Reading a P2 question

• Part B tends to present questions where combinations of the topics found in Part A have been made interdependent, or where variants of a particular topic are explored more fully. • Some parts of the law are inherently more complex than others and lend themselves to part B questions, such as threats, or secondary infringement. Others are a compact way to generate numerous marks because they allow easy juxtaposition of different circumstances, such as infringement by different parties or by different products, or entitlement for different employment situations. • Likewise, certain topics combine naturally (see section 3.2.3 below) to generate a more substantive question. • Hence part B questions tend to gravitate to certain more complex sections of the act, or explore parallel branches of sections of the act, or use thematically grouped issues. Recognising this and that in most cases there are corresponding chains of reasoning and answer structures goes a long way to addressing how you should deal with such questions – see Part 3.2 below.

3.2 Reading an FD1 Paper

This section provides guidance on how to read the Exam questions, glean hints from them, and identify salient issues.

3.2.1 The Questions

• It sounds obvious, but read the questions carefully. Since common sense can fail you on exam day, it’s preferable to get into the habit of self-consciously analysing questions as soon as possible, and begin to develop an instinct for what they want. • Pretty much every word in each question is there for a reason, from the awful pun-names to the dates and deadlines. Some are hints over and above the bare facts of the situation, and are there to direct you toward the marks and away from irrelevancies. • As an example, look at the facts [A…] and hints [1…] embedded in Q5 2007, which took place on 29 October 2007: Your long-term [1] client Farmer Agrochemicals (AG) handles its own renewal fees [A]. They did an internal audit [2] and found that the 2007 renewal fee for an important [3] UK patent [B] filed 15 May 1999 [4] had not been paid by the 2007 deadline [C]. Therefore they tried to pay the fee with surcharges [D]. However, The UKIPO recently refused to accept this payment for the renewal fee, because the case had lapsed for failure to pay the 2006 renewal fee [E]. This was a surprise [5] to AG because this is the first [6] communication from the Office they have had identifying there is a problem with this case [F].

They have established that their system was upgraded and a bug [7] in the system meant [8] that no reminder was generated for this case, which caused [9] them to overlook the payment for 2006 [G]. They work in a fiercely [10] competitive area of technology and they are worried that if this case has lapsed it will give a competitor the opportunity to sell one of their key products in the UK [H]. AG understands [11] that the deadline for paying the 2007 fee with surcharges expires 30 November 2007 [12].

What course of action [13] should AG take to maintain their patent in the UK, highlighting what, if any, are the implications [14] of your proposals?

– 6 Marks [15]

• Bare facts of question (other than dates): [A] – The client manages their own renewals… [B] – … on a granted UK patent. (Therefore be sure to use UK law, not EPC or PCT!) [C] – They missed a renewal fee deadline (that needs to be calculated). [D] – They apparently did the right thing to remedy the 2007 payment… [E] – … but the 2007 fee remains unpaid as the 2006 fee may also have been missed. [F] – They only received one communication from the UKIPO. [G] – They failed to pay the 2006 renewal fee. [H] – They are concerned about the consequences of a lapse. • Note that each sentence in the question roughly equates with one of these facts. • Hints: [1] – A ‘long-term’ client suggests experience, as opposed to a new private inventor. [2] – They audit themselves, suggesting they have decent record keeping systems and are ‘responsible’ in their approach. [3] – This may be indicative of the costs they are prepared to incur, and/or their level of care with such a case. Together with [10] below, it also suggests exclusivity is important. [4] – The exam paper highlights the filing date in bold (The exam itself was on 29 October 2007). [5] – In conjunction with the ‘because’, it serves to highlight the following point: [6] – The response to the late 2007 payment is the first indication of a missed 2006 payment. Perhaps there was a missing indication in 2006. [7] – A ‘bug’ is an uncharacteristic error… [8] – … and whilst they have a reminder system, the bug meant it didn’t work… [9] – … causing them to overlook the payment. [10] – ‘Fierce’ competition underscores the urgency regarding third-party rights. [11] – ‘The client understands’ – this begs for confirmation or correction in an answer, and here also highlights the need for restoration of the 2006 payment before needing to restore the 2007 payment too. [12] – All dates, in every question, are important. This one also acts as a template/ reminder for calculating deadlines for the 2006 renewal fee. [13] – A course of action is required in the answer. [14] – A risk assessment is required in the answer. [15] – You are looking for 6 marks over the whole question. Divide effort accordingly.

• In this question, like almost every FD1 question, most sentences contain relevant information – there is very little flab in FD1. The question clearly directs you to use UK law [B] to deal with the issue of a lapsed patent [E] and separately a late renewal fee [C], where these may be due to a computer error [G] and/or a failure of the UKIPO to send a reminder [F]. The client wants to know what the consequences are/will be [H].

• The directions [13], [14] suggest that the answer can be organised into two main aspects (analysis/actions, and then consequences). The hints then influence your analysis of the issues, and often act as evidence or inputs for legal tests, as we will see. • A good answer structure follows a basic pattern relevant to many questions:

i. state or derive the current situation(s); ii. propose action(s) to address the situation(s); and iii. discuss any consequences of those actions or of unresolved situations.

In this case, the question helpfully lists stages (ii) and (iii) as requirements in the directions. • The following is not an answer itself but illustrates the thinking behind an appropriate answer according to the above approach:

Course of Action [13]: i. A responsible patentee ([1], [2], [3]) has missed a renewal fee date due to an uncharacteristic error ([7], [8], [9]); advise how to fix this ([13]) using s28 and the available information ([4], [12]). ii. The client also missed the subsequent renewal fee date. Assuming the patent will be restored, propose the action required to fix this too (s25(4)), correcting or confirming ([11]) the client’s assumptions. – This states/derives several related aspects of the situation and then addresses them, as per the structure above. This was worth 3 marks, including the proper calculation of dates and deadlines. iii. A notification from the UKIPO seems to be missing ([5], [6]). Therefore, alternatively or in parallel consider rectification due to a UKIPO irregularity (R107 re s25(5)) ([13]). – Again this states/derives another complementary aspect of the situation and then addresses it, as per the structure above. Worth 1 mark.

Risk Assessment [14]: iv. Note that under route i/ii. above, competitors working or preparing to work the invention and demonstrating good faith will have third-party rights from [previously calculated] dates (s28A) ([14]), so act ASAP ([10]). – Then discuss consequences, as per the structure above. Worth 1 mark. v. Note that under route iii. above, third-party rights are not automatic, but are at the discretion of the comptroller (R107(2)(b)) ([14]). – The elusive sixth mark, here again relating to consequences. • In this question, a maximum of 4 out of 6 marks were for available for assessment and actions, whilst a third of the marks were allocated to implications of those actions. Clearly therefore it is worthwhile paying attention to the requirements in bold at the end of a question in order to be able to access all the potential marks (similarly even when not made explicit by a question, it is usually worth considering the repercussions of your conclusions and/or advice for your client / relevant parties, as there are likely to be marks for this). – Don’t be afraid to carefully re-read the question if you think you have missed something. – Whilst the above example separated out the ‘course of action’ and ‘implications’ parts, this is not necessary and it is perfectly acceptable to mention them as they occur to you or as they naturally flow in your own answer. • As can also be seen, this question bends over backwards to direct you away from a tortuous discussion of ‘unintentional’ regarding the application of s28, both in terms of the hint

words used and the directions at the end of the question. In particular, the overt causality in hints [7]-[9] of the question indicate that the situation should be taken as fact and that you shouldn’t, for example, insert a human decision-making step in there in order justify a rote- learned discussion of the issue. FD1 is not an exam where showing off a party-piece out of context would earn marks. • Other common question hints are the name of a client (though this is not a ‘fact’ as such, and should not be part of a reasoned answer), and indications of financial status. For example, an inventor who is now unemployed probably wants to get money from their invention quickly; therefore consider licenses or settlements as a first option prior to lengthy and expensive court action. – From this it follows more generally that you should accept constraints imposed on your actions by the facts of the question – this tests your ability to practice in the real world. • Finally, note that any explicit date given in a question should be used. If you don’t use it, ask yourself why you haven’t and then look for what issue does use it. On average, 10% of the marks in FD1 relate to the correct calculation / use of dates. See part 3.2.10 below for an example of analysing dates. • With practice, the hints in exam questions will become apparent to you if they don’t already.

If they are not immediately apparent when reading a question, then when you read the examiners’ comments consider returning to that question to see what words in it pointed towards the examiner’s approach, and try to develop a feel for them. At least initially, therefore, consider reading the examiner’s comments immediately after attempting a question, since at this point all the issues and your initial understanding of the question will be fresh in your mind. For these early attempts, it is not important to do the questions to time, or in a complete block. • Whilst the example above clearly lends itself to this analysis, it is fair to say that some questions are better written than others, and sometimes you might simply find yourself on a different wavelength to the examiner. However even in these circumstances it is possible to demonstrate that you are a safe pair of hands and gain respectable marks if you methodically work through the three basic steps of identifying the current situation, proposing actions to address the situation, and considering the consequences of any outcome or lack thereof. • So in summary, use the facts and hints in a question, together with any appropriate law, to fully characterise the status of the current situation; then choose appropriate legal remedies to address the situation, using any hints in the question that guide your choice. Finally, discuss the risks or further legal and business repercussions of these actions for any relevant parties in the question.

First Conclusion

The exam questions provide facts and hints relating to a finite set of possible legal issues. Identifying these, and in particular following the directions given at the end of a question, are key to answering the actual question – as opposed to a perceived question that you happen to know a good answer to – and hence to gaining the actual marks available in the exam.

3.2.2 Part B Questions – Evaluation

• It is important to evaluate Part ‘B’ questions up front, because the odds are that if you run into trouble on one Part B question then you won’t have time to properly do justice to another in its stead. • Often (and perhaps preferably) it is just obvious that you don’t want to do one of the Part B questions, which makes your choice by default much easier and quicker (though beware of missing out on an easy question just because the ‘window dressing’ looks daunting). Other times it’ll be equally obvious which ones you do want to do. However, if you are left with two or three equally unappealing options, it is useful to invest some time in evaluating which question has the most issues you feel confident about. You can probably afford 15 minutes to do this; further details on time management are found in part 3.4. • One option is to generate a mnemonic to use and expand out during the exam. For instance, you could memorise ‘ODD EPO VIP’, as seen below. • Make a crude tally of the different issue categories that turn up in each question (bearing in mind each category can have multiple issues) and you will get a (very) rough profile of the questions:

Part B 2007 Q7 Q8 Q9 Ownership ||| | Designs Disclosure | Entitlement | | Priority Overseas | | || Validity || Infringement || ||| Prosecution (Other) | (new app?)

• Don’t try to absorb the question too deeply at this stage; simply see where a different problem is described or hinted at, or (more riskily) simply gauge the acreage that a topic has in the question, and categorise it in your chart. Part B 2007 as charted above was relatively simple (Q9 being the hardest to characterise). • You can now weigh up the pros and cons of each question as you see them. The chances are you’ll get a gut feeling for the questions in any event as you generate such a table, so don’t adhere to its indications too slavishly. • Finally, however, don’t use such a table as the basis for your analysis when answering an actual question – it is far too crude.

3.2.3 Issue Clustering

• As was noted in section 3.1.4, certain topics tend to be combined in Part B (and to a lesser extent in part A). As seen in the 2007 Part B analysis above, a common example is

Ownership, Entitlement and Disclosure. Consequently if you feel confident with ownership and entitlement, for example, be sure to revise disclosure since the Part B question best suited to you will probably also have some marks related to disclosure in it (and indeed may hinge on the issue). Other popular clusters are Infringement, Validity and Overseas, and also the pairings of Infringement and Threats, and Overseas prosecution and Priority. • Another significant type of clustering is the exploration and juxtaposition of variations on a theme for those sections of the act where various outcomes are possible; a frequent example is to explore the effects of different employment statuses on ownership. Another example explores the status of different would-be infringer(s) in relation to a patent claim or claims.

Consequently ensure you are familiar with all the permutations of such provisions. • As can be seen from the above rough analysis, each of questions Q7, Q8 and Q9 in 2007 show fairly typical clustering behaviour. • Whilst such clustering is a reasonable expectation, given that issues have a tendency to interrelate and that the Examiners need to fit a set of substantive issues into a short time and a single exam page, it is of course worth being aware that the presence of one issue does not automatically infer the relevance of others, and you should avoid constructing hypothetical arguments and situations in order to create clusters that aren’t there. Similarly, as with Part

A the Examiners are always trying to present new situations to candidates, and so you should expect at least one novel combination of issues (or deep exploration of a single issue) to arise. • Conversely, but again because of the desire to keep the exam fresh, superficially different scenarios can mask the same underlying legal issues; hence for example a question relating to infringement and validity may be presented from the side of the patentee or the infringer, and from the perspective of suppliers, start-ups looking to enter a market, would-be investors considering the value of a portfolio, patentees with or without imminent business needs, and so on. In each case the underlying law and reasoning is the same, and a good core answer is possible, whilst sensible advice tailored to this year’s specific circumstances will then likely gain some additional marks. • There are advantages and disadvantages to clustering in questions. With clear clustering, a comfortable set of marks should be available if the subject-matter suits you, but it can be more difficult to read the Examiner’s mind and determine where to concentrate efforts (and hence obtain marks). By contrast, a question with a wide distribution of issues may take you out of your comfort zone a couple of times, but you may be better able to identify all the distinct issues and treat it like a collection of Part A questions. Only practice will tell if this is a relevant issue for you.

So who owns?

Confidential? Inventorship? Any contracts?

Ownership… Any profit? Comment -

≠ payment…

Now senior employee

Any profit? Special obligation? Section 2(4)?

True? Ambiguous? Is £1 enough for £10m from patent?

O’seas pats? Nothing to lose

Client’s goal

Advise… Given these constraints Radio #1

Radio #2

P: UK(R2) P: US(R2) > 1 year…

Radio #3 P: ??(R3)

Mobile #1

7. Your client writes as follows: At the beginning of last year I was running my own business and in my spare time I developed a new type of digital radio (radio 1), which was cheap and efficient to manufacture and had excellent sound quality.

I approached Mega Radio Resources Plc (MRR) and asked them if they would be interested in developing my radio. We had a first meeting in June 2006, to discuss my radio. In the meeting we identified some problems with my original design but we managed to overcome these with an improved radio (radio 2).

After a few months I contacted MRR to see if they were interested in developing the radio. I was surprised to be told that they owned the improved radio (radio 2), which they were developing and that they did not have any obligations to me. Furthermore, they had filed UK and US patent applications in July 2006 covering the concept. Nevertheless, they had been very impressed with my approach and offered me a senior position running their Research Department. I took the position because my business was doing badly, at that time.

Once I took up my position in MRR I further improved the radio 2 to provide a radio that gives excellent sound even when the strength of the input signal is low (radio 3). A patent application was filed by MRR directed to this further improvement and the model was put into development.

In my spare time I realised that the technology could be adapted to apply to mobile phones to assist them working in areas of low signal strength. When I told my boss in confidence about the new invention he told me that MRR owned this invention. I think I may have signed some papers confirming this as I seem to remember receiving a commemorative one pound coin. They have filed a patent application on this signal strength technology and I have recently heard a rumour that it has been licensed to Colour Mobile Phones for £10 million.

I found out today that MRR is moving its Research Department to a cheaper location outside the UK and I am to be made redundant.

I am really frustrated because I have made a number of inventions that will make someone lots money and I have not received any financial reward for my contribution.

Is there anything I can do to benefit from my inventions?

Advise the client what, if anything, can be done in the UK to secure some reward in his inventions making sure to point out any actions he should take and anything that can be done to improve his position and highlighting any relevant time periods for same.

25 Marks

P: ??(M1) < 6m?

3.2.4 Analysing a part B question

• I suspect that there are as many ways to tackle Part B questions as there are candidates.

The next few sections show successive techniques that migrate from the laborious and time consuming (but possibly instructive) to a more confident seat-of-your-pants approach that makes good use of exam time and reflects a well-internalised knowledge of the law and attendant considerations. • Roughly speaking, the following methods represent a spectrum in terms of the degree to which you impose a structure (implicitly, an answer structure) on the analysis, prior to actually answering the question. • Hence method 1 is a reactive, bare-bones approach that does not provide any real structure unless you add some yourself. Meanwhile method 2 is a version of method 1 that imposes a structure on the analysis that is driven mainly by the structure of the question, and hence is ad-hoc. Method 3 is driven by an assumed answer structure based on the structure of the underlying law and common threads of reasoning. Finally, method 4 is an internalisation of the preceding methods, and in particular method 3. • Hence the methods reflect your confidence in how an answer to the question is likely to look. As you gain experience and confidence with part B questions, you are likely to migrate from something like method 1 or 2 through to method 4.

3.2.5 Method 1

• The first method given here is a bare-bones approach intended to organise your thoughts as you first read the question, and uses as few frills as possible: i. Consider reading the closing instructions at the end of the question first, to gauge what the requirements of the question may be before you read it. ii. As you read through the question the first time, identify significant issues in one margin, and facts in the other. This may sound banal but it imposes some initial organisation on your thoughts and ensures that you flag these key elements at an early stage. It also slows you down as you first read the question, which is valuable in itself. Also consider underlining any hints or key points so you don’t lose sight of them later on. • For FD1/P2 2007 question 7, you might well then make the following notes [see the example on the facing page] upon first reading the question. • As a caveat, note that this is not a perfect analysis, but a realistic one. See part 3.3.5 for an answer and marking analysis of this question. • At first glance, question 7 typifies the ‘permutations of ownership with regards to employment status’ issue cluster mentioned previously; this issue could affect each invention, and the mechanisms chosen for obtaining any financial reward. Unsurprisingly for the exam, it looks like several mechanisms will apply. • Additionally, there is a clear progression through the client’s story, punctuated by inventions and patents, which may invite an answer that is correspondingly structured by these inventions and patents.

• Thus a possible answer structure to note down (and later tick off) is:

Radio 1 (Ownership / no patent – confidentiality) Radio 2 (Inventorship / confidential / obligations) Radio 2 (Entitlement / joint owner? / UK & US Pats) Radio 3 (Ownership / compensation) Mobile 1 (Ownership - Ambiguous? / compensation in each case) • This way of organising the question may seem repetitive or longwinded, but in fact encourages you to systematically extract the marks available and assist you with structuring your answer. Note that in this case if you obtain just one mark for each of the aspects identified above, you will have already scored over 50%. • As will be discussed in section 3.3.5 below, being very systematic is advisable in FD1, since marks are often obtained by taking each presented situation, ‘cranking the handle’ of the relevant legal test(s) and advising on the result; being systematic ensures proper identification of each situation (and/or each permutation of a situation) and hence also the appropriate legal test and relevant conclusion, so improving the chances that the full range of marks are tried for. It is notable that the Examiners’ Comments for Q7 2007 say ‘Candidates often did not separate Radio 3 from the mobile phone technology when considering compensation, nor did they distinguish between s40(1) and s40(2)’ (i.e., different compensation assessments depending on Mobile 1’s ambiguous ownership). Performing a proper analysis and identifying an answer structure like that above goes a long way toward avoiding such oversights.

3.2.6 Method 2

• The second method attempts to sift the information according to some sort of structure, generally driven by the structure of the question. This is helpful when the question itself is well structured and/or appears to be a collection of fairly disparate elements: i. Based on the assumption that there may be 4-6 sections to a part B question, divide a blank sheet into six parts, or just plan to make notes on different issues on different parts of the page. ii. In each part, identify topics as you encounter them and then populate with facts, comments and thoughts as you go through the question. Expect to return to sections as new information comes to light. The topics might need some restructuring as you go. As noted above, in Q7 2007 the question invites an invention-by-invention analysis. Still consider underlining significant terms in the text. • Again note this example is a representative rather than a perfect analysis. For the sake of exposition, it is also perhaps more verbose than necessary. • As can be seen, this second method provides more room to note down issues and further thoughts as they initially occur to you, and structure your approaches to answering them (as opposed to the marginalia of method 1). Since the sections tend to reflect the order as initially perceived in the question, arrows can help cross-reference or re-structure the information as new elements fall into place.

• This particular question has a definite chronology, making a possible structure clear. However, one can appreciate that in a question with, for example, a client with a product and a patent, and a competitor with a product and a patent, then the ability to identify and make notes on the various interactions between these in a reasonably structured manner is potentially useful.

Radio 1

Client owns biz – special obligation? –but ultimately owns anyway

Improve situ Patent Radio?

Was meeting confidential?

Radio 2 publishes 7/06+18m = deadline for filing if details overlap? – s2(3) anyway – so what’s in R2 pat?

Check when pub’d & advise

Radio 2 – improve situ

7/77 due Nov 07 – try talking to MRR re UK & include both parties? Else entitlement –

S8 UK S12 US Note ‘developing’ – any profit? Mobile 1

“The technology” = improvement of R3 but now in phone? – called ‘new invention’ so go with it –spare time but senior – who owns? –If MRRs then as R3 –If clients then £1 would be enough to assign but not much re £10m – is it adequate compensation? Method 2

Radio 2

Who ID’d the trouble? Who did improvements? Check. ‘We’ means joint inventors? – add to inventors – So joint applicants too explain s36 to client Job offer not a payment

Radio 3

*CLIENT NOW SENIOR EMPLOYEE* Patents further improvement, so leave issues with Radio 1 & 2 –MRR owners by employment. –In development – Compensation? s40 & 41

• Clearly, the amount of detail you put in your plan can be tailored to suit your needs and any time constraints. However, avoid the temptation to plan to the Nth detail and end up effectively writing your answer twice.

3.2.7 Method 3

• Method 3 recognises that whilst each year the questions may change, the law stays the same. In other words, treat the question as firstly a test of your ability to spot the issues and hence which laws apply, and then secondly as a set of data to feed into the tests embodied in

these laws or in common causal chains of events, patterns, or reasoning. Hence the structure of the analysis is more akin to a fill-in-the-blanks exercise based on your knowledge of templates formed by the (relevant) laws and actions. • Hence for Q7 2007 the first step is to identify that this is predominantly a question on the variants of employer/employee invention ownership. The tests of s39 and s40 should

spring to mind. Knock-on issues such as those of s41 and possibly s8 and s11 are also worth noting to yourself. These can be thought of as a standard set of tests with a clear order of dependency, and as such form a template for an answer. • s39 lends itself to an answer structure based on the different possible employment statuses – not employed (s39 and 40 do not apply, s8 and 11 more likely to) – employed but invention not made in normal duties or duties do not confer special obligation (employee likely owns, s40(2) might apply) – and employed and invention satisfies 39(1) (employer likely owns, s40(1) might apply). • This represents a series of branches within the template that your answer can follow. • Again in each case, it is likely that you will want to state/derive the situation, advise on actions for the client (possibly for alternative situations where these are deliberately unclear in the question), and note any repercussions of those actions. • Note that additional issues may be introduced at a branch point (e.g. identify evidence for a more likely branch, or derive information needed to determine the current situation), and/or might be common to all cases and dealt with separately at the end (e.g. the client’s financial status). • By happy coincidence, the inventions in the example question divide up in a similar way to s39, making organisation simple. [See the flowchart on the adjacent page]. • As can be seen, the flow of the analysis in Method 3 is more strongly driven by the structure of the legal tests and also the structure of common chains of reasoning for perennial sequences of law / actions / consequences. Each thread of the answer typically starts with a fact-finding phase, followed by the application of a (possibly branching) test and a discussion of outcomes and consequences. In this particular case, using the provided ambiguities and attendant chains of reasoning in relation to the mobile phone unpacks a lot of the question’s marks. • One can see that many different questions on employment might fit a similar layout but with ‘discussion’ points occurring at different places in different exams, depending on the additional issues or ambiguities thrown into a particular instance of the question. Hence this method fits analysis of the question to a fluid series of templates themselves based on common chains of legal reasoning. • These templates are best identified and learned by practicing the exam and looking at the

Examiner comments with an eye to identifying sequences of reasoning. Common threads of law and/or reasoning exist for questions on ownership, entitlement, infringement, threats, restoration, and others. Look out for them. • Clearly, in the exam a flowchart like that shown here will take too much time to prepare, but a shorthand version may still be of use in allowing you to see both where issues need to be discussed and also to form an overall shape of an answer – a shorthand version is illustrated in section 3.2.8 below. • Finally, as will be seen in Method 4 later on, ideally these structures of reasoning will become sufficiently familiar that it is no longer necessary to explicitly plan them.

3.2.8 Combined Example

• The above three analyses are now shown in comparison for Q8 2007 (see overleaf):

Facts & Hints:

[1] – Clearly demarcates the scope. [2] – Draw it. [3A] – Could only infringe in UK? Note no time info about when client started. [3B] – Europe soon – a risk of future infringement? Client’s own patent portfolio? [4] – Signals the European angle again. [5A-C] – Draw it and compare with client’s invention. [6] – Just to nail the relevance re [1] above. [7] – Patent, not application. European, so immediately think about opposition. [8] – Designation fees OK – does anything else need to be ‘validly’ done for these patents to take effect (hint, hint)? [9] – The exam was on 29 Oct 2007, so we are within the opposition period. [10] – Draw it; note it is broader than the specific embodiment (no requirement to be straight in claim – might a ‘C’ shape halogen filament be a problem?). Note the text only says ‘generally’ in a straight tube. [11] – So you are going to put a lot of effort into fulfilling this goal. [12] – Not hired, employed, etc, but commissioned. Consider IP clause of contract. [13] – Word chosen to recall s7(3) UKPA – the inventor is the deviser of the invention. [14] – In FD1, surprises are always inventive. [15] – Check claim; yes this would get round it. [16] – Ownership, entitlement; is his app any good anyway, file your own too (where?), etc. [17] – So; consultant is cheeky but cordial – look at contracts & clarifications first. [18] – Not like the consultant’s version – so good prospects. [19] – Would the need for insulation in a domestic appliance be obvious? Consider for opposition. [20] – No formal letter required, i.e. bullet points would be acceptable. [21] – Infringement and risk assessment issues now and in future. [22] – i.e. improving his portfolio and quashing competitor’s patent.

• The question appears to be about infringement and validity, with a side order of ownership.

Taking account of the instructions at the end of the question, a possible answer structure would be:

1. French: Impact

2. French: Validity

3. French: Actions against 4. Client: Ownership

5. Client: Validity

6. Client: Actions for

Using method 2 instead, we get the following:

French: Impact

Designated DE FR GB – Validated? Client only sells in GB – limits infringement exposure Free to sell outside DE FR GB? – check o’seas?

French claim: Current product – no reflector New product – no reflector So do not appear to infringe ‘Essential’ copy would infringe, though

French: Actions against

Opposition period is 6/07 + 9m – Possible ground of I.S. – unclear if can combine client insulator with prior art too – ask dates?

Client: Validity

Novel combination of features (list)? Inv. Step – just swaps halogen for wire of client’s current heater… – But described as ‘surprising’ so note and assume inventive – If can’t get exclusivity then consider observations to UKIPO? French: Validity

Novel combination of features? Inv. Step – is reflector layer obvious if removing it is

‘surprising’? No real facts – Prior art has dish reflector but no insulating layer, so is it ‘just’ restoring occluded reflector back to top? – Little guidance, could be either way

Consider further prior art search esp. re reflectors

Client: Ownership

Check contract for IP clause – note if clause & if OK ask for transfer or then go for entitlement – else if none discuss whether contract of/for service – if think client’s then as per clause – if contractor’s then pos. pay for assignment or exclusive license

Client: Other Actions

File own version of application for commissioned hob ASAP. Consider options if also get consultant’s.

• In this case it would still appear prudent to draw the inventions. • Note that method 2 highlights that there are quite a few uncertainties in this question, which may not be immediately apparent from method 1. Knowing this up front may help you to be more confident when dealing with them in your answer. Note that again the given example is perhaps too verbose. • Finally, note again that these analyses are not perfect, but realistic.

Using method 3:

• Question 8 breaks down into two overarching themes – an infringement / validity analysis using claim construction, and a question of ownership. In this question, the series of templates are therefore less directly driven by specific sections of law and more by common chains of reasoning that crop up repeatedly in such FD1 questions. [See the first flowchart overleaf]. • So here we see two discussions of infringement with respect to a claim. The first discussion can go into length about the usual consequences and actions and also discuss the validity of the competitor patent, and the second discussion can double up as a discussion of the validity of the client’s patent on the commissioned heater. It looks like there’s probably less to discuss in the ownership part, and that can also help with your planning. • Of course, a more realistic version of this on the day would be something like the second flowchart overleaf. • Compared to method 2, this approach provides more repeatable and predictable answer structures as part of the question analysis process as it is less reactive to the structure of the question. – As noted previously, a typical thread of reasoning will have these basic features: i. Gather initial facts needed to proceed (e.g. what rights are there and who has them) iia. Apply relevant test, with branches if ambiguous (or choose branch if likely), and/or iib. Perform relevant action iii. Discuss typical consequences of outcome – The actual fine details can be left for the answer itself. • It’s worth noting that, like the Q7 example before it, in the Q8 2007 example above having formed a flowchart for your answer (with relatively little fuss), if you are able to extract just one mark from each of these 13 identified stages then you will get over 50% for the question.

The average mark in the actual exam was 32%.

3.2.9 Method 4

• The 4th method is effectively the same as the third, but without the flowchart. In effect, it is simply a method of making notes that you can see would be relevant to such a flowchart, and using knowledge of what such a flowchart would expect to include, and also identifying any curveballs early on. • The 4th method is illustrated as part of a question and answer example in section 3.4 of the book below.

Second Conclusion

A well-structured analysis of a question will help to identify the issues for which marks are available, and will help you to track and balance these in your answer.

Infringement of FR claim Rights: Valid where? Confirm

Discuss whether client’s current heater infringes FR claim

If yes, discuss current & future impact

Suggest opposition anyway & dates; Discuss validity of FR claim Discuss whether commissioned heater infringes FR claim

If no, discuss validity of new heater patent

Discuss any change that is still ‘similar’ to FR heater? Ownership of commissioned heater patent. Rights: Does s39 apply? (Probably not –explain)

If contractor, was there an IP clause? Check If employee, does s39(1) apply?

If yes, use s8 or if cordial, assign

If no, is ‘licence’ good enough? exclusive / assign Can client file own version ? (deadlines re novelty)

FR Infringed ? – validated & in force?

current heater y/n ?

Y

Discuss impact for UK and future

Opposition dates –FR Valid? commissioned heater y/n ?

N

Valid too? y/n

N - Poss changes Ownership - s39 y/n? (Prob no)

N - Check if IP clause y/n?

Y - s8 or poss assign

Y - s39(1) test }

N - discuss ‘licence’

Can client file own version ? (deadlines and suggestions)

3.2.10 Analysing a part B question – Timelines

• Some questions in part B (and for that matter part A) are better represented/understood at least in part by the use of time lines. • In a similar manner to Method 1, a good way to present a timeline is as three columns; a timeline, facts and descriptions, and law and issues. • For more complex timeline questions, it can also be a good idea to do a one-minute rough version that lists the dates involved, including any implicit dates that immediately occur to you, so that you can sensibly space out your final timeline. • For example, suppose that on 2nd November 2019 the following hypothetical exam question was set:

“A client filed a UK application on 1st August 2015 without claiming priority. During prosecution, a unity objection was raised and the claim to invention B was deleted. Meanwhile, remaining invention A is expected to grant soon. However, the client has now discovered that his competitor is selling invention B and wants to know what steps can be taken to protect his interests.

(10 Marks)”

• Hopefully, your answer would include filing a divisional to invention B and various advice on prosecution and infringement matters. However, a considerable number of the marks for this question are to be found in the calculation of dates. • In this case, it is important to notice that the application is over four years old and hence approaching the Rule 30 period for getting the application in order. The question tells you that the current application is thought to be in order, so this itself is not the main issue. The main issue therefore is how the R30 period interacts with the filing of the divisional. • Using the date in the question and the date of the exam, the following timeline can be constructed [see opposite]. • The timeline allows you to methodically work out the issues related to filing the divisional, and from that to also methodically present an answer. As will be appreciated, in this case the timeline has been organised to track the current situation on the right hand side, and possible actions on the left hand side. Simply by following the arrows in the time line, an efficient response to the date issue flows out:

The Rule 30 period for an application with a priority date of 1st August 2015 is (assuming timely prosecution) 4 ½ years later, i.e. 1st February 2020. Rule 19(1)(a) requires that divisionals are filed at least 3 months prior to this deadline, i.e. by 1st November 2019, which was yesterday. Therefore, as things stand a divisional filing to invention B is not possible.

However, the R30 period can be extended as of right by 2 months using Rule 108(2) and paying the fee, making the Rule 30 period expire on 1st April 2020. The deadline for filing a divisional therefore becomes 1st January 2020. As this is a bank holiday, under Rule 120(2) the deadline moves to the next working day [2 January 2020].

We can then file the divisional (marking it as ‘urgent’ since it inherits the R30 period of the patent – s15(9)) before this date and preferably as soon as possible.

Since the filing date will be within the last 6 months of the R30 period (i.e. after 1st October 2019), I note that in accordance with Rule 22(6) all the requirements of s15(10) must be met on filing (including filing claims and abstract, and payment of filing and search/claim fees), and similarly the Examination/page fees must be paid on filing in accordance with Rule 28(6).

1st Aug 2015 Filing & priority date

1st Oct 2019 -6 months

1st Jan 2020 - 3 months 2nd Jan 2020 s.120(2)

1st April 2020 R30 + R108 1st Nov 2019 -3 months to R30 2nd Nov 2019 (Today)

1st Feb 2020 R 30 Period R22(6) Divisionals filed within 6 months of R30 deadline must comply with all s15(10) acts at filing

R19(1)(a) Deadline for filing divisional is 3 months prior to R30 period

Default period for putting an application in order for grant –R108 Available

• Note that this summary doesn’t get tied up in hypotheticals about late exam reports and the like – if these were an issue they would be hinted at in the question. • It is not mandatory to recite the section and rule numbers in your answer, providing it is clear what you mean. A more detailed discussion of answer technique is deferred to section 3.3 below. • In conclusion, as a general rule if an exam question uses a specific date (or implicitly revolves around the exam date), then that date will be significant, and a quick timeline may be useful to reveal any hidden issues. • Clearly, this method could be combined with any of the discussed methods for analysing a longer question.