Revision

Introduction

Part 3 is intended to help your exam technique for FD1. However it makes no assumptions about what aspect of the exam process (if any) you may want advice upon, and so attempts to cover as many angles as possible. Consequently, whilst some of Part 3 may be useful to you, other parts may appear pointless or even patronising – so just take what appears useful and forgive the rest.

3.1 Revision

3.1.1 Revision Resources

• The current syllabus for FD1 can be found by Googling ‘peb fd1 syllabus’ or visiting https:// peb.org.uk/patent-examination-board/support/syllabi-for-2021/. The Patent Examination Board (PEB) also provide examination guidance outlining the skill set that the exam tests for.

Hence whilst this book is intended to cover the legal references in the syllabus, PEB also usefully outlines the qualities being tested in candidates, the assessment criteria used, and the desired learning outcomes, and presents a thematic grouping of the legal references.

Finally, it also provides a comprehensive recommended further reading list. • Useful books include: – The CIPA Guide to the Patents Acts (the ‘Black Book’) – this is the authoritative source from which to learn UK law. This study guide contains references to the 9th Edition and 1st Supplement. – The Manual of Patent Practice (available from the UKIPO Website), provides clear commentary, albeit from a patent examiner’s perspective, – The Annotated European Patent Convention (‘Visser’) for EPC and PCT references, or References to the European Patent Convention (‘Hoekstra’) for EPC references; and – The PCT Applicant’s Guide for US and JP prosecution and further details on PCT prosecution. • Past papers, example scripts and Examiner’s reports for the last 15 or so years can be found by Googling ‘peb fd1 past papers’. • The CIPA Informals lecture series is useful, and for those located outside London, recordings and slides of the lectures can be downloaded from CIPA (see https://www.cipa.org.uk/pages/informals).

In addition CIPA also organises a tutorials roster, although this year it may well not occur, for obvious reasons. • Other online resources include the excellent cross-linked guide to the EPC and PCT at https://xepc.eu/ • Commercial residential training courses are also available, although these should generally be treated as a consolidation of your revision, and not as a starting point. • Finally, as a complement to this book a study schedule and open discussion group is available on LinkedIn (search LinkedIn groups for ‘P2 / FD1 Study Guide’), providing the opportunity to revise and discuss exams together, and to ask questions. No sign-up to the group is required to view it.

3.1.2 Overview of the FD1 Exam

General: • FD1 is the Patent Practice paper. It is often referred to as the Law paper, but in fact the emphasis is on the application of the law in practice to ‘real life’ situations, and hence has strong problem-solving elements. This is discussed in more detail in Parts 3.2 and 3.3. • Part A of FD1 comprises five or six compulsory short questions of up to 10 marks each. Part

B of FD1 comprises three or four questions of 25 marks each, from which you choose two.

Each part is worth 50 marks.

Time: • You have 240 minutes. A common breakdown of this time is to assume that half an hour is spent reading the questions and checking answers, i.e. not actually writing. This leaves 210 minutes of output time. • The pass mark is 50%, or one mark every four minutes. On the assumption that not everything you consider to be a mark is held in similar esteem by the examiners, aim for 70 marks or one for every three minutes of output time. • Time management is dealt with in more detail in Part 3.4.

Effort: • Note that a significant majority of people achieve more than half the marks in part A, but fewer than half the marks in part B. Therefore improving one’s performance in part B can be a determining factor in passing the exam, particularly if you are retaking it.

3.1.3 The Syllabus

• The Patent Examination Board are committed to covering the full breadth of the syllabus over the course of successive exams, and consequently it is important to recognise that there are no shortcuts to success; it will be necessary to know the law and practice covered by the syllabus thoroughly. • However, there are common scenarios or subjects that occur in Part A questions that it can be useful to familiarise yourself with or at least anticipate: i. Designs – Question 2 is traditionally the question where you explain the applicability (or not) of the various design rights to the features of the client’s object. Part 1.2 above covers the issues commonly related to this question. ii. Patentability – A client has an idea that involves patentable and unpatentable matter, some explicit, probably some implicit. Identify each and explain why it can or cannot be patented in the client’s jurisdiction of choice, and/or offer alternatives. iii. Ownership – In FD1, employed inventors have a tendency to file their own applications, whilst private inventors have a tendency to make deals with crooks. Depending on the facts, you will be expected to handle the ensuing issues of ownership, entitlement, and/ or compensation.

iv. Forgetful confidantes – In FD1, when employees aren’t filing their own applications for inventions they instead leave details of them scattered around public places. Such situations will require that you evaluate the probability of disclosure and how to mitigate it, and subsequently handle any entitlement or infringement issues. v. The Infringer – A worried client has received a (sometimes threatening) letter telling them they are infringing. Assess the situation and advise accordingly. Check if they have anything patentable in turn. See the notes to s60, s61, and s69 for some comments on this type of situation. vi. The Patentee – the flip-side to the infringer; how do you deal with an infringer given whatever facts are presented in the question? Again, see s60, s61 and s69 for some notes on this. Both the infringer and patentee questions can also include aspects of threats (s70-s70F). vii. Foreign law question – overseas patents that enter the GB national phase late are a staple of the exam. However, occasionally a primarily PCT or EPC based question is also asked, requiring vigilance about which set of statutes to use. • In addition, there are a large number of questions that explore issues relating to patent prosecution and recovering from failures thereof. These often include clients suffering from shipwrecks, heart attacks and other inconveniences that result in sub-optimal patent prosecution, or the consequences of poor decision making or naivety, for example in a startup company. These may relate for example to priority issues, missed renewals, or failures in any other aspect of general prosecution. • You need to be capable of answering questions on all of these topics to be confident of passing Part A, and since general prosecution pre- and post-grant represents (and finds its way into) a significant proportion of the questions, it will clearly be necessary to have a good general knowledge of the law. • To reiterate, whilst the above summary highlights some frequent themes in the exam, each year the Examiners strive to present new scenarios and variants. Consequently a thorough knowledge of the law is important in order to field whatever the Examiners happen to throw at you in a particular year. • However more generally, and as will be mentioned several times in this part of the book, appreciate that there are common sequences of events, and common chains of legal and practical reasoning, that you should try to become familiar with. • The above summary is of course only guidance, not gospel. The PEB syllabus provides the definitive list of possible exam topics.

3.1.4 Question types in Part B:

• The syllabus and law being tested in Part B is the same as in Part A. The difference is primarily in the depth, breadth and/or complexity of the situation you are presented with, and the corresponding demands on your organisational and problem solving skills, together with your knowledge of the various chains of reasoning and good practice that are appropriate in certain situations.