Wednesday, December 18, 2019

EQE Paper D: optimise your marks for legal basis

Many candidates waste time perfecting and double-checking each legal basis. This is a poor strategy - a lot of marks are also available for correctly solving the legal problems, for explaining (arguing) how you have applied the law, and for the legal advice part. In many cases, an alternative will be accepted, even if it is a "lower" legal source.

It is much more efficient to understand the basic principles of what is required and what is typically accepted, and then be pragmatic. You should then note the best citations you find as you consult your notes and books when answering. If you think you are missing something, make a note and come back at the end if you have time left.

(1) Recognise and note expected citations: although different sources may be cited (and are always considered for marks), the markers are mainly looking for references to the documents listed in IPREE Rule 2 & 22(1) (latest version: OJEPO 2019, SE2 - see below for the syllabus provisions). Make sure you are familiar with the contents of these resources.

(2) Recognise and note the most important citations: hierarchically, Articles, Rules, & G-decisions are the most important, and the most likely to get marks. Whenever you notice one of these, ALWAYS note it next to the argument being made.

(3) Learn the most frequently required provisions by heart: if you can cite these without looking them up, you can quickly score marks. These are the most frequent subjects of the legal questions, and can be found in the D Examiner's Reports of the last 10 years. Additional tip: tab these provisions in your reference books as there is a good chance you will need them.

  • EPC: A.14, R.3, R.6, R.157(2) | A.54(2), A.54(3) | A.65 | A.76, R.36 | A.87(1), A.87(4) | A.99(1), A.100, R.76(2), R.84(2) | A.108 | A.114(1), A.114(2) | A.121, R.135 | A.122, R.136 | A.123(2) | A.133, R.151 | A.141, R.51(1) | R.40 | R.45 | R.70(1) | R.114 | R.116 | R.126(2) | R.131(4), R.134(1) | R.137(5) | R.139 | Rfees 2(1)
  • Euro-PCT: A.153(7) | R.159(1), R.160 | R.164
  • PC: A.4C
  • PCT: A.8(1), R.4.10(a) | A.11(1) | R.19 | R.54bis | R.80.2, R.80.5 | R.90 | R.90bis

(4) Note the sources actually used: your answer should be explaining to the marker how you get to your conclusions. So if you apply principles from any "lower" resource such as EPO Guidelines, Case Law, OJEPO etc, cite any relevant Article, Rules, BoA decisions, AND the source reference. 

(5) Note the legal principle that you are applying: in general, rules are required more often than Articles - this is because they implement the legal principles found in the Articles. "Empty Articles", such as A.80 EPC or A.120 EPC are not required for full marks.

(6) Stop citing when the number of citations matches the number of marks: as a general rule of thumb, a statement is required with a supporting legal basis citation for each mark. So an 8 mark question requires approx. 8 citations for full marks.

(7) Cite alternative sources and unexpected documents when relevant: if you have nothing better quickly available, cite it. The marker will consider it, and use discretion. For example, a Guideline reference summarising a BoA decision is usually accepted instead the decision number. Using an exact word or phrase from a legal provision or case law (such as "accompanying person") may also be accepted as proof of the correct legal basis.

(8) Be aware that many PCT resources are not expected: the only PCT Guideline expected is GL/PCT-EPO (added in 2017 to IPREE Rule 22(1)). EQE 2019 was the first D Paper where a citation was expected for full marks. Unfortunately, these EPO-PCT Guidelines are not sufficient on their own for preparation or answering at the Exam - it is not complete (it does not cover EP entry at all), and in many sections, it just refers to parts of other documents. You should still know this document in detail - it contains relevant information about EPO policies under PCT, and identifies further PCT-related subjects, such as PCT-Direct or PPH, which may be asked in the D Paper.

(9) ... but still use the other PCT resources to answer questions: and cite when relevant. Applicant's Guide AG-IP & AG-NP and Euro-PCT Guide (EPG) are much more useful for studying and answering at the Exam. But, when answering with these "alternative sources", cite any relevant Article, Rules, BoA decisions, as well as the source actually used to answer.

(10) leave a comment below with your tip #10

Click for the relevant REE legal provisions
REE Article 13: Examination syllabus
The examination shall establish whether a candidate has: 
(1) a thorough knowledge of:
  (a) European patent law as laid down in the EPC and any legislation relating to Community patents
  (b) the Paris Convention (Articles 1 to 5quater and Article 11) 
  (c) the Patent Cooperation Treaty 
  (d) all decisions of the Enlarged Board of Appeal and EPO case law as specified in the IPREE, and 
(2) a general knowledge of the national laws of: 
  (a) the contracting states to the extent that they apply to European patent applications and European patents 
  (b) the United States of America and Japan to the extent that they are of importance in connection with proceedings before the EPO. 

IPREE Rule 2: Examination syllabus
The examination syllabus referred to in Article 13 REE shall cover only those legal texts referred to in Article 13(1)(a) to (c) REE which are in force on 31 October of the year prior to the examination. The EPO case law referred to in Article 13(1)(d) REE shall be that covered in:

  • the latest edition of "Case Law of the Boards of Appeal of the European Patent Office" (hereinafter "the Case Law Book"), 
  • the case law referred to in any case law special edition of the Official Journal published after the latest edition of the Case Law Book, and 
  • any case law published in the Official Journal on or before 31 October of the year prior to the examination. 

IPREE Rule 22(1): General instructions for answering the papers (part)
(1) Candidates are expected to be familiar with at least the following documents in the versions valid as at 31 October of the year prior to the preexamination or the examination: 
  (a) the EPC | (b) the Implementing Regulations to the EPC 
  (c) the PCT | (d) the Regulations under the PCT 
  (e) the Paris Convention for the Protection of Industrial Property
  (f) the list of contracting states to the EPC and of contracting states to the PCT 
  (g) the Ancillary Regulations to the EPC
  (h) the brochure entitled "National law relating to the EPC" 
  (i) the Guidelines for Examination in the EPO 
  (j) the content of the Official Journal of the EPO 
  (k) the Guidelines for Search and Examination at the EPO as PCT Authority


  1. I can't claim credit for this idea, but I don't remember where I read it. If you're using Visser (and your employer doesn't mind your mutilating it) - cut it down the spine so that the Articles and Rules are physically separate. It makes it much easier to cross-reference from one part to another without losing your place.

  2. Thanks - it is a good tip. I used it at my exam, and I always recommend it for Visser. Whatever books you use, think about how to find things easier and quicker.

  3. Are the RPBoA also on the EQE list?

  4. The are not cited directly, but they are published in the Official Journal. Years ago they asked about them and for may years they hardly were tested. The current Examination Committee has started to ask about them, and they are important for daily practice, so you should know them. I doubt they would ask about the Enlarged Board, but you should have a copy with you at the exam just in case. Practically, they do not usually ask about anything that they know are changing, so it is most likely they will not ask about the "old rules" this year, but ask a question in 2021 about the rule in force from 1 Jan 2020.

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  6. For quoting legal basis, is the subsection of a rule expected, or would we get a mark for the rule itself. For example if dealing with missing pages for a PCT filing would we state R26 and PCT or break it down into action and basis, action and basis e.g.

    The applicant must file within 2M from invitation (R20.7(a)(i)) or two months from filing (R20.7(a)(ii)) the missing part (R26(a)(i), a copy of the priority application (R26 (a)(ii)) etc. etc.

    Much easier for EPC, but obviously the PCT crossreferences a LOT.

    1. It is hard to generalise, but they normally expect the paragraph at least for EPC - Eg R.90(4).
      For PCT, you normally have to go a level deeper (R.20.7(a)) for complete legal basis.
      My rule is just copy what you see in your notes - so if it is there in front of you, just copy it in. If you had to look up in a separate action the (i), (ii) level to see if it is accurate, it will not be worth the time. You are talking about maybe 1 mark on the whole D1.