Technique

Question 1

Timings

Answer 1

Part 1
8:30-10:05 (26 marks) 3.5 mins per mark
30 min break
10:35 to 12:20 (29 marks) 3.5 mins per mark
45 mins break
13:05 to 15:45 (45 marks) 3.5 mins per mark

Question 2

What is the technique for answering part 1 questions?

Answer 2

o CIRAIC
o Conclusion – state the conclusion determined below to start the question
o Issue(s)
 identify the issues
 FD1 lines by line technique – why is information there
* If information not used, find a way to use it
o Rule(s)
 identify the rules in question
- Read the subsequent rules - extra marks often found there
 Hierarchy of rule searching
* Daily Ds, PPQs
* Visser
* EPC articles and rules
* G Decisions
* Guidelines
* Case law
* PCT
o Application – of the rules to the issue
 Resolve issues by applying the identified rules
 Basis for your reasoning – be specific (sentence)
 Low hanging fruit – basis for novelty (Art 33PCT) days, Art80.2 PCT etc…
 Be precise
o Improved? – can the situation be improved?
 Is there anything obvious that can be done? Pay fees, additional applications etc
o Conclusion – give conclusion of the application

Question 3

What is the technique for answering part 2 questions?

Answer 3

• Step 1 - Identify the information in the question by highlighting in wiseflow
  o 4 highlighters
   1 all dates - blue
   2 all entities – green
   3 all inventions – yellow
   4 all patent applications - red
• Step 2 -
  o Order the dates in the timeline
• Step 3 –
  o Run the question line by line and complete table accordingly
• Step 4 – run through question line by line again and check
  o Write any thoughts in separate tab as you go
• Step 5 (usually 1hr to 1hr 20 to this point) – once table complete run through 10 step test for the current situation…
• Step 6 – for each question variation use correct 10 step test

Question 4

Ten step process. For each invention

Answer 4

1. List all the patent applications/patents relating to that invention. Refer to the row corresponding to that invention.
2. Identify the first filed application that is still live.
3. For that application, state the priority date (if any and state if none).
4. Check the validity of the priority claim (write each step on checklist) and state whether valid or not (12 months – showing working out, same applicant or successor in title, same subject matter, first application for that subject matter by that applicant). If any condition not met, priority claim not valid else it is valid.
5. State the effective filing date of the application (claimed priority date or filing date).
6. Identify all prior art that is citable, regardless of relevance, and whether Art 54(2) EPC or Art 54(3) EPC. For national filings do not consider Art 54(3) EPC prior art – not expected to know national law provisions and will probably not be relevant.
7. Does the prior art disclose the invention.
8. State whether invention is novel and inventive.
9. Are there any issues with the application that could render it invalid?
10. Explain what this means practically for our client. E.g., if a third party’s EP application will grant, state what that means, specifically, for our client.

Question 5

Ten step process. For each patent/patent application

Answer 5

1. State the filing date.
2. List all the inventions in the patent application. Refer to the row corresponding to that invention.
3. Identify which inventions are a first filing by that applicant.
4. For each invention, state the priority date (if any and state if none).
5. Check the validity of the priority claim (write each step on checklist) and state whether valid or not (12 months – showing working out, same applicant or successor in title, same subject matter, first application for that subject matter by that applicant). If any condition not met, priority claim not valid else it is valid.
6. State the effective filing date of the application for that invention (claimed priority date or filing date).
7. Identify all prior art that is citable, regardless of relevance, and whether Art 54(2) EPC or Art 54(3) EPC. For national filings do not consider Art 54(3) EPC prior art – not expected to know national law provisions and will probably not be relevant.
8. Does the prior art disclose the invention.
9. State whether invention is novel and inventive.
10. Are there any issues with the application that could render it invalid?
11. Explain what this means practically for our client. E.g., if a third party’s EP application will grant, state what that means, specifically, for our client.

Question 6

Analyse Situation by Invention

Answer 6

Which is 1st application for invention?
– Are there other (later) applications?
– If so, is priority claimed and validly: same applicant? priority period expired? Same
invention? Potential priority-related remedies: Re-establishment? Addition of decl’n
of priority (16 mos; retract early publn request if already made)?
– What is the effective filing date of each invention?
* Prior art citable against each application (whether or not relevant)
– citations in search reports, public disclosure?
– Prior patent applications: Art 54(2)EPC (Nov & IS) or Art 54(3)EPC (Nov only)?
– Check publication dates of all applications (assume 18 mos from priority unless
withdrawn); any evidence appl’n published (eg client file inspection made? If priority
claimed and later appl’n published then priority application available from the EPO
Register).
* Problems with any applications? Fixable?
– added matter - delete/invention not claimed but disclosed/invalid claims/refused –
appeal period?/deemed w/drawn, reinstate?
* Can further (new) applications be filed?
– Would they lack novelty of inventive step, e.g. prior disclosure; is there an
advantage associated with differences?

Question 7

Analyse Status of Opposition

Answer 7

• Opposition correctly filed?
  – Opposition period expired? Filed in time? Requirements met (eg min. docs filed/fees
  paid/language requirements met, eg translations required and filed?)
• Can you fix any problems?
• Substantive content of opposition – sensible?
• Likely to be successful?
  – If patent invalid, and liable to revocation, is it correctable by patentee? What
  options does patentee have?

Question 8

Freedom to Operate – Client and Competitors

Answer 8

• Patents owned by 3rd parties? Which territories? Patents valid? Opposition period?
• Patent applications owned by 3rd parties? Which territories? Claims valid? Likely to grant? [If
  invalid – TPOs/oppose/negotiate?]
• Scope of protection by each patent/potential patent
  – Are any of our markets/products covered; umbrella patents? [Cross-license
  opportunities?]

Question 9

Improving position?

Answer 9

• File new application? (e.g. Art 61(1)(a)EPC if entitled/Art 55(1)EPC evident abuse) .
  – Time limits (e.g. 6 months preceding the filing date for Art 55(1)EPC).
  – Check prior art/disclosures/ 1st application?/priority period expired?/Reestablishment?/
  Addition of decl’n of priority (16 mos)?/ retract early publn request?
• Likely to grant? Who will file? What to do when granted – validation in which
  territories/infringement action?
• Entitlement issues? Bring Entitlement Proceedings (national court/Protocol on Recognition).
  Entitled to whole content? If no – delete subject matter or file divisional solely to entitled
  subject matter?
• If 3rd party infringes (how? Likely acts by 3rd party?) – what infringement action? Negotiate?
  Do we infringe any 3rd party patent/appln’s? Cross-license (if so, what exactly, A to B, B to A)

Question 10

Unusual sections

Answer 10

• Unitary patent rules and UPCA
• Protocol on recognition
• R153 EPC privilege
• PCT direct – influence search by EPO
• Criminal act – R105EPC forging documents
• PCT - EP closed route - Euro-PCT Guide - 2.12.007

Question 11

Low hanging fruit

Answer 11

• If patentability question, think guidelines for examination and then Case law book
• If disclosure is non-consentual, think A55
• If mention filing date, thin renewals
• If fees, think online filing, divisional savings, languages…

Question 12

Rule searching hierarchy

Answer 12

• EP
  o Daily Ds, PPQs
  o Visser
  o EPC articles and rules
  o G Decisions
  o Guidelines
  o Case law
• PCT
  o Rules – Cross ref PCT
  o Articles
  o Annexes
  o International phase - Applicant’s guide
  o Euro-reg phase – Euro-PCT guide (basis in columns)