Thursday, February 28, 2019

EQE 2019 - Paper B

I sat the paper under exam conditions in Munich as a bench marker to give the examination committees some materials for their marking discussion. If you want to try the paper yourself, here are scanned copies in English, French & German.

Again a mix of mechanical, physical and chemical aspects. Very simple technology - solar cookers. In structure, this felt to me like a chemical paper - I managed to sort the pieces out, but I was not sure exactly what direction to take. Normally, in an EQE paper, most of the issues are clear enough decide using an 80/20 weighting, but here I had several 50:50 issues. Also with the support for the main amendment I took. I also struggled with inventive step. The reactions from others was a little mixed - they were unsure about their answer.

I may not be the best person to judge - I always have problems with paper B😲. I only passed it on my 2nd attempt at the EQE, and for a similar paper as a Dutch patent attorney, I had to take it 3 times.

See below for more comments and possibly some spoilers
I ran out of  time, and did not finish inventive step for both independent claims. I was not sure exactly how to argue it. I was also not sure about the support for one of my amendments.

I also added an extra process dependent claim as I was not sure whether the claim I had was inventive.

The examiner made certain assertions in the communication that I was not completely sure about whether they were hints to explore those as possible directions.

14 comments:

  1. I talked today to a chemist - he agreed the patentability was very chemical. So, probably a good paper for electromechanical attorneys to practice. Someone else commented that it was difficult to get everything done, especially as there are always a lot of marks available for inventive step.

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  2. I sat the Examination in Madrid. I found it extremely confusing. I am an energy engineer specialized in materials and knew the fields very well. However, I changed my amendmends 3 times an did not have time enough to develop the whole answering reasoning basis. Even as for what i could develop, i was not convinced of my amendments, so it was really a bad feeling i had through all of the examinations. As for the couple of friends sitting it too (a chemist in a company, an engineer in the EPO), both found it terribly confusing and difficult too.

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    1. It can be a big problem if you get something in your own field, as nothing seems inventive. As with all the papers this year, there was a lot to deal with, making them difficult to finish. What part was confusing?

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  3. I was also under extreme time pressure and did not manage to complete the inventive step argument for both independent claims. The most confusing aspect for me was the choice of ranges in claim 2

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    1. It was potentially a lot to do. With two independent claims, I could not do the second one fully. I had the feeling that the process and storage unit could be amended in slightly different way, but in the end, I just put in the same amendments as the storage unit and stated that the defense was analogous (although this is really only correct for the amendment support).
      I was not sure about support for a range using a value from the table (130) - from last year's paper, I understood that this is not always the case - it depends on the explanation, but I could not find any hint in the application as filed that it also supports a range. But I had nothing else.

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    2. "... but in the end, I just put in the same amendments as the storage unit ..."

      I too :)

      And it seems that therefore the step of melting is not required for every claim 1. But the Report seems to require it :)

      I see some potential for appeal :)

      NN

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    3. I still need to look at the examiners' report in detail, but in general appeal is not a simple option. It is a lot of work, and it may take more than a year before you get a decision. Most people do not win.
      It is always useful anyway to compare your answer in detail with the examiners' report to see where you lost points.
      Send me a direct e-mail: fireballpatents.com/home/contact-us
      and I can provide you with an overview of the appeal procedure.

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  4. Hi Pete
    do you have any idea about how many points are reserved to the inventive step argument of claim 2?
    I missed it at all for time reasons.
    Thank you

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  5. In general, there are 30 marks for the amended claim set) and 70 for the argumentation. For this 70, there are usually 30-40 marks for inventive step - 30 points for a single one and 40 points if there are more than one. The points are distributed based on the difficulty of each step. How they will distribute them between the two claims is unclear - it probably depends on how similar the argumentation is. They can also take into account the fact that almost no candidate did something that they expected, leaving out out of the marking.

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  6. Hi Pete,
    What is your opinion about the essential feature objected by the examiner?

    My impression was that it was possible to use solid legal arguments not to include that feature.

    The feature was not disclosed as essential, without specific knowledge it was not possible to say that a salt needs to expand to melt, thus the feature is per se not required to solve the problem of the invention, and finally no real modification out of the capability of the skilled person seemed to be necessary...

    What is your opinion?
    Thanks
    Gigi

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  7. I had exactly the same reasoning , and concluded it was not essential. But I was not completely sure - l felt like I was still missing a piece of the argument. But technically, it is certainly not required. Other people I talked to kept it in.

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  8. I also kept it in, as I saw no good reason to remove it. I did not think that the scope of the claim is reduced becuase of it.

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  9. Maybe I am over-thinking it, but I was immediately triggered by the word "empty" not to use it. It is an absolute term, and an infringer can always argue that their space is not "empty". But it is possible to claim it functionally, without using the word "empty" or to include the the functional part as a qualifier for "empty".

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    1. The client states clearly that the empty space is necessary for the invention, so I went with it. This Paper B was irritating like other recent examples, in that there was very little to amend!
      So I guess loads of marks for argumentation, which I lost through too much time wondering what the amendments should be!

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