Process Flashcards
Timings
Logon early and print prior art—-
1-4 75-90 mins
5-6 45 mins
6-7 75-90 mins
- Identify all documents in the paper
- Is everything there that should be?
- Client’s letter / information from client?
- Prior art documents – how many?
- Watch for “hidden” PA, cited in the letter or in the other PA documents
- Create answer template in Wiseflow
a. Notes
i. Add original claims to this section and format with (1a, 1b, 1c, 1d etc) for use when doing novelty table
ii. Add client amendments to section with label (1g…)
iii. Add comments from communication as you go to this section – highlight communication as well
b. Amended claims
i. Use underline and strikethrough
c. Response to communication
i. Request
ii. Amendments and Basis
iii. Article 84 EPC
iv. Novelty
v. Inventive step
vi. R43(2) EPC and Article 82 EPC
vii. Rule 139EPC
viii. Request OP as precaution and electronically sign.
- Read documents and collate information (twice – similar to Paper A) - highlight/mark-up in wiseflow
a. Read the claims of the application
i. Highlight potential issues in notes section
b. Read the letter from EPO
i. Note issues in notes section
c. Read the client letter and their claims
i. Add client amend to nov/effect
ii. Commercial importance?
iii. Gist?
The gist of the client amendment is….
Because (usually proposed amendment and client letter)…..
d. Read the spec
i. Solution to issues?
1. Add sections to notepad
ii. Common issues table vs claim vs solution?
iii. Essential features
iv. Can client amendment be broadened?
e. Read the prior art
i. Is the prior art 54(3)?
ii. Complete nov table
Identify issues and potential solutions as reading through the documents.
- Determine the subject matter to be claimed
a. Follow the client amendments unless EPC reason not too (not just preference (no tweaking);
i. Client gives you a gist, your job is to refine the gist – Ealey notes
ii. Almost treat like instructed case
iii. The client amendment will need amending
1. Is it novel?
2. Is it inventive?
3. Does it cover all embodiments? (doesn’t always)
4. Added matter?
5. Clarity?
6. Unsearched?
7. Unified?
8. R43(2)?
9. Essential features?
10. RTBA?
b. Address any other objections;
c. Add any other claims – product claims (particularly important), client might ask you not to in letter
d. Use EPO tests when addressing objections
i. Removal of feature test
ii. Gold standard – directly and unambiguously derivable – use wording of paper to help avoid 123(2)
iii. Intermediate generalisation test
iv. Ensure novel (single emb)
v. Arguably inventive
vi. Don’t draft claims to unsearched R137(4)
vii. Unity
viii. R43(2)
Section 4 checklist:
- Novel?
- Inventive?
- Clear?
- Result to be achieved?
- Intermediate generalisation?
- Essential features
- Unsearched subject-matter
- Sufficiency? Process for making composition…
- Unity
- R43(2)
- All embodiments?
- Client instructions?
- Two part form?
- Ref numerals?
- Draft independent claims based on 4
Ref numerals – added, removed
Dependencies?
- Draft dependent claims based on 4 and 5
If feature has been removed from independent claim, has this been added to a dependent claim?
Have you been critical about the dependent claims?
Ref numerals – added, removed
Dependencies – they prefer to make multiply dependent – if changed, marks are there for basis
New claims for products?
- Write letter to EPO
a. Structure
i. Introduction – make request
ii. Amendments and 123(2) -MARK HARVESTING – probably 20 marks here
1. Basis for every amendment
a. Mention dependencies have changed or that dependent claims were present in the application as filed
b. Be rigorous and harvest marks
2. Split down basis to features of independent claims – A-F
a. 2 marks available for existing features of independent claims
b. Basis for introduction of dependent claim 4 marks
c. Basis for non-dependent claim feature 6 marks
d. Basis for removal of feature 6 marks
3. Dependent claims
a. Basis for original dependent claims carries at least one mark per claim
b. Basis from description or drawings may carry an additional mark
4. Removal 3 step test occurs frequently and has loads of marks
5. Intermediate generalisation
a. the feature is not related or inextricably linked to the other features of that embodiment and
b. the overall disclosure justifies the generalising isolation of the feature and its introduction into the claim.
6. Has the notes for writing up template been used?
iii. Article 84 EPC
1. R43(2)
a. Explain how each variation was an alternative
b. Then how each alternative solved the same problem – same feature…
c. Tie it into R43(2) wording – no particular test
2. Has the notes for writing up template been used?
iv. Novelty (explain why at least one feature of the claim is not disclosed by the prior art)
1. D1 discloses X in single embodiment
2. D1 does not disclose Y because
3. Claim Z is therefore novel…
4. Repeat for all prior art
5. Then repeat for each independent claim
v. Inventive step – harvest marks….13 step EPI test
Is any of the prior art 54(3)?
1. Identify the CPA – 7 marks
a. Stating the CPA – 1 mark
b. Arguments justifying the CPA – 6 marks (3 for each PA doc)
i. Features in common
ii. Teaches a different purpose to a feature
2. OTP – 7 marks
a. ID the differences – 1 mark
b. Stating the tech effect of differences 3 marks
i. Explain from desc how effect provided – quotation good
c. Formulating a problem – 3 marks
3. Arguments supporting inv step – 18 marks
a. D1 alone – 6 marks
i. D1 doesn’t recognise problem
ii. Why the SPIA wouldn’t
iii. Why the SPIA would try alternatives
1. What alternatives would they try and why they would fail
b. D1 plus D2 – 12 marks (use the notes on writing up)
i. Why wouldn’t they combine
ii. Novel over combination
iii. What would do
1. What would they try, why and why would they fall short
2. Would they have technical difficulties, re-design?
4. Has the “notes for writing up template been used? All marks harvested?
5. Summary
6. Repeat for each independent claim
7. Patentability of other claims
vi. Other objections
1. Unity
2. Unsearched – don’t always flag as issue but there are often 3 marks for explaining why a claim is not unsearched
vii. Conclusion
viii. Enclosures
1a . Print prior art and review as much as possible
- How many embodiments in each document?
- Understand how each invention works
o What problem is it trying to solve?
o How does it solve it?
