Tuesday, February 26, 2019

EQE 2019 - Paper D

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 the compendium copies in English, French & German.

I thought it was a very good D paper - the DII had a classical feel with a limited number of issues to deal with, but still a lot of options to think through and to advise about. The technology was very simple to understand, and there were limited dates to fit in your timeline. I may have missed something obvious😉, but I thought the DII was very well constructed. No loose threads or time-killing legal issues - it fits together like some of the older papers. A lot of work to get through, but possible to get  the main parts within the time.
The DI questions had a good mix of familiar legal issues and new ones (new to the exam). Both the DI and DII had some parts that you could spend a lot of time on, but time management is a key skill on all the papers. You need to sometimes to force yourself to stop what you are doing and to move on, even if you feel like you have more to write. A noticeable amount of PCT, but most of the legal issues have either been on the exam before, or are relatively well-documented.

Most of the people I chatted to afterwards were very happy with this paper. Only the time - some overran in DI and some overran in DII. I still had quite a few things I could have written in some parts, but I had to skip them to get further in the paper.

See below for more details and possibly some spoilers.

I started with DII and spent about 3 hrs 20 mins. Legal issues included:
- running shoes with nanoparticles in the soles
- genus / species relationships
- ranges
- broader claim claiming priority of a narrower one
- limited to only DE and AT exploitation, which reduces the states you need to discuss
- employee stealing inventions "Mr Furious" 😡 (frequent DII issue)
- errors made in translating (previously seen in DII 2005 Windmill Wing)
- press releases and internet publications

I then spent 1 hr 55 minutes on the 5 DI questions. The combined EPC/PCT questions can really take a big chunk of time because half-way through you have to start your answer again.
- Entitlement
- Stay of proceedings
- Third-party observations (PCT & EPC) - I think it is the first time this has been asked for PCT
- Missing claims on filing and how to fix (PCT & EPC)
- Priority (first application)
- translation of priority application
- Additional search fee under PCT
- Shortfall in deposit account under PCT (first time automatic debiting has been asked)
- Rules for bank transfer (it has been many years since they asked about transferring money)


  1. In the heat of battle it's so hard to figure out what issues to identify/dig/sort and what issues to ignore (e.g., because they may not have been intended as issues).

    EP-F1 shoe sole claim lacked (among other things) polymer foam, which seems to be an essential feature of a shoe sole per para 001. Sole with only nanoparticles is prima facie dysfunctional. Much time burned thinking how to address as none of the family in prosecution yet.

    Then realize toward end that none of the claimed soles has polymer foam - apparently not essential at all. They got me.

    I know leave knowledge at the door, but the EQE tests limits of this (re: that Pre-Exam whether cardboard inherently contains wood fibres).


  2. Hi Eric,
    this is always an issue in DII unless they give you the claims. I did not hear anyone else mention it, so I don't if there was something there. I hope you still had enough time to do the rest - there was a lot to work through.

  3. Hi - they recited the claim(s) for each patent/application - none included foam. Or did you mean something else by "give you the claims" - didn't they give us the claims?

    Annoying because if they had just recited the foam along with the particles they'd have avoided the distraction.

    No biggie, just griping.

    1. I meant that they don't give you the exact claim language - when it says "claimed", it means a claim was directed to that subject matter, but you have no idea of which other features. But if something is missing, they will tell you explicitly.

  4. Dear Pete
    Which was your interpretation of paragraph 002 relating to the content of EP-F1 description?
    Is it limited to the effect con Cu nanoparticles or does it refer also to metal nanoparticle in general?
    It changes the answer to status of claim 1 of EP-F2 which claims priority from that.
    Thank you

  5. When I read the paper, I just interpreted it that the description of the application was also limited to the copper particles up to 40nm. Looking at it now, it does state that metal particles nanoparticles improve energy storage and that 40m copper increase energy storage. The description describes the effect of increased energy storage. So linguistically, it does match, but I did not do the word comparison when I was reading the paper.

    But not everybody reads in the same way - if you are considering it technically, then there is no difference between "increase" and "improve".

    If a large number of candidates do this, they will consider taking into account in the marking. In any case, there is a general principle of only being penalised once for each mistake.

  6. Hi Pete,

    Question for DI/Q4(a) (2019):

    First application filed in Canada and a subsequent application filed in Korea. Priority of EP was lost due to reason that KR-appl. from which EP-appl. claimed the priority, was not the first application.

    A. 87(4):

    "A subsequent application in respect of the same subject-matter as a previous first application _and filed in or for the same State_ shall be considered as the first application for the purposes of determining priority, provided that, at the date of filing the subsequent application, the previous application has been withdrawn, abandoned or refused, without being open to public inspection and without leaving any rights outstanding, and has not served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority."

    What confuses me here is:

    "... filed in or for the same State..."

    Canada is not the same State with Korea. However, this was not an issue in the model answer and in the Examiner's Report, too.

    Am I totally missunderstanding something here...? I would totally understood the answer given to this, if the both applications would be filed in Canada or in Korea. This would then fullfill the requirement of "in the same State"

  7. The basic principle - A. 87(1) is that you must claim priority of your first application within 12 months. This was CA1.
    Under certain conditions - A.87(4), you are allowed to "replace" a first application by a new first application. In this case, two requirements are not satisfied - KR is not the same state (for the same state refers to PCT or regional applications that include CA - that does not apply here), and CA1 was not withdrawn at the moment KR1 was filed (because it was subsequently published, it must have been still pending).
    So KR1 may not be considered the first application for device A, and any priority claim to it for device A is invalid.
    In the examiners report, it states "Art. 87(4) EPC is not applicable, since CA1 not filed in the same country", so I think it is clear. I assume at the exam, they would have accepted the "still pending when KR1 was filed" as well