D 2021 - The DII part
OH-NO, AHHH, YELP: subject-matter of this year’s DII! And how to keep your dogs on the leash.
The 50-mark, 3-hour DII was of somewhat less complexity than the DIIs of the previous years. The paper presented all inventions and applications in a clear and concise way, including abbreviations for the various claims features and including effects of all features to support inventive step. The questions were very explicit and were, as in most recent years, a clear agenda as to what to address. Well-prepared candidates, that did not only give their conclusions but gave a complete reasoning without any implicit steps, should have been able to address most of the expected aspects (but will also have missed some aspects or some detail) and to score 50-60% or more out of the 50 marks within the 3 hours available.
Some key
aspects were invalid priority due to a first application issue (W-JP – W-IT –
W-EP), insufficiency of disclosure / lack of enablement (B, S+Y+B), amendments
during opposition (Art.123(2)/Art.83 - Art.123(3) trap w.r.t. B; Art.123(3) w.r.t. amendment to S+Y+A), competitor being commercially successful already with
products under the scope of a (potential) claim of a currently dead
application, missed EP entry of HP-PCT and remedy, (no) 54(3) effect of HP-PCT application (yet), and whether/how opposition against W-EP would be partially or fully successful.
There were not too many events in the timeline -the most essential tool when doing a D2 case-, such that the risk of loosing a lot of time due to a redrawing of the timeline was small.
In earlier years, we have noted that the discussion was sometimes cut short already beforehand when we posted our full answers before candidates had the opportunity to post their comments and questions, and to discuss among them. Thereby, valuable feedback from candidates as to how they perceived certain questions, where they had difficulties, and where they had a different answer, and how that answer was different, did not always show up. For that reason, we did not post our answer immediately (the evening of 2 March), but we posted our answers to the DI parts the following morning (3 March, 10:45): the answers are at the end of this post.
Comments are welcome in any official EPO language, not just English. So, comments in German and French are also very welcome!
Our answers to the DII
Note: EQE answers can be more concise than what we present below, as we sometimes provide some redundant information allowing an easier understanding, and to also include information that will not attract marks but that you may have in our answer - you can then check whether your answer in in line with ours also for those parts. But: you need to provide a complete, explicit reasoning for full marks on a topic - any implicit step is a lost mark. Also note that our answers may also contain errors or omissions: any comments and discussion is much appreciated!
Part
II: Legal Opinion
Questions
(1) What is the current patent situation in respect of:
- SPRINGY leashes in general (S)?
- A SPRINGY leash with an OH-NO fastener (S+O)?
- A SPRINGY leash with an OH-NO fastener and a COMEBACK cable (S+O+C)?
- A SPRINGY leash with the YELP modification (S+Y)?
- A SPRINGY leash with the YELP modification and the AHHH modification (S+Y+A)?
- A SPRINGY leash with the YELP modification and a sound barrier (S+Y+B)?
(3) What improvements can we make to the current patent situation?
(4) After
our improvements:
- Which products will we be able to stop WUFF from making and selling?
- Which products will WUFF be able to stop us from making and selling?
(1) What is the current patent situation ...:
Current patent situation SPRINGY leashes in general (S)?
- S is described in:
o
W-JP
o
Puppy Press
o
W-IT
o
W-EP - filed
and claim granted
- S is sold by us in our key markets of the UK, France and Italy.
- Note: The paper does not indicate since when we manufacture and sell a popular dog leash known as SPRINGY (S), but this must be before early 2018 in view of [006]. Since it is not mentioned, it is maybe not so important as to when it started.
- W-JP is the first application from W for S
- W-JP was published and withdrawn, so cannot lead to patent protection itself.
- W-IT is another, IT, application from W for S
- W-IT was published and withdrawn, so cannot lead to patent protection itself.
- W-EP described and claims S.
- W-EP has been granted with a claim to S, on 5/8/19
- W-EP is being opposed by us (P) - [013]
- W-EP claims priority from W-IT
- W-EP was filed within 12m and by the same applicant, W, as W-IT.
- W-IT also describes S.
- But W-IT is not the first application from W for S: W-JP is.
- can also not be considered the first application under Art.87(4) because:
- W-IT was not filed for the same country as W-JP (IT vs JP), and
- W-JP was still pending when W-IT was filed, as W-JP was published in 7/18 so after W-IT was filed (10/7/17)
- So priority is not valid for S
- So the eff date of the claim to S is the filing date if W-EP, i.e. 29/6/18
- W-JP is published in 7/18, so too late to be prio art
- Puppy Press was published 4/1/17, so is full prior art, and
- Puppy Press is novelty destroying as it already shows S.
- Claim 1 can thus indeed not be maintained in the opposition
- No other applications or granted patent describe or claim S.
- So no valid patent rights exist for S
- But at this moment, W-EP is not yet invalidated and can be held against P
Current patent situation A SPRINGY leash with an OH-NO fastener (S+O)?
- S+O is decribed in:
o
W-JP
o
W-IT
o
HP-PCT, but
in combination with C (S+O+C), so it will be discussed below
o
W-EP as
filed, but not in the granted claims
- W-JP is the first application from W for S+O
- W-JP was published and withdrawn, so cannot lead to patent protection itself.
- W-IT is another, IT, application from W for S+O
- W-IT was published and withdrawn, so cannot lead to patent protection itself.
- W-EP described and claimed S+O.
- W-EP has been granted without a claim to S+O
- W-EP is being opposed by us (P) - [013]
- W-EP claims priority from W-IT
- W-EP was filed within 12m and by the same applicant, W, as W-IT.
- W-IT also describes S+O.
- But W-IT is not the first application from W for S+O: W-JP is.
- So priority is not valid for S+O
- So the eff date of the claim to S+O is the filing date if W-EP, i.e. 29/6/18
- W-JP is published in 7/18, so too late to be prior art
- Puppy Press was published 4/1/17, so is full prior art, but
- PP does not show S+O, only S
- So a reinstated claim would be new w.r.t. Puppy Press.
- and inventive as O detaches the leash from the collar if the strain exceeds a particular limit.
- So currently, but W has no claim to S+O, but it is a risk that W could amend claim 1 to S+O.
- HP-PCT did not enter the EP phase and did not fulfill the requirements of R.165,
- such that HP=PCT is not yet 54(3)
- if it would
enter, its S+O+C would destroy the novelty of the reinstated claim in W-EP.
o see Q.3
- At this moment, no applications or granted patent claim S+O.
- So no valid patent rights exist for S+O now
- But at this moment, W-EP is not yet invalidated, and S+O is in the scope of S; also S could be amended to S+O by W during the opposition, and
- W-EP could be maintained in amended form to give patent protection for S+O in Italy, UK, France and Germany
Current patent situation A SPRINGY leash with an OH-NO fastener and a COMEBACK cable (S+O+C)?
- S+O+C is described in:
o
HP-PCT
o
W-EP as
filed and as granted (claim 2)
- HP-PCT is the first and only application from P describing and claiming S+O+C
- HP-PCT entered the CN phase in Dec 2020
- HP-PCT did not yet enter the EP phase, nor any other national/regional phases (apart from CN) - we agreed so with H
- Too late to enter the EP phase regularly 18/6/18 + 31m -> 18/1/21
- But could enter using FP if needed/'wanted.
- if we would enter (see Q.3):
o
eff. date
would be filing date as no prio is claimed
o
only prior
art would be Puppy Press - but that shows no C
o
W-EP is only
prior art as far as priority is valid, but there is no sjm in W-EP with valid
priority
o
so claim to
S+O+C would be new as none of the prior art shows C
o
and it would
be inventive as retaining a connection between the collar and the leash even after
the OH-NO fastener detaches has a surprisingly positive effect on the behaviour
of the dog
o
It is also
inventive because none of the prior art shows O, which has the effect to detach
the leash from the collar if the strain exceeds a particular limit.
- Chinese national phase of HP-PCT may lead to valid patent in CN for S+O+C
o
eff. date
would be filing date as no prio is claimed
o
only prior
art would be Puppy Press - but that shows no C
o
so claim to
S+O+C would be new as none of the prior art shows C
o
inventive as
argued above
- W-EP is the first application from W for S+O+C
- W-EP was granted with a claim to S+O+C as claim 2
- W-IT does not describe S+O+C, so no priority and eff date is filing date of W-EP
- Prior art is:
o
Puppy Press,
but only shows S, so new
o
HP-PCT as
54(3) but only if it enters the EP-phase - and it did not yet
- So, currently, W-EP's claim to S+O+C is new aw s none of the prior art shows C
- and inventive as retaining a connection between the collar and the leash even after the OH-NO fastener detaches has a surprisingly positive effect on the behaviour of the dog
- It is also inventive because none of the prior art shows O, which has the effect to detach the leash from the collar if the strain exceeds a particular limit.
- But if HP-PCT would enter the EP-phase, it would destroy the novelty
o See Q.3
- At this moment, granted patent claim S+O+C in W-EP is valid and can be held against P in EPC stats where validated.
Current patent situation A SPRINGY leash with the YELP modification (S+Y)?
- S+Y is described in:
o
W-EP as
filed, and W-EP is granted with claim 3 directed to S+Y
o P-EP
- W-EP is the first application from W for S+Y
- W-IT does not describe S+Y so no priority and eff date is filing date of W-EP
- Prior art is:
o
Puppy Press,
but only shows S, so new
o
HP-PCT as
54(3) but only if it enters the EP-phase - and it did not yet
- So, currently, W-EP's claim to S+Y is new as none of the prior art shows Y
- and inventive because Y is surprisingly effective at causing a dog to stop pulling on the leash to reduce the effect of strain on the dog.
- Lack of unity between S+O+C and S+Y in W-EP has no effect on the validity of both claims
- S+Y in W-EP is valid
- P-EP is the first application from P for S+Y
- But P-EP as granted does not include claimj to S+Y:
- P-EP as granted only claims S+Y+B, so we can also not amend that claim to delete B as it would violate 123(3)
- Further, W-EP is 54(3) for P-EP and destroys the novelty of S+Y in P-EP.
- At this moment, W-EP gives valid protection for S+Y and can be held against P in EPC states where validated.
Current patent situation A SPRINGY leash with the YELP modification and the AHHH modification (S+Y+A)?
- S+Y+A is -only- described in:
o
P-EP as
filed
- P-EP is the first and only appl from P for S+Y+A
- P-EP claims no priority so the eff date is the filing date of P-EP
- Prior art does not show A, so a claim directed to S+Y+A would be new
- As the calming sound emitted by Ais surprisingly effective at pacifying dogs, such claim would be inventive
- However, S+Y+A is not claimed in granted P-EP.
- So currently P-EP gives no protection for S+Y+A.
- No other application or patent claims S+Y+A, but it is within the scope of the S+Y claim of W-EP.
Current patent situation A SPRINGY leash with the YELP modification and a sound barrier (S+Y+B)?
- S+Y+B is -only- described in:
o
P-EP - and
also granted
- P-EP is the first and only appl from P for S+Y+B
- P-EP claims no priority so the eff date is the filing date of P-EP
- Prior art is Puppy Press, possibly J-EP as 54(2); and W-EP and potentially HP-PCT as 54(3)
- None of the prior art shows B, so claim appears new
- As B protects a dogwalker’s ears from high-pitched sound (from Y), the claim appears inventive.
- But: P did not include a description of any suitable sound barrier B and
- P has not yet been able to obtain such a sound barrier B that works
- so it cannot be argued that the skilled person could implement the solution from his common general knowledge
- such that the claim is not enabled
o
Also see Q.2
- P-EP was granted on 12 November 2020 with a single claim directed to S+Y+B.
- P-EP is validated in Italy and at this moment also valid in all London Agr Art. 1(1) states, incl France and the UK.
- But as the claim is not enabled and an opposition is filed, it will not be able to maintain the claim
(2) Can we save our patent P-EP and why? Give a reasoned analysis.
- No
- The claim to S+Y+B is not enabled (see above) and an opposition is filed wherein the lack of enablement was raised as a ground of opposition.
- It will thus not be able to maintain the claim to S+Y+B
- P suggests to replace B by A, but that would result in a shift of protection
- and violate Art.123(3):
- such amendment would thus not be allowable
- Even if P would now know how to make B, cannot amend P-EP by introducing the technical information into P-EP to make it enabled, as that would violate Art.123(2)
- As P-EP has already been granted, no longer possible to file a divisional directed to S+Y+A
- Although there may be basis to amend to S+Y+A+B, that claim is also not enabled due to the lack of enablement of B
- So no allowable amendment (satisfying Art. 12392), 123(3) and 83) can be identified
- So no possibility to save P-EP
(3) What improvements can we make to the current patent situation?
- We will need to check whether we can:
o
get the
opposition to W-EP successful
o
somehow use
HP-PCT
o
protect
unclaimed matter
Opposition
vs W-EP
- W-EP was granted on 5 August 2019 with three claims:
1) Claim 1 is directed to S
2) Claim 2, dependent on claim 1, comprises O
+ C, i.e. corresponds to S+O+C
3) Claim 3, also dependent on claim 1,
comprises Y, i.e. corresponds to S+Y
- As discussed above, the opposition will be successful in view of:
o
claim to S
o
claim to
S+O+C, but only if HP=PCT would enter EP (or at least satisfy R.165)
- W submitted a single request:
1) amending claim 1 of W-EP to further
incorporate the OH-NO feature, so to S+O
2) Claim 2, dependent on claim 1, comprises
COMEBACK, i.e. corresponding to granted claim 1+2: S+O+C
3) Claim 3 was made an independent claim
directed to a SPRINGY leash having the YELP modification, i.e., keeping the
same subject-matter as granted claim 3 but in an independent claim: S+Y
- Last week the EPO issued a summons to oral proceedings scheduled for October 2021.
- Along with the summons the EPO indicated that the amended claims of W-EP appear to be novel and inventive over the PUPPY-PRESS article
o
as discussed
above, that is correct: we need to enter with HP-PCT to be able to successfully
attack the claim to S+O;
o
we cannot
invalidate S+Y.
- We need to submit this new facts, arguments and evidence as soon as possible
o
the ground
lack of novelty was already raised, so it is not a fresh ground
o
the new fact
(not novel over HP-PCT) and arguments and evidence (indicate that HP-PCT shows
S+O+C and that that destroys the claim; and show that HP-PCT entered and
became 54(3)) are late-filed, but will be admitted in view of their prima facie
relevance
o
submit a
copy of W-JP and argue that priority is not valid for S and S+O in view of the
first application issue
- So during the opposition, W can be expected to amend to a single claim directed to S+Y and to re-validate in EPC states where validations are still active when the patent is maintained in amended form
Using
HP-PCT
1) Using HP-PCT to get protection for S+O+C
- To be able to invalidate (a potentially reintroduced) S+O and S+O+C in W-EP:
- we need to enter the EP-phase with HP-PCT using further processing
- we need to agree to do so with H, as we have now agreed to only enter CN
- as H is among the applicants, we need a professional representative
- but we can appoint one, H does not need to be involved
- Then, FP can be done by the prof rep for all the missed acts of R.159(1), or at least R.165 (see below)
- I propose to do full entry, as we can then also get protection for S+O+C
- as the 31 expired on 18/6/18 + 31m -> 18/1/21, there will be time, as there is 2m from the (as far as we know not yet received) loss of rights
- HP-PCT was field in EN, so no translation needed
- Request FP fo all missed acts:
- Pay filing
fee + FP fee 50%
- Pay search
fee + FP fee 50% as EP will do suppl search as CNIPA/RO does not allow EPO to be
ISA
- Flat FP fee
for missing request for examination
- Pay Exam fee
+FP fee 50%
- Pay
designation fee + FP fee 50%
- Renewal fee was also already due on 18/1/21: can still be paid +50% surcharge until 18/1/21 + 6m -> 18/7/21 (Sun) -> 19/7/21
- As argued above, claim to S+O+C will be new and inventive
- get early provisional protection by fulfilling the national requirements in at least:
o
IT where
WUFF is manufacturing and
o
in IT, UK,
FR, DE, where WUFF is already having commercial success already since 10/2018.
- Get grant asap:
o
waive R.161/162;
o
pay exam fee
and waive R.70(2);
o
request PACE
as soon as exam div responsible
- validate in at least Italy, the UK, France and Germany where WUFF sells.
o validation in UK, FR and DE is automatical due to London Agreement Art.1(1)
- maintain by paying national renewal fees
- so P can get valid protection for S+O+C in all EPC states where validated
2) Using HP-PCT against W-EP
- After EP entry, the 54(3) effect of HP-PCT vs W-EP comes into existence:
o
S+O
disclosed, so amended claim 1 of main request is not novel over HP-PCT
o
S+O+C
disclosed, so claim 2 also not novel.
- Introduce these facts in the opposition against W-EP so that S+O+C will not be maintained in W-EP:
o
Client has
filed opposition against W-EP, on grounds that claims are not novel/inventive
over puppy press article.
o
The
opposition period expired on 5/8/2019 +
9m -> 9/5/2020 (Sat) -> 11/5/2020
o
HP-PCT is
therefore a late-filed document and the facts and arguments also late-filed.
o
But because
it prima facie prejudices the maintenance of the patent, the OD will admit it
all into the proceedings.
o
The ground
of novelty is not a fresh ground.
o
As explained
above, HP-PCT does not prejudice the patentability of claim 3.
o
Likely outcome
of opposition:
§ W-EP maintained in amended form on the
basis of only current claim 3.
§ WUFF gets valid protection S+Y in
countries where W-EP is re-validated.
Unclaimed
matter
- Not possible to get a valid claim to S+Y+A:
- in P-EP via an amendment, as it violates Art. 123(3) - see above
- in a divisional from P-EP, as P-EP has already been granted - see above
- via a new application, as that will not be novel as P-EP has already been published (promptly after 2/7/18+18m->2/1/20, so probably 8/1/20) and discloses S+Y+A in the description
- No others identified
(4) : After improvements:
4a) After our improvements: Which products will we be able to stop WUFF from making and selling?
- PUGZ will have a valid patent for S+O+C, which they can use to prevent W to make and sell products which include S+O+C in the EPC states where Euro-HP-PCT is validated and maintained by payment of national renewal fees
·
in states
where we validated: Italy, UK, France and Germany.
- After grant in China, client can also stop sales and manufacture in China.
4b) After our improvements: Which products will WUFF be able to stop us from making and selling?
- WUFF will have a valid patent for S+Y, which they can use to prevent P to make and sell products which include S+Y in the EPC states where W-EP will be (re-)validated in amended form and maintained by payments of national renewal fees;
o
this scope
of protection includes S+Y+A,
o
so if P
wishes to make or sell S+Y or S+Y+A in the validated states, P will need a
license from W
§ P could consider a cross-license by
licensing S+O+C to W in some of the states
- No one has patent protection for S, S+O, so both are free to make and sell these products.
Some comments to the D2
Compared to earlier D2-papers of 60 marks, the length and difficulty of this D2 matches well to 50 marks. The situation as-is is quite standard, as are the improvements and the FTO questions, but with few tricky bits. Funny subject-matter and nice names, hopefully makes candidates smile during a stressy exam!
First application problem was clear, candidates should not have missed this. Has quite some impact if going wrong with it.
We noted that the paper does not indicate since when we manufacture SPRINGY (S) (see [002]). However, this appears not to have impact if you dealt correctly with the priorities; however, it could have been important if a candidate considered that priority EP from W-IT for S in W- was valid…: then, the date of sales of our popular SPRINGY (S) would be decisive for the novelty.
It feels
uncomfortable that you cannot get a patent for your client for Y+A, ...which
would be new and inventive… if it would have been claimed in P-EP or if a
divisional would have been filed to it before grant of P-EP… We checked it 5x,
but it seems impossible…: none of the escapes of the inescapable traps in G
1/93 and in Case Law Book II.E.3.2 appears to be of help.
The (not
yet) Art.54(3) effect of HP-PCT is standard topic in D2 (and also frequently in D1), as is remedying missed entry
(to get the 54(3) effect AND to get a granted claim to S+O+C, which W is
already selling). Still, many candidates will have missed quite some marks.
Candidates
may have spent a lot of time on the joint applicant situation of HP-PCT. There
is only a few comments to make in relation to that, but not so much (unless I
missed something “big”).
Provisional protection and acceleration to grant for S+O+C incl early entry into the EP phase of HP-PCT will, as usually, not have been mentioned by many, despite the large benefit for the client in view of P's sales with commercial success of S+O+C.
In our opinion, D1 was somewhat more difficult than average. Good candidates will not have problems to score more than 50% of the marks, also when scoring low on one of the questions; weak candidates will score relatively lower than in an average D1. In our view, this is in line with what could be expected: it was announced that D1 would become more important (which was the reason to make the D1-D2 ratio different from the earlier 40:60).
In our opinion, D2 was somewhat less difficult than average. Good candidates will not have problems to score more than 50% of the marks, also when missing some aspects. Weaker candidates and poorly prepared candidates will have missed many aspects and many easy marks, due to incomplete reasoning, insufficient speed of answering or legal errors.
In our view, this was a well-balanced exam.
We look forward to our comments!
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.
Please, publish your answers to DI and DII as soon as possible!!!
ReplyDeleteThank you Deltapatents!
We did ;)
DeleteHi Roel,
ReplyDeleteI felt well prepared and didn’t find this very straightforward. Time-pressure was high and there was a lot of information. Felt like an old DII paper with less time. Also, I was very distracted since I had to answer D11 and D12 based on the German assignment, even though I was not at all prepared for that. Still did okay on all parts I guess, I am curious to see the delta patents solution.
Hi Roel,
Deletethanks for this excellent analysis. Can you explain "Then, FP can be done by the prof rep for all the missed acts of R.159(1), or at least R.165 (see below)
I propose to do full entry, as we can then also get protectin for S+O+C", particularly refenences to R.165 and full entry. Thanks!
R.165 alone would be enough to get the 54(3) effect against W-EP.
DeleteBut if we want to get protection ourselves, we need to do full entry under R.159.
Thank you very much Roel!
ReplyDeleteAny information or idea about the results date for paper D?
No clue this year. There are probably more than double the number of candidates compared to normal years, which will require more marking effort. But the papers are typed and not handwritten so probably easier to deal with for the marks. So whether the results will be available earlier or later is hard to predict.
DeleteIn 2018, the results were out late June in the form of a list of EQEregnr and marks. In 2019 on 18 June (see https://www.epo.org/learning/eqe/statistics.html).
Hi Roel,
ReplyDeletethx again for the excellent week-end preparation course! As SL above, I was quite a bit distracted by D1-1 being available only in German in the beginning - although it's my mother tongue, I studied / prepared everything in EN and therefore lost some time looking for the exam paper in EN.
After about 2hrs down the road in D2, I started to worry about my analysis as it looked like such a hopeless case for the client, in particular with the 123(2)(3) trap and no chance for a new application. However, after talking to some colleagues I felt relieved (and your analysis also supports this) that apparently the client was in such a bad situation.
So now it's only wait and see until the results are published.
Thx again.
Thx Bernd,
DeleteI also felt very uncomfortable that P-EP could not be saved somehow, and that no protection was obtainable for S+Y+A.
But as also Diane and Stefanie came to the same conclusion, I felt relieved as well ;)
P-EP will be revoked in opposition, but IT allows conversion of a revoked patent into a national utility model under art. 135 EPC. This might be useful given the importance of IT in the paper? This would potentially allow some rights be saved from P-EP?
ReplyDeleteWould a utility model with an insufficiency problem be of any help under Italian law?
DeleteHi Roel,
ReplyDeletethank you so much for all your comments and you answers to the papers.
In question 2 of DII, I thought replacing B with A was allowable under the exception set out in G1/93 (feature cannot be maintained under Art.100(c) nor cannot it be removed without violating Art.123(3)).
How do you see it? Thanks!
Ok, I just read your view on this on the your final comments on the D2... Why none of the scapes of G1/93?
DeleteAnd yes, indeed this joint applicant situation got me looking trying to find the hidden trick for a long while.
Thanks again...
looking forward to your postings for papers A and B!
Jara
Hi Jara,
DeleteHow do you think G 1/93 could be of help?
In our view, we are in the inescapable trap and we cannot get out. But if you think we overlooked a solution, please tell!
I also thought, that feature B could be replaced by feature A, based on last sentce of GL Part H-IV. 3.5
DeleteConflicts between Art. 123(2) and Art. 123(3)
A possible conflict between the requirements of Art. 123(2) and (3) may occur where, in the procedure before grant, a feature was added to the application which is considered unallowable under Art. 123(2) in opposition proceedings. In that case, Art. 123(2) would require deletion of such a feature whereas Art. 123(3) would not allow deletion, as this would extend the protection conferred by the patent as granted. In such a case the patent will have to be revoked under Art. 100(c). However, where this feature can be replaced by a feature for which there is a basis in the application as filed and which does not extend the protection conferred by the patent as granted, maintenance in this amended form can be allowed. If the added feature, without providing a technical contribution to the subject-matter of the claimed invention, merely limits the protection conferred by the patent as granted by excluding protection for part of the subject-matter of the claimed invention as covered by the application as filed, this feature may be maintained (see G 1/93).
The wording of the GL is perhaps not as clear as it could be. The last sentence concerns the situation where the offending feature has no technical effect and so in reality does not restrict the scope of the claim which is defined by its technical features - not a common situation. That is not our situation. The rest of this GL section I think covers situations such as the following: claim 1 is granted as "device comprising... and a removable fixing means". Such a claim includes screws, nails etc. but during opposition the opponent points out that these are not disclosed and the opposition division agrees. The proprietor can then remove the feature of removable fixing means and replace it with the only fixing means disclosed, by claiming "device comprising... and sticky tape". The offending feature has been deleted but replaced by a more restrictive term so the scope of the claim has been restricted, not extended.
DeleteIndeed, that is an example of a Art.123(3) problem and what would be allowable.
DeleteThank you for the example. In fact I still do not understand the difference. The said "replacement of "removable fixing menas" with the only fixing means disclosed" isn't the same situation as replacement of compound B with the only disclosed compound A ?
DeleteBruce wrote: "replace it with the only fixing means disclosed" - sticky tape.
DeleteSo:
application as filed:
- describes and claims: "device comprising... and a sticky tape"
- with no other fixing means disclosed than sticky tape
Was there an issue relating to prior user rights, based on paragraph [010]?
ReplyDeletePlease clarify your question.
DeleteWhat would the issue be, how would it affect the answer, what is the legal basis?
Hi Roel,
ReplyDeletelike SL, I thought I was reasonably well-prepared but did not find the paper straightforward. I think there are multiple reasons for this:
1) the restructuring of paper D,
2) the initial scare of D1.1, the consequent rescheduling of breaks and their effects on my concentration.
3) the amount of information given in the paper.
I am not a fan of paper D having been split into 3 parts. I especially do not see the need of splitting D1 in two parts (Paper A, B, C1 and C2 are as long as or longer than a unified D1 would be). The paper now drags for pretty much the whole day and even under normal circumstances it's very challenging to maintain the level of concentration required by this exam throughout the day.
We have also lost the possibility of choosing the order in which to answer questions.
In my opinion, D2 is more penalised than D1. I think D2 requires more concentration than D1: in D1 you are focused on a certain topic for about 30 min, in D2 you are focused on the same story for 3 hours and your concentration must be at its peak not to mess up WUFF and PUGZ (I admit the dog theme did make me smile :) ), WEP and PEP and the like. This is why my preference would be to do D2 first and D1 second. I would have certainly done it this way round if I could have sat the EQE in 2020 as scheduled.
These are all general comments to the restructuring of paper D. The unexpected unavailability of the EN/FR versions of the paper made it all worse by adding an extra-level of stress that disrupted mine and many candidates' concentration for much longer than just D1.1.
So, I did not find D2 straightforward at all. My timeline was much more crowded than in past practice papers (perhaps because I also included opposition events?).
In addition, 6 inventions to evaluate seems like a high number of inventions compared to past papers, especially for 50 marks instead of 60.
As a consequence, I completely overlooked the A 123(3) issue and go to the wrong conclusion in question 2. Then, in my improvements, I also suggested a cross license S + Y vs S + Y + A. (I don't want to brag, it's surely possible I would have overlooked the issue even if I'd taken the exam last year, but given that it's relatively evident, I really think it comes down to things not going to plan)
By the end of the paper, I was so tired that I read question 4 wrong and started answering such wrong question to only realise 2 minutes before the end. So, I started frantically editing and handed in an unfinished answer that does not really make sense (poor exam skills... I know!).
Anyway, all of this to say that paper D2 may have been a fair exam under normal circumstances but it surely was not straightforward given the circumstances we actually faced.
Thank you always for your precious work! Please keep it up!!
"As a consequence, I completely overlooked the A 123(3) issue"
DeleteEvery candidates misses out some topics and/or reasoning steps when discussing some topics, also the ones that pass, and also the highest-scoring candidates. The D papers are designed such that missing out on one aspect has only limited impact on the rest of the paper. Here, it got you to get S+Y+A for P, but as that is dependent on W's S+Y, it did not impact the who-can-stop-who very severely as long as you did get S+O+C, i.e., as long as both sides got a valid patent right.
Yes, perhaps my "as a consequence" was a bit too dramatic! That's why I added that it's completely possible I would have overlooked the issue even if I'd taken the exam last year :)
DeleteHi! why not remove c from S+o+c, and claim s+o with euro-PCT or divisional therefrom? Although s+o is not disclosed as such in euro-PCT, it seems that c can be removed as non essential and not inextricably linked to the other elements. This is evident from presence of s+o in the application of competitor. This also makes the joint applicant situation relevant, because a divisional must be filed by both applicants of mother application. What do you think? Eliminating an element from a claim was also a point in d paper of 2011 (bicycles), correct?
ReplyDeleteThe mere reasoning "it seems that c can be removed as non essential and not inextricably linked to the other elements. This is evident from presence of s+o in the application of competitor." is not adequate.
Deleteit is like saying "I filed an application to a car with an the improved steering wheel", but since another application already shows a car, the improved steering wheel is not essential, so I can amend ny claim to simple "a car"...
A feature can only be removed if it is not essential from the disclosure itself, not if something else says it is not.
Ok, I understand your point, but there is no hint in the paper indicating that c was described in euro-PCT as essential. The guidelines say that the condition is that the deleted element is not described as essential, and that is actually not essential. The condition according to the guidelines is not that the deleted element is described as non-essential. otherwise it would be almost always impossible for the applicant to benefit from that provision. I think that it can be reasonably argued that o and c have no interdependent technical effects and structural relation. O in euro-PCT (the relevant part of the client's letter commenting on the invention developed with hount) is described as a secondary element that releases/opens when S is tensed (right now I have forgotten the exact wording in the client's letter). C is described as a spring to extend when the leash is tensed. Hence, c is not essential for the s+o combination (I.e. s can be tensed regardless of presence of c). O on its own has its desired effect when combined with S. Or to put it following your example: if what is originally disclosed is a car with new wheels and new hydraulic suspension, and the respective effect of each of the two new elements is disclosed, the car with the new hydraulic suspension can be also claimed subsequently, even though this embodiment as such was not originally disclosed. The only condition is that the skilled person reading the application as filed understands that the new suspension has its originally described effect on the car, even in a car without the new wheels. (i.e. the skilled person understands that new wheels are not essential for the car with the suspension). No? The situation would be different if c was described as essential. But this is not mentioned in the paper. Having said the above, I understand that it is a long shot..
DeleteIf it is in the claim, it is assumed to be essential, as all essential features need to be in the claim. So, the burden of proof is on your side to proof that it is not. I do not think there are any facts that can support non-essentiality.
DeleteDo not forget that it is not just about whether the application explicitly says whether the feature is essential. It is also requried that:
Delete"the skilled person would directly and unambiguously recognise that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve (in this context special care needs to be taken in cases where the technical problem is reformulated during the proceedings, see H‑V, 2.4, and G‑VII, 11)"
See GL H-V, 3.1
Hi! I suggested that, in case feature B is put into practice one day, it can still be claimed, provided that it is fully described. P-EP is not an enabling prior art for S+Y+B. This suggestion will not be so useful in real life, but was nice to spot in my opinion.
ReplyDeleteF.
Hi F,
DeleteThat is correct. A non-enabled prior art does not destroy novelty, as non-enablement renders the teaching non-technical (that is at least how I explain it to myself).
But in the context of the paper, I do not think there is basis to assume that it can be put into practice. The paper says in [009]: "However, we did not include a description of any suitable sound barrier and, indeed, we have not yet been able to obtain such a sound barrier that works" and there is no indication that they have any clue as to how to obtain it.
So your suggestion would in my view be considered speculation and not attract marks according to the standard marking scheme. But maybe your good thinking is worth a bonus mark?
I also said that the client should continue R&D to figure out how to make B work, and then file a new application in which B formed part of the claimed invention, since the non-enabled disclosure of B will not be prior art!
DeletePlease please please give me bonus marks!
Why make B work?
DeleteWhy not C, D, E, F, ...?
First of all, D2 has never expected candidates to advise the client to file applications to inventions not mentioned in the subject.
DeleteSecond of all, we can derive from the subject that disclosure of B is not an obstacle to patentability, and the subject itself indicates that B has a technical effect, so likely inventive, meaning that the only obstacle is sufficiency of disclosure.
Third of all, the situation for B is complicated, and D2 likes when complicated situations are explained.
Fourth of all, the existence of a technical effect for B does not change the current situation, but CAN change the future situation, and the only way that it can change the future situation is if an application is filed which sufficiently discloses and claims B.
The subject says that Pugz has not YET been able to obtain a sound barrier that works. This means that Pugz is still working on developing B. Since B is still working on developing B, the candidate should warn Pugz that protection for B does not exist yet, and that the only way to obtain protection for B is to file a new application claiming and sufficiently describing B.
DeleteI totally agree with Rebecca MA: After more than four exam hours - starting 09:30 to 13:20 with only 25 minutes break to refresh the brain and grab some food - I found it very hard to stay focused during D2. (Had to read through the described situation three (!!) times to write down all relevant information. This has never happened during training.) For this very reason I would have preferred to start with D2 and do D1 thereafter just like in a "normal" exam. Staying focused on a situation with so many aspects for three more hours is not the same as focusing only half an hour on a situation with only one or two aspects (as in the D1 questions). Even though the "real" exam situation is always more stressful and error-prone than training, I am sure that at least some of my very stupid mistakes in D2 were due to the exam situation (never missed out an invalid priority claim before). I also agree that dividing the paper into three parts was completely unnecessary and an added burden, even for "well prepared" candidates. In addition, I would very much appreciate to see conventional earplugs allowed during the next online exam. Not everyone lives in a quiet area. I suspect that the online exam will remain with us next year and hope that the EPA will improve the situation.
ReplyDeleteThank you, Roel, for your helpful analysis of the paper and your comments in this blog.
We compiled a complete version of the D 2021 paper (both D1 parts, the DII part and the calendars).
ReplyDeleteIt is available via the link in the blog post.
Enjoy!
Hi, Roel, thank you for your excellent job. I have two questions.
ReplyDelete(1) Regarding saving P-EP. I answered that we can amend the claim of P-EP being directed to S+Y+A+B,which should be allowable under R. 80 EPC, Art. 123(2) and (3) EPC. In this regard, my thinking is that the sufficiency depends on what problem the invention aims to solve. Therefore, I explained that we can argue that P-EP has the inventive effect that AHHH is a calming sound emitter that emits a calming sound
when a dog has stopped pulling on the leash following a high-pitched sound emitted by YELP. The calming sound emitted by AHHH is surprisingly effective at pacifying dogs. In this regard, S+Y+A+B comprises all of the essential featuers to achieve the desired effect, and the application as filed has sufficiently disclosed the subject-matter S+Y+A+B, for achieving such desired effects. In this way, S+Y+A+B can be saved, but cannot stop other party to sell S+Y+A.
(2) My second question is, do you have an idea how DII would be scored? question 1 : questions 2-4 would be around 3:2? I answered the first question quite well, but then because of the time stress, i lost a lot of aspects in questions 2-4. I even said that after the entry of HP-PCT, as the opposition is still pending, a TPO can filed by providing a copy of HP-PCT.....my brain was completely stopped....
M. W
Hi M. W,
Delete(1) An amendment to S+Y+A+B would still not be enabled, as B is not enabled.
That S+Y+A+B may be inventive (due to A) has no effect in B not being enabled.
"A bicycle including a new and inventive feature A and a perpetuum mobile B for allowing to displace the bicycle without any supply of enery" is clearly not enabled due to B, even though it would be inventive due to A.
(2) Hard to tell. And even if I could/would give an estimate as to the marks per Q, it will not be able to deduce how many marks you more-or-less scored and scoring depends on the completeness and quality on the reasoning, not just on concluding on yes/no new/inventive/enabled. Also, the number of marks will not yet have been decided one: the marking and the weights of the questions and topics are only finally decided after an extensive sub-set of the papers has been pre-marked, probably also taking into accounts any input that they received via emails to the EQE secretariat and the information they get from the blogs (which they have said that they read and take into account when adjusting the marking and the possible solution, and to spot possible ambiguities or interpretation differences).
In the 60-mark papers, the as-is situation (Q.1) was usually 1/3 - 1/2 of the marks. In this paper, there are less improvements to do (Q.2/3/4) and also there are less valid claims surviving so that there is less FTO to discuss.
Hi, Roel, thank you very much for your answer. Just brainstorming, I am even thinking whether we can argue that S+Y+A+B is sufficiently disclosed to achieved the effects which are connected with S+Y+A, and in this regard, the presence of "B" only makes the claim unclear. However, B is present in the original claim, so lacking of clarity is not anymore a ground for opposition.
DeleteIf B cannot be made, any claim having B in it is not enabled.
DeleteLong time ago I did D2. Glad I did. It was much fun and when you are not actually sitting the exam, you don't have to discuss boring details like joint representatives or translating applications.
ReplyDeleteI agree on all and must say that the paper was very clearly written. It was not too difficult to find and organise all the information.
Only two additional things I considered.
- HP-PCT-EP will not only be admitted into the opposition proceedings because it's prima facie relevant, but also because it wasn't prior art yet when you filed the notice of opposition. So you have a good reason for submitting it late (they like reasons for lateness). You're still far away from the R116 date, but I would submit it directly after requesting the FP to avoid any suspicion that you tried to hide it for the proprietor.
- I would try to use the early 2018 market research as prior art. There must be some good evidence that S+O+C was public before the effective dates of pending claims 1 (S+O) and 2 (S+O+C) of W-EP. It's unlikely that the market research was fully completed under NDA. A problem with this evidence is that it may be considered late filed, but it seems very relevant and can support your attacks based on HP-PCT-EP.
I said the same thing! I found myself with a few extra minutes available to discuss the factors in favor/against acceptance/costs
DeleteDoes anybody know if we will get a copy of what we wrote like with the written exam where we received a photocopy of our answer sheets?
ReplyDeleteYou can download it yourself from Wiseflow.
DeleteGo the the flow, in left bottom box "The paper", clock on the "eye".
Thank you Roel!
DeleteBesides the comprehensiveness and excessive length of paper C and B, also D2 was obviously not adapted to be taken online and to the 50 points, because it was the longest paper in the recent years with 1262 words (En) compared to 2019 with 1174 words and 2018 with 1196 words.
ReplyDeleteAdaptation to 50 points, would be less than 1000 words. Considering the limited readability and handling of the paper in Wiseflow, the too short lunch break, the disregard of monitor workstation regulations and most of all the failed start of D1-1, which effected the whole D-paper, this is not acceptable!
I think that everyone agrees that, somehow, extra-points will be given at least to all the candidates expecting to have a paper in EN/FR.
ReplyDeleteA qualified attorney just told me that he is sure that it has already happened in the past with Paper C that extra points were added. Probably in 2007, 2008 or 2009.
So far, I didn't find any official information about this.
Are you aware of cases where extra points were added?
C 2007
DeleteBut the Disciplinary Board indicated that such "free marks" were a breach of law
Decision D 7/07:
Entscheidungsgründe
6. Auch die pauschale Zuerkennung von 10 Punkten durch die Prüfungskommission stellt eine Rechtsverletzung dar:
6.1 Nach der Systematik der VEP sind Noten / "grades" / "notes" die Umsetzung der in Punkten ausgedrückten Bewertung der einzelnen Arbeit in eine der drei Noten "Bestanden", "Nicht Bestanden" und "Bestanden mit Ausgleichsmöglichkeit", und zwar nach einem festen, in Regel 4 (2) bis (4) ABVEP festgelegten Umrechnungsschlüssel. Nur die Benotung in diesem Sinne und die formelle (und damit durch Beschwerde anfechtbare) Entscheidung über das (Nicht-/)Bestehen der Prüfung insgesamt ist durch Absatz 3 von Artikel 7 VEP "Befugnisse der Prüfungskommission" dieser zugewiesen. Sie umfasst nicht auch die vorausgehende, individuelle Bewertung der einzelnen Arbeiten unter Zugrundelegung einer Punkteskala von 0 bis 100 ("shall be marked on a scale of zero to 100 by the relevant examination committee" / "est notée par la commission d'examen compétente selon un barème allant de zéro à 100"), welche nach Art. 8 b) VEP und Regel 4 (1) ABVEP vom jeweils zuständigen Prüfungsausschuss vorzunehmen ist. Für eine Abänderung - hier eine pauschale Anhebung für alle Arbeiten C - der vom Prüfungsausschuss vergebenen Punkteanzahl durch die Prüfungskommission bleibt rechtlich kein Raum, sodass diese insofern ultra vires gehandelt hat.
Also D 7/07:
Delete4. Zu überprüfen ist durch die Beschwerdekammer, ob durch das beanstandete Vorgehen die VEP oder höherrangiges Recht verletzt wurden, wobei dieses Vorgehen aus zwei aufeinanderfolgenden, aber unterschiedlichen Maßnahmen bestand, nämlich
- seitens des betreffenden Prüfungsausschusses: Keine Zuerkennung von Punkten bei Wahl des nach seiner Auffassung unrichtigen Ausgangsdokuments (siehe Punkt I., oben);
- seitens der Prüfungskommission: die einheitlich für alle Arbeiten C der EEP 2007 ohne jeden Bezug auf die individuelle Bewertung der jeweiligen Arbeit verfügte Anhebung der Benotungsgrundlage um 10 zusätzliche Punkte.
5. Dass die pauschale Bewertung einer Teilaufgabe mit 0 Punkten durch die Prüfungsausschüsse nicht korrekt war, hat die Prüfungskommission selbst anerkannt (vergl. Punkt II und III, oben). Die Zuerkennung von Punkten für einen (nach Meinung der Prüfungsausschüsse und/oder der Prüfungskommission) zwar unrichtigen, aber logisch und gemäß anerkannter Praxis begründeten Angriff, ist allerdings nicht nur sachgerechte Praxis, sondern auch rechtlich geboten: Nach Regel 4 (2) und (3) ABVEP bestimmt sich die Anzahl der zur Bewertung jeder Arbeit zu vergebenden Punkte (auf einer Skala von 0 -100) darnach, ob und inwieweit "der Bewerber allein aufgrund dieser Arbeit zur Ausübung der Tätigkeit eines beim Europäischen Patentamt zugelassenen Vertreters für geeignet befunden werden kann". Damit nicht vereinbar ist es, eine Prüfungsarbeit für Bewertungszwecke als eine Liste voneinander unabhängiger Einzelfragen (wie etwa bei einem Multiple-Choice-System) zu behandeln, für die es überdies jeweils nur eine richtige Antwort gibt. Vielmehr folgt aus dem "fit-to-practice"-Kriterium die Verpflichtung der Prüfer, bei der Bewertung der einzelnen Teile der Antworten ihre Wertigkeit im Gesamtzusammenhang der Prüfungsarbeit nicht außer Acht zu lassen (D 3/00, ABl. EPA 2003, 365, Punkt 3 der Entscheidungsgründe) sowie die Notwendigkeit einer gerechten Bewertung von vom Schema abweichenden, aber dennoch vertretbaren und kompetent begründeten Antworten (D 7/05 ABl. EPA 2007,378, Leitsatz II). Darauf hat jeder Bewerber einen Rechtsanspruch.
6. Auch die pauschale Zuerkennung von 10 Punkten durch die Prüfungskommission stellt eine Rechtsverletzung dar, dies insbesondere aus folgenden Gründen:
6.1 Nach der Systematik der VEP sind Noten / "grades" / "notes" die Umsetzung der in Punkten ausgedrückten Bewertung der einzelnen Arbeit in eine der drei Noten "Bestanden", "Nicht Bestanden" und "Bestanden mit Ausgleichsmöglichkeit", und zwar nach einem festen, in Regel 4 (2) bis (4) ABVEP festgelegten Umrechnungschlüssel. Nur die Benotung in diesem Sinne und die formelle (und damit durch Beschwerde anfechtbare) Entscheidung über das (Nicht-/)Bestehen der Prüfung insgesamt ist durch Absatz 3 von Artikel 7 VEP "Befugnisse der Prüfungskommission" dieser zugewiesen. Sie umfasst nicht auch die vorausgehende, individuelle Bewertung der einzelnen Arbeiten unter Zugrundelegung einer Punkteskala von 0 bis 100 ("shall be marked on a scale of zero to 100 by the relevant examination committee" / "est notée par la commission d'examen compétente selon un barème allant de zéro à 100"), welche nach Art. 8 b) VEP und Regel 4(1) ABVEP vom jeweils zuständigen Prüfungsausschuss vorzunehmen ist. Für eine Abänderung - hier eine pauschale Anhebung für alle Arbeiten C - der vom Prüfungsausschuss vergebenen Punkteanzahl durch die Prüfungskommission bleibt rechtlich kein Raum, sodass diese insofern ultra vires gehandelt hat.
Sorry, the latter was D 9/07
DeleteIn English: D 12/07
Delete4. The board of appeal is charged with examining whether the contested course of action infringed the REE or higher ranking law, the said course of action consisting of the following two consecutive but distinct measures:
- on the part of the relevant examination committee: no points awarded if what it deemed to be the wrong document was chosen at the outset (see Point I. above)
- on the part of the Examination Board: the blanket addition of 10 points to the grade of all C papers in the EQE 2007 irrespective of the individual assessment of each candidate's work.
5. The Examinati
on Board itself recognised that the examination committees were wrong to award no points across the board in respect of a particular part of the paper (see Points II and III above). However, awarding points for an (in the examination committees' and/or Examination Board's view) incorrect yet logical and, in keeping with the recognised practice, justified attack, is not just due practice but is also legally prescribed: under Rule 4(2) and (3) IPREE the number of points to be awarded for every paper (on a scale of 0 - 100) is based on how and to what extent "on the merits of that paper alone, a candidate can be considered fit to practise as a professional representative". This is not reconcilable with marking an examination paper as if it were a list of unrelated individual questions (as in a multiple-choice system) to which there is only one correct answer. On the contrary, the fit-to-practise criterion obliges the examiners in marking the individual parts of the answers not to disregard their merit in the context of the examination paper as a whole (D 3/00, OJ EPO 2003, 365, point 3 of the Reasons for the decision) and the need to allow for fair marking of answers which deviate from the scheme but are reasonable and competently substantiated (D 7/05 OJ EPO 2007,378, headnote II). This is something to which every candidate has a legal entitlement.
6. The blanket addition of ten points by the Examination Board is also a violation of the law, in particular for the following reasons:
6.1 Under the REE system, the marks awarded in respect of candidates' papers are expressed as one of the three grades ("Noten"/"notes") "pass", "fail" and "compensable fail", according to a fixed conversion scale set out in Rule 4(2) to (4) IPREE. Only the grading in this sense and the formal (and therefore appealable) decision that the whole examination has been passed (or not) falls to the Examination Board under Article 7(3) REE "Powers of the Board". Its powers do not extend to the preceding marking of candidates' individual papers on a scale of zero to 100 ("ist vom betreffenden Prüfungsausschuß unter Zugrundelegung einer Punkteskala von 0 bis 100 zu bewerten" / "est notée par la commission d'examen compétente selon un barème allant de zéro à 100"), which under Article 8(b) REE and Rule 4(1) IPREE has to be carried out by the relevant examination committee. There is legally no room for the Examination Board to change the marks awarded by the examination committee, in this case by the blanket addition of marks for all C papers, so the Board acted ultra vires in this regard.
[continues]
[continued]
Delete6.2 In addition, the abstract awarding of marks with no regard to the fit-to-practise criterion of Rule 4 IPREE or to the individual candidates' examination papers infringes the principle of objectivity in general and Article 8(b) REE in particular (which stipulates that each answer has to be marked separately by two committee members) and Rule 4 IPREE, which are provisions designed to ensure the most objective marking possible of examination papers. This is also why the Examination Board cannot change the marks for a particular paper under Rule 4 IPREE of its own motion, but must, if it doubts that the marks awarded by the examination committee are correct, ask that committee to review its marking and propose new grades accordingly. The Examination Board can (and must, where applicable) influence examination results on its own initiative only by way of general instructions issued in advance under Article 16 REE (see Point 6.4 below).
6.3 In an assessment of the legality of awarding extra points, it is irrelevant whether the Examination Board deliberately disregarded legal principles and/or what its motives were (such as to achieve a statistically and/or politically acceptable pass rate). The reference in the President's opinion to the "significant commitment" of each Board member and to her belief that the Examination Board had decided to take this measure "after careful consideration of all circumstances" is also legally irrelevant: even if the Examination Board could be excused in subjective terms - and that is certainly not the finding here - its objective legal infringement could not be made good.
6.4 No supra-statutory predicament made it impossible to act in keeping with the law. There was nothing to stop the Examination Board from fulfilling its obligation under Article 16 REE to ensure, if necessary by issuing a (justified) instruction to the examination committees, that the papers - also with respect to the document chosen to attack a claim - were marked uniformly and correctly. That did not happen; indeed, the fact that all the examination committees awarded no points when candidates failed to select the "right" starting document would suggest that the Examination Board is actually accountable for this incorrect approach. It may be that, in view of the lateness with which the Examination Board - for whatever reason - decided to react to the flawed assessment on the part of the examination committees, identifying and re-marking the papers concerned would have involved extra effort and held up the entire examination procedure. But the Examination Board cannot cite this as a reason to justify its actions because those actions were its own mistake. Moreover the re-marking exercise is now limited to the papers of the relatively small number of candidates who successfully appealed against this flawed approach to the marking of their papers.
6.5 The fact that no EQE 2007 candidate was disadvantaged by the blanket addition of 10 marks - a point made by the Examination Board and underlined by the President - does not offset this measure's illegality as described above. That the REE and relevant legal principles were infringed systematically does not make the infringement irrelevant; furthermore, the EQE is not about treating candidates favourably but rather about assessing their objective aptitude for the demanding job of a professional representative before the EPO. Any marks awarded for reasons unrelated to the individual candidate's ability to answer the examination questions is absolutely irreconcilable with the aforementioned sole purpose of the EQE (see Point 6.2 above), whatever "overriding" aspects might have been the reason for that measure.
[continues]
[continued]
Delete7. Nor is raising, by an equal amount, the marks awarded to every EQE 2007 candidate irrespective of their personal performance in paper C an appropriate way of offsetting the legal disadvantage incurred by individual candidates owing to a specific infringement of marking principles when the examination committees were awarding marks (point 5 above): if only on the basis of the principle of equality the appellant must be allowed to retain the benefit of the 10 extra marks; the appeal request is not about setting aside this measure, nor, citing the principle of equality, is it about extending a form of illegal better treatment of third parties to the appellant - a situation that does not arise here and in which the principle of equality would not apply. That means that, contrary to the Examination Board's view shared by the President, the marks awarded by the Board cannot be taken as compensation for the disadvantage suffered by the appellant through being denied a legally correct marking of her paper C. In other words, the extra ten marks do not make up for marks which would have been awarded in a fair marking of an attack on a claim based on a "wrong" document.
8. This implies that the appellant, irrespective of the extra 10 marks also awarded to him, still has an outstanding claim to a proper - i.e. a fair (within the meaning of the headnote in D 7/05) - marking of her paper C also with regard to the attack on the individual claims. This re-marking is to be carried out by the examination committee in question, whereby there is no legal limitation to 10 additional points at the maximum as the outcome of that re-examination; thereupon the Examination Board will base its decision under Article 7(3) REE on the committee's marking plus an extra 10 marks.
9. Since the appeal is therefore to be allowed and the breach of marking principles which the Examination Board itself has admitted was a gross violation, with serious consequences, of very significant rights of the appellants, the appeal fee should be refunded as this is equitable in these circumstances (Article 27(4) REE).
Very interesting. Do you think it would instead be allowed to lower the marks required to be awarded a pass or compensable fail?
DeleteI am struggling to see how candidates can be compensated for the disruption of the language problems of D1.1 without awarding extra marks
DeleteHi Megan,
Delete@Megan 15 March 2021 at 11:54: no - see REE/IPREE that gives the pass and comp fail levels.
Megan 15 March 2021 at 12:23: the decisions cited above only provide that categorical, "free" marks are against REE/IPREE. They do not address a different weighing/assignment of the marks according to the merits of the answer.
Hi, any news about the results date?
ReplyDeleteThanks
The results will be available in July in myEQE - info received from the Examination Secretariat.
ReplyDeleteThank you Cristina! I also received the email :)
Delete"OH-NO, AHHH, YELP" describes how I wake up from my recurrent D1-1 nightmares.
ReplyDeleteThe Examiners' Report is available!
ReplyDeletehttp://documents.epo.org/projects/babylon/eponot.nsf/0/7043D0BB750F0825C12586F8002C8336/$FILE/Compendium_ExRep_2021_D_EN.pdf
The Possible Solution to the D2-part does not seem to have any “surprises” compared to our answers.
The Examiner's Report does not contain any comments w.r.t. the D1-1 issue (with only the German version being available at its start) and its effect on the rest of the D-paper, nor any other-effects of the online format. It also does not indicate whether those have somehow been reflected in the marking.
Please give your comments to the D2-part below and your comments the D1-parts on our D1 blog (http://eqe-d.blogspot.com/2021/03/d-2021-di-parts.html).