean that a search would have to go down more than one path to ensure all possible options are searched.  An examiner will then issue only a partial search report (under Rule 64) and will invite the applicant to pay more search fees to have the other invention(s) searched.

Rule 64 is quite specific about what will and will not be searched.  It says that the EPO "shall draw up a partial search report on those parts of the application which relate to the invention, or the group of inventions within the meaning of Article 82, first mentioned in the claims" (emphasis added).

One might therefore think that, to be sure a preferred invention is searched, the thing to do would be to place it first in the claims, whether this is in the first independent claim or the first option in a first independent claim having multiple options.  This would, surely, ensure that the search report covers the invention "first mentioned in the claims".  Or would it?

I have heard of at least one instance where the EPO has decided to search an invention other than that "first mentioned in the claims". There seems to me to be no legal basis for doing this. However, there are some hints that, at least in one instance, this might have been done to avoid any possibility of double patenting (that is, to prevent repeating a search already conducted for another, related application).

If this is indeed the case, then I am surprised the EPO is ignoring an explicit legal provision to do something that Boards of Appeal of the EPO have repeatedly found to have no legal basis in the EPC (see, for example, T 587/98, G 1/05 and T 1423/07).

Even if double patenting has nothing to do with it, this type of approach would mean that simply presenting subject matter first in a claim may no longer be enough to ensure that the required subject matter is searched. This is bound to place an even bigger cost burden on applicants who have filed divisional applications to important subject matter simply because the EPO has not concluded prosecution of parent applications (or, sometimes, even issued a second office action) within 2 years.

Can this be right? Is there anything that can be done to rectify the situation (other than paying an additional search fee)? Your thoughts would be welcome.

Saturday 5 February 2011

Article 54(3) and EP Divisionals

According to Article 54 EPC, an invention is new if it does not form part of the state of the art, which is everything that has been made available to the public before the filing date of the application.  Under Article 54(3), the state of the art also includes the content of another European application having a filing date before that of the application but which was published on or after the filing date of the application.  This second definition is however only used when considering novelty, and not for inventive step under Article 56.

If a European application validly claims priority to an earlier filed application, this has the effect that the filing date of the earlier application counts as the filing date of the application.  This applies to both Article 54(2) and (3). 

All this means that an earlier (first) European application could be used as prior art for a later filed (second) European application that claims priority to the first one, if that priority claim is invalid (and provided the first application is also published).  This could happen, for example, if the first application disclosed and claimed only specific examples, while the second application claimed an invention more generally.  Claims of broader scope might therefore not have a valid claim to priority.  Consequently the earlier application, disclosing examples falling within the scope of the later broader claim, could provide a novelty-defeating prior disclosure.  

Normally this would be correctable, as it is usual to make sure that all of the material from the first application is included in the second.  The applicant could, for example, narrow the scope of the claims in the second application so that they do have a valid claim to priority.  In some cases, however, this might not be possible, or desirable.  To come up with a far-fetched hypothetical situation to illustrate this, let's say that a first EP application discloses an invention incorporating a range from 0.325 to 0.415 (the units don't matter), while a second EP application, claiming priority to the first application, discloses and claims only a range from 0.330 to 0.415.  The claim to priority is invalid because the range in the second application is not present in the first one, meaning that the claim to priority is not for the same invention (Article 87(1)(b) EPC).  The first application, having an earlier filing date and having been published after the filing date of the second, is therefore prior art under Article 54(3).  Since the first application discloses a range that entirely encompasses the second, and the difference between the two ranges is very small, the claims in the second application are not novel (although this is possibly an arguable point). 

Although far-fetched, this is the actual situation that gave rise to decision T 680/08, which issued in April 2010. The decision has already been commented on by others here and here.  The issue has also arisen before in T 1443/05. In both cases, the solution to the problem was (possibly dubiously) to include a disclaimer.

Cases where the priority filing can cause problems for a later filed application may be fairly rare.  However, the principle in T 680/08 might, according to some interpretations, apply also for divisional applications.  According to Malcolm Lawrence and Marc Wilkinson of HLBBshaw, a divisional application could effectively 'poison' its own parent if it turns out that the parent is not entitled to priority.  The reasoning (which, in the HLBBshaw article, is very long-winded) is based on the divisional application being citable under Article 54(3) against its parent as a result of it having an earlier filing date (due to the priority claim) than the parent application (which lacks the priority date).  The ramifications for this would, naturally, be quite serious. But is this reasoning even plausible?  

The issue also came up during opposition proceedings relating to EP0846450, although was not key to the patent being eventually revoked.  The question of whether a priority document could be used as Article 54(3) prior art was considered by an expert called by the patentee, Professor Dr.-Ing. Ulrich Vollrath, a professor of patent law at the Rheinian-Westfalian University of Technology (his contribution, which is well worth reading, can be found here).  When asked whether a part of a European patent application enjoying priority of an earlier US application under Article 87 or 89 EPC could be novelty-destroying for claims of the same application not enjoying priority, his firm answer was no for the reason that there had to be two applications for there to be a conflict.  However, in answer to a further question of whether the outcome would be any different if the claims not enjoying priority had been divided out of the European application enjoying priority, his answer was also no because, in the case of divisional applications, for the purposes of examination of priorities and the resulting effects the parent and divisional applications had to be considered as if all claims remained in the same application.  There would therefore be no earlier application to be considered, as both would be effectively the same application.  Both had to be considered to be interchangeable, having equal footing as a result of a procedural split between them.  What was admissible in the former application could not become inadmissible just by filing a divisional.

I am much more persuaded by the arguments of Professor Vollrath than those of Messrs Lawrence and Wilkinson.  However, I may be wrong.  What are the chances that an EPO board of appeal, tasked with a suitable fact situation, would consider a divisional application to be Article 54(3) art for its own parent?  I would think very slim, but not impossible.  What do you think?

UPDATE 18 August 2015: The above post has been cited in a referral to the Enlarged Board of Appeal regarding the issue of partial priority and poisonous divisionals. For more information see my recent post here