PASSING THE EQE

In my article “Preparing for the EQE”, I shared some general tips on preparing for the EQE. In this follow-up article, I will share a few practical tips on how to prepare for each of papers A-D during the last months and weeks before the exams. They are of course based on my own experience, and you may find that not all of them fit into your preferred methods of solving the papers – there are probably as many ways of approaching the EQE as there are EQE candidates – but I hope some of the tips may be helpful.

Paper A – the drafting paper

Paper A, which per Art. 1(4) REE tests you in “the drafting of claims and the introductory part of a European patent application on the basis of information normally available to a professional representative for this task”, has you write a claim set comprising a number of different claim categories, and a brief introductory part of the corresponding description. In this paper, it is relatively clear what you are supposed to do, so I don’t really have any tricks to share except these:

The e-EQE allows you to copy-paste, so make use of it. As I read through the paper, I would gather all essential features close to each other in my answer document, as a randomly thrown together claim 1, and all non-essential-but-possibly-still-useful features below the essential ones as makeshift dependent claims. When more than one claim category was apparent, I would divide the information accordingly. That way, I had all the relevant information in one place, making it easy for me to see at least what claim 1 would have to comprise in order for the claimed invention to be enabled. Further, with all the other features listed below, I had an overview of the other features that could be included in order to make the claim novel and inventive over the prior art documents.

Bring a list of your typical mistakes, so that you avoid making them on your actual exam day. These mistake will become obvious to you when you practice past papers – you will realise that you frequently forget to include all possible claim categories (“use of a dishwashing product in a dishwashing process”, anyone?), or you limit your broadest claim too much, or you exclude an essential feature, or you forget to state explicitly where different components are arranged – or all of the above or something completely different. Your list should include all the mistakes you typically make, and you should make yourself go through it when you have drafted your independent claims, before you become too pleased with claim set and forget about it.

The “A-Book: How to draft claims and the introductory part of a patent application and pass paper A of the European Qualifying Examination” by Erich Wäckerlin also has some nice checklists – I can’t claim to have read the whole book, but flipping through it, it appeared helpful.

Paper B – the reply paper

If you know anyone who sat paper B in 2021, you are probably very aware that this paper may be a challenging one (if not, this article and its comment section will give you a hint). Only time will tell whether the 2021 style of paper B is the new normal or not, but in any case, students can be quite pressed for time when solving paper B.

They key to success in paper B is getting the claim set right. While most of the marks are given for the actual response to the office action, and in particular the arguments, it is hard to get the arguments right if the claim set is completely off. So, while you should always make sure to have sufficient time for your inventive step argumentation (frequently, 30-35 marks are given for this part, which you will typically be writing at the very end of the exam time), I’d say spending the time it takes to get a good claim set is definitely worth it.

I found that using a table was helpful for more quickly figuring out the claims. Below is an example from an old paper that I practiced, showing how the different features can be listed and checked against the prior art documents.

For paper B, I made a quite extensive template. The idea of a template for the different papers is to bring with you useful, pre-written sentences or paragraphs, sometimes with legal basis, so that you don’t have to spend time thinking about how to word a specific argument or look for legal basis. The templates also work as a reminder to include certain information or arguments. A good way of making your templates is to copy in information that you find to be useful when you are solving past papers – you can include sentences that you wrote yourself and was particularly pleased with, nice paragraphs from Examiner’s reports from the EQE compendium, important information that you learn in your courses, etc. In paper B, there are only so many problems you can face, so in my B-template I included useful paragraphs that I found in the Examiner’s reports for most of the typical situations, in addition to reminders to myself (do not blindly trust the client, remember reference signs, make sure to include all essential features, etc) and the standard intro:

Letter to the EPO

Patent application no. ##
In the name of ##

Dear Sir or Madam,

We thank the examining division for the recent communication. In response, the applicant files an amended claim set and arguments for novelty and inventive step.

1. Amendments (Art.123(2) EPC)

Please find enclosed an amended set of claims to replace those on file. In the amended claim set, the following amendments have been made, which all have basis in the application as filed (added text is indicated with an underline, deleted text is indicated with [brackets]):

1.1 Claim 1

Claim 1 is based on original claim 1, which has been amended by specifying therein that ######, basis for which can be found in ###, wherein it is said that ###. Further, [more basis].

I included in my template a few useful lines on the following, for use in the introductory part of the response letter:

• ·Numbering correspondence, new claims, combinations, deletions, etc
• ·Dependent claims
• ·Inclusion of additional features
• ·Broadening (removal or replacement of features from) broadest embodiment
• ·Broadening narrower embodiment OR adding feature from particular embodiment to claim
• ·Introducing new claim category/new claim to system

I then dealt with formal aspects:

• ·Clarity
• ·Unity
• ·Number of independent claims (R.43(2) EPC)

For novelty, my template looked like this:

3. Novelty (Art.52(1) and Art. 54 EPC)

[REMEMBER: SEPARATE EMBODIMENT = SEPARATE DISCLOSURE]

3.1 Claim 1 novelty over D1, embodiment 1

[If I have time: Present D1 briefly]

The subject-matter of amended claim 1 is novel over D1 embodiment 1 which forms part of the state of the art under Art.54(2)/Art.54(3) EPC because

• ·D1 does not disclose ###.
• ·Instead, D1 discloses ###. [Explain; this can give marks!]

3.2 Claim X novelty over D2 [and then D3, DX]

3.# Summary

Thus, the subject-matter of amended claim 1 and X is new in view of each of the cited documents.

For inventive step, I included quite a lot of text (which actually has come in handy later too; I have found myself using my paper B template for real-life response letters to the EPO). Also, I found that listing all the different steps,

• ·Closest prior art
• ·Distinguishing feature(s)
• ·Technical effect(s)
• ·Objective technical problem (OTP)
• ·Skilled person’s task
• ·DX alone
• ·DX with DY – for each embodiment of each secondary document
• ·Other independent claims
• ·Summary/conclusion,

made it easier not to forget anything important.

Paper C – the opposition paper

Paper C is feared by many, likely because it is the one paper that most of us has had the least real-life experience with before the EQE. However, when you look more closely at this paper, you will realise that it is not as much an opposition as it is a puzzle game.

Different methods for solving this paper are taught – looking at the annexes feature-by-feature, focussing more on the purpose of each annex and the effects of the features, etc. Personally, I tried a few different methods, and ended up using – and being very happy with – a method I came up with that really embraces the puzzle game quality of this paper:

I would first establish the effective dates of each claim and prepare the list of evidence, and then perform any added matter-attacks (Article 100(c), Art. 123(2); 76(1) or 61(2) EPC), to have those out of the way. Then I would do the following:

• ·Using a pre-made table with space for listing features vertically and Annex 1, Annex 2, etc horisontally, I listed each feature of each claim of the patent to be opposed (Annex 1) as I read through it the first time. NB: OR-claims should be listed as two different claims, as should dependent claims referring to more than one claim.
• ·Next, I read Annex 2, ticking the corresponding box in the table for each feature that was present, making a big, red X for each feature that was not, and making a big, green circle every time Annex 2 made a point of the positive effects of a particular feature. I also briefly wrote down – at the very bottom of my table – the purpose of Annex 2.
• ·I then did the same for each of the other annexes.

As a result, I had a table showing me how the different annexes could – and most often should – be combined. Of course, if, for one of the prior art annexes, I had ticked off the features of a claim, this would mean I had a novelty attack right there. For the inventive step attacks, I just had to look for combinations of annexes where one was missing one or more features (red X’s) and the other one was blatantly bragging about the same feature(s) (green circles). When looking to improve the invention of a first document, the skilled person has to be motivated to include a certain feature from a second document – and in paper C, that motivation presents itself in the form of very obvious positive language: “An advantage of [the feature] is …”, “[The feature] advantageously leads to …”, “[The feature] solves the problem of …”, etc. Thus, the annex having the green circle(s) in the table would be the second document, and the annex missing the corresponding feature(s) would be the closest prior art. Only rarely did it occur that more than one annex lacked the exact same features, and in these cases, the closest prior art would be the one with the most similar purpose to Annex 1 – as listed at the bottom of the table. (I have to admit, I felt quite clever when I came up with this method.)

Having the attacks sorted out, paper C really comes down to arguing your case in a clear and concise manner, so having a good template is helpful. In my template, I included the standard intro:

Notice of opposition to a European patent

Patent opposed: Patent no. EP ### (Annex 1)
Application no.###
Date of mention of grant ###

Proprietor of the patent: ###

Opponent:
NAME
ADDRESS

Representative:
NAME
ADDRESS

Opposition is filed against the patent as a whole.

The opposition is based on the following grounds:

• ·the subject-matter is not patentable subject-matter (Art.100(a) EPC) because it is not new (Art.54 EPC) or does not involve an inventive step (Art.56 EPC)
• ·the subject-matter extends beyond the content of the application as filed (Art.100(c), 123(2) EPC).

The opposition fee has been paid through an electronic debit order.

Facts and arguments, including the List of evidence, are provided in the enclosed Annex.

Yours sincerely

/NAME (NOT MY ACTUAL NAME!)/

(sign.)

Authorised representative

I also included a few sentences and paragraphs that could be useful in explaining the effective dates (OR-claims; new claim with basis in application as filed but without basis in priority document; new claim without basis), and for the list of evidence, such as

“As a blog entry, A# constitutes prior art (G-IV, 7.5.3.3). Its computer-generated timestamp showing the “last modified” date, i.e. DATE, is its publication date. PERSON can testify as a witness or via affidavit that the blog entry of A# was indeed publicly available on DATE.”

“A# is a letter, hence its relevant date is its date of arrival, which is DATE. Thus, A# is prior art under Article 54(2) for claims #-#.”

Further, my template had a section of paragraphs on novelty which I more or less copied from previous Examiner’s Reports in the EPO compendium, but the main part was dedicated to inventive step attacks. I included the “standard” attack, i.e. 1-2 sentences on each of the following:

• ·Choice of closest prior art (CPA)
• ·What the CPA discloses
• ·Differences between attacked claim and CPA (distinguishing feature(s))
• ·Effect(s) of distinguishing feature(s)
• ·Objective technical problem (OTP)
• ·Optional: Motivation to solve OTP
• ·Reasons for consulting second document
• ·Teaching of second document and motivation for combining
• ·Compatibility of CPA and second document
• ·Combination of these
• ·Conclusion.

In addition, I included paragraphs, most of them found in the Examiner’s Reports, on topics that I found to be recurring (the idea here was again to have paragraphs ready so that I didn’t have to spend time on actually thinking about what to write):

• ·Inventive step without significant difference (alternative/equivalent solutions)
• ·Inherent effects
• ·Partial problems
• ·Implicit disclosure
• ·Product by process
• ·Use of Art. 54(3) document of post-published document as indication of common general knowledge.

Paper D – the legal paper

Paper DI

Having practiced for paper D for three years (which I recommend that you do), you will have encountered a large number of different DI-type questions. With the questions varying so much from year to year, making a very extensive template does not really make sense. I ended up making just a short two-part template for DI.

The first part was simply a checklist of reminders to myself. Some were general, such as

• ·Check if the question states European or international application
• ·Mention all possible (meaningful) solutions to a problem, not only the best
• ·Look through each question after replying; check that I have made use of all relevant information.

Also in my checklist were more specific things that I had realised that I tended to forget, such as

• ·If using re-establishment after further processing: Remember further processing fee
• ·PACE: OJ 2015, A93. PPH: OJ 2019, A106.

I would of course recommend that you include the information that you typically forget or that takes you longer time than necessary to find or double-check in your reference books.

In the second part, I wrote out full responses to a few questions that have been included in different forms in quite a few DI exams, and that requires some writing, so that I could quickly reply to those without thinking. These questions were those related to

• ·National entry – R.159(1) – what does the applicant have to do?
• ·What procedure is followed when the EPO considers that the Euro-PCT application lacks unity of invention?
  • ·EPO was ISA
  • ·EPO was not ISA
• ·Which fees have to be paid on filing
  • ·EPC
  • ·PCT

With the new, online version of the EQEs, paper D is divided into three parts – DI-1, DI-2, and D2 – with a certain amount of time available for each of the parts. Thus, it is no longer possible to allocate more time for DI or DII. Hence, my strategy for DI was merely to respond to each question as quickly as possible while including the necessary information, and also keeping an eye on my (non-digital) watch to avoid spending too much time on one question at the cost of another. The marks for each question are specified in the paper, giving you a good indication on how you should divide your time. Marks are given for the correct conclusions, the reasoning leading to the conclusions, and for the legal basis – make sure to write down everything you think (except for the inevitable “I hate this question”, of course), and back it up with the relevant articles, rules, and references to guidelines/decisions/etc.

Paper DII

Paper DII is the legal advice part, where you are introduced to a legal situation – typically involving a client with relatively bad IP decision-making skills, memory and/or friends, leading to all sorts of difficult situations, forgotten payments, and stolen ideas.

While the subject of the clients’ R&D may vary widely – pastry, sports rackets and snail killers come to mind – the clients tend to run into relatively similar problems, warranting the use of a template for this part of the paper.

Here, too, I found that a checklist of “important things I tend to forget” was a useful part of my template. On my checklist I had, among other things,

• ·Remember first application issues
• ·Take notes of important countries/territories, both for client and competitors
• ·Consider what can eventually become prior art (PCT entering European phase, newly filed EP applications claiming priority from national applications)
• ·Remember product by process.

DII will typically have you outlining the patent situation/legal situation as it currently stands for the presented patents/claims/inventions, and then have you improve that situation. Frequently the client may also ask you specifically if they are free to produce or sell a product, or what they should do in preparation for a meeting with a competitor/collaborator. I learned from DeltaPatents that you should always seek to improve the situation, even if that is not explicitly asked (sounds like a good rule of thumb in real life too, come to think of it), so if the client does not ask you that, I would suggest you try to work that information into your response anywhere it fits.

For the “outlining current situation” part, I had quite a few standard sentences/paragraphs included in my template. Here, again, you may be of the “keep it simple” persuasion and only put in there what you are pretty certain you will need, thus avoiding having to look through too much information – or you may be like me, putting lots of things in there just in case. Personally, I found that the less I had to think about presenting the information, the more I could focus on the actual task at hand. So, making it easy for myself to remember to reproduce all the information that typically will give you marks as part of your argumentation, I included in my template e.g. this:

Patent summary

EP-1
EP-1 is still pending.
EP-1 is the first [and only] application disclosing SUBJECT-MATTER.
The effective dates of the claims are …
The expiry of the time period is close; remember to … / Time period for … just expired; remedy.

• ·X is Art. 54(2) prior art relevant for novelty and inventive step as it was published prior to the effective date of EP-1.
• ·X is Art. 54(3) prior right relevant for novelty only as it is an EP application that was filed before and published after the effective date of EP-1.
• ·A, B and C are not relevant prior art.

Priority

[Remember FIRST APPLICATION ISSUES!]
[Check if things are sufficiently disclosed/enabled.]

“EP2, filed by COMPANY (SHORT NAME FOR COMPANY) on DATE, discloses and claims ###.
EP2 claims priority from N2, which was filed by ### on DATE. The priority claim is valid because

• ·N2 was filed by the same applicant (##),
• ·N2 is the first application by this applicant that discloses ###,
• ·EP2 was filed within 12 M of N2 [priority period extended from ## to ## (Saturday to Monday)],
• ·N is a member of the Paris Convention, and
• ·the disclosed subject-matter is the same for the two applications.

Hence the effective date of the claim to ### in EP2 is DATE.

[DO THIS FOR EACH CLAIM! Or: ]

“Therefore, to the extent that EP2 and N2 relate to the same invention, EP2 is entitled to the priority date of DATE.””

Other useful subjects to include a few sentences/paragraphs on may be novelty, including product by process, insufficient disclosure, ranges, common general knowledge, prior use, and secrecy/confidentiality; inventive step (typically brief and only focussing on explicitly mentioned effects); conclusions; and responses to the “are we free to use/sell”-type questions.

Under “improve the situation” I had a list of frequently useful strategies to include and combine as needed:

• ·Opposition
• ·Third party observations
• ·Add priority claim/restore priority/withdraw priority claim
• ·Amend/delete/limit (invalid) – or file divisional
• ·File new application/add new claims – often PCT
• ·Further processing
• ·Re-establishment
• ·Provisional protection
• ·Acceleration
• ·Infringement
• ·Enter new territories
• ·Responses to stolen idea
• ·Buy/transfer
• ·Cross-licence

I found that taking a look at this list made it easier for me to come up with a solution quickly. For each of the entries on this list, my template comprised a few sentences that I had found to be useful and/or things to check. In particular, cross-licencing appears to be a recurring EQE favourite – I’d say if in doubt, always include this as a suggestion, such as:

• ·“It is important that you get THIS in this country. In return you could offer THAT in that country.”
• ·“A cross-license (at least for these countries) should be negotiated taking into account THESE PATENTS.”

Another list that I found to be particularly helpful, was my list of things to do ahead of negotiations:

• ·Get things ready ASAP (typically things listed under “improvements”).
• ·Furthermore, you could consider requesting accelerated prosecution of your EP applications under PACE (NB not for search; ECfS) [and accelerate anything else that you can think of].
• ·In preparation of the meeting, the status of COMPETITOR’s portfolio (LIST APPLICATIONS) should be checked via file inspection. Furthermore, it is advisable to watch out for the publication of further patent applications.
• ·You have to be aware that you have been incurring a potential liability to pay compensation in respect of APPLICATION as from its publication by selling ###.
• ·You may have infringed by ###, will check status/etc.”
• ·Also COMPETITOR could be in a difficult situation since they may have been infringing PATENT by offering for sale of ###.
• ·You should consider early publication of APPLICATION as well as filing a translation of the claims where appropriate for provisional protection. Please be aware that provisional protection resulting from a pending patent application depends on national law.
• ·X have a strong negotiating position also because Y can only stop them in ###, which is only a potential market, while Y can stop X in their entire market and only place of business (or something like this – amend as appropriate).

Along with my template, the one other thing that I found to be extremely helpful for DII was the DeltaPatents annotated timeline. This document allows you to easily make a timeline of all applications, disclosures, publications etc., along with who is the applicant, what is disclosed and not disclosed, what is claimed, and other useful notes. For me, this was invaluable – it allows you to quickly summarise all the relevant information in one place. I also found that adding colour-coding to the timeline was useful on certain exams that I practiced, when there was a lot of similar-sounding details (such as putting a red dot next to every mention of cubic protrusions, a blue dot next to hemispherical protrusions, and a green dot next to pyramidal protrusions, in my timeline for a DII relating to frying pans with different protrusions), and to mark off information when I used it in my paper to make sure that I did not forget anything.