CIPA STUDY GUIDE TO FD2 - Drafting of Specifications by Iain Russell by CIPA Journal

CIPA STUDY GUIDE TO FD2 Drafting of Specifications

Iain Russell

2023

CIPA STUDY GUIDE TO FD2 Drafting of Specifications

Iain Russell

2023

The moral rights of the author have been asserted. All rights reserved. No part of this publication may be translated, reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the author. © 2010-2023 Iain Russell and Russell Innovations Limited. Fourth edition 2023. INTEGER TREE and CLAIM SANDWICH are UK registered trade marks (UK00003778148 and UK00003778147) owned by Russell Innovations Limited. Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20–23 Holborn London EC1N 2JD United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk

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Author’s Prelude… I would sincerely like to thank Tim Roberts, who is sadly no longer with us, without whom I would never have had the opportunity to write this guide. I would also like to thank Doug Ealey for taking the initiative to prepare his study guide for the FD1 (P2) exam, without which this guide would never have existed. Finally, I would like to thank Tibor Gold who kindly reviewed and edited the 2010 edition of this guide, Iain Ross who has worked wonders with his publication and formatting skills, and to the Patent Examination Board, and the Joint Examination Board as it was in 2010, for taking the time to review this guide and make suggestions for improvements. Iain Russell, Russell IP

About the author Iain Russell is a Chartered and European Patent Attorney, who founded Russell IP to provide high-quality, cost-effective patent attorney services to patent-savvy businesses of any size. Iain specialises in high-tech (especially telecoms) and music tech patent work. Iain has tutored candidates taking the UK drafting examination for over a decade and set up the How To Pass FD2 Training Programme against this backdrop. He also tutors candidates taking the European drafting and amendment papers. He was previously a member of the Joint Examination Board (now the Patent Examination Board) and was responsible for overseeing one of the UK amendment papers.

CIPA STUDY GUIDE TO FD2 Contents

Overview................................................................................................... 1 1. Spotting the invention..................................................................... 3 2. Claiming the invention................................................................... 9 3. Dependent claims...........................................................................21 4. Everything else............................................................................... 27 5. Abstract........................................................................................... 47 6. General............................................................................................. 53 7. Worked example – 2007 “FD2” (P3) paper............................... 57 8. Brushing up our drafting, by E.W.E. Micklethwait..................95 9. Claim drafting – the British tradition, by M.J. Daley.............. 113 Past paper – “FD2” (P3) 2007.......................................................... 121 Examiner’s Report Summary.......................................................... 129

Overview

reparing patent specifications is the essence of our profession. It is where our profession started, and it is a skill which sets us apart from others in the IP field. Without patent specifications, there is no patent infringement, there are no validity issues, no concerns over amendments and none of the complications concerning when a fee is due or whether a time limit is extendible. The purpose of FD2 (formerly known as P3) is to test whether you can prepare a UK patent specification to a high standard. So, how do you pass FD2? The following advice from a (now-)former FD2 examiner is retained from the first edition of this guide: ‘Students want complete focus on passing the paper rather than doing the job, though if they can do the job they can easily pass the paper!’ FD2, as with the other Final Diploma papers, is about picking up at least 50 marks in the allotted time. Knowing where you can score (and drop) marks and how to score (and drop) those marks is the subject of this guide. The most important part of the FD2 paper is actually spotting and claiming the invention. Once you’ve done that, the rest of the paper is, in theory, straightforward. One point to emphasise at the outset is that you should make sure you know recent Examiner’s Reports (ERs), which were previously known as Examiners’ Comments, and the Mark Schemes like the back of your hand. Both are available on the CIPA website. They tell you how you gain marks and how you lose them. You should be completely familiar with the ERs for at least the last five years in each exam you take. Equally, you should make sure you have read and digested the FD2 syllabus, with its description of the aims of the paper and the competencies it requires; see the relevant pages of the CIPA website. Recent Candidate Answers, available on the CIPA website, show the overall marks awarded to an answer, as well as a breakdown of component marks for different parts of the answer on the answer script itself. They’re well worth reviewing. FD2 candidates, in particular those with limited practical experience in patent drafting, may benefit from reading Gwilym Roberts’ A Practical Guide to Drafting Patents (available from CIPA). Although this book is not intended to be an exam-passing tool, it is designed to accelerate the patent drafting training and learning process for would-be attorneys. I also recommend reading Paul Cole’s Fundamentals of Patent Drafting book (available from CIPA), which includes the excellent ‘Brushing Up On Our Drafting’ papers by Micklethwait and ‘Claim Drafting’ by Daley, annexed to the end of this work [see pages 89 and 107]. I’ve intentionally not duplicated some of the material covered in Paul’s book in this guide. This guide has been reviewed by the FD2 examiners and is considered to be a good summary of what the examiners are looking for in FD2.

CIPA STUDY GUIDE TO FD2

1. Spotting the invention This is the most important part of FD2. If you get this wrong, it won’t be easy to pass. If you get this right, then you stand a good chance of passing.

1.1 Claiming the product or problem vs. claiming the invention • The problem – usually some drawback of the prior art that’s motivated the client to come up with an invention. • The product – the particular article by means of which the client’s solved the problem. • The advantage – usually a positive expression of the problem; why the client’s product’s an improvement over the prior art. • The invention – none of the above and what you need to protect! So, you’re neither trying to claim the actual product (very narrow) the client’s made nor the problem (too broad) that’s been solved, but something in between; the invention. The examiners comment on this issue sufficiently frequently that it should be taken very seriously. ER extracts from the first edition of this guide are retained below, as they’re still highly pertinent: 2007: At the very least, the independent claim should be novel over the prior art and should also cover the embodiment(s). Somewhere between these extremes is the claim which provides the widest practicable protection. 2004: In most cases, candidates who failed did so because their main claim was too narrow by at least two integers. 2003: However, far too many candidates unnecessarily limited themselves claiming still what they saw, rather than the arguable invention. 2002: Very few candidates demonstrated that they had stood back from the apparatus to consider, in the light of the given prior art and what must be accepted as common general knowledge, what the invention might be. A lot of candidates claimed what they saw, in the drawings. On the one hand, you’d know that if your client came up with the idea of a wireless Bluetooth® headset for a mobile phone, you’d try to use broad claim language such as ‘wireless connection’ – or something along those lines – rather than limit the claim to ‘Bluetooth’, if the claim would still define novel and inventive subject-matter. However, it can get quite tricky in the FD2

CIPA STUDY GUIDE TO FD2

1. Spotting the invention exam when there are so many features in the client’s description and drawings that seem to be essential to the product itself. This will be discussed later. On the other hand, you can’t merely claim the result to be achieved, i.e. the underlying problem to be solved. The IPO’s Manual of Patent Practice (MPP) discusses this in more detail: 14.120: The area defined by the claims must be as precise as the invention allows. As a general rule, claims which attempt to define the invention, or a feature thereof, by a result to be achieved should not be allowed. However, they may be allowed if the invention can only be defined in such terms or cannot be defined more precisely without unduly restricting the scope of the claims and if the result is one which can be directly and positively verified by tests or procedures adequately specified in the description and involving nothing more than trial and error. In No-Fume Ltd v Frank Pitchford Co Ltd, 52 RPC 231, a claim to an ash receptacle for smokers in which the dimensions of certain parts were such that smoke from objects thrown into the receptacle did not emanate from the receptacle was allowed on the grounds that the invention could be realised by dimensions other than those disclosed, by experiments not involving inventive ingenuity. However, claims of this kind are generally undesirable and it should be noted that the No- Fume claim was allowed solely because the invention did not admit of precise definition independently of the result achieved. Any claim which includes a subordinate clause prefaced by words such as ‘so that’ or ‘the arrangement being such that’ requires special consideration from this point of view. In BL O/031/17, the hearing officer considered a claim defining a seating assembly for an aircraft cabin. The claim was defined by the result that a passenger access path was produced between seats. The hearing officer found it was possible to define the invention without reference to the result to be achieved, however defining the invention in any other way would unduly restrict the scope of the monopoly sought. He also determined that the claimed result could be easily verified by a person skilled in the art. Based on these findings, and on the specific facts of the case, he concluded that the claim was clear despite being defined by result. Examples of merely claiming the result to be achieved that spring to mind are ‘means for automatically’ doing something, often solving the underlying problem, without giving any hints as to how the claimed product does that thing. For example, suppose your client identified a problem with conventional cars in that you need to turn on the lights manually when it gets dark. Sometimes, you might forget to do this. Your client thinks it’d be a good idea if there were a product that could automatically turn on the lights when it gets dark. A claim to something like ‘A car comprising means for automatically turning on the car lights when it gets dark’ seeks to protect anything that solves this problem and would run the risk of merely claiming the underlying problem or the result to be achieved. Of course, as set out in the above MPP extract, this depends upon the context. In this example, you might, for example, need to claim a car comprising a sensor to detect the light level and a controller arranged to cause the car lights to turn on whenever the light level drops below a certain value.

Drafting of Specifications

1. Spotting the invention However, this does not mean that it’s never appropriate to use ‘means for’ language, which is often referred to as ‘functional language’. I base the following on the 2008 ERs, which offers a word of warning about relying too heavily on a ‘No-Fume’ argument as a blanket justification for broad claim drafting: Paul Cole’s book on the fundamentals of patent drafting discusses the strength of a ‘functional claim’. ‘Means plus function’ is a well-recognised style of drafting and good marks can be achieved with that style. However, claims limited by the result to be achieved (e.g. ‘No-Fume’ type claims) often run the risk of being no more than a ‘free beer’-type claim… because they lack any distinguishing structure. Candidates should refer to the No-Fume decision, and also the patent specification itself, GB253518. The patent claim does recite structure. Thus, simply claiming the result to be achieved without reference to any structure did not score well. The examiners noticed that many candidates who seemed to fall into this trap often had a similar formulation of claim where one or two integers were recited, followed by a clause beginning ‘wherein’ or ‘such that’, followed by the desired result of the [invention]. Candidates may benefit from reviewing their claims to see if they have used such a formulation and, if so, considering carefully whether they have included sufficient detail for the claimed structure to enable the [advantage] to be achieved. To this end, one possible technique which may be helpful to candidates would be to try to sketch the apparatus as set out in the claim that has been drafted; this often helps highlight shortfalls in wording and helps test whether all the apparatus features which the candidate may have intended to be present in order to achieve the desired functionality are in fact present in the claim. The examiners returned to subject of ‘free beer’-type claims in the 2009 ERs explaining that it wasn’t such a common error in 2009 answers: As mentioned in last year’s Examiners’ Comments, ‘means plus function’ is a wellrecognised style of drafting and good marks can be achieved with that style. Claims limited simply by the result to be achieved (e.g. ‘no-fume’ type claims) often run the risk of being no more than a ‘free beer’ type claim – ‘anything which… – because they lack any distinguishing structure. Very few candidates this year seemed to fall into this trap. Overall, then, you need to find some balance between claiming the product and claiming the problem, which is claiming the invention. In the exam itself, it’s usually easy to spot the advantage the examiners want you to protect. Indeed, advice retained from the first edition of this guide is: The question tends to have a clear steer by referring to a problem solved and/or an advantage given – so what is the minimum structure necessary to achieve that? However, some years, the FD2 paper is less advantage-driven and can be more of a spot-the-

CIPA STUDY GUIDE TO FD2

1. Spotting the invention main-difference exercise. Some people highlight any advantages they spot and check whether any of them crops up more than once, which might suggest that it’s important. Other people make a note of all advantages and decide whether one particular advantage stands out as being especially important. It’s useful to practise both techniques and see if they work for you. If not, try something else. If you plan to use this technique, words like: ‘so that’, ‘in this way’, ‘accordingly’, ‘as a result’, ‘improve’, ‘help’, ‘advantageously’, ‘better’, etc, are worth looking out for. The question paper won’t, however, necessarily set out all the pertinent information, both for spotting the invention and for other parts of the answer, in a logical order, as indicated in the 2020 ER: In addition, the information is provided in a disorganised fashion to encourage candidates to think about what they are writing and to discourage cutting and pasting. This is a particular concern of the examining team going forward with the facility to copy and paste available in online examinations. Pertinent extracts from recent ERs relating to spotting the invention are provided below: 2022: The 2022 paper included a relatively short client letter. Candidates made good use of the time to work out what was needed in the main claims, to suitably protect the client’s position. 2022: The most primitive form of the 2022 invention was […]. That alone gave novelty and an arguable inventive step over the prior art… A safe claim would also include reference to […] in that main claim, which gave a clearer inventive step […], and avoided the inventive step argument risk of […]. 2019: The good candidates clearly read what the client said, did not get overwhelmed with the invention relating to the [the same technical field as] last year, and read and understood the prior art. These candidates wrote well-constructed claims from which everything else flowed. 2019: Some candidates appeared to spend insufficient time working out the invention. Many included multiple unnecessary limitations in a main claim which would have been easy to work around and often bore little relation to the specific description. 2019: A disappointingly large number of candidates claimed either [the prior art product shown in one Figure] or, more commonly, every feature [of the product shown in another Figure]. A picture claim [to the product as shown in the latter Figure] is certainly novel and inventive but is far too narrow and limited in scope to meet the client’s commercial requirements. Candidates whose claims and specification did not encompass both embodiments of the invention were not able to accrue enough marks to pass.

Drafting of Specifications

1. Spotting the invention 2019: When deciding on claim features, the Statements of Invention that would be associated with such claim features should be borne in mind to help candidates understand what features are needed (i.e. essential) and for what purpose in order to define the inventive concept(s). 2018: This year’s paper seemed to be more accessible to candidates, as evidenced by the higher pass rate. It was indeed a straightforward invention with a number of embodiments that simply needed untangling from the information provided by the client. 2017: This year’s paper was an exercise in invention-spotting, which is a skill that this paper seeks to test as an essential part of the unique skill set of a patent attorney. 2016: Part of the test with FD2 is invention-spotting and then preparing a set of claims that maximises the scope of protection, bearing the given state of the art in mind. 2016: This year’s paper really separated out the candidates who understand how to craft a set of claims of suitable scope and those who do not. The Examiners felt that some candidates were either a long way from being equipped with the necessary skills to pass or simply did not take enough time to consider how to get the best scope of protection for the client. Drafting is one of the core skills that separates patent attorneys from others in the IP profession. As a result, passing competent candidates, as well as those who demonstrate that they understand what is required but do not necessarily get the claims spot on, is of paramount importance to the Examiners. 2015: Candidates who are ready to pass this examination do the single most important thing you can do in the [time] available. They stop, and they think. Candidates who do not do this showed up in two main ways this year. Firstly, by claiming the product the client had made, which was not the invention (it was too narrow). This is indicative of little more than rushing…

CIPA STUDY GUIDE TO FD2

2. Claiming the invention

nce you’ve spotted the invention, you’ve got to claim it. You probably have between one and two hours in the exam to get your independent claim(s) right. While there isn’t a major need to rush getting the independent claim(s) correct, there may be insufficient time to change your mind completely later in the exam. However, do bear in mind that the remainder of the paper is normally at least 40% of the marks in FD2, so don’t run out of time! The following extract from the 2017 ER is pertinent in this regard: ‘Candidates should be focussing on preparing a full and complete specification rather than fretting about which section requires the most marks and so is the best to tackle properly to pass, not least because the mark scheme is balanced so candidates need to achieve sufficient marks in all areas to be able to pass.’ The marks awarded for independent claims had decreased in 2018 (20 marks), 2019 (18 marks) and 2020 (22 marks) compared to previous years, e.g. 2015 (30 marks), 2016 (34 marks), 2017 (32 marks). However, in 2021, the marks awarded for the independent claims were significantly higher, namely 40 marks, as explained in the 2021 ER: ‘In contrast to recent years, the mark distribution was weighted towards the claims to provide a more focussed examination of the skill being tested in this paper, namely claim drafting. In particular, 40 out of 100 marks were assigned to independent claims, for which candidates were expected to identify and draft independent claims [to various elements].’ In 2022, there were 24 marks available for the independent claim(s). There isn’t specific claim wording required to pass FD2 and there’s no one exact claim you need to hit on the head to pass. The FD2 examiners offer merely a suggested answer in the Mark Schemes. Claims that include relevant features, their arrangement and their interaction should score well if they get the message across without undue additions, limitations or unhelpful language. This point was emphasised in the 2018 ER: ‘Candidates are also reminded that the claims provided in the mark scheme are a suggestion. Marks are awarded for claims that are suitably drafted to meet the requirements of patentability in the UK and meet the client’s needs, as required by the syllabus for this exam. Although all the wording considered by the Examiners to be required for the claims is included in the information provided, each candidate interprets information differently and the Examiners do not expect to see a main claim that is identical to the one suggested in the mark scheme.’

CIPA STUDY GUIDE TO FD2

2. Claiming the invention This was also discussed in the 2022 ER: ‘There was flexibility in the mark scheme for how the […] part of the invention was claimed’. That said, and while there’s flexibility in the specific wording of the claim, a strong understanding of claim-drafting is nevertheless required, as explained in the 2014 ER: ‘This was a straightforward question that was answered well by good candidates and poorly by those who appeared not yet ready to sit this examination. The inventive mechanism was grasped by most candidates, but many still failed due to a poor understanding of claim drafting.‘ However, to repeat an earlier point, FD2 isn’t only about the independent claim(s). Even if an independent claim is deficient, a pass mark might still be achieved if there’s sufficient thought evidenced in the rest of the claims and remainder of the answer; it’s about demonstrating that you meet the current minimum pass criteria and learning outcomes. Here are some additional pertinent comments from recent ERs: 2021: Successful candidates provided independent claims that included all the essential features necessary for the [object] to function. Broader independent claims were also duly rewarded, providing they included all essential features. Narrow claims were deemed acceptable only if they were accompanied by sensible reasoning within the specification, although this was rarely seen. 2021: An independent claim that does not provide the client with sufficient scope cannot be rewarded with marks unless suitable reasoning and/or back-up is provided in the statements of invention. 2020: Successful candidates were the ones who showed experience and/or understanding of drafting claims. Unfortunately, a scattergun approach to claim drafting is still seen in a disappointingly large number of scripts. The mark scheme is a guide to Examiners on where and how to award marks but, unless a candidate demonstrates an understanding of the invention, a pass is difficult to achieve. 2017: Candidates who had sufficient knowledge or experience of claim drafting were duly rewarded, while those who adopted a scattergun approach in the hope of hitting the right target, or those who appeared to set about drafting claims without taking the time to think about what the invention was, were not.

Drafting of Specifications

2. Claiming the invention

2.1 Preamble This is the first bit of the claim that sort of sets the scene. It should be closely tied to the client’s business with an eye on infringers. Don’t confuse it with the ‘preamble’ of a claim in two-part form as preferred by the European Patent Office, setting out the relevant features of the closest single piece of prior art and to be followed by a ‘characterising clause’. There’s no requirement for claims to be in two-part form under UK practice. From several older ERs: 2008: In this question you are told that the client [does a certain job] and he has produced a [thing] which he wishes to disclose to a manufacturer. That is the business which it is your task to protect. 2007: In this question you are told that the client is a [job] and he has produced a [thing] which he wishes to disclose to a manufacturer. That is accordingly the business which it is your task to protect. 2005: In this question you are told at the outset that the client is a manufacturer of [a thing]. That is accordingly the business which it is your first task to protect. The client tells you that he has devised a new apparatus […]. If your client’s a car engine designer who’s invented, and is going to sell, a new engine for a car, would you claim the car including the engine or the engine itself? If the client’s competitors are going to be other car engine designers and manufacturers and not necessarily car manufacturers, you should claim the engine itself rather than have to rely on contributory infringement. If your client was a mechanic who’d devised an improved a spark plug for a car engine, you should claim the spark plug itself and not the engine comprising the spark plug. However, what’d happen if your client came up with the idea of using a known engine in a lawnmower, assuming that known engine hadn’t been used in lawnmowers before? You can’t claim that engine ‘for use in a lawnmower’ because that engine was already suitable for use in a lawnmower! Similarly, you probably can’t get away with just calling it ‘a lawnmower engine’ and then listing all the known features. You might sometimes get away with this in practice, but it does leave your patent open to attack; for a notable exception – and it is an exception – where such an attack failed, see the Workbench case referred to in Paul Cole’s book at pages 277-296. Another issue is how you decide on the exact wording to use for the preamble. Again, there’s no hard-and-fast rule. For example, I once had a job interview in which the task was to draft a claim to a stapler. I started out by drafting a claim to ‘An apparatus for temporarily fixing a plurality of sheets of paper-like material together, the apparatus comprising…’, but then decided that ‘A stapler comprising’ would do just as good a job and in fewer words. My interviewer asked why I chose to call it a ‘stapler’ instead of the other verbose expression and I responded: ‘well, that’s what it is’. They were pretty happy with that. The moral of that story is that, although you don’t want to draft the preamble too narrowly, remember to take a step back and think about what you’re writing.

CIPA STUDY GUIDE TO FD2

2. Claiming the invention Be cautious about using the word ‘system’ in the preamble as it can be ambiguous whether it relates to apparatus- or method-type features. From the 2005 ER: ‘A few candidates used the word “system” for “apparatus”, perhaps because that was the word the client used. Traditionally, this has been frowned upon as being ambiguous (particularly where highly functional language is used) and in the present instance “apparatus” is preferred.’ Also, be careful about using the word ‘in’ in the preamble as it can often cause confusion as to which entity you’re claiming. For example, are the following claims limited to the car engine: In a car engine, a spark plug comprising…

and A spark plug in a car engine, the spark plug comprising…?

It would normally be better to claim either: A spark plug for [use in] a car engine, the spark plug comprising…

or A car engine comprising a spark plug, the spark plug comprising…

This gives you the preamble of the claim.

2.2 Essential features You then need to ensure that the claim includes the functional and/or structural features that are essential for achieving the advantage. You have to put your thinking hat on here and think whether something is essential to achieving that advantage or not. For instance, using the above headset example [chapter 1, page 3], Bluetooth may not be essential to the advantage of having a hands-free conversation on your phone. If not, your claim shouldn’t be limited to it. However, with reference back to chapter 1, a claim simply to ‘A hands-free mobile phone headset’ is just claiming the problem or result to be achieved. Something like ‘A mobile phone headset comprising a transceiver operable to communicate wirelessly with a mobile phone’ would be more sensible. Again, repeating advice from above: ‘The question is what is the minimum structure necessary to achieve the problem solved by the invention/the advantage of the invention?’ [Emphasis added.]

Drafting of Specifications

2. Claiming the invention Although it’s important – imperative even – to include enough structure in your claims to support the associated advantage, features that don’t relate to that advantage can lead to unnecessary limitations (and a loss of marks) as highlighted in the 2009 ER: ‘[T]his year, some candidates unnecessarily limited their independent claims by including features which do not relate to the “invention” they are claiming. Typically, these features are mentioned but then not subsequently referred to in the remainder of the claim. The question therefore arises of why was that limiting feature included at all? It is recognised that this is something that is sometimes can be difficult to spot and to be self-critical over. To help with this problem, candidates may consider trying to sketch out their claims since this often reveals features which have no interaction with others in the claim, and so are not contributing to the definition of the invention. This can be helpful in two ways: the first is that the feature may not be necessary at all and can be removed; the second is that the feature needs to be present, but its interaction with the other features has been omitted and needs to be included…’ See also the following from the 2021 ER on essential features: ‘The Examiners thought that claims directed to the generalised structure of the described embodiments would provide acceptable coverage of the invention, provided they did not include undue limitations. However, candidates that attempted to claim more broadly or functionally were duly rewarded, provided the claim still had all the essential features. Attention was required for the claiming of features that were best described in terms of function when in use. Candidates are advised to consider which features are essential for the functioning of an apparatus and to make sure all those features are included in the independent claim. In this paper, the Examiners felt that [a certain feature] was an essential part of the device. Candidates who omitted this feature from claim 1 but included it in a high-ranking dependent claim were rewarded because the Examiners considered that such answers suggested the candidates understood the need to draft broadly but provided a sensible fallback position in case they had drafted too broadly. Inclusion of [that feature] low down in a set of dependent claims, particularly without reasoning to explain its importance, suggested a candidate hadn’t appreciated all the essential features of the invention’ . Further advice around essential features and the importance of the early dependent claims was provided in the 2022 ER: ‘The [feature in question] was not deemed essential to the invention. However, it was brave to risk a claim with just [other] features given the obvious additional advantages of including [the feature in question], and thus candidates were not penalised if they included the [feature in question in] their main claim.. Where a claim not including [the feature in question] was rewarded, the Examiners

CIPA STUDY GUIDE TO FD2

2. Claiming the invention expected to see [the feature in question] referred to in a high order claim (meaning the candidate likely recognised [the feature in question] as an important feature, and thus considered [the feature in question] a good fallback position to include).’

2.3 How features interact Think about how those essential features interact with each other to achieve the advantage. I frequently had what I call ‘floating blobs’ in the first claims I prepared when I started practicing FD2 papers. By a ‘floating blob’, I mean something that has no relationship with the other integers in the claim. An example of bad ‘floating’ would be something like: A vehicle having a set of pedals and a wheel…

Are we describing pedals such as bicycle pedals that are used to drive the main propulsion wheels? Are we describing the three driver’s pedals in a manual car and the steering wheel, the spare wheel, a ‘wheel’ in the engine…? It’s not clear what the physical or functional link between the two entities is! In the first example, we’d be better claiming something like A vehicle having a set of pedals and a wheel driveable by the pedals,

or A vehicle having a wheel driveable by a set of pedals

(if we don’t actually want to claim the pedals)

People often recommend drawing exactly what your claim recites and seeing if you’re ‘floating’. If you can do this, that’s great, but I normally ended up drawing what I thought the claim said (everything nicely connected!) rather than what it actually said. I do definitely suggest that you ‘try this at home’ though. I also like a suggestion made by Gwilym Roberts in a handout I have in my old FD2 files. This was to imagine that you’re an ant walking over the object that you’re claiming. Start from one end and walk to the other describing what you see. In this way, you can check that every step of the ant’s journey is documented and that there are no gaps created by floating blobs into which the ant would fall. This, of course, needs to be balanced against including non-essential features in the independent claims. Another approach is to work in a radial manner, starting in the middle of the object you’re describing and then working outwards. The 2018 ER emphasises the importance of defining the interaction between claim features: ‘Candidates who did not achieve enough marks to pass […] did not describe the interaction between the claimed features…’

Drafting of Specifications

2. Claiming the invention

2.4 Possible claim format I really don’t think it’s possible to come up with a template for a claim, either for the exam or in real life. It depends on whether you’re drafting a product claim or a process claim, how close it is to the prior art, whether you’re drafting structurally or functionally, etc. Although I often found the following claim format useful for FD2, do not assume that this is always the correct way to claim an invention in FD2, because it isn’t! For example, in the 2006 paper, and in at least one more recent FD2 paper, this format would not be appropriate. A [preamble], comprising: [list the essential features, what they do and how they are physically and/or functionally interrelated] wherein, in use, [elaborate on how they interact, in use, to provide the advantage of the invention]

There must be some structural and/or functional distinction over the prior art that gives rise to the advantage. You can’t just claim the advantage. I started calling this claim format the Claim Sandwich® because it has a top layer (the preamble), a filling (the essential features) and a bottom later (the interaction and consequence). If one of these components isn’t present, you don’t have a complete sandwich. Here’s an excerpt from the 2008 ER that I emphasised in chapter 1: ‘The examiners noticed that many candidates who seemed to fall into this trap often had a similar formulation of claim where one or two integers were recited, followed by a clause beginning “wherein” or “such that”, followed by the desired result of the [invention]. Candidates may benefit from reviewing their claims to see if they have used such a formulation and, if so, considering carefully whether they have included sufficient detail for the claimed structure to enable the [advantage] to be achieved.’ [Emphasis added.] I suggest reading that a couple of times to understand what the examiners don’t want to see.

2.5 Claim categories It’s important to remember that there are various categories and types of independent claim. It’s even more important to be selective about which you include in your answer. I’d be very surprised if there was a FD2 paper that didn’t require a product claim, but you never know. Below is a list of potential additional claim categories to consider. I‘ve emphasised the words ‘potential’ and ‘consider’ because, as explained above, this isn’t a list of categories to remember and attempt to apply come what may, but to encourage you to think about whether additional independent claims might be required: • C1/Method of using a product • C2/Method of manufacturing a product

CIPA STUDY GUIDE TO FD2

2. Claiming the invention • C3/Method of assembling a product • C4/’Look up’ (product as part of a bigger product – e.g. car comprising an engine according to claim 1) • C5/’Look down’ (should have already done this) • C6/Kit of parts (i.e. in disassembled form) • C7/Any other patentable bits that might be sold (e.g. consumables) Claims merely to ‘a kit of parts comprising a [product] according to claim 1’ add nothing and don’t score marks. The following extract from the 2014 ER emphasises the above point on being selective on which claim categories to include: ‘A few candidates try and shoe-horn in every claim heading just in case. As always, such an approach is never rewarded. If candidates are worried that they may have missed out on a claim type then such claims should appear as suitable text in the statements of invention.’ Pertinent extracts from the 2022 ERs are included below: ‘Although it was possible to achieve the Pass mark with just a set of device claims, candidates who did not include any sort of method claim rarely accumulated enough marks elsewhere to pass. Examples of those achieving the Pass mark with just a device claim were thus few and far between, emphasising the importance of carefully considering the appropriate claim types to protect the invention being disclosed.’ ‘Candidates are also reminded that not every type of independent claim is always necessary. For some reason candidates appear to claim routinely a “kit of parts” whenever there is any sort of device or apparatus. There have been recent papers where a kit made sense. However, that is based on the disclosure, and what would be useful to the client. Including all claim types from a list of claim types simply wastes time that could be better spent accessing marks elsewhere.’ ‘A method of using such apparatus was expected. It was possible to broaden such a method to not rely on the apparatus disclosed, which attracted only two more marks than including it.’ One thing that’s bad practice and annoys the FD2 examiners is including multiple independent claims in the same category drafted in a ‘shotgun’ approach. Extracts from older ERs are provided below; these indications still apply: 2008: As mentioned in previous years, drafting multiple independent claims in a shotgun fashion, where each had slightly differing scope, was felt to show a lack of judgement on the part of the candidate and rarely scored highly. This approach can also cause considerable

Drafting of Specifications

2. Claiming the invention difficulty for the candidate when drafting the introductory portion of the application, as well as causing unity problems and increased expense to the client. If the additional independent claims are not likely to be pursued in divisional applications, why include them? 2007: As mentioned in previous years, drafting multiple independent claims in a shotgun fashion to cover a variety of novel features showed a lack of judgement on the part of the candidate and rarely scored highly. This approach can also cause considerable difficulty to the candidate when drafting the introductory portion of the application, as well as causing unnecessary unity problems. 2006: Drafting multiple independent claims in a shotgun fashion, where each had slightly differing scope, presumably in the hope that at least one of the claims may align with that expected by the examiners rarely scored highly. An example of ‘shotgunning’ would be to have, say, three independent claims that each includes a different novel feature over the prior art, but with none of the claims being unitary. If you have lots of claims, each with different scope, it might not be clear to the examiners what you consider the main invention to be. Another thing that annoys examiners is the unnecessary inclusion of method claims directed to the use of an apparatus that wouldn’t realistically ever be enforced: 2020: A worrying number of candidates also included claims directed to a [particular method]. While methods should always be considered, in the scenario of this paper, the person carrying out the method would be the consumer who has a right to quiet enjoyment and so cannot and would not be sued. The inclusion of method steps in the statements of invention is encouraged where and when appropriate, but care and consideration should be given to including such potentially unenforceable features in a claim set. 2008: In this case, method claims were not expected. It might be argued that a method claim could be of benefit in preventing use of the product… by [competitors], but a product claim was felt to be sufficient. 2007: In this case method claims were not expected. The client is in contact with a manufacturer and the manufacture and sale of the products, rather than licensing use, seems the most practicable way of exploiting the invention. 2006: In this case method claims were not expected. Having said that, another paper required a method claim to a method of manufacture because of the nature of the client’s business: Claims… to at least an apparatus and to a process (method) for making the [thing].

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2. Claiming the invention Regardless of whether or not you’d include a method claim in real life, really think about whether a method claim’s necessary for the exam. Who’s going to infringe it? If it’s just a member of the public in their own private domain, would you really launch infringement proceedings against them, especially if they could rely on the private and non-commercial acts defence? Likewise, if the method claim would only be infringed by your client’s customers, you need to think whether it’s still worth including it. As there’s no negative marking in the sense of losing marks already gained by including unnecessary material, you won’t formally lose a mark for including a method claim when it’s not needed, but you want to keep the person marking your script on your side as much as possible; and you can’t afford to waste precious time writing redundant or impractical stuff.

2.6 Claim terminology Historically, creativity around claim terminology was expected, or at least could be beneficial. However, more recent ERs emphasise that the expected claim terminology should be in the paper itself. They also explain that, if such terminology is indeed offered in the paper, the expectation is that it’ll be used. From recent ERs: 2022: Candidates were told expressly: ‘A [term] is a term known to people who work with [field],’ and the vast majority used that term. 2020: The Examiners try to provide the language that candidates need to draft the claims within the text to assist those for whom mechanical subject matter is not their field. There is a specific lexicon for mechanical drafting which pharma and bio trainees do not necessarily have at their fingertips, and if terms are offered to candidates for use in claims, they are present to avoid them having to work out what may be appropriate. 2016: For the avoidance of doubt, the text that is provided includes all the language and terminology that the Examiners expect to see in the claims and candidates are advised to use this rather than trying to make up their own terms to describe the invention. 2014: Suitable wording for Claim 1 was provided in the question paper, though candidates continue to create their own lexicons without providing definitions. This can make understanding a paper both difficult and time-consuming.

Drafting of Specifications

2. Claiming the invention

2.7 Checking the claim This is one of the easiest steps to skip in the exam when the clock’s running down and you want to start collecting marks for the description, etc, but it’s so important to do this step. Do use a three-point test for the claim at this stage: • Check 1 – have I got enough structure:  Look at the claim in isolation; does it suitably define the invention in terms of function and/or structure so that it can achieve the advantage?  Have I claimed the underlying problem or a result to be achieved rather than the invention?  Am I ‘floating’? • Check 2 – novelty:  Try to make the prior art infringe (or anticipate) the claim. If the claim clearly reads onto the prior art, you stand a good chance of failing. •

Check 3 – is it too narrow:  Have I covered all of the client’s embodiments?  Have I claimed the product rather than the invention?  Can any of the features or terms in the claim be generalised more or even completely omitted?

As an extra check, review the overall style and drafting of your independent claim(s). Additional marks might be available for well-drafted independent claims(s), according to the 2021 and 2020 ER: 2020: As in previous years, additional marks were available for the clarity of [a particular] claim: such marks are used by Examiners to reward a well drafted claim. 2020: Additional marks were available for the clarity of Claim 1: such marks are used by examiners to reward a well drafted claim.

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3. Dependent claims and omnibus claims

he thing I found hardest about drafting dependent claims was knowing how to order them without them reading ‘… when dependent upon any claim other than claim 7, except when claim 7 is dependent on claim 5’. This doesn’t create a great impression in the exam and gets a tricky if you actually amend the claims in real life. If you use what I call the Integer Tree® approach, ordering the dependent claims should, genuinely, be easy. The Integer Tree® is a visual representation of all the features you might claim, arranged with the broadest features at the top of the tree and any narrower features progressively lower down. For example, suppose your exam paper concerned an electric tin opener. Your Integer Tree® might look like this: Electric Tin Opener Electric Power Source Internal Battery

Mains Supply

Handles Plastic

Metal

Cutter Wood

Circular

Noncircular

From the Integer Tree®, you should be able to get a good idea of which features are subsidiaries of which other features (directly below) and which may be alternatives (next to each other on the same level), which makes ordering the dependent claims a lot easier. If your main claim were, say, to ‘An electric tin opener having a cutter and an electrical power source arranged to drive the cutter’, claim 2 could specify that the electric power source comprises an internal battery, claim 3 could specify that the electrical power source comprises a mains supply, claim 4 could introduce handles and be dependent on any of the preceding claims, etc… It’s also important not to include too few, or too many, dependent claims. Unless the paper says otherwise, it’s unlikely that more than 25 claims in total would be expected as each claim over 25 (not 15 or 20!) attracts additional official fees in the UK. In recent years, more and more marks are being awarded for the dependent claims. Having a small number of dependent claims risks losing out on such marks. However, if the client asks you to limit to a certain number of claims, you should follow their instruction. It’s worth me emphasising again that excess claims fees apply in respect of the 26th and subsequent claim in the UK; not to the 16th and subsequent claim, which is where excess claims fees start applying before the EPO. I’ve repeated a reminder from the 2022 ERs on this below:

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3. Dependent claims and omnibus claims ‘A surprising number of candidates limited themselves to 15 claims, possibly in view of the EPO’s excess claim fees structure, rather than the 25 that can be included in the UK without additional charge, as may be important if a client has noted costs. This resulted in the inability to acquire dependent claims which could have been important, as well those available for corresponding statements of invention.’ Features that have some sort of advantage associated with them are the best for dependent claims. If the feature doesn’t have an advantage, then it’s unlikely that you’d limit claim 1 to include that feature in real life and so it doesn’t provide a very useful fallback position should claim 1 turn out to be invalid. As well as the dependent claims being logically ordered as whole, it’s advisable to put the strongest fallback dependent claims as early as possible in the claim set, i.e. claims 2 and 3. The following extracts from recent ERs must not be interpreted as indicating that it’s OK to draft independent claims that lack novelty; these extracts are solely included to emphasise the importance of the higher-ranking dependent claims: 2022: Where [an independent] claim not including [a potentially essential feature] was rewarded, the Examiners expected to see [the potentially essential feature] referred to in a high order claim (meaning the candidate likely recognised [the potentially essential feature] as an important feature, and thus considered [the potentially essential feature] a good fallback position to include). 2019: If Claim 1 was deemed to lack novelty, appropriate marks were awarded to candidates who provided high ranking dependent claims which could be used in examination to overcome a novelty objection. If features required for Claim 1 novelty are provided towards the end of a (long) list of dependent claims, the specification needs to show very clearly that the candidate has understood the invention and is not merely throwing in everything in the hope of accruing sufficient marks to pass. 2018: Candidates whose Claim 1 lacked novelty over… the prior art were given the benefit of the doubt if all other features were present in Claim 1 and [the novel feature] appeared in an early dependent claim. Additional pertinent comments on dependent claims from recent ERs follow: 2022: The majority of the dependent device claims followed a format the candidates should recognise from past papers. In general, candidates can expect to find features, often with alternatives, and supersets thereof, set out. They may not always be in convenient clusters in the disclosure, which is why reading the client letter several times is sensible, reducing the risk simple marks from recognition of the patterns are missed.

Drafting of Specifications

3. Dependent claims and omnibus claims 2022: This year the mark scheme grouped dependent claims together in themes, hopefully allowing candidates to see how and where such marks were both expected to be set out, and how dependencies might work. 2021: There were a number of features suitable for inclusion in dependent claims this year, and most candidates identified them and achieved good marks. As in previous years, candidates who provided a considered and well-constructed set of dependent claims scored highly. 2021: Candidates are reminded that the purpose of dependent claims is to add features that might be used to impart novelty and inventive step to a non-patentable independent claim. 2020: As in previous years, the client letter provided all the subject matter suitable for dependent claim features, which simply needed to be picked out and ordered sensibly. Candidates who provided a considered and well-constructed set of dependent claims scored highly. Indeed, candidates are advised to spend time working out how the features fit together as it was possible to score half of the marks with ease… Achieving all of those marks required the candidate to separate the information, and think about how [the dependent claims] should be ordered. 2020: There was some tendency to draft dependent apparatus claims with solely method features, for which no marks could be awarded. The nature of an apparatus claim is that it claims apparatus unless the apparatus can only be described functionally. 2020: Quite a number of candidates chose to include [dependent] claims directed to features of the prior art… Candidates should question whether the such feature(s) add patentability to a main claim in the event that the main claim is found to be unpatentable – this is the purpose of dependent claim features. 2019: The client’s letter provided ample and clear subject matter for dependent claims and the client was explicit that claims fees were to be avoided, giving candidates the space to draft a suitable number of dependent claims. Indeed, because of the amount of detail provided, the mark scheme was weighted towards the dependent claims to encourage thoughtful claiming and ordering of features. In general, an improvement was seen from previous years and dependent claims were usually sensibly constructed and ordered. 2019: However, many candidates seemed to think that claims fees start from 16 onwards, as per Europe, rather than 25 allowed by the UK IPO. As a result, features that would have been useful to the client, and thus marks, were missed.

CIPA STUDY GUIDE TO FD2

3. Dependent claims and omnibus claims 2018: This paper particularly tested candidates’ understanding of the role of dependent claims and the ability to draft a well organised set of claims to provide suitable fallback positions if Claim 1 fails during prosecution. As has been said before, a scatter-gun approach to the ordering of dependent features suggests a candidate who hasn’t yet grasped the function of dependent claims and, in most cases, the invention. 2018: Marks are awarded for correct dependencies and, each year, the paper tests whether candidates understand this, together with trying to encourage a well-structured set of dependent claims. 2015: A suggested maximum number of claims was included to encourage candidates to think carefully about the most important features to claim. Marks were awarded to dependent claims that were considered to provide a useful fallback in the event that the independent claims were held to lack novelty and inventive step. Marks were also awarded where skilful claim drafting which helped limit the number of claims. 2014: This part of the paper continues to be poorly attempted by many candidates who continue to throw together dependent claims in any order they see fit and directed to as many features as possible. This neither attracts marks nor instils confidence in the marking Examiners. If a main claim is borderline, well drafted dependent claims may enable a candidate to pass and so candidates are reminded of the value of the dependent claims. 2014: As a reminder, the dependent claims should be a series of graduated claims covering all the various integers of the invention, preferably with one integer per claim. 2014: No marks were provided for dependent claims that did not provide a realistic prospect of recovering an independent claim that lacks novelty and/or inventive step. For example, no marks were awarded for [certain features] as there were plenty of far more important features to claim. Study the drawings very carefully to check if there are any features that aren’t in the written description of the client’s product but are shown in the drawings. This quite often happens in FD2.

3.1 Omnibus claim Omnibus claims claim the invention with reference to the drawings. When the first edition of this guide was released, marks were available for omnibus claims. However, changes to the UK Patent Rules that came into effect on 6 April 2017 meant that it would no longer be allowable to include omnibus claims in UK patent applications, unless the technical features of the invention couldn’t otherwise be clearly and concisely defined using words, a mathematical

Drafting of Specifications

3. Dependent claims and omnibus claims or chemical formula or any other written means. It seems unthinkable that an omnibus claim would ever be expected in FD2 given these requirements. A comment on omnibus claims from the 2017 ER is included below for completeness: ‘No marks were awarded for omnibus claims, in keeping with the law change, although a surprising number of candidates included such claims.’ That’s about it on dependent and omnibus claims.

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4. Everything else

his is where you can pick up some easy marks and where you need to know what the examiners are looking for to pick up the harder marks. These marks really can mean the difference between passing and failing, especially given the changes to the distribution of marks to the different parts of the answer in recent years. Even if your claims score high marks, you might still struggle to pass if you don’t pick up a good number of marks here, especially if you don’t save enough time for it. To quote some advice from the first edition of this guide: ‘Some candidates seem to spend all their time on the claims and then throw anything on to the paper for the rest.’ Indeed, the 2009 ER emphasises the importance of the description and good time management: ‘Some candidates produced acceptable claims, but scored poorly on the description, in some case through lack of time. Candidates should apportion their time with the marking schedule in mind.’ I’m going to introduce each of these requirements with an extract from an older ER and then provide some of my own thoughts, along with extracts from more recent ERs where appropriate. I’ll also indicate the number of marks awarded for meeting each of these requirements in the 2009 and 2022 papers so you can see how the distribution of marks for these parts has, or hasn’t changed, over that time period. Please bear in mind though that the mark distribution can change significantly year on year, for example based on specific challenges of particular papers:

4.1 Title of Application (2009, 2022: 1 Mark) and Field of the Invention (2009, 2022: 1 Mark) ‘The body of the specification should start with a title (Rule 12(4)&(6)). The title ought not to be narrower in scope than the independent claims. The introductory portion of the description ought to explain the field of the invention sufficiently to assist the search examiner in determining the technical classification. Again, the field of the invention ought not to be narrower in scope than the subject matter of the independent claim(s).’ The title is the preamble of your independent claim(s). If claim 1 starts ‘A tin opener’, a suitable title is ‘A Tin Opener’ or ‘Tin Opener’. If claim 1 is an apparatus claim starting ‘Apparatus for

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4. Everything else heating frozen food’ and you also have an independent method claim starting ‘A method for heating frozen food’, a suitable title would be something like ‘Apparatus and Method for heating Frozen Food’. To clarify, if, for example, you have claims to an apparatus for X and one or more method claims, they should be reflected in the title; not just ‘apparatus for X’. ‘Apparatus for X’ would be narrower in scope than the independent claims and would give

nothing to the client but needless objection from the IPO. Some pertinent extracts on the title from recent ERs are now provided:

2017: A concise title related to what has been claimed as the invention… is expected. 2015: Candidates are cautioned against disclosing the invention in the title. 2014: The occasional candidate provides a narrow and highly descriptive title or a statement of field that fails to mention the field. After the title comes the field. You don’t have to include a heading (such as ‘Field’, ‘Technical Field’ or ‘Field of the Invention’) for the field, but I personally find it easier to review answers to FD2 papers when headings are present. Either way, you need to explain the field in which the invention lies. This could be done in the form: ‘The [present] invention relates to [preamble of claims]’. So, an example would be: ‘The [present] invention relates to a tin opener’, or ‘The [present] invention relates to an apparatus and method for heating frozen food’

Another possibility is to introduce the field with the wording: ‘This invention relates to…’. At the time of writing the first edition of this guide, it seemed that a field including just the content above was sufficient to secure the applicable mark. However, the FD2 Examiners now expect more than merely reciting the preamble. See, for example, the 2017 ER: 2017: The field of invention should not be a mere recitation of an overly detailed title, or indeed, just the title itself. One way to do this may be to ‘embellish’ the wording above with more details of the field, making sure you don’t suggest that the independent claims are limited to such an ‘embellishment’ if they aren’t. The embellishment could be introduced by wording such as ‘More particularly, but not exclusively…’. Suppose, that the main embodiment of the apparatus for heating frozen food is a pizza oven adapted to heat and cook a frozen pizza, but that this isn’t a limitation in the independent claims. The embellishment could indicate something like: ‘More particularly, but not exclusively, the present invention relates to a pizza oven for

Drafting of Specifications

4. Everything else heating and cooking a frozen pizza and to a method for heating and cooking a frozen pizza in a pizza oven’.

Remember, though, that in the same way that the title shouldn’t disclose the invention itself, the field also shouldn’t disclose the invention. See, for example, the 2021 ER (emphasis retained): 2021: Candidates are reminded that the statement of field should set out the technical field of the invention rather than a description of the invention per se.

4.2 Background / prior art (2009: 3 Marks, 2022: 2 Marks) ‘The introductory portion of the description ought to acknowledge the known and relevant prior art and set the scene for the invention.’ Again, you don’t need a title for this, but a title such as ‘Background’ can help the reader see that you’ve moved on from the field to the background section. Just describe the relevant background art here. Art isn’t relevant if it’s in a completely different field, or is concerned with a completely different problem. Sometimes, although this doesn’t always work, I look at the preamble of my claim, e.g. ‘a tin opener’ because this should be consistent with the field of the invention. If something’s in a different field to the invention, it is unlikely to be relevant. Then, look at the prior art. If the prior art was, say, a circular saw, you may not need to discuss it even if it looks similar to the cutter on a tin opener and you could conceivably open a tin with it. Also, don’t describe how you can use a flat-head screwdriver to prise open a tin of paint if we’re talking about opening tins of food with completely different lids, because it’s a different problem altogether. Nor is there a need to tell the examiner, a skilled person or a Judge, that tins of food contain food and have lids that need to be opened to enable you to get at the contents. You definitely don’t need to say that a tin opener is a device which is used to open tins! Again, think about what you’re writing. Be careful how you describe problems with the prior art, because the invention can be made to seem obvious if you give too much of a steer towards the invention. Just set the scene and tell a story. Keep in mind the EPO’s problem-and-solution approach, as it can help frame the problem, but make sure you don’t present the prior art in such a way as to ‘dumb-down’ the invention. For example, which of these makes an electric tin opener sound more inventive over a mechanical one: It can be quite tricky to use a conventional mechanical tin opener to open a tin quickly, reliably and safely.

or It can be very tiring for some people, particularly the elderly and/or infirm, to open

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4. Everything else tins because of the amount of physical strength and energy it takes to open the tin. It

would be good if there were some way to open the tin automatically without the users having to exert themselves too much physically.

Don’t invent ridiculous problems with the prior art and certainly don’t be too critical of it. It’s not ‘nearly impossible’ to open a tin with a manual tin opener, but it can be quite tiresome. In the exam, if the client says they’ve improved upon one of their own products, remember not to be too disparaging of their earlier product. Some people apparently copy out the background section from the FD2 paper almost verbatim, which limits the marks that can be awarded. This was emphasised in the 2022 ERs: ‘Simply copying and pasting will not generally suffice. Even with as short a disclosure as this one, the disclosure will likely need some re-ordering and thought. Most candidates had little difficulty in largely copying the explanation of the prior art, and methods used. It is also useful to set out the problems that will be addressed, to leave the reader under no illusion as to what the aim of the claims will be.’ Remember that what you’re doing is describing the prior art given in the paper. You shouldn’t merely copy what the client’s written without showing that you’ve understood why it’s relevant. Of course, you wouldn’t want to say ‘I found this’ and ‘it seemed to me that…’ or ‘the prior art is rubbish because…’, even if that’s how the client describes it in their letter. This part’s trickier than getting the title and field of the invention right, but it still shouldn’t be too hard. Here are some pertinent extracts on the background section from recent ERs: 2021: The majority of candidates achieved good marks for this section, possibly because all the information required was provided in the client letter: candidates were invited to cut and paste from the client letter, and many included additional comment which was duly rewarded. If text was wholly cut and pasted, it may not have made sense and so some adjustment was expected. For example, the client frequently stated “I” when explaining what had been done. 2020: The reason for the introduction and background section in a patent specification is to set the scene against which the invention has been devised. As a result, some appreciation and discussion of the drawbacks and pitfalls of the prior art is expected. A simple cut and paste of the information provided in the client letter is usually not sufficient to achieve all the marks available in this section. 2019: Candidates should bear in mind the typical mark allocation when describing the prior art and the purpose of the section – one only needs to go into extensive detail if the prior art should be pertinent to understanding the invention and its differences.

Drafting of Specifications

4. Everything else 2018: This section was generally done well, not least because the information provided in the paper was obvious. Marks were awarded for a clear description of the prior art whether provided in the introduction or the specific description. 2016: The paper provided a lot of background information, mainly to assist candidates who do not deal with mechanical inventions on a day-to-day basis, and candidates were credited for using all or a credible selection of the information provided. A description of at least [a particular Figure] (which showed the prior art) was also expected in this part of the specification. 2015: Some candidates wrote a handbook on [background technology] but yet the [paper] stated that [the background technology] has been around for 35 years and is well known. Most candidates set out the problems of the given prior art quite well but it is important not to depart from the [paper]. 2014: The prior art section is supposed to be scene-setting which makes the case for there being an invention. This is sometimes missed with text from the paper simply regurgitated with little thought.

4.3 Statements of invention and advantage (2009: 3 Marks, 2022: 19 Marks) ‘It was expected that the description should then include a summary of the invention, which provides some justification for the chosen claims including, to a general extent, the dependent claims. This justification may include an indication of any benefits or advantages provided by the independent and dependent claims. Care should be taken to distinguish between the use of the terms “the invention”, “aspects of the invention”, “preferred features” and “embodiments of the invention”. Notwithstanding the obvious benefits to the client of setting out a cogent introduction and summary of invention, which provides an initial justification/arguments in favour of the novelty and inventive step of the drafted claims, for the purposes of the examination this section is particularly helpful to the examiners when reviewing the drafted claims, particularly where unexpected wording is used. Although this examination paper is drafted with a particular result in mind, the examiners acknowledge that other solutions sometimes arise unexpectedly; a well-constructed introduction may well prove invaluable in those circumstances. Also, candidates would continue to be well advised to carefully review their arguments set out in the introduction against their drafted claims and summary of invention section to ensure that they are consistent. This may be useful to candidates as an internal check to help ensure that they do not fall into the trap of failing to claim what they clearly understood the invention to be.’ [Emphasis added.]

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4. Everything else Before going into detail on how you should structure this section, I’d like to highlight the enormous change in marks awarded for this section between the 2009 paper (3 marks) and the 2022 paper (19 marks). The 19 marks allocated for the 2022 paper are not an anomaly amongst recent papers, with the marks given for this section in the previous seven years having been 14 marks (2021), 20 marks (2020), 16 marks (2019), 18 mark (2018), 26 marks (2017), 10 marks (2016) and 15 marks (2015). Returning now to the structure of this section, suppose the claims are: 1. A tin opener having an electrical energy source. 2. A tin opener according to claim 1, wherein the electrical energy source is a battery. For the exam, your statements of invention and advantage could be set out as follows: According to a first aspect of the invention, there is provided a [insert preamble of claim 1] according to claim 1. [Then explain what the advantage of claim 1 is]

According to a first aspect of the invention, there is provided a tin opener according to claim 1. The electrical energy source means that less physical energy is required on the user’s part to open the tin.

or According to a first aspect of the invention, there is provided a [copy claim 1 from the preamble onwards]. [Then explain what the advantage of claim 1 is]

According to a first aspect of the invention, there is provided a tin opener having an

electrical energy source. The electrical energy source means that less physical energy is required on the user’s part to open the tin.

It doesn’t matter which of these variants you use. The UK Intellectual Property Office promotes use of the first, shorthand variant (which they call ‘compact consistory clauses’) in their Code of Practice and it does cut down on page numbers and translation costs. However, I know of a situation (not my own, fortunately) in which a specification was filed with the compact clauses, but around half of the pages of the claims were accidentally not filed. It’s a lot harder to argue that the missing claims are supported based on the drawings and specific description where compact consistory clauses are used than where the full statements of invention had been present. However, if you’re using the compact form, please bear in mind the following on referring to claim numbers from the 2009 ER:

Drafting of Specifications

4. Everything else ‘Quite a few candidates are resorting to a preamble which just refers to claim numbers. Whilst this is acceptable and might save time, candidates should be careful to ensure that this brevity does not lead to inadequate supporting discussion.’ Whichever variant you choose, the wording you use must be comprehensible and understandable to the FD2 examiners. Don’t leave thinking about how you’ll word this part of the answer until the day of the exam. Practising this wording in advance would help, as would sense-checking the wording you’re proposing to use with at least one other person. For the dependent claims, either: Preferably, [then take the wording from your first dependent claim]. [Then explain what the advantage of this feature is]

Preferably, the electrical energy source is a battery. Batteries allow the tin opener

to be highly portable and manoeuvrable, as compared to being mains-powered and tethered to a socket.

or [Use a conditional wording adaptation of your first dependent claim]. [Then explain what the advantage of this feature is]

The electrical energy source may be a battery. Batteries allow the tin opener to be

highly portable and manoeuvrable, as compared to being mains-powered and tethered to a socket.

You then repeat this for all dependent claims. This is extremely important given the huge number of marks available for this section. When you hit the next independent claim, you’re claiming another aspect of the invention. For example, you might be claiming a method instead of an apparatus, a transmitter instead of a receiver, etc. Thus, you use the following wording or the second alternative wording above: According to a second aspect of the invention, there is provided a [insert preamble of second independent claim] according to [number of second independent claim]. [Then explain what the advantage of that independent claim is]

CIPA STUDY GUIDE TO FD2

4. Everything else According to a second aspect of the invention, there is provided a method of opening a tin according to claim 8. This method is particularly effective since the user can rely on the electrical energy source and need not over-exert themselves physically to open the can.

Having read (literally) hundreds of answers to FD2 papers since being involved in tutoring candidates for the exam, I’ve noticed several main areas where I feel improvements can be made around how advantages are described. The first’s where the indicated ‘advantage’ merely paraphrases the feature of the claim to which it relates. Using the above example, the advantage of a battery-powered tin opener isn’t that ‘a tin opener with a battery can thereby be provided’. The second’s where a very generic ‘advantage’ is mentioned. Using the above example again, the advantage of a battery-powered tin opener isn’t that ‘a tin opener with a convenient power source can be provided’. The third’s where an indicated advantage is unsupported by the information in the question paper and is of a dubious, doubtful or unproven nature. Again, using the above example, I’d be hesitant to assert that the advantage of a battery-powered tin opener is ‘cheaper’, ‘easier’, ‘quicker’, ‘more environmentally friendly’, etc to manufacture absent some supporting information from the client. It may be necessary to exercise some creativity when setting out advantages, but judgment’s certainly needed on that front. Here are some pertinent extracts from recent ERs: 2022: [Candidates] that expanded on the claim features and advantages in the statements of invention section gained the most marks. Such advantages are almost always noted (somewhere) by a client to save candidates risking using their own, personal knowledge or assumption. 2022: Candidates are not expected to have specific subject matter knowledge, and they are not penalised for not being familiar with it. Unless there are remarkably obvious advantages to a feature being included, it is reasonable to expect them to be set out, even if, per the materials explained above, on occasion they can appear trite, and such explanations may well be disbursed about the client letter. 2022: Candidates should certainly be prepared to spend time explaining complex claims. Most candidates appreciated this, scoring well as a result. 2021: It was pleasing to see an improvement in statements of invention this year, possibly because much information was provided in the client letter. There were many more claim features than marks awarded for this section and so Examiners awarded marks for the most pertinent features, as well as those that had particularly well drafted statements of invention. 2021: It was also good to see the occasional explanation for a particular chosen scope of independent claims.

Drafting of Specifications

4. Everything else 2021: There has been a rise in the use of “In some embodiments ...” to introduce a feature, and candidates are advised to be careful about the circumstances in which such a preamble is used as it is not always appropriate. 2020: The purpose of statements of invention is to provide a credible basis for inventive step arguments. Therefore, simple regurgitation of claim language is not sufficient. As with previous years, the examiners were looking for a link between the statements of invention and the claims to ascertain why a candidate has selected to claim such a feature. In this way, the candidate is able to demonstrate their understanding of drafting, as well as the invention. If there is no underlying or credible reason as to why a feature is included, candidates should question why the feature is being claimed. There are, occasionally, some wonderfully creative advantages for features which are appreciated and duly rewarded. 2019: Statements of invention were tackled better than in previous years, possibly because the features were straightforward and the client’s letter provided a lot of the information required. Some of the features … did not have significant explanation for their benefit, meaning candidates had to think if they could explain why they were included. 2019: A disappointingly large number of candidates simply repeated the claim wording without making a proper statement of invention. As clearly shown in mark schemes for previous years, marks are awarded for stating both what a feature does and the associated advantage. 2018: Candidates again struggled on the statements of invention which are almost as important as the claims. Throw-away statements such as a features being ‘cheap and easy to produce’ garner no marks because if that feature needs to be added to Claim 1, it would serve no apparent purpose to overcome novelty and/or inventive step. 2018: The purpose of the statements of invention is to provide support for a particular feature in the event that it is included in an independent claim to impart novelty/ inventive step to that claim. As a result, candidates are expected to consider why a feature should and could be important to the invention. No marks are awarded for simply listing the claimed features. 2017: Candidates are, yet again, reminded that the role of the statements of invention is to provide support for inventive step arguments during prosecution. Simple recitation of claim features is a waste of a candidate’s time and attracts no marks. In marking, the Examiner are looking to see whether the candidate has a) understood the invention and b) understood the reason for the inclusion of particular features. 2017: Marks are awarded for what the feature does and why it is advantageous. Some very obvious assistance was provided in the paper.

CIPA STUDY GUIDE TO FD2

4. Everything else 2016: Candidates are reminded that the role of the statements of invention is to provide support for inventive step arguments during prosecution. As a result, marks are awarded for providing a) a description of what the claimed features does and b) a credible explanation of why the inclusion of such a feature is advantageous. Many candidates seem to struggle to explain why the addition of an optional feature is advantageous: marks are not given for vague statements such as ‘it is cheap to manufacture’ because such a statement is unlikely to support an inventive step argument during prosecution. If no credible advantage is available, inclusion of the feature should be questioned. 2016: Statements of invention to provide basis for other possible and plausible independent claims (e.g. method claims) were awarded bonus marks. 2015: On the whole candidates provided a reason why a feature was claimed. Because the statements of invention provided support for inventive step amendments during prosecution, the Examiners look for an explanation of what the feature does and why it is an advantage in order to award full marks. 2015: Candidates should question their inclusion of a feature if only a facile ‘advantage’ can be provided. Because of the limit on claim numbers in this year’s paper, really good candidates included claim language to provide basis for features that were not in the claims set but could be introduced later or in a divisional application. 2014: Candidates are reminded that the statements of invention are an important part of a specification, as reflected by the number of marks available. This is because an inventive step argument may succeed or fail based on information provided in this section. 2014: Good candidates craft a narrative that tells a story and provides sensible reasons for the inclusion of a feature. A poor answer is usually repetitive and formulaic with little apparent thought for reason behind the statements. Candidates are cautioned about including critical features in this section that then fail to appear in Claim 1.

Drafting of Specifications

4. Everything else

4.4 List of figures (2009: 2 Marks, 2022: 2 Marks) ‘A list of figures ought to be provided (Rule 12(7)). Candidates are reminded that the drawings generally show embodiments of the invention and ought to be described as such. Consistent reference numerals ought to be used in the description and different drawings when referring to the same feature.’ You might want to introduce the drawings with something along the following lines: [Preferred embodiments of ] The [present] invention will now be described, by way of example only, with reference to the accompanying drawings, in which:

or The above and other aspects of the [present] invention will now be described, by way of example only, with reference to the accompanying drawings, in which:

There is absolutely no reason why you can’t learn one of these, or your own way of introducing the drawings, by heart. I certainly did, and it was one less thing to worry about in the exam. Again, do sense-check the wording you’re planning to use with at least one other person. In the same way as the description of the prior art discussed above under heading 4.3, there’s not a lot of point including drawings of prior art that aren’t relevant to the invention or something that’s so well known, no one would need to see a drawing of it. However, you should consider on a case-by-case basis whether any drawings of the prior art should be included. The following ER extracts, which relate to use of information provided by the client, may appear contradictory at first glance, but the common message seems to be to use as much client information as is necessary: 2016: In practice, one is advised to use as much of the information provided by a client as possible. It is suggested that exam candidates should do likewise, although there are no penalties for omission of some figures if this does not detract from the description of the invention. 2014: Candidates are expected to use all the figures provided. Candidates who elect to ignore information provided by the ‘client’ run a risk of providing inadequate protection. You then need to explain what the Figures show. It’s very important that you describe the views correctly. Don’t merely say ‘Figure 1 shows a view of a [product]’; the FD2 Examiners

CIPA STUDY GUIDE TO FD2

4. Everything else know that the figure shows a view, but need to see that you’ve explained what type of view is shown. The following (non-exhaustive) explanations might be useful, especially to those who don’t draft mechanical patents in practice. It’s not a bad idea to make a crib sheet of any terms that you’re likely to use with an explanation of what they actually mean and learn them: • • • • • •

Figure X is a front view of Y = an orthogonal front view of Y Figure X is a side view of Y = an orthogonal side view of Y Figure X is a plan view of Y = Y from above;

Figure X is an underneath view of Y = Y from below;

Figure X is a perspective view of Y = shows the perspective of Y, usually at an angle;

Figure X is an exploded view of Y = components of Y are shown disassembled, that is,

away from their natural position; • Figure X is a sectional view of Y along the line A-A’ of Figure Z = imagine chopping Y along the line A-A’ and this is what you’d see. It’s kind to the reader to put arrows pointing at right angles from the ends section line to show which of the two chopped parts of Figure Z you’re viewing in Figure X; • Figure X is a part-sectional view of Y = some of it’s shown in section, some of it isn’t; • Figure X shows Y being [insert method step] = might be useful; and • Figure X is a part-cutaway view of Y = part of Y is effectively transparent.

Some people prefer to say, for example, ‘Figure 1 is a side view of an embodiment of a Y in accordance with the present invention’ to emphasise that what’s shown is merely one embodiment of the invention and not the only way of realising it. It can sometimes be useful to refer to one Figure when describing another. For example: Figure 4 is a perspective view of the engine shown in Figure 3.

You might also wish to add that:

In the drawings, like parts are denoted by like reference numerals.

A pertinent extract on figure descriptions from the 2014 ER: ‘Figure descriptions continue to fox many candidates. There were no tricks in this paper but candidates were expected to know how to identify plan, cross-section and exploded views. The figures showed two different embodiments of the hoop and so different numbering was expected for each embodiment.’

Drafting of Specifications

4. Everything else

4.5 Labelling the figures (2009: 2 Marks, 2022: 1 Mark) There are only a few things to remember here. Each page of figures needs to be numbered in the form ‘1/2’, ‘2/4’. Each figure also needs to be numbered in the form ‘Fig. 1 (Prior Art)’, ‘Fig. 2’, ‘Fig. 3’, etc. Also make sure that your leading lines start and terminate as close as possible to their respective reference number and the corresponding feature. A ‘squiggle’ somewhere between the two might not get you all the marks and is quite difficult to follow in practice. You could always use a ruler to draw the leading lines if annotating the drawings by hand and you have time. A pertinent extract on leading lines from the 2015 ER: ‘When describing the drawings, candidates should have some idea of the international convention on patent drawings. A line from a reference numeral indicates an element. An arrow indicates an assembly. If it is desired to reference an element on the actual element, the reference numeral should be underlined.’ These marks are really easy to get if you remember to do them; don’t miss out on these very ‘cheap’ marks through weak figure labelling. It could be good to get into the routine of labelling the pages and figures when you start working on them. A pertinent extract from the 2021 ER: ‘Unless directed otherwise or it clearly makes no sense to do so, candidates are advised to use all the figures provided and also to take care when labelling. Candidates do need to know the difference between reference lines with and without an arrowhead. Both were provided in the paper to test this knowledge’.

4.6 Specific description (2009: 18 Marks, 2022: 14 Marks) ‘The body of the specification should continue with the description (Rule 12(4)). The specific description setting out the structure of the apparatus in some detail, followed by its mode of operation, was looked for, with variations or other embodiments described separately and subsequently and in as much detail as possible. Again, candidates are reminded that the specific description generally describes embodiments of the invention and the wording of the text should therefore reflect this. The use of the word “preferably” in the specific description can lead to doubt as to whether the feature being referred to is actually a part of the particular embodiment being described. “Preferred features’ should be set out in the introduction /summary of the invention and the dependent claims.”’ Something mentioned as a ‘preferred feature’ in the description of an embodiment isn’t necessarily separable from the other elements of that embodiment. Hence, in practice, it might

CIPA STUDY GUIDE TO FD2

4. Everything else not be possible to pluck that feature on its own from the specific description when seeking to amend claim 1. ‘Candidates are reminded that a purpose of the description is to satisfy section 14(3) and to ensure that the application does not fall foul of section 72(1)I. It would be advisable, therefore, that all the claimed features are clearly disclosed and that the terminology of the claims can be followed through to the specific description. For simple mechanical cases, at least, one test of a specific description is whether it can be understood without the drawings. Some candidates did little other than refer to the drawings. Perhaps less-practised candidates opening their specific description with the words “Figure 1 shows…” lead themselves into the trap of a description which relies too heavily on looking at the drawings.’ The 2008 marking scheme explains what’s required for the specific description as: ‘Sufficient in detail to provide enabling disclosure of claims, provide back-up positions for all features, especially if not claimed.’

4.6.1 Purpose of the specific description The specific description should describe what is in an embodiment, for example with reference to the drawings; not what might or could be a feature of that embodiment. The following advice from the first edition of this guide is echoed: ‘Specific description: Do not say ‘preferably’. Describe what is there, then add in any variations mentioned by the client as modifications/other embodiments. It should be possible to read and understand the specific description without looking at the drawings, which means that candidates must do more than simply copy out what the client has said. Taking 2008… some candidates did little more than say the device is as shown in the drawings.’ If you look through some of the ERs, especially older ones, they promote using the tried-andtested drafting method of: apparatus, use, alternatives: 2006, 2005: In the specific description, the time-honoured strict setting out of the structure of the apparatus in some detail, followed by its mode of operation, was looked for, with all alternative embodiments described separately and subsequently and also in detail. This is repeated in the 2022 ER: ‘Generally speaking the Examiners are looking for the function, structure, operation and alternatives to be made clear’.

Drafting of Specifications

4. Everything else See also the 2021 ER: ‘Candidates are reminded that marks are awarded for a specific description that specifically describes the embodiments and methods’. This means that you start by describing what the thing is in terms of its physical and/ or functional features. You wouldn’t say the following in the specific (clue in the name!) description: The tin opener preferably has a battery, although it might have X, Y, or Z instead and, of course, could instead of opening tins be used to open…

Describe the particular embodiment shown in the figure to which you’re referring. I think this is good practice in real life too. Sometimes you read specifications that have so many alternatives in the first few pages, you forget what the overall apparatus is as you’re trying to remember that the upper surface may be flat, ribbed, convex or concave and there might not even be an upper surface, and that the bottom surface may or may not be…

4.6.2 Describing the figures From the 2006 ER: ‘It would be advisable that all the claimed features are clearly disclosed. It is good sign if the specific description can be understood without looking at the drawings. Consistent reference numerals should to be used in the description and different drawings when referring to the same feature.’ See also the 2021 ER: ‘Relational information to provide a visual image of a device is required, not a simple list of features, so that interpretation may be derived from the specific description rather than the drawings’. Please do remember, however, that although the reader shouldn’t need to look at the drawings to understand the specific description, it’s very likely that you’ll need to describe features that aren’t shown in the drawings. I reproduce an extract from the 2009 ER on the required level of detail: ‘Some candidates did little other than refer to the drawings. Perhaps less practised candidates opening their specific description with the words “Figure 1 shows…” lead themselves into the trap of a description which relies too heavily on looking at the drawings.’

CIPA STUDY GUIDE TO FD2

4. Everything else I usually introduce the first figure I’m going to describe with something like: Figure 1 shows an electric tin opener 1 having…

Some people prefer the following wording: Referring to Figure 1, there is shown a tin opener 1 having…

I don’t think it really matters which of these you use, or if you use something similar, but the reason I prefer the first one is that it makes life a lot easier if you have to scan back through the specific description searching for the description of a particular figure (in the exam or several years down the line in real life) if the word ‘Figure’ appears at the start of a paragraph.

4.6.3 Assigning reference numerals You might want to start reference numerals at 10, for example, to avoid confusion with figure numbers. Also, a common technique is to use even numbers only initially, allowing you to adopt an intervening odd number if you find that you’ve forgotten to label a part to which you’ve referred in the description. Regions of a part might be given suffixes. All parts and regions to which you refer should have a reference number. For example: ‘a handle 24 has an aperture 26 at one end 28 [or 24a, if you prefer]’. Another technique is to start at a number higher than the number of figures, say ten, work up to 15 and then jump to 20 and work up to 25, etc (e.g. 10, 11, 12, 13, 14, 15, 20, 21, …). This gives you the 6-9s if you need them. Remember that like features in each embodiment should be given the same reference signs. So, for example, if Figure 1 shows something from above and Figure 2 shows the same thing from below, that thing should be given the same reference sign for both Figures 1 and 2. When you move on to a figure showing another embodiment, you can then move to new reference numerals. If you want to emphasise the similarities and differences compared to previous embodiments, you can use the same references throughout for parts/features in common and different references for parts/features which differ between the various embodiments. Some practitioners prefer not to have exact correspondence between the reference numerals for the same or functionally equivalent part in different embodiments. For example, you could add 100 each time to the reference number of the part in the first embodiment to provide the reference number to the same or functionally equivalent part in the second and further embodiments, so e.g. ‘part 34’ in the first embodiment, ‘part 134’ in the second embodiment, ‘part 234’ in the third, and so on. One tip for keeping track of reference numerals and their corresponding feature is to create a rough ‘dictionary’ of reference signs and features, although this should not be handed in with your answer in the exam. This might look something like: Ref #

Feature

Blade

Handle

Drafting of Specifications

4. Everything else 14

Pivot

…

Remember that you should include reference numerals in the specific description, but they’re not to be placed in parentheses. The only exception to this is, perhaps, if you’re currently describing one figure and need to refer to a feature shown in another figure. In this case, you might want to put something like: Figure 4 shows a pen 40 which is almost identical to the pen 10 of Figure 1, except that the helical spring (14: Fig. 1) is replaced with a leaf spring 46.

4.6.4 Describing the product and its use Try to use natural language as much as possible in the specific description. There’s no need to use overly legalese language when natural language will suffice. It reminds me of an actual email I saw that was sent to a landlord complaining that ‘there was an odour somewhat reminiscent of natural gas that was emanating from around the boiler’ and was ‘more than slightly detectible by the human nose’. Surely ‘the boiler seems to be leaking gas’ would’ve been fine. The point is that there’s a temptation to use vague and waffly language in the specific description, whereas conciseness and precision are more useful. Then, once you’ve described what the thing is, explain how it’s used. Again, this should be a specific mode of operation, rather than all of the possibilities lumped in together. I usually start this part very simply with the words: In use,…

You then need to explain how the apparatus works, i.e. how the end-user operates it, how it’s used to manufacture something or whatever else might be necessary. Then, you can explain any alternatives or modifications that are relevant to that embodiment. If there are only a handful of alternatives in the whole paper, I’d be tempted to leave them until the end of the specific description (see below). Then, you repeat the ‘apparatus, use, alternatives’ approach as appropriate for any other embodiments. Once you‘ve described everything, you can then explain that, although you’ve described something specific, other modifications are within the terms of the claims. You could introduce the modifications using the following wording:

Various modifications will be apparent to those skilled in the art. For example, instead of the upper surface being flat, it may be ribbed, convex or concave…

CIPA STUDY GUIDE TO FD2

4. Everything else If you’re not going to be listing any alternatives or modifications, such a boilerplate clause seems superfluous.

4.7.5 ER Extracts Extracts from recent ERs relating to the specific description are reproduced below: 2022: Higher marks were obtained for the specific description section by candidates who provided a detailed and clear description of the structure of the various embodiments and then explained in detail how they were used. Significantly fewer marks were obtained when large blocks of text were simply cut and pasted from the client’s letter with little extra thought. 2022: This year several candidates appeared to spend very little time on this whole section. That was a surprise given the brevity of disclosure, as large amounts of the description can be gleaned from having spent time understanding how the invention works and what those dependent claims are. If the answer provided is significantly lacking in this area, few marks can be awarded, and the candidate risks not achieving a pass. 2021: The Examiners were aware that there was more text than usual in this paper and so candidates were given specific instructions to cut and paste appropriate passages from the client letter while removing any less formal language. It was pleasing to see that many candidates didn’t simply cut and paste but provided sensible and considered specific descriptions. 2020: The specific description for this paper was predominantly provided in the client letter and was generally tackled adequately. Good candidates described all the features and provided a clear description of the arrangement and workings of one embodiment, followed by highlighting the differences in the other embodiments. 2020: A significant number of candidates still struggle to provide relational information for features, which has the effect of making the specific description hard to interpret and forces reliance on the figures for interpretation, which is not advisable in practice especially since the demise of omnibus claims. 2019: As with previous years, many candidates relied heavily on the drawings rather than actually describing the embodiments. A good description, and one which receives high marks, describes the embodiments in a manner which is supported by the drawings rather than requiring a heavy reliance on what is shown. In this regard, it is good practice, where the embodiments are a product or an apparatus, to describe at least what the embodiment generally relates to, what it is, what component parts are provided, how they are formed (shapes, features), how they are connected, what their functions are and what materials

Drafting of Specifications

4. Everything else would be suitable. Many candidates simply described what the apparatus did and often did not include optional or alternative features. 2018: There was a worrying lack of understanding and care when drafting a specific description with candidates relying heavily on references to the figures without actually describing what they see. Simply stating each feature gains few marks if any: relational information is required to support a description and explain how something is constructed and functions. The figures should merely provide a visual representation to support the specific description. 2017: This section was generally poorly constructed with candidates providing a disorganised description of the product and its methods of use. Information in the paper is necessarily jumbled up to dissuade candidates from cutting and pasting, or copying verbatim, although a surprising number of candidates do just that. 2017: A lot of information was provided in this year’s paper from which candidates were expected to draw a specific description, particularly in view of the lack of figures. As already stated, the figures provided were to illustrate a specific embodiment, a point that was missed by most candidates. Candidates who collated the different snippets of information and organised them into discrete descriptions of the laminate and the methods achieved high marks. 2016: Candidates are reminded that a specific description needs to be specific: description of a feature as ‘possibly having’ or ‘may have’ is not appropriate for this section of the specification. 2014: Such a simple device is often hard to describe and many candidates did indeed struggle, with few narratives including relational detail on the general arrangement of the device. Candidates are reminded that a specific description should be exactly that – a specific description of what is shown in the figures. There should be no references to ‘means’, ‘preferably’, ‘alternatively’ and ‘optionally’. 2014: A good specific description describes the construction of the device in such a way that it is able to stand alone without the drawings being present. This should be followed by the modus operandi of the device and then, and only then, alternative constructions. This was eminently achievable in this paper as evidenced by a few good scripts. Candidates are starting to run out of time and to panic at this point and so text becomes muddled and inconsistent as writing becomes less and less legible.

CIPA STUDY GUIDE TO FD2

5. Abstract

5.1 Abstract (2009: 5 Marks, 2021: 5 Marks) ‘The abstract commences with the title (Rule 15(1)), and then indicates the technical field (Rule 15(3)(a)), the technical explanation of the invention (Rule 15(3)(b)) and the principal use of the invention (Rule 15(3)(c)). The abstract should indicate the figure which should accompany the abstract when published (Rule 15(4)). Where a feature of the invention included in the abstract is illustrated in a drawing, the feature must be followed by the reference for that feature used in that drawing (Rule 15(6)).’ From the 2009 marking scheme, you could get five marks for: ‘Title, tech field, tech explanation, principal use, figure, reference numerals.’ These have to be some of the easiest marks to get in FD2, but the score is sometimes very low; perhaps because candidates aren’t familiar with the requirements for an abstract. Indeed, the low quality or omission of an abstract altogether has historically been a problem, as can be seen from the 2009 ER: ‘Some candidates omitted an Abstract. They cannot gain any points allocated to an Abstract that isn’t there. Too many candidates included the unnecessary phrases “The invention comprises…” or “According to the invention” in their Abstract.’ It appears that the inclusion, and quality, of abstracts has improved in recent years, as suggested by the 2021 ER: ‘As in previous years, abstracts were seen in the majority of scripts and were generally adequately written.’ To repeat, easy marks for the abstract are often missed. Please don’t put yourself into a position where you’re scoring 46 marks for your answer and not including an abstract at all, where four or five marks would have been available for the abstract. Summing up the above, you need the following six components to get full marks, so it’s worth learning them off by heart:

CIPA STUDY GUIDE TO FD2

5. Abstract • • • • • •

Title Technical field Explanation Principal use Figure Reference signs (without brackets in the UK!)

I’ve copied the following from the Manual of Patent Practice, which highlights most of the pitfalls of preparing an abstract: 14.173: The abstract must have a title which encapsulates the invention disclosed in the specification 14.174: The abstract title can be different from the title given to the application on filing. The latter is unlikely to make a suitable abstract title if, as is generally the case, it is expressed in broad terms to avoid disclosure of the invention in the Journal before the application itself is published. If the abstract title is unsuitable (for example if it is too long or too vague) the examiner should amend it. Examples of titles which are regarded as unsuitable are: (a) any title including such expressions as ‘improvements in or relating to’ or ‘and the like’ (b) titles such as ‘chemical compound’ or ‘control circuit’, which give little or no indication of the invention (c) over-long titles which are apparently intended merely to indicate that the specification contains claims in certain categories (process, apparatus, etc), e.g. ‘Gas-permeable seamless pipe structure and method and apparatus for production thereof’, or ‘Method of bleeding a hydraulic system and means therefor’ (d) over-long titles which contain matter, for example relating to possible fields of application of the invention, more properly to be found in the body of the abstract (e) titles including a trade mark. 14.175: The text of the abstract should comply with r.15(2), (3) and (7), which read: (2) The abstract must contain a concise summary of the matter contained in the specification. (3) That summary must include – (a) an indication of the technical field to which the invention belongs; (b) a technical explanation of the invention; (c) the principal use of the invention. (7) The abstract must not contain any statement on the merits or value of the invention or its speculative application.

Drafting of Specifications

5. Abstract 14.182: An abstract should normally contain not more than 150 words, as it is unlikely to be considered to be concise if it extends beyond 150 words. However, if a longer text is considered essential, there is space on the front page which will accompany the published specification for approximately 200 words. Abstracts should therefore contain 200 words at the very most (including any reference numerals). Unnecessary phrases such as ‘the invention relates to’ or ‘and the like’ may be deleted, and an unduly long introductory statement which only indicates what is old and well-known may be curtailed or deleted. While the removal of such superfluous matter is of particular importance when the abstract is longer than 150 words, it may also be deleted even if the abstract is short. 14.183: It is not necessary for the abstract to indicate the kind of protection sought by the claims. Thus, for example if an apparatus has been described in the abstract and the specification includes claims to a method of using the apparatus and/or to an article produced by the apparatus, there is no need for the abstract to indicate this if the technical features of the method and article are implicit in the description of the apparatus. 14.184: The legal phraseology or the sentence structure used in patent claims, should be avoided in abstracts. Thus an abstract that is identical to, or closely resembles, an independent claim should not be filed, nor should an abstract use words commonly associated with patent claims such as ‘said’ and ‘means’. 14.188: Drawings particularly for the abstract are not required and should not be filed. The applicant is required to indicate on the abstract which figure, or, exceptionally, figures of any drawings of the specification should accompany the abstract when published. If they have not done so it is up to the search examiner to decide which figure(s) should be used…. The search examiner may decide that one or more figures other than those suggested by the applicant may be used instead or additionally if they consider that they better characterise the invention. Normally not more than one figure should accompany the abstract. Exceptionally two figures may be used provided that, when sufficiently reduced in size to be accommodated on the front page of the application, they, together with the reference characters thereon, would still be readable. 14.189: It should be clearly apparent from the abstract what the or each accompanying figure represents. To aid identification of features mentioned in the abstract, relevant reference numerals which appear in the selected figure(s) should be freely used in the abstract. Numerals which appear only in other drawings should normally not be used, although exceptionally, a numeral which is considered necessary for an understanding of the abstract but appears only in these other drawings, may be referred to. Such reference should be bracketed, e.g. (29, Fig 16), without any additional wording such as ‘see’ or ‘not shown’. When this expedient is adopted it should be ensured that reference numerals which do appear in the abstract drawing(s) are without brackets.

CIPA STUDY GUIDE TO FD2

5. Abstract An example of a reasonable abstract which would get most of the available five marks could be something like: Electric Tin Opener

An electric tin opener 1 has an internal battery 4 which is used to drive a small motor 2, which in turn causes a cutter 3 automatically to open the lid 7 of a tin 6. The fact that the tin opener 1 is electric obviates the need to expend significant amounts of

physical energy opening the tin 6, which can make opening tins 6 easier for the elderly or infirm.

[Figure 3]

An example of a not-so-good abstract which might only get a mark or two (or possibly none; I’m not certain!) would be something like: Apparatus and Method for Removing the Lid of a Tin-like Object Containing a Food-like Substance

The present invention relates to, but is not limited to, an apparatus (1) for removing the lid (7) of a tin-like object (6) which contains food, a beverage or the like, the

apparatus (1) comprising: motor means (2) driveable by an associated power supply

means (4) and lid-removal means (3) driveable by said motor means (2), whereby the lid-removal means (3) can remove the lid (7) of the tin-like object (6). The apparatus (1) of the present invention is an improvement over the well-known mechanical tin

opener because it is almost impossible to get lids off tins using the latter. The present invention also extends to a method of opening a tin-like object (6) using the abovementioned apparatus (1).

Pertinent extracts from recent ERs relating to the abstract are now provided: 2022: The vast majority of scripts had an Abstract, which remains a positive trend. Where there is no guarantee an abstract will feature in future papers, Candidates are advised to look at previous mark schemes, as there is a pattern to what is being sought, and thus what is rewarded. Easy marks can be gained from ensuring the title is not just the word “Abstract”, and stipulating which of the Figures should be used. In general candidates will be expected to set out the field and/ or main use, and explain the main features in independent claims. This year there was a tendency to stay quiet about any [independent claims in other categories]. Those that did make a reasonable reference to one were duly rewarded. Consistent use of reference numerals is also expected. 2022: The Examiners appreciate this is often the last task done at the end of the exam, but it makes sense for Candidates to just check they have got the basics covered, to ensure they add, for example, the title if they’ve missed it, or add in reference numerals against terms from the Figures, in order to ensure they can achieve as many marks as possible.

Drafting of Specifications

5. Abstract 2021: More marks are awarded for an abstract that provides a broad description of the invention in the context of the technical field, rather than simple regurgitation of Claim 1. 2020: Like last year, abstracts were generally well written and seen in the majority of scripts. The 4 marks available are relatively static from year to year, so it is disappointing when candidates miss the simple things like use of reference numerals which are easilygained marks. However, one point that is generally lacking from many abstracts is an adequate description of the field. Simple recitation of Claim 1 is not sufficient to garner maximum marks. 2019: Abstracts were generally well written and seen in almost all scripts. The four marks available are relatively static from year to year, so it is disappointing when candidates miss the simple things like use of reference numerals which would give easy marks. 2018: On the whole, candidates draft a suitable abstract and most of the marks available for this section are typically awarded. Candidates are reminded to include a statement of the technical field or main use of the invention. 2017: This section was generally well done with candidates providing a title that matched the one given at the top of the specification. Marks were generally lost for failure to include a statement of the field. 2016: This section was generally well done with candidates providing a title that matches the one given at the top of the specification. Marks were generally lost for failure to include a statement of the field and/or reference numerals. The Examiners were pleased to note most candidates did include an abstract this year, which meant there was a chance of getting the marks available. 2014: The abstract is usually well answered by candidates, although rather too often they include the wording ‘according to the present invention....’. 2014: Candidates are reminded that the abstract is for searching purposes and so a little more than simple recitation of Claim 1 is expected. However, a number of candidates included critical features in the abstract that were missing from Claim 1. 2014: Candidates are also reminded that the title should ideally be the same as the title at the beginning of the specification and certainly no narrower.

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6. General 6.1 Notes to the examiner Some pertinent comments on notes to the examiner from the ERs: 2018: There were fewer notes to Examiners to try to justify a poor claim (instead of backing up the claim with a good statement of invention). 2017: Candidates are reminded that they do not need to submit their notes or musings with their answer pages. Notes pages and notated question papers add bulk to the script, which pages are neither considered nor read by the marking examiners. 2014: Some candidates continue to submit Notes to Examiners with their answer in spite of guidance to the contrary. These notes attract no marks and candidates are reminded that their answer should contain everything for which the candidate wishes to obtain marks. 2014: One candidate mentioned an alternative construction in his/her ‘notes’. It would have been wiser simply to include it in his/her answer, including a specific description to the embodiment, provided always that full justice has been given to the inventors’ embodiments. 2008: Notes to the examiner are rarely useful and do not gain marks since they do not form part of the drafted specification on which candidates are being examined. Notes to the Examiner, in effect, demonstrate a candidate who’s not read and understood all of the information in the paper. The Examiners also don’t want rough notes to be handed in; they don’t tell the Examiners anything useful. If you feel the need to explain why you’ve done something to the examiner, you stand a good chance of failing. Your answer should be clear in itself.

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6. General

6.2 Other tips • Plain English is usually quite good enough for claim drafting. • Consider generally avoiding the word ‘said’ in claims. Use ‘the’ instead. ‘Said’ really annoys some people. If, for some reason, you’re referring to something which is not intended to be part of the claimed invention, you might use ‘said’ when referring back to it: A can opener for a can of paint, said can having a lid which is a snap fit inside a rim, the can opener having…

• Does the word ‘predetermined’ really add anything to claims? I often end up with it in a draft claim when I’m trying to avoid explaining how something actually works or can’t really decide how I want to claim it. It’s one of those terms that can look useful, but often does not have a lot of meaning. I sometimes call these words ‘ghost’ words. Other examples that should be considered on a case-by-case basis are ‘automatically’, ‘whereby’, ‘such that’, ‘so that’, ‘given’ and the like. • There are some ‘patentese’ words that can be a bit unnecessary in claims (in my opinion). Some of the words below can be a bit ambiguous in that it’s sometimes not clear to which earlier entity they’re referring. The same goes for any pronoun used in the claims. They can be useful in making the claims more readable but elegance, while desirable, has to take second place to clarity:  Wherein = ‘in which’

 Whereupon = ‘upon which’

 Whereunder (!) = ‘under which’

 Wherebetween (!) = ‘between which’  Therebetween = ‘between them’

 Whereat = ‘at which point/position’  Whereby = ‘so that’ or ‘such that’  Aforementioned = ‘the’

 Above-mentioned = ‘the’  The said = ‘the’

• Remember that method-like steps should not appear in apparatus claims and vice versa. For example, wording such as ‘a tin opener comprising a motor driving a cutter’ is sloppy. Wording such as ‘a tin opener comprising a motor arranged to drive a cutter’ would be better. • I always started each claim on a new page, but this might be a bit excessive. It’s worth having a page for claim 1 itself and leaving a good gap (4+ lines) between the dependent claims though.

Drafting of Specifications

6. General • Remember the repercussive effect. If claim 1 is directed to a car having wheels and claim 2 specifies that ‘the wheels are round’, this implies that claim 1 covers wheels that aren’t round, which could lead to claim 1 covering unworkable embodiments. • Be careful with antecedence in the claims. Only use ‘the’ in the claims to refer back to something that’s already been mentioned earlier in the claim. An exception to this would be something like ‘the larger of variable A and variable B’, where one is always larger than the other. Also, UK drafting style need not be quite as obsessive as US drafting when it comes to inherent features. For example, it’s perfectly acceptable to say ‘the length of the rod’ after having introduced ‘a rod’. It’s unnecessary first to say ‘a rod having a length’.

Good luck in the exams!

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7. Worked example – 2007 FD2 (P3) paper

e roughly know what to do and what not to do for the FD2 exam now. However, actually answering an FD2 paper involves understanding what’s being asked of you in the exam and applying everything we’ve learned so far. Below, we first look at an older FD2 question paper (2007) in detail. FD2 has undoubtedly changed since 2007, especially in the (claim) terminology used in the paper and the distribution of marks, but the core principles still remain the same. Your own practice of newer papers is, however, essential. After looking at the 2007 paper, we’ll work out a possible answer to the paper, section by section. In the exam itself, it’s a good idea firstly to read through the entire paper fully to familiarise yourself with the technology and the terminology (which should provide claim terminology) to get a general overview of what’s expected from you in your answer. It’s then a good idea to read through the paper again carefully, making notes as you go along. You often hear people saying that you need to understand and appreciate the relevance of every word and sentence in the context of the paper. This is certainly the case with FD2. Below, we’re going to look at the 2007 FD2 paper on a paragraph-by-paragraph basis, assuming that we’ve already carefully read the paper a couple of times. By way of little bit of background information, I prepared a ‘draft’ worked example for the 2007 which was very similar to what’s shown below. It was reviewed, for the first edition of this guide, by several FD2 examiners at the time, who proposed a few changes (which I’ll highlight below) to bring it more into line with what they were looking for in the exam. Let’s hope that you’ll benefit from my slight embarrassment of having the examiners revise my example!

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7. Worked example

P3 2007: Mr Buzz’s Beehive Smoker Section 1 – Introduction

You arrive in the office and listen to your answerphone. You have a message from your client, Mr Buzz, who called you from hospital earlier today. His message was as follows: ‘You remember we spoke about my new smoker recently, well there have been some developments. I thought the idea was so good that I arranged an open day today at my beehives to demonstrate it. I seem to remember you saying that I shouldn’t tell anyone about the idea before the patent was filed but it was only some people from the local bee-keeping association and a journalist from the HoneyBee Post who will be publishing his online article on Friday. Anyway, to cut a long story short, I had a slight accident with one of the hives. As a result, I was rushed to hospital in anaphylactic shock and it’s a bit painful to talk at the moment. However, the smoker worked a treat. I sent you details of the invention last Friday. Can you please just get on and file the patent application for me as I’m not going to be able to come into your office or take visitors for a while and I would like to approach a manufacturer as soon as I get out of hospital; it would be helpful if I could tell them that a patent application had already been filed.’

Although this is only the introduction, it does have several significant pieces of information in it. Sometimes, this section includes a description of the prior art or some hint of the invention, although it doesn’t in this instance. The introduction tells us that our client is called Mr Buzz, he has some beehives and he wants us to file an application today because of an imminent disclosure and we can’t check any information with him. He wants us to file an application for his new ‘smoker’ based only on the information he sent us last Friday. He also explains that he’s going to approach a manufacturer soon so we’ll need to make sure that our claims would be useful to a manufacturer (e.g. to enable him to exclude other from manufacturing and selling the new smoker).

Section 2 – Information

You look through your post and find a letter from Mr Buzz, together with sheets detailing his smoker, which read as follows:

Mr Buzz’s idea relates to a ‘smoker’. ‘Smoker’ may be useful claim terminology.

Drafting of Specifications

7. Worked example Section 2.1 – Problem and prior art 1 (CO2)

‘It’s always a bit tricky opening and examining beehives, the bees never seem to get used to it and they can sometimes sting quite ferociously. Some people administer carbon dioxide to the hive, which causes the bees to pass out.’

Mr Buzz tells us that bees quite understandably dislike their beehives being disturbed and often sting the bee-keeper as a result. I expect that this is the general problem that Mr Buzz’s smoker is going to solve, but I don’tknow this yet. It certainly looks like it could be a, or the, problem associated with the prior art. We’re also told, in effect, that it’s known to administer CO2 to make the bees pass out so that they don’t sting the bee-keeper. We accept this as a prior art method of solving the problem. I use the term ‘method’ intentionally. We don’t know what apparatus is used to administer the CO2 at this stage. Section 2.2 – Prior art 2 (generate smoke)

Another popular technique is to try to make the area around the hive smoky. The bees smell the smoke and gorge on honey. This seems to distract them whilst you examine the hive and it is thought that, like humans, they don’t really fancy a fight with a full belly and so the amount of stinging is drastically reduced. The smoke can be made in lots of different ways.

Now we’re told that another prior art way of solving the previously mentioned problem of stopping the bees stinging is generating some smoke around the beehive, again to stop them stinging. All we’re told about the smoke is that it can be made in several ways; we don’t know exactly how. Section 2.3 – Prior art 3 (damp straw)

A technique which I and many other bee-keepers have used for some years is to get a tight bundle of damp straw and use a blow torch to get it lighted. The straw then burns and generates plenty of smoke. You can waft this around and try to blow it into the hive, although you have to watch out for burning embers and, if you get too close, you can burn through your protective veil.

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7. Worked example We’re told that a further prior art way of solving the problem of stopping the bees from stinging is to get a damp bundle of straw, light it and use the lit straw to generate smoke. This sounds like it’s a specific ‘apparatus’ (albeit a primitive one) for generating the smoke mentioned above in prior art 2. However, although the lit straw can generate the smoke to stop the bees from stinging, it produces burning embers which can burn through a bee-keeper’s veil if they get too close to the lit straw when blowing it. This safety issue is a disadvantage associated with the lit straw. Section 3.1 – Client’s product (notice that I’ve used the word ‘product’ rather than ‘invention’)

My smoker makes this process much easier. As you can see from the drawings, the straw or other suitable material, is enclosed within the cylindrical smoker firebox and smoulders inside. The smoker is made of copper and is around 30 cm high.

You’ll see that I’ve changed the section numbering from 2 to 3. This is because the client’s now talking about his new smoker which makes the process of generating the smoke to stop the bees from stinging simpler. The words ‘[my] smoker’ unambiguously tell you that he’s talking about his new smoker rather than anything in the prior art. He’s also told me about some drawings (reproduced below). I’ll refer to them as and when I need them. So what else is he telling us? His new smoker can use straw ‘or other suitable material’. This immediately makes me think that if I decide to specify this in the main claim, I shouldn’t limit the claim to ‘straw’ because this would exclude the other suitable material from the scope of the claims. As a consequence of this, I’m also starting to think whether I’d even want straw in the claim anyway. This is because it’s going to be a consumable of the smoker and I wouldn’t want a competitor to be outside the scope of my client’s claim just by not selling a/the consumable with an otherwise identical smoker. The examiners who reviewed this worked example for the first edition suggested that I point out that, although it could be argued that selling the smoker without the fuel might constitute indirect (or contributory) infringement in the UK, some countries don’t have such provisions. Accordingly, it’s usually preferable to rely on direct infringement wherever possible. In some cases, this might not be possible and you’ll need to rely on contributory infringement where available. A new term ‘cylindrical smoker firebox’ is introduced. As soon as I read this, I think: must the firebox – whatever it is – be cylindrical? Geometric terms can cause pretty serious limitations in claims, so be very careful when you see them: what exactly does the term ‘cylinder’ mean? At this stage, I’m not entirely sure what he means by a ‘firebox’, but an intelligent guess in view of everything that’s gone before in the paper would be some form of box or hollow body that contains fire or, perhaps, the straw or other suitable material. This interpretation seems

Drafting of Specifications

7. Worked example quite likely given that the client says that the straw or other suitable material ‘smoulders inside [the cylindrical smoker firebox]’. A quick glance at FIG. 2 confirms that the firebox is the main hollow body of the smoker. The client tells us that his smoker is made of copper and is around 30cm high. My gut feeling is that neither of these attributes of his smoker is going to turn out to be essential to achieve the advantage associated with his invention, but I can’t be certain yet. If it turns out that these attributes do need to go in an independent claim, I’ll certainly be wondering whether copper could be generalised (and, if so, what to) and why ‘around 30cm’ is such an advantageous height for the smoker (and how I’d deal with the potentially unclear term ‘about’). Section 3.2 – Client’s product (lid)

The hinged lid on top of the firebox forms a chimney which narrows towards the top. This enables the smoke to be concentrated into a narrow plume which can be directed into the hive. The offset chimney facilitates ease of use since the smoker can be held generally upright, whilst the smoke plume exits at an angle. Holding the smoker upright is desirable since otherwise the material in the firebox gets disturbed which reduces the efficiency of the smoker and can cause it to go out.

Right, I’m going to have to keep an eye on FIGs. 1 and 2 to work out exactly what he’s describing. We know that the firebox has a lid. We also know that, in the client’s product, the lid’s hinged. Does the lid have to be hinged or could it be connected to the top of the firebox by some other means? I don’t know how important the lid or the hinged connection is at this stage. The lid has a chimney which narrows, as can be seen in FIGs. 1 and 2. We’re told by the client in the following sentence that this narrowing chimney has an associated advantage of enabling the smoke to be concentrated into a narrow plume which can be directed into the hive. This sounds sensible because if you didn’t have a lid and chimney, the smoke could just drift out the top of the firebox and how would you direct it towards the beehives? He then talks about ‘[the] offset chimney’. He’s not referred to an offset chimney before, but in the light of the drawings, it’s clear that he means that the narrowing chimney is offset somehow. I’ll come back to this in a moment. He also tells us that the advantage of the chimney being offset is that it makes the smoker easier to use. This is because the smoker can be held upright, i.e. in a natural vertical orientation, but the smoke can be directed out of the firebox at an angle. Holding the smoker upright is desirable because if you tilt the smoker, the material in the firebox gets disturbed, which can reduce the efficiency of the smoker or can even cause it to stop producing smoke. This also seems sensible. Returning to the word ‘offset’, I have to confess that in the light of what’s shown in the drawings, the fact that Mr Buzz explained that the smoke leaves ‘at an angle’ and the advantage associated with the chimney being offset, I’d immediately assumed and understood that ‘offset’ meant angled relative to the axis of the firebox.

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7. Worked example However, the examiners who reviewed this worked example for the first edition pointed out that the term ‘offset’ is open to interpretation. It probably means that the axis is either horizontally offset from, but parallel to, the firebox axis or that the chimney is at an angle to the firebox axis. There are, thus, two different possible interpretations of the word ‘offset’. I feel that the second interpretation is more sensible because the client explains that the offset nature of the chimney allows the bee-keeper to hold the smoker upright, but this needs some discussion in the specific description to avoid ambiguity. Since construction or interpretation is examined more heavily in FD4, I refer you to Chapter 4 of Infringement and Validity – CIPA FD4 Study Guide, published in 2019 by CIPA (edited by Philip Barnes, based on an original version by Nigel Frankland), which explains interpretation in more detail. As this stage, Mr Buzz has identified a feature of his new smoker which gives rise to an advantage. Whilst he’s clearly describing a feature that has an associated advantage, is that feature essential to the invention? In other words, can we decide whether or not the form of the chimney is the ‘invention’ that we’re seeking to protect? Mr Buzz has said that the offset chimney facilitates use of the smoker and increases its efficiency, but is this the main advantage that we’re seeking to protect? At this stage, I suggest that the answer is that we can’t be certain. Section 2.4, 2.5 and 3.3 – Client’s product (grate) and some sneaky prior art (garden incinerator/woodburning stove)

As the straw burns, most of the ash falls through the grate at the bottom of the firebox. In this way, the firebox is similar to a garden incinerator of the ‘dustbin’ type, or a conventional woodburning stove; only in the incinerator the grate is open to the air below; the whole thing being raised off the ground on legs. There are additional holes in the sides of the incinerator or at the bottom of the woodburning stove to encourage plenty of airflow. The plentiful airflow reduces smoking to a minimum. The known ‘dustbin’ incinerator has a removable lid with a central, vertical chimney whilst woodburning stoves are provided with a chimney in a variety of orientations to suit the room in which they are fitted.

The firebox has a grate at its lower end through which the ash can fall. Fair enough. The next part of this section of the paper highlights some of the real-life difficulties that you can encounter when drafting applications based on information from clients. Mr Buzz has suddenly thrown in some more prior art in a section of text that initially relates to his new smoker. Notice the words ‘conventional’ and ‘known’. These words make it clear that the known and conventional objects being described are to be taken as prior art [and might even form part of the common general knowledge of a person skilled in the art] over which we must define patentable subject matter. So, we’re told that another piece of prior art is a known (= prior art) dustbin garden incinerator and that yet another piece of prior art is a conventional (= prior art) woodburning stove.

Drafting of Specifications

7. Worked example We’re told that a difference between the client’s firebox and a known incinerator is that, although the incinerator also has a grate through which ash can fall, that grate is open to the air at its lower end and sits on legs. As we can see from FIG. 2, our grate isn’t open to the air below and is spaced from the ground by the lower part of the firebox. Both the known incinerator and the conventional stove have additional holes – at the sides of the incinerator and the bottom of the stove – to encourage airflow and minimize smoking. It looks from FIG. 2 like we might have a hole (called an ‘inlet tube’) in our smoker, but Mr Buzz hasn’t told us anything about this yet. Also, it’s interesting that the holes in the stove and incinerator are said to reduce smoking. That sounds like the opposite of what we’re trying to achieve with our smoker (there’s a clue in the name). The known incinerator has a removable lid with a central vertical chimney. So, this chimney is neither described as being a ‘narrowing’ one nor an ‘offset’ one as is the case with Mr Buzz’s smoker. The lid is said to be removable, so it’s probably not a hinged lid. However, the conventional stoves can have chimneys ‘in a variety of orientations to suit the room in which they are fitted’, which suggests that the chimneys are inclined in some cases. Section 3.4 – Client’s product (cage/shield)

Surrounding the outside of the smoker firebox is a cage or shield (not shown in the sectional view, Fig. 2). The cage can simply be a ‘U’-shaped sheet of metal, although this tends to get quite hot and so I use a strong, typically stainless steel, wire mesh which secures e.g. to the bracket holding the bellows. Even when the firebox gets really hot, the cage is generally cool enough not to cause a severe burn if touched, particularly when wearing gloves.

We’re now told that the smoker has a cage or shield. The cage ‘can’ be a U-shaped sheet of metal. The word ‘can’ ordinarily means that the cage need not be a U-shaped sheet of metal. This strongly suggests that the feature should not be in the independent claim(s), but might be suitable for a dependent claim. Given that the U-shaped sheet can apparently get hot, what would its associated advantage be? I’m not certain that there is one so, at this stage, I’m not sure that it’s going to warrant a dependent claim. Mr Buzz normally uses a strong ‘typically’ stainless steel wire mesh. ‘Typically’ again probably indicates that the wire mesh needn’t be made out of stainless steel. We’re told that the wire mesh is secured to ‘the bracket holding the bellows’. Mr Buzz hasn’t introduced either the bracket or the bellows before, but we can see what he means from FIG. 2. The advantage of having the cage is that even when the firebox reaches a high temperature, the cage isn’t at such a temperature that it would cause a severe burn if touched, e.g. when wearing gloves. So, the advantage of the cage is linked to the safety aspects of operating the smoker.

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7. Worked example Section 3.4 – Client’s product (bellows/fan)

One valve of the bellows attached to the firebox allows air to be sucked in, whilst the other enables the air to be blown out through an air exit hole. The bellows are fitted with a return spring. They can be depressed to cause air to be expelled and then will automatically reinflate ready for subsequent use. There is no particular reason why a mechanical or electrical fan couldn’t be used in preference to the bellows.

The bellows shown in FIGs. 1 and 2 are now introduced. The bellows are said to have an air inlet and an air outlet valve and a return spring which causes the bellows to reinflate automatically after they’ve been depressed. Thus, we’re told of an advantage associated with the return spring. However, we’re also informed that, in fact, bellows per se aren’t essential at all; a mechanical or electrical fan could be used instead and so neither bellows nor a fan should appear explicitly in the main claim. This makes me think more generally that perhaps any form of driven air supply might be suitable. Section 3.5 – Client’s product (air inlet tube)

The amount of ambient air which can enter the firebox is restricted by the air inlet tube, which is the only inlet for the air. This ensures the generation of smoke in a controlled manner by causing the straw to smoulder rather than burn, due to the relatively low amount of oxygen available. The smoker can produce small amounts of smoke from the air provided through the air inlet tube. More smoke can be produced by squeezing the bellows a few times to increase temporarily the amount of oxygen and the flow of air in the firebox. This drives accumulated smoke out of the chimney and also increases smouldering combustion, without producing flame.

So, we have a single air inlet in the form of an ‘air inlet tube’. I’m not sure that I’d want to use the words ‘single’ or ‘only’ in a claim because they’re potentially very limiting. Could a competitor avoid infringement by having a few other very small air inlet tubes? It’s a possibility, so just bear it in mind. The air inlet tube restricts the amount of air entering the firebox so that the straw smoulders rather than burns and produces smoke in a controlled manner. The advantage associated with the air inlet tube is that it controls the generation of smoke. The smoker produces small amounts of smoke from the ambient air surrounding the air inlet tube even when the bellows are not being used. Thus, the bellows, fan or even any kind of driven air supply appears not to be necessary for the smoker to function properly. The bellows

Drafting of Specifications

7. Worked example can be used to increase airflow and thereby to drive smoke out of the chimney and increase smouldering combustion, all without producing a flame. However, this section tells us that the driven air supply isn’t essential and shouldn’t be included in the main independent claim(s). This section tells us how smoke’s produced using a restricted air supply. Section 3.6 – Client’s product (bellows cone, long inlet tube, no inlet tube)

A cone can be fitted to the air exit hole of the bellows. This concentrates and speeds the air emitted. In turn, the air column travels further into the firebox and the column of air draws in additional surrounding air which increases the volume of air delivered. The air exit hole and the air inlet tube need to be aligned to enable air to pass from the bellows into the firebox. A reasonably long air inlet tube oriented horizontally helps to reduce the amount of convected air drawn into the firebox between puffs which helps to control the smouldering. But provided that the firebox inlet hole is not too large, satisfactory results can be obtained even without any tube.

Another apparently optional feature (highlighted by the use of the word ‘can’) is a cone at the air exit hole of the bellows. The purpose of the cone is to concentrate the emitted air in a particular way so that it travels further into the firebox and draws in more surrounding air. The air exit hole and air inlet tube on the firebox ‘need to be’ aligned. What does ‘need to be’ mean in this context? Should this feature be in the main independent claim? Well, we’ve already established that a driven air supply isn’t essential. Thus, the air exit hole is also not essential. If the air exit hole isn’t essential, then it shouldn’t be included in the main independent claim(s) and, thus, neither should the relationship between it and the air inlet tube. The air exit hole isn’t essential to claim 1 because the bellows aren’t essential, but it might be essential to the use of the bellows in real life. Another feature which isn’t explained as being essential is a ‘reasonably long air inlet tube’. A subjective relative term like ‘reasonably’ should jump out if you were thinking of using it verbatim in claim language. I can readily foresee an IPO examiner, a judge or your boss saying that ‘reasonably’ is vague and unclear and I’d tend to agree. In any case, the advantage associated with the reasonably long air inlet tube is that is helps control smouldering. This sounds like a good technical advantage. Particularly in view of the final sentence of that section, the relatively long tube is not essential and that feature could form the basis of a decent dependent claim. The final sentence of that section explains that, in fact, no air inlet tube is required at all as long as the firebox air inlet hole isn’t too large. Although the results are only satisfactory, it still works. We can take from this final sentence that the tube shouldn’t be included in the main independent claim(s).

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7. Worked example Section 3.7 – Client’s product (position of air inlet tube)

If the air inlet tube is located right at the bottom of the firebox, then the airflow can become clogged by ash. If the air inlet tube is located above the grate, then the burning ash is disturbed. Somewhere between these two seems to give the best results.

The air inlet tube, which we know is optional from section 3.6, can be located at the bottom of the firebox, above the grate, or somewhere in between. We’re told of disadvantages associated with the first two positions. From this, we can infer that locating the air inlet tube – when provided – between the base and the grate has the advantage of the tube not becoming clogged by ash while also not disturbing any ash. The specific position of the air inlet tube feature is an ideal candidate for a dependent claim. Section 3.8 – Client’s product (smoker lid and smoker material)

The lid can also be pushed or screwed on but this can make filling the firebox difficult, particularly when the lid is hot and, once removed, the lid is easily lost. If the lid is pushed on, it is held in place by a friction fit and a loop of springy wire can be used to help the lid be removed without burning your fingers. Also, the smoker can be made of steel or another suitable metal.

In section 3.2, we found out that the lid could be hingedly attached to the firebox. Here, we’re told that it could also be a push-fit or a screw-fit. Either way, because the lid can be removed, it can apparently get lost and it can also be trickier to handle because it gets hot. Implicitly, one of the advantages of a hinged lid is that you’re less likely to lose it and you may not have the same concerns about hot lids with a hinged lid. Again, we can see from this section that a hinged lid is not essential and shouldn’t be included in the main independent claim(s) since there alternative lid types. A push-fit lid can be difficult to remove from the smoker because it’s an interference fit – i.e. a fit that relies on the friction between the inside of the lid and the outside of the firebox. However, by using a loop of springy wire, it’s easier to remove the lid. The smoker can be made of steel or any other suitable material. Thus, the main independent claim(s) shouldn’t be limited to a particular material, particularly not to copper which was mentioned at the beginning of the paper.

Drafting of Specifications

7. Worked example Section 3.9 – Client’s product (summary of advantage)

As you can see, using this arrangement, smoke can readily be produced in a safe and controllable manner.’

There’s quite a tendency to skip this final section and not read it. It’s a short sentence and you’ve probably come to a conclusion about what the invention is before you’ve got this far. However, this sentence tells you what the advantage associated with the invention is. From this, you may be able to work out what the invention is, i.e. the minimum necessary to produce smoke in a safe and controllable manner. Sorry for the underlining, but this is important. Section 3.10 – Instructions (what the client wants)

Prepare a full patent specification for filing at the UK Patent Office which will form the basis for the widest practicable protection for your client. Include no more than ten dependent claims in your answer. Marks will be awarded as follows: Introduction, review of prior art and statement of invention – 10% Specific description – 20% Main claim(s) – 40% Other claims – 25% Abstract – 5%

Again, it’s important to read this bit carefully. Do you need to prepare an abstract? Are there limits on the number of (dependent) claims? In this case, you need to prepare all the usual stuff. Note that such a detailed breakdown of the marks for each part of the answer might not be provided now. With reference to section 3.1 of the main part of this guide, make sure you check how many dependent claims the examiners are looking for. In this case, they only want ten dependent claims. There’d no point in including 20 dependent claims because: a) presumably only the first ten will get marked and they may not be your strongest out of the full set of 20; b) I imagine that it does not fill the examiner with confidence that you have read the client’s instructions carefully; and (c) it uses up valuable time. Note again that more recent papers will likely require more than ten dependent claims to achieve high marks for the dependent claims.

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7. Worked example Section 3.11 – Figures

Drafting of Specifications

7. Worked example An essential final part of extracting all of the useful information from the client’s documents is to look through the drawings. Is anything useful disclosed that he hasn’t explained above? It’s really good practice to get used to this. The number of times real-life clients give you a written description of a Figure and then you spot something else in the Figure that hasn’t been described in writing is quite remarkable. Also, do you understand how the invention works? Let’s look at FIG. 1. I can see the bellows, the bracket, the cone on the air exit hole of the bellows, the air inlet tube on the firebox, the firebox itself, the cage, the hinged lid and the chimney. I know about all of these already. However, I can also see what looks like a solid handle on the lid. I know that I can have a wire one, but this is some other type of handle. I’d be fibbing if I said that, upon inspection of FIG. 1, I’d notice the hook on the left, but I’ll come to that in a second. Looking at FIG. 2 confirms that the suspected handle is, indeed, a handle. It’s there for insulating purposes, as explained in the text on the drawings. The advantage is clearly that it reduces heat transfer from the lid to the bee-keeper’s hands. We can deduce that it’s not essential because there’s an alternative in the wire loop. The mysterious hook shown in FIG. 1 is also detailed in FIG. 2. The advantage of the hook is that it allows the smoker to be hung from a wall so that it’s always to hand. It’s not explained as being essential but certainly seems like it might be an optional feature that warrants a dependent claim. A liner is also shown in FIG. 2 that’s not been discussed in the text. It’s a ventilated protective inner sleeve that can be replaced when heat damage becomes severe. The liner thus appears to protect the inside of the firebox from severe heat damage. Aside from these new features, we already know about the chimney, hinge, firebox, grate, inlet tube, bracket, return spring, bellows, valves in the bellows and the cone on the air outlet hole of the bellow.

Where do we go from here? Great. So we now know exactly what the client’s product is. It’s as shown in FIGs. 1 and 2 and as described in Mr Buzz’s letter. Here’s my Integer Tree™ (see section 3.1 of the main part of this guide). We didn’t have quite enough space to fit the full Integer Tree™ on one page, but the lower part of the Tree on page 66 is a horizontal continuation of the upper part, where corresponding rows of the Integer Tree™ are given the same reference letter (A, B, C). You don’t need to write this out in the exam, but you can do if it helps. I’d conservatively allow 15 minutes of exam time to prepare the Integer Tree™ if you do decide to use one because it can sometimes be a little tricky to work out which features are on which levels and which features are subsidiaries, etc. It’s really just a way to visualise and organise all of the features that are probably in your head at this stage. I’ve tried to think of situations where the Integer Tree™ might lead you in the wrong direction or might cause you to claim more narrowly or broadly than you might otherwise do. As long as you treat the Integer Tree™ as one of many tools that are part of your drafting arsenal and do not rely on it exclusively, I can’t see any major problems with it.

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Hook

And Bottom Of

Cone

Bellows

Horizontal

Tube

Hinged

Friction Fit

Insulating

Wire Loop

Handle

Lid

Grate

With

Firebox

Between

Aligned

Long

Tube

Restricted Air Inlet

Reasonably

Attachment

Liner

Metal

Hole

Narrowing

Offset

Chimney

shaped

Inlet

Copper Other

Valves

Cone

Electrical

Driven Air Supply

Steel

Stainless

Bellows Return Spring

Mesh

Steel

Stainless

Bracket

Smoker

U-

Air

Leg

Cylindrical

Mechanical

Fan

height

Approx.

Support

Material 30cm

Cage/Shield

And

Grate

Firebox

Smoker

7. Worked example

Drafting of Specifications

7. Worked example You can always represent the different levels of the Integer Tree™ horizontally instead as shown below. This is possibly an easier way to organize the features in the exam: ●

Smoker ○

Firebox ●

Liner

●

Air inlet

●

Hook ●

Tube ○

Reasonably long horizontal tube

○

Positioned between grate and bottom of firebox

○

● ●

●

○

●

Lid

Cage/Shield ● ●

U-shaped metal

Stainless steel mesh

Material ●

Copper

●

Other material

Stainless steel

Approx. 30cm height Cylindrical

●

Attachment

●

Handle

●

○

Air inlet hole

Grate And Support Leg

● ●

Aligned with cone on bellows

● ●

Hinged

Friction fit

Insulating Wire loop

Chimney ● ●

Narrowing Offset

Driven air supply ● ●

Connected to firebox by means of a bracket Bellows ●

Return spring

●

Cone

● ●

Valves

Fan ● ●

Electrical

Mechanical

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7. Worked example Now we need to spot and claim the invention. You’ll probably know by now what I’m going to say next: don’t claim the product, claim the invention (see section 1.1 of the main part of this guide). Think back to the Catchphrase quiz show (if you know it) where the moral of the story was to ‘say what you see’. I don’t think that having the host Roy Walker tell you this necessarily made the answer any more apparent, but the purpose was to stop you thinking too far away from what was shown on the screen. My catchphrase for claiming the invention would be: ‘don’t claim exactly what you see’. As we deduced above, the main independent claim doesn’t need the hook, the handle or even the bellows but these are all shown in the Figures. Just to labour the point, a claim to what’s shown in the Figures – the client’s product – might be something like: A smoker comprising a firebox for containing combustible fuel and bellows attached to the firebox by means of a bracket, the firebox comprising a hinged lid having an

offset chimney and an insulating handle, a hook for hanging the smoker on a wall, a protective liner, a ventilated grate on which the combustible fuel can rest, the grate being supported by a support leg and an air inlet tube, and the bellows comprising

a first board having air inlet valve, a second board having an air outlet valve having

a cone fitted thereto, the first and second boards being connected by a gaiter and a

return spring between the first and second boards.

There are quite a lot of features (underlined) in this claim. How many of these features could a competitor easily omit or replace to avoid infringement? Now, I doubt that anyone would leave all of these features in the claim. If you’ve carried out a detailed analysis of the paper, like we did above, you could go through this claim and cross out or generalise the features that aren’t essential. But how far would you actually go? I dare bet that there would be some unnecessary ‘residue’, i.e. some leftover features that aren’t needed in the claim. If you decided to keep the bellows, or generalised to a driven air supply, would you have crossed out the bracket or generalised it to connecting member or the like? Either way, it’s an unnecessary feature to have in the main claim. The other extreme is just claiming the underlying problem (see section 2.2 of the main part of this guide). This really does not go down well with the FD2 examiners. A claim that mightamount to nothing more than seeking to protect the underlying problem would be something like: A smoker, comprising means arranged to generate smoke in a safe and controllable manner

or A smoker, comprising a firebox operable to generate smoke in a safe and controllable manner

Drafting of Specifications

7. Worked example or A smoker arranged to generate plentiful smoke substantially without a flame

As always, there’s a fine line between a claim that’s too broad or too narrow, but it just feels like the above claims are lacking explanation as to how the smoke’s generated in that manner.; they’re lacking the structural and/or functional features necessary to achieve the advantage we’re trying to protect. Let’s look at this again, from a ‘top-down’ perspective: what’s the invention? What are the necessary structural or functional features I need in the claim to support the advantage associated with the invention? This approach implicitly involves a consideration of the prior art since the invention’s evident only in the light of the prior art. From the review above, I’ve got a good idea of the prior art. I know from Mr Buzz’s description that his smoker makes bee-smoking easier by having smouldering fuel inside the firebox. This produces smoke in a safe and controllable manner. Checking through the prior art, I’m happy that this is an advantage of Mr Buzz’s smoker over all pieces of prior art. In sections 3.2 and 3.3, we noted an advantage associated with having the offset chimney. However, in the light of the remainder of the description, it’s fairly clear that the main advantage we need to protect is that of producing smoke in a safe and controlled manner; the advantage of improved ease of use and efficiency is a subsidiary advantage. With reference to section 2.5 of the main part of this guide, remember that the examiners don’t want to see multiple independent claims drafted in a ‘shotgun’ fashion where each independent claim has a different novel feature (especially if those claims are not unitary). It should be fairly clear when multiple independent claims in the same category are necessary. Returning to the previously mentioned advantage of generating smoke in a safe and controllable manner, the only prior art I’m worried about is the straw, the incinerator and the stove. The difference between Mr Buzz’s smoker and the bundle of straw is that he places the smouldering fuel inside the firebox to make the smoking operation safer. However, the incinerator and stove already use fireboxes to contain their fuel, so let’s look at the incinerator and firebox more closely. The incinerator and stove try to encourage airflow to reduce smoking to a minimum by having an open bottom and/or additional air holes to increase the amount of airflow into the firebox. Well, this is pretty different from our smoker. We restrict (see section 3.5 above) the amount of air entering the firebox so that we get controlled smoldering of the fuel without flame and Mr Buzz keeps going on about this being the main advantage of his smoker. And that’s it. I’ve spotted the client’s invention! All I have to do now is put that into a claim. By having a firebox which contains the smouldering fuel, Mr Buzz’s smoker is safer than the straw bundle, but by restricting the amount of air entering the firebox, Mr Buzz’s smoker generates plenty of smoke in a controlled manner. So, what physical and/or functional features give rise to these advantages? Is it the hook? No. Is it the lid? Nope. It’s not even the bellows. It’s the firebox and the fact that the firebox has this restricted air inlet. Using this information, here’s what I’d do next:

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7. Worked example I need to think about the preamble of the claim (see section 2.1 in the main part of this guide). Some people might do this later, but I’m going to start with it. I could use ‘device which, when in operation, is arranged to produce smoke’, ‘apparatus for generating smoke’, ‘smoke generation system’, ‘smoke generator means’, ‘smoker’ or many other possible expressions. I’d personally go for ‘smoker’. It doesn’t have any more or less meaning than necessary. Although I started off not being entirely certain what Mr Buzz meant by the term ‘smoker’ when I picked up the paper for the first time, he seems comfortable with it as a name for his type of device. OK, so I’m happy with ‘smoker’ as my preamble and I know what my invention is. There are certain essential features that I’ll need to include in the claims. You can almost think of these features as the skeleton of the invention. The other, optional, features flesh out the skeleton. What are the bare bones that the smoker needs to produce the smoke in a safe and controlled manner? It should be fairly clear that the smoker needs the restricted air inlet and the firebox. The smoker must also have something that allows the smoke to escape. In this worked example, I’ve used the term ‘smoke outlet’ for this feature. Please remember that, especially in more recent papers, the paper should provide the terminology you need for the claims. It’s arguably implicit that the smoker has a smoke outlet of one form or another, so why include it in the claim. This is the sort of conundrum you often face in the FD2 exam and in real life. Thinking about it logically, if it’s implicit that a smoker includes a ‘smoke outlet’ then the scope of the claim would be the same with or without it. Is the claim clearer with it included? In this case, yes, in my opinion. That’s not to say that you have to list every implied feature of the smoker (it’s not made out of a highly flammable material, etc), but this one’s pretty important and helps tell the story. If we’d opted for something like ‘smoke extraction means’, then it’s more difficult to argue that a smoker implicitly has one, since ‘extraction’ could imply something more active than just a hole from which smoke could passively escape, but again please note that more recent papers should provide the terminology you need for the claims. I need to think carefully about the fuel. It’s true that the smoker would need some sort of fuel to work, but I don’t want to specify the fuel in the main claim (see Question 7 in the ‘Inspection and Checking’ section of the Micklethwait paper on page 91 and also the Micklethwait Test at the end of this worked example). I could say that the firebox can contain fuel or something along those lines. It’d probably be acceptable not to mention the fuel at all, but it gives the claim a bit more life if you include it. You can just say that the firebox ‘can contain’ combustible fuel, that the combustible fuel is ‘receivable’ in the firebox or that the firebox is ‘for combustible fuel’ without actually including the fuel within the scope of the claim. As a general point, be careful with the word ‘can’ [or: ‘may’]. They’re very useful words to have in your arsenal of drafting tools but you have to assess very carefully whether they impart any limitation into the claims. Anyway, I worked out above that I need the firebox to house the fuel and I need to limit the amount of air that enters the firebox relative to that in the incinerator and stove, so how about: A smoker comprising a firebox arranged to contain a combustible fuel, means arranged to reduce the amount of airflow into the firebox and a smoke outlet.

Drafting of Specifications

7. Worked example It’s nice and broad. However, it’s slightly too broad in my opinion. ‘Reduce’ is the problematic word here. We mean reduce relative to the incinerator and stove, but it could easily be interpreted to mean anything that allows less air to enter the firebox than were it not there. The prior art incinerator and stove have holes that certainly reduce the amount of airflow into their fireboxes relative to bigger holes or no holes at all. This isn’t a strong enough distinction. We’re almost there. I know in my mind that I’m trying to claim the correct thing, I just haven’t got the wording quite right. What’s the difference between the open grate and additional air holes in the incinerator and stove and our firebox inlet hole? Well, ours serves to restrict the amount of air coming into the firebox so that we only get smouldering, whereas the prior art tries to maximise the airflow to produce a flame. Mr Buzz has actually used the word ‘restrict’ in his description of the smoker (see section 3.5) and it seems to be the ideal choice for terminology for our main claim too. How about: A smoker comprising a firebox arranged to contain a combustible fuel, the firebox

having a smoke outlet and an air inlet arranged to restrict the amount of airflow into the firebox so that the fuel smoulders to produce smoke.

I’m a lot happier with that. Does the word ‘restrict’ suggest some positive, well-defined feature? In combination with the ‘so that the fuel smoulders to produce smoke’ clause in the claim, it appears to: the air inlet has to restrict the amount of airflow in such a way that the fuel only smoulders to produce smoke. Let’s go though the checks I proposed in section 2.5 of the main part of this guide. Check 1 – Structure: • Are there enough structural and/or functional features in the claim so that it can achieve the advantage? The air inlet, which is specified in claim 1, restricts the amount of air entering the firebox so that the fuel smoulders. The fuel smoulders rather than burns to produce smoke in a controlled manner (see sections 3.5 and 3.9) which is the advantage we’re trying to protect. • Have I merely claimed all solutions to the underlying problem? Hopefully not and I’ve also checked that earlier. • Am I floating? There aren’t many features in the claim, but it’s quite clear how they’re all functionally related to each other. Air comes in the inlet to feed the fuel, which smoulders and produces smoke and the smoke then leaves the firebox by the smoke outlet. Check 2 – Novelty: • Prior art 1 (CO2) is not a smoker for starters and certainly doesn’t comprise a firebox. • Prior art 2 (generate smoke) doesn’t use a firebox. • Prior art 3 (damp straw) is a smoker, but doesn’t comprise a firebox.

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7. Worked example • Sneaky prior art (garden incinerator/woodburning stove) isn’t a smoker and doesn’t have the restricted air inlet. I’m happy that claim 1’s novel. Check 3 – is it too narrow: • Have I covered all of the client’s embodiments? I’d go through the paper again in detail to check that I haven’t excluded anything, but I’m fairly confident that we’re safe here. One technique I personally used at this stage is to read each sentence in the paper, check that I’d completely understood it, and then put a pencil tick next to it before moving on to the next sentence. Obviously, you don’t have to do this (and this point is somewhat redundant with the online examination format), but it could be worth trying when you do a practice paper to see if it helps. • Have I claimed the product rather than the invention? No. The examiners were looking for a claim along the lines of: A smoker, comprising: an enclosure for receiving combustible material, the enclosure having an outlet for smoke and an inlet providing a restricted flow of oxygen to the enclosure, whereby the combustible material burns to produce the smoke.

or A bee smoker, comprising: a firebox operable to receive a combustible material, said firebox having a chimney and an air inlet operable to restrict an airflow into said

firebox to cause said combustible material, once ignited, to smoulder and provide a smoke emission from said chimney.

My claim was pretty close to what the examiners were looking for in the sense that it didn’t include any inessential features and it didn’t just claim the underlying problem. I repeat the point I’ve made above several times now on the shift in more recent papers to the claim terminology being provided in the paper itself. In summary, the approach discussed above has involved asking what the invention is and what features are needed to support the advantage. It’s not been a case of crossing out or generalising features in the client’s product which, as I keep saying, can often leads to ‘residue’ or unnecessary features. At this stage, it’s worth having a look back at some of the features we didn’t include in claim 1 because we decided that they weren’t essential to the invention. I sometimes call this the ‘What-if-I-had-included-it’ check: what would be the effect on the scope of protection had we included a particular feature in claim 1. There are three quite useful tests or checks that can suggest inessentiality of features:

Drafting of Specifications

7. Worked example 1. There is a clear steer in the client’s letter. If the client tells you that something’s optional, preferred, or not necessary, then this strongly suggests that it’s a non-essential feature. 2. You can see an easy workaround. Could a competitor easily replace a feature with something else to avoid infringement? 3. The claimed invention still works (albeit not quite as well) without that feature. Let’s have a look at whether a few of the features we didn’t include in claim 1 can be seen to be inessential using the above three tests. You can try this with any of the features not specified in claim 1: Protective liner: 1. Mr Buzz didn’t say whether the liner was or wasn’t essential. 2. Perhaps a competitor could treat the inside of the firebox so that it’s less susceptible to heat damage. Being very skeptical, perhaps manufacturers even prefer the firebox to be (gradually) heat-damaged so that customers have to have it serviced or buy another one to continue to operate safely. 3. The underlying advantage of safe and controlled generation of smoke can still be achieved without the protective liner. The bee-keeper may have to replace their smoker relatively frequently if it became damaged by the heat, but the smoker would ordinarily function properly. Hook: 1. Mr Buzz didn’t say whether the hook was or wasn’t essential. 2. Perhaps a competitor could sell a hook that can be fitted to a beehive itself and the smoker can be hung on the hook. 3. The smoker would still be able to produce smoke in a safe and controlled manner without the hook. Offset Chimney: 1. Mr Buzz hasn’t told us whether the offset chimney is or isn’t essential. 2. A competitor might be able to sell a smoker with a non-offset chimney and a flexible hose which can be used to direct smoke into the beehive while still allowing the smoker to be held upright. 3. Although the efficiency of the smoker might decrease if it has to be tilted (see section 3.2), it would still appear to work, albeit less efficiently.

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7. Worked example Bellows: 1. Mr Buzz said that a mechanical or electric fan could be used instead, so he’s told us that the bellows aren’t essential. 2. A competitor could supply a smoker with the mechanical or electric fan instead of the bellows to avoid infringement. 3. Some smoke will be produced without the bellows. Although the smoker might not be quite so effective without the bellows, it’d still produce smoke in a controlled and safe manner without them. You can try this check (in your head or on paper) for the narrowing chimney, the return spring, the external cage/shield, the air inlet being in the form of a tube, the cone on the bellows and any other features that weren’t included in claim 1. Right, so now we need some dependent claims. From the Integer TreeTM, we can see how to structure them so we just need to decide on our ‘top-ten’ features for the dependent claims, given the client has asked for at most ten dependent claims. The dependent claims should be directed to advantageous features that, realistically, could be amended to if difficulties were encountered with claim 1 during prosecution. Let’s just remember for a second that the overall advantage of the client’s product is that it enables smoke to be generated in a controlled and safe manner. If there are any features that have related advantages, then they’d be ideal candidates for dependent claims. Using the Integer TreeTM (or the bullet-point version), I’d consider making the following features the subject of the requisite ten dependent claims because of their use as potential fallback positions: a) Driven air supply [note: in more recent papers, claim terminology for such a feature should be provided in the question paper] which provides an airflow to the air inlet (increase the amount of oxygen and the flow of air into the firebox to increase smouldering combustion and produce additional smoke). b) Driven air supply comprises bellows (cheap/simple). c) Bellows comprise a return spring (easy to operate and causes the bellows to re-inflate automatically). d) Bellows comprise a cone which is in alignment with the firebox’s air inlet (more effective air stream). Firebox has a lid e) Lid has a narrowing chimney (concentrates smoke to a narrow plume which can be directed into the beehive). f) Lid has an offset chimney (facilitates ease of use because the smoker can be held upright). g) Firebox has a cage/shield (facilitates use even when the firebox gets hot). h) Firebox has a protective liner (can be replaced when it becomes heat-damaged).

Drafting of Specifications

7. Worked example i) Firebox has an air inlet tube (helps to reduce the amount of convected air drawn into the firebox which helps to control the smouldering). j) Firebox has a grate and an air inlet tube below the grate (tube doesn’t become clogged and doesn’t disturb ash). In terms of structuring the dependent claims, it should be quite clear what to do from the layout above: 2. A smoker according to claim 1, further comprising a drivable air supply arranged to provide an airflow to the air inlet.

3. A smoker according to claim 2, wherein the drivable air supply comprises bellows. 4. A smoker according to claim 3, wherein the bellows comprises a return spring.

5. A smoker according to claim 3 or 4, wherein the bellows comprises a cone aligned with the air inlet, the cone being arranged to concentrate air expelled from the bellows into a column.

6. A smoker according to any preceding claim, wherein the smoke outlet comprises a narrowing chimney.

7. A smoker according to any preceding claim, wherein the smoke outlet comprises a chimney which is angled relative to the axis of the firebox.

8. A smoker according to any preceding claim, wherein the firebox comprises an external protective shield.

9. A smoker according to any preceding claim, wherein the firebox comprises an internal protective liner.

10. A smoker according to any preceding claim, wherein the air inlet comprises an air inlet tube.

11. A smoker according to claim 10, wherein the firebox comprises a grate spaced above

the base of the firebox and wherein the air inlet tube is disposed between the grate and the base of the firebox.

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7. Worked example

Other categories of independent claims Let’s look at the list I proposed in section 2.5 of the main part of this guide and go through each of the possible categories to see whether it’s appropriate to add one or more additional independent claims:

C1-3/Method of using, manufacturing and assembling the smoker Is a method claim to using the smoker going to be useful? No. You might well include them in a real-life specification if you saw the need, but they’re not necessary in this case for FD2 (see section 2.5 of the main part of this guide). If it’s not obvious why they’re not necessary, think about who’d directly infringe this method claim: A method of generating smoke comprising …

Mr Buzz is approaching someone who’s interested and manufacturing and selling the product; the smoker. A method of manufacturing or assembling the smoker is another possibility, I guess. The latter might be useful if the smoker were provided in kit or flat-pack form, but it’d be the poor bee-keepers again who would be doing the assembly. Importantly, I’m not told anything about manufacture or assembly in the question paper that prompts me to include an independent claim to either. One thing I should mention is that I’ve seen some ‘method claims’ before that are basically in the form: A method of using the smoker of claim 1

or A method of generating smoke using the smoker of claim 1

or A method of manufacturing a smoker according to claim 1

or A method of assembling a smoker according to claim 1

I guess the thinking behind such claims is that because claim 1 is (hopefully) novel and inventive, these method claims are allowable too because they include all the features of claim 1. The problem is that these method claims don’t include any of the essential method steps to achieve the advantages of the invention. For example, in order to generate smoke in a controlled and

Drafting of Specifications

7. Worked example safe manner, you actually need to generate the smoke. Thus, it seems essential to include a method step of igniting the fuel. All in all, method claims really aren’t necessary here.

C4 and C5/Look-up and Look-down Does the smoker form part of a bigger product that could be claimed (C4) or is there a subcomponent of the smoker that we should be claiming (C5)? In this case, it should be clear that neither of these is relevant. A C4-type claim is very useful in real life and can be important in the FD2 exam. Sometimes, your main claim is to a component, so as to give the broadest possible protection, but it might typically form part of a larger product.

C6/Kit There’s only really one component in the proposed main claim, which is the firebox. This claim category doesn’t appear to be useful either.

C7/Consumables There’s no indication that there’s anything patentable in relation to the fuel that Mr Buzz is using for his smoker. Accordingly, there’s no need to claim it here. However, if he had indicated that he’d developed a special fuel for his smoker, you’d certainly want to try to protect it. Job done. So that’s the claims finished with. When I say ‘finished’, I really mean subject to checking again! At this stage you’re likely to be somewhere between two and three hours into the paper. If you’re here after 30 minutes, you’ve probably rushed through the paper or the claims. Once you’ve attempted some of the past papers, you’ll get a good idea about how long it takes you personally to complete each section. If you’re at this stage with ten minutes to go it’s not ideal, especially given how many marks are available for other parts of the answer, but don’t panic. You’re absolutely not being encouraged to leave only ten minutes for the remainder of your answer, but if the worst comes to the worst and you find yourself in this position, you have to try to get some of the other marks. In theory, you could’ve scored 50 marks for the claims at this stage if the claims were perfect, but, in reality, I highly doubt that you’d pass if you only submitted (even perfect) claims. Although I’ll go through all of the other stuff we should have in the answer, it’s worth noting that there are marks available for the title of the application and the field, marks for labelling the Figures themselves and doing their brief description and marks for the abstract. There were 11 marks there in the 2007 paper and you could probably do most of that within ten minutes. These are still ‘cheap’ marks to get in more recent papers. Again, I’m certainly not advocating spending all but ten minutes on the claims, but if you find yourself really struggling at the end of the exam, it’s better to try to get some extra marks than just sitting there panicking. I’ve retained, from the first edition of this guide, the marks awarded in 2007 for each part of the answer below. I emphasise again that the mark distribution has changed significantly

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7. Worked example since 2007, especially in the marks awarded for the Statements of Invention section, and urge you to review the comments on this in the main part of this guide, and in the recent ERs and Marking Schemes. Description Title (1 Mark) A Smoker

That does the job nicely. It’s no narrower than the scope of the only independent claim (see section 4.1 of the main part of this guide).

Field of the Invention (1 Mark) The present invention relates to a smoker. More specifically, it relates to a beehive smoker.

This embraces, but is not narrower than, the independent claim (see section 4.2 of the main part of this guide). I’ve given a little more context in the field than just the title, especially since the preamble of the claim is quite general.

Background (2 Marks) Now, hopefully you’ll remember from section 4.3 of the main part of this guide that you should only include relevant prior art. That means prior art in the same field as the invention – a smoker. Is prior art 1 (CO2) a smoker? No. Is prior art 2 (generate smoke) a smoker? Sort of. Is prior art 3 (damp straw) a smoker. Yes, it generates smoke to distract the bees. Is prior art 4 (garden incinerator) a smoker? No, it’s an incinerator that produces a flame to incinerate whatever’s placed inside it. Is prior art 5 (woodburning stove) a smoker? Again, no because it produces a flame to burn the wood rather than being a smoker. So I only need to discuss the theory of smoke generation discussed under prior art 2 and give an example of the damp straw of prior art 3 being used as such a smoker. You might get a mark or for copying the relevant text from the examination paper largely verbatim. However, it’s often in a very informal format and isn’t really suitable for a patent application and you’ll need to revise it sensibly to score marks here. I’m not suggesting utmost formality, just decent prose. It can be difficult to open and examine beehives. The bees never seem to get used to

it and they can sometimes sting quite ferociously. One popular technique is to try to

make the area around the hive smoky. The bees smell the smoke and gorge on honey. This seems to distract them whilst the bee-keeper examines the hive. It is thought

that, like humans, they do not wish to fight with a full stomach and so the amount of stinging is drastically reduced. The smoke can be made in many different ways.

A technique that bee-keepers have used for some years is to get a tight bundle of

damp straw and use a blow torch to get it lighted. The straw then burns and generates

Drafting of Specifications

7. Worked example plenty of smoke. The bee-keeper can waft the bundle of straw around and try to blow

it into the hive. The bee-keeper has to be aware of burning embers and, if they get too close, they can burn through their protective veil.

Summary/Statements of Invention (6 Marks) I emphasise again here that the number of marks allocated to this section has been significantly higher than six in more recent papers. First things first. How many ‘aspects’ of the invention have we got? We have an independent claim to a smoker and no other independent claims. We only have one ‘aspect’ of the invention. How many preferred features of the invention do we have? Well, we have ten dependent claims setting out preferred features. I personally wouldn’t necessarily think of them all as separate embodiments; just don’t think of them as ‘aspects’! I’m going to use the compact form of consistory clause for claim 1, because it can save time in the exam. According to a first aspect of the invention, there is provided a smoker according to claim 1. The smoker enables smoke to be generated in a safe, controlled and reliable manner.

However, you could certainly write this in full as: A smoker comprising a firebox arranged to contain a combustible fuel, the firebox

having a smoke outlet and an air inlet arranged to restrict the amount of airflow into the firebox so that the fuel smoulders to produce smoke. The smoker enables smoke to be generated in a safe, controlled and reliable manner.

This gives us another quick opportunity to check that the claim really does give this advantage. Look at claim 1 again. Does it definitely enable smoke to be generated in this way, based on what the client has told us? Yes. Right, on to the dependent claims. There are three typical ways of doing this. I’ll show you each of them, in my personal order of preference, using dependent claim 2 as an example. The first is to write out the distinguishing feature of each dependent claim in full using conditional language (see section 4.4 in the main part of this guide): The smoker may further comprise a drivable air supply arranged to provide an airflow to the air inlet. The drivable air supply increases the amount of oxygen and the flow of air into the firebox to increase smouldering combustion and produce additional smoke.

The second is a slightly quicker way of writing the same thing and is essentially a compact form of claim where you refer to the relevant claim number, rather than repeating all of the wording:

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7. Worked example The smoker may further comprise an air supply as specified in claim 2. The drivable air supply increases the amount of oxygen and the flow of air into the firebox to increase smouldering combustion and produce additional smoke.

The third is, in my opinion, a little bit slapdash but probably won’t affect your overall marks in the exam. Remember that you’re trying to show the examiner that you know what you’re doing and that you can produce decent enough patent specifications to get through the exam. This approach essentially involves writing the word ‘preferably’ and then just indicating a claim number: Preferably, (feature of claim 2). The drivable air supply increases the amount of oxygen and the flow of air into the firebox to increase smouldering combustion and produce additional smoke.

My preferred approach is the most thorough. Admittedly, it’s a little more time-consuming, but it should only take an extra few minutes or so in the exam (it may even be as quick or quicker with the online format exam) and gives another opportunity to review the wording of the claims. Sometimes revisiting the claims again makes you stop and think: ‘is this clear’? The statements of invention and advantage for the dependent claims could look like: The smoker may further comprise a drivable air supply arranged to provide an airflow to the air inlet. The drivable air supply increases the amount of oxygen and the flow of air into the firebox to increase smouldering combustion and produce additional smoke. The drivable air supply may comprise bellows. Bellows are relatively cheap and mechanically simple.

The bellows may comprise a return spring. The bellows can be depressed to cause air to be expelled and then will automatically reinflate ready for subsequent use.

The bellows may comprise a cone aligned with the air inlet, the cone being arranged to concentrate air expelled from the bellows into a column. This concentrates and speeds

the air emitted. In turn, the air column travels further into the firebox and the column of air draws in additional surrounding air which increases the volume of air delivered to increase smouldering combustion.

The smoke outlet may comprise a narrowing chimney. This enables the smoke to be concentrated into a narrow plume which can be directed into the hive.

The smoke outlet may comprise a chimney which is angled relative to the axis of the

firebox. The offset chimney facilitates ease of use since the smoker can be held generally upright, whilst the smoke plume exits at an angle. Holding the smoker upright is

Drafting of Specifications

7. Worked example desirable since otherwise the material in the firebox gets disturbed which reduces the efficiency of the smoker and can cause it to go out.

The firebox comprises an external protective shield. Since the firebox can get very

hot during use, the protective shield is generally cool enough not to cause significant discomfort or injury to the bee-keeper, particularly when wearing gloves.

The firebox may include an internal protective liner. The protective liner can be replaced when it becomes severely heat-damaged.

The air inlet may comprise an air inlet tube. The air inlet tube helps to reduce the

amount of convected air drawn into the firebox which helps to control the smouldering. The firebox may comprise a grate spaced above the base of the firebox and wherein the air inlet tube is disposed between the grate and the base of the firebox. The air

inlet tube can be located between the base and the grate so that the air inlet does not

become clogged by ash on the base of the firebox and also does not disturb burning ash on the grate.

Brief Description of the Figures (2 Marks) We’ll ignore, for the moment, the fact that Mr Buzz has very helpfully told us exactly what types of views the Figures show. Referring to section 4.5 in the main part of this guide, we can readily see that FIG. 1 is a perspective view of the smoker. This is because we’re effectively looking down on the smoker from a position slightly above horizontal. How do we know this? Well, we can see the top of the bellows, so it’s not a side view of them. We can also readily see that FIG. 2 is a sectional view through the smoker. As mentioned in the main part of the guide, it’d be helpful to the reader to indicate in FIG. 1 which of the two chopped parts we’re showing in FIG. 2. We can satisfy this part of the paper by something along the lines of: Embodiments of the present invention will now be described, by way of example only, with reference to the accompanying drawings, in which:

Figure 1 is a perspective view of [an embodiment of] a smoker in accordance with an embodiment of the present invention; and

Figure 2 is a sectional view of the smoker of Figure 1.

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7. Worked example Labelling the Figures (2 Marks) It’s easy to do this if you actually remember to do it. All you need to write is ‘1/1’ because the figures are already numbered and include reference signs to get two easy marks.

Drafting of Specifications

7. Worked example Specific Description (16 Marks) There were 16 marks available for the specific description in 2007. The examiner can’t give you (m)any marks for simply copying the text from the question paper and writing it in your answer: more’s needed. You need to include reference signs, make sure the wording reads like a specific description and ‘add value’ where necessary. You may have to change the order in which the features are introduced (I did) and you may have to clarify or explain words (e.g. ‘offset’) that the client gives you. This is quite different from the EQE drafting paper. However, do be careful about adding new material as it can sometimes work against the client. For example, in this paper, Mr Buzz suggests that the smoker could be made of copper, steel or another suitable metal. You might decide that aluminium would be a suitable metal and you might mention it in passing in the specific description. Suppose the application’s granted with the claim as filed and Mr Buzz later realises that aluminium is hugely advantageous because it’s lightweight and this is a significant benefit for a portable smoker whether or not the smoker has a restricted air inlet. It’s now potentially very difficult, if not impossible, for him to file a new application to protect an aluminium smoker per se because it’s already been disclosed. Had aluminium not been explicitly mentioned in the first application that he asked you to draft, this arrangement could potentially validly be pursued in another, new application. The phrase ‘self-collision’ is an image-invoking term suggested to me by Tibor Gold that should help you understand and visualise this type of anticipation. I just want to re-emphasise another point that I made in the main part of the guide throughout section 4.7, which is that the purpose of this section is to provide an enabling disclosure. You should also be able to understand the specific description without needing to consult the Figures. Some of the specific description will describe things not shown in the drawings too. It can be tempting to write something like: ‘Figure 12 is a flowchart showing a method of operating product X’. This, itself, isn’t enough. What steps are involved? I have no idea without looking at Figure 12! You need to think like this both in real life and in FD2: have I described what’s shown in the Figures in enough detail that someone could understand what I’m describing without having to look at the Figures. In the exam, it means losing marks and in real life it can lead to serious difficulty in making amendments based on features shown in figures when there’s no supporting text. You should be very cautious about not including something the client has described and you should also check very carefully in the Figures to see whether anything has been shown, but not described. Checking the Figures is important for the claims, but is also really important for the specific description. Remember, the specific description should be comprehensible and complete without the Figures. In the specific description I’ve prepared below, I’ve identified in parentheses the features to which the following paragraph relates. You wouldn’t do this in the exam itself. OK, here we go: [Introduce the smoker]

Figures 1 and 2 show a beehive smoker 10 that enables smoke to be produced in a safe and controllable manner. The smoker 10 is around 30cm high and is made of copper.

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7. Worked example [Describe the firebox and its internal components]

The smoker 10 includes a cylindrical smoker firebox 12 which is open at its upper end. The firebox 12 has a hook 14 by means of which it can be hung from the wall of a

beehive so that it is readily to hand during smoking. The firebox 12 also includes a liner

16 in the form of a ventilated protective inner sleeve which can be replaced if it should become severely heat-damaged. Smouldering fuel (not shown) can be placed inside the

firebox on a grate 18. The grate 18 is spaced from the floor 20 of the firebox by means of support legs 22 which are fixed to the underside 24 of the grate. [Describe the lid]

The firebox 12 includes a hinged lid 26 which forms a narrowing chimney 28 that

is offset, i.e. inclined to the central axis of the firebox 12. The narrowing and offset chimney 28 enables smoke generated by the smoker 10 to be concentrated into a

narrow plume which can be directed into a beehive and also facilitates ease of use since

the smoker 10 can be held generally upright, whilst the smoke plume exits at an angle. The ability to hold the smoker 10 upright is desirable since otherwise smouldering fuel in the firebox 12 can get disturbed. This, in turn, reduces the efficiency of the smoker 10 and can cause it to stop generating smoke. An insulating handle 30 is attached to the lid 26 by means of a threaded screw 32. [Describe the air inlet]

The amount of ambient air that enters the firebox 12 is controlled or restricted by a

restricted air inlet in the form of a horizontally oriented air inlet tube 34. The air inlet tube is the only air inlet for the firebox 12. This ensures that smoke is generated in

a controlled manner by causing fuel in the firebox 12 to smoulder rather than burn, due to the relatively low amount of oxygen available. The air inlet tube 34 is located between the bottom of the firebox 12 and the grate 18 so that the airflow does not become clogged by ash and so that burning ash is not disturbed by the airflow. [Introduce the bellows]

Although the smoker 10 can produce small amounts of smoke from the air provided

or convected through the air inlet tube 34, bellows 36 are attached to the firebox by means of brackets 38 to allow additional airflow to be delivered to the smouldering fuel to increase or drive out smoke.

[Describe the bellows in more detail]

The bellows 36 have an inlet valve 40 that allows air to be sucked in and an

outlet valve 42 that enables air to be blown out into the firebox 12. A tapering,

concentrating cone 44 is fitted at the outlet valve 42 and provides an air exit hole

46 for the bellows 36. The cone 44 concentrates and speeds the air emitted from the

bellows 36. In turn, the air column travels further into the firebox 12 and the column of air draws in additional surrounding air which increases the volume of air delivered

Drafting of Specifications

7. Worked example to smouldering fuel. The air exit hole 46 of the bellows 36 and the air inlet tube 34 of the firebox 12 are aligned to enable air to pass from the bellows 36 into the firebox.

The bellows 36 are fitted with a return spring 48. The bellows 36 can be depressed

to cause air to be expelled and then automatically reinflate ready for subsequent use. [Describe the ‘reasonably long’ air inlet tube]

The air inlet tube 34 is reasonably long so as to be in close proximity to the

concentrating cone 46 of the bellows 36. This reduces the amount of convected air drawn into the firebox 12 between puffs, which helps to control the smouldering. [Describe the shield]

A cage or shield 50 in the form of a strong stainless steel wire mesh surrounds the

outside of the firebox 12 and is secured to the brackets 38 which hold the bellows 36.

Even when the firebox 12 gets hot, the cage 50 is generally cool enough not to cause a burn if touched, particularly when wearing gloves. [Describe how the smoker is used: ‘In use’]

In use, fuel is lit and placed inside the firebox 12 on the grate 18 and the lid 26 is

closed. Small amounts of smoke are naturally generated which can be directed towards a beehive. More smoke can be produced by squeezing the bellows 36 a few times to increase temporarily the amount of oxygen and the flow of air in the firebox 12.

This drives accumulated smoke out of the chimney 28 and also increases smouldering combustion, without producing a flame. [Describe alternatives]

Various modifications will be apparent to those skilled in the art. For example, the

cage 50 can be in the form of a ‘U’-shaped sheet of metal (not shown), although this

tends to get quite hot. The bellows 36 could be replaced by another air supply such as a mechanical or electrical fan (not shown). As explained above, the air inlet 34 may be in the form of an air inlet tube. However, provided that the firebox inlet hole is

not too large, satisfactory results can be obtained even without an air inlet tube 34.

Instead of being hingedly connected, the lid 26 could be a push-fit or screw-fit onto

the firebox 12. This can make filling the firebox 12 difficult, particularly when the lid 26 is hot and, once removed, the lid 26 is easily lost. If the lid 26 is of the push-fit

type, it is held in place by a friction fit and a loop of springy wire (not shown) can be used to help the lid be removed without the bee-keeper burning their fingers. Finally,

the smoker 10 can be made of steel or another suitable metal or material instead of or as well as copper.

CIPA STUDY GUIDE TO FD2

7. Worked example Abstract (5 Marks) Remember the importance of preparing the abstract. Five marks (more commonly four marks in recent papers, but still!) is quite a lot to lose for a couple of minutes’ worth of work, especially if you end up scoring 48 marks and forgot to include an abstract. With reference to the summary in section 5.1 of the main part of this guide, the abstract needs the following six features for five marks: • • • • •

Title Technical Field Explanation Principal Use Figure

Reference Signs Without Brackets How about: Smoker

A smoker 10 includes a firebox 12 into which smouldering fuel is placed to generate smoke for smoking a beehive. The firebox 12 has a restricted air inlet 34 which

limits airflow into the smoker so that the smoker 10 can generate smoke in a safe

and controlled manner. Bellows 36 can be attached to the firebox 12 to provide an

increased supply of air to the firebox to increase smoke generation without producing a flame.

[Figure 2]

Micklethwait Test Let’s finally take the ‘Micklethwait Test’ to see if we’ve done everything he’s proposed by way of very sensible checks: 1. Has Claim 1 utility; i.e. does it include the features from which the advantages of the invention follow? I hope so as this was certainly one of the checks I made above. 2. Can Claim 1 be avoided by any obvious modification? There aren’t many features in Claim 1 and they all seem to be essential to achieve the advantage of generating smoke in a controlled and safe manner. 3. Has Claim 1 patentable subject-matter or does it cover something obvious? The claimed invention exhibits an advantage over the prior art given in the paper and this is the only prior art I should take into account. As far as inventive step for the purposes of the exam is concerned, I think we’re safe here.

Drafting of Specifications

7. Worked example 4. If Claim 1 is weak are there strong, independent sub-claims? I believe the term ‘independent sub-claim’ is used here to mean a sub-claim of an independent claim, i.e. a dependent claim. We have ten relatively good dependent claims to provide fallback positions if necessary and we’ve decided that there’s no need for independent claims in other categories, such as method claims. 5. Do the claims say what they mean and mean what they say; i.e. do the mental picture and verbal counterpart agree? With reference to section 2.3 in the main part of this guide, I genuinely find it very difficult to visualise or draw a mental picture of what the claims actually show, as I always end up visualising or drawing what I think they show. Nevertheless, if you’re able to differentiate the two, this is a very useful check. 6. Can the claims be avoided by selling subordinate integers? The only integers we have in the claim are the firebox, the restricted air inlet and the smoke outlet, so we’re safe here. This is a really important check to make. 7. Do the claims cover the construction when empty, idle, placed on its side, upside down, etc.? Yes. We haven’t limited the claim to the smoker actually generating smoke or anything along those lines. 8. Do the claims include any limitations which lend no patentable subject-matter and are not essential to the purpose aimed at? This question is linked to question 2 above. In this case, all of the features in Claim 1 are either there to distinguish from the prior art (for the purposes of patentability) or are there as essential features. 9. Are the claims based on any doubtful theory? Not in this case. 10. Are the claims accurate in substance and terminology? I believe so. ‘Firebox’ was a new term to me but we know that, at least with recent papers, the claim terminology should be in the question paper. 11. Can the claims be made less pompous and more succinct, for example, by making them more colloquial or pictorial without sacrificing accuracy? I’ve most certainly been conscious of said pomposity hitherto. Seriously though, I think this is really important as a checking step in the Micklethwait Test, but also as something to bear in mind in general practice. Not only is it kinder on the poor reader not to have to get a dictionary out to understand your claim, some of the pompous wording can be quite ambiguous (see section 6.2 of the main part of this guide). I have to confess that when I started in the profession, I intentionally included pompous words presumably because I thought it made patent specifications more watertight or sounded much more professional. Over time, I’ve moved away from this mindset as much as I can and would much rather my patent specifications be as comprehensible and as easy to translate as possible.

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7. Worked example 12. Are all the client’s information, modifications and remarks included (if this is desirable)? This is an extremely important check. If the client’s told you something and you (accidentally) forget to include it in the patent specification, you can get into serious problems if your client says during prosecution ‘oh, we can always amend to X which I told you about in my invention report’ and you’ve left X out of the specification. You should be able to justify, even if only to yourself, leaving out any information that your client gives you. This is really important in real life. 13. Is there sufficient explanation of parts, operation and terms, and mention of advantages, bearing in mind the state of the art and the need for clarity to a judge? We’ve included statements of advantage and have mentioned various other advantages throughout the specific description. We’ve used the description of the smoker that Mr Buzz gave us and have included additional information found only in the figures. 14. Are any doubtful terms defined, in particular ‘the type specified’? I think that this question asks whether there are any vague and imprecise terms that could easily be clarified. If so, other terms such as ‘etc.’, ‘and the like’ and ‘and such like’ could possibly be clarified. In this particular example, we have the sentence: ‘Finally, the smoker 10 can be made of steel or another suitable metal instead of or as well as copper’. In context, the required properties of the metal to be ‘suitable’ for the smoker are not unduly difficult to determine. 15. Is the description of the drawings complete in itself? In other words, does the description make sense in itself without having to look at the figures? This is something the FD2 examiners comment on a lot, so pay close attention to it in the exam and, importantly, during your preparation. During preparation for the examination, you could ask a friend or colleague to see if they can understand the description without having access to the figures. You could even see if they could try to recreate the figures from the written description. 16. Is the technology consistent throughout the specification, especially if the claims have been amended? I’m not absolutely sure whether ‘technology’ here means ‘terminology’, but I suppose it does. For the purposes of the exam, I doubt that you’d lose large numbers of marks if your terminology was slightly inconsistent, i.e. it’s still clear to what you’re referring, but you may lose some. 17. Does the description lead up to and amplify the claims and set forth the purposes and points of the features claimed? The claims shouldn’t come as any great surprise to the reader after reading the specific description. The reader should know what you mean, or at least it should be pretty clear, what you mean by any terms in the claims. Using uncommon terms in the claims that haven’t been discussed anywhere in the description isn’t good practice.

Drafting of Specifications

7. Worked example 18. Is any unnecessary or doubtful theory included, and if so is it guardedly introduced? The client in the exam might say something like: ‘I have a feeling that the following example works, but I’ve not yet tested it’. If so, you have to decide whether you should include it in your answer. Another thing to think carefully about would be whether or not to include or, at least, tone down, any derogatory comments made by your client about the prior art (see section 4.3 in the main part of this guide) or anything else that jumps out as being unnecessary. I think we’re OK in this example. 19. Is any unnecessary or doubtful modification described, and if so is it guardedly referred to? This ties in closely with question 18 and doesn’t appear to apply in this example. 20. Are there any superlatives or are results claimed which need not be obtained, or worse still are not even obtained by the preferred construction? Examples of this type of situation would be something like ‘the claimed invention provides a completely error-free telecommunications channel’. This does not appear to be relevant in our example. 21. Is everything stated in the specification true? This question appears to warn against including anything in the specification which you know not to be true. This might be something like overstating advantages achieved by the invention (e.g. 50% efficiency improvement when, in reality, it’s only a 20% improvement). To the best of our knowledge, everything Mr Buzz has told us is true. 22. Are there reference letters to all parts of the drawings likely to be pointed at in Court? This is a useful check for the purposes of identifying parts in the drawings in Court, but is also important in the US. It’s good practice to ensure that all of the important features in the drawings have reference signs, but this should hopefully be the case if you’ve described all of the important features in the specific description.

CIPA STUDY GUIDE TO FD2

8. Brushing up our drafting By E.W.E. Micklethwait

This paper first appeared in Trans. CIPA, LXV (1946-47), page 72. It was re-published in The CIPA Journal at [2003] CIPA 320 and 379; and in Fundamentals of Patent Drafting (2006) by Paul Cole (page 155). Editorial comments appear in footnotes where the paper has become dated by virtue of changes in the law since 1977. The basic principles that Mr Micklethwait so clearly sets out remain the bedrock of a good patent drafting even today.

rafting patent specifications is a subject likely to be of interest to patent agents at any time as it occupies most of their time, but I think that the present time is particularly appropriate for discussing it as we are getting back into gear after the disturbance of the war.1 The profession today includes three classes each of which has some reason for brushing up its drafting. First, there are those who have never fully qualified as drafters of specifications and who have yet to pass the final examination. They will find food for thought in Mr Leistikow’s admirable paper on the final examinations,2 but although he dealt with his subject in general terms he was mainly concerned with interpretation and many candidates may welcome some further remarks on drafting. Secondly, there are those who have been in the Forces or in Government service for a number of years and have recently returned to patent work. They may well feel somewhat rusty after all this time and may accept some discussion of the subject as a kind of informal refresher course. Finally, there are those who have been at it all through the war, battling with shortage or complete absence of staff, absence of partners on Government service, shortage of office materials, delays in the mails, countless restrictions to be studied, permits to be obtained, and forms to be filled in, to say nothing of the nervous strain, danger and material damage and inconvenience caused by bursting bombs and rockets. Such conditions are not conducive to work of the highest standard, especially work needing great concentration; and the choice must often have been not between first-class work and second-class work, but between second-class work and nothing at all. So it seems a good time for us all to re-examine our work and ask ourselves whether it is really up to the highest possible standard. I propose to divide my remarks into two parts. I think most people will agree that the

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8. Brushing up our drafting points dealt with in the first part under the heading Shoddy Drafting are faults which should be avoided if they can be detected. After eliminating all such faults there is still room for considerable difference of opinion on points of drafting, there are cases where drafting may be influenced by circumstances and cases where a compromise may have to be adopted. Such cases I discuss in the second part under the heading Drafting Policy.

Shoddy drafting Procedure for drafting – two phases Drafting a patent specification is a very specialised form of writing English and is an art which, like painting a picture or playing the piano, depends partly on natural aptitude and partly on acquired skill. In acquiring such skill there is room for some instruction and system as well as long practice aided by self-criticism and outside criticism. In drafting claims no amount of system and no amount of practice will obviate the necessity for hard work and concentrated thinking, but it may be helpful to adopt certain methods of directing one’s thought so that it may be used to the best advantage. As Mr Tennant said in an excellent paper on claim drafting some years ago, it is no use gazing dreamily at a blank piece of paper and hoping for inspiration. Although in detail everyone may have a different method of procedure I think that in all drafting there are certain broad fundamental principles to be borne in mind. At each stage, as in any engineering problem, one should have a clear idea what one is trying to do and should work out the most direct and efficient method of doing it, so as to achieve the optimum result with no unnecessary effort. In this connection it is generally useful to consider the problem from first principles. In drafting a main claim I think the problem can usefully be tackled in two phases, although these phases overlap and may at times be almost indistinguishable. The first phase consists of making up one’s mind what the invention is, or forming a mental picture of what is to be claimed, while the second phase consists of putting that mental picture into words. In most cases the mental picture of what is to be claimed will probably undergo development and change as it is put into words, but none the less the conception may be useful for two reasons; firstly as helping one to realise that at each phase faults may creep in and must be corrected; and secondly as helping one to adopt the most direct method of procedure at each phase. With regard to avoiding or correcting faults I think it is fairly obvious that the mental picture one forms of the invention may not be the correct mental picture. It may be too narrow or it may be too broad or it may not embody essential features. The mental picture chosen will probably be no matter of scientific correctness but a matter of opinion depending on such arbitrary factors as the policy of the client and it may involve some sort of a compromise between conflicting interests. In general it is a question very much of the judgment of the individual draftsman. These aspects are discussed more fully in Part 3. On the other hand the possibility of faults in the second phase i.e. not saying what one means, is perhaps less obvious. We shall return to this later.

Drafting of Specifications

8. Brushing up our drafting The first phase – the mental picture Some people consider that a satisfactory way of drafting a claim is to write down a list of integers appearing in the specific construction designed by the inventor and then to cross out those features which are not essential. To be content with the claim so drafted is in my view very shoddy drafting. If in addition one goes on to scrutinise the integers remaining, alter and reword them as necessary, and perhaps add one or two others until the final product is quite unrecognizable, the result may be a perfectly good claim. My own view is that this is an indirect way of reaching one’s goal and one can develop a more direct method by going to first principles. To arrive at the mental picture, it seems to me essential to ask at the start what is the point of the invention. I believe too many people just look at the instructions and say to themselves vaguely, ‘So and so looks rather an essential feature’. The point of an invention is to secure certain advantages, and the features to which the claims must be directed are the features which enable those advantages to be obtained. So in drafting I think one should ask: ‘What is the point of the invention? Why should any sane person ever choose to use the inventor’s apparatus in preference to what is already known?’ In cases where the answer is ‘Nobody ever would’, one can only draw upon a fertile imagination and hope for the best. In most cases some general answer is clear, such as that it gives a totally new result which is advantageous, or it may be only that it as neater, stronger, more efficient or cheaper. Why is it stronger or cheaper? Because he uses so and so. Could he omit so and so or use something else instead? After chatting to oneself on these lines for a short time one will have made some progress towards getting a mental picture of the invention. The time is then probably ripe for beginning to convert one’s mental picture into words, and as soon as a first draft wording has been put down it becomes necessary to scrutinise and criticise this wording. This scrutiny will obviously give a further check on the mental picture. Again, in criticizing a claim one must consider the function it is to fulfill. It is useless to hold it up to the light, inhale its bouquet or munch it; like a connoisseur appraising a vintage. The test of a claim is not whether it produces a pleasant sensation, reminiscent of silk dresses rustling in the Mediterranean moonlight, or a symphony conducted by Toscanini, or whether it produces an unpleasant sensation, like a visit to the headmaster’s study, or the putrefying corpse of a leprous polecat (although such sensational claims may be encountered). The test of a claim, as of anything else, is fitness for its purpose, and the direct way of scrutinizing one’s wording is to go to first principles and ask: ‘What is the purpose of this claim?’ The answer is that it is to make it as difficult as possible for a potential infringer to get the advantage of the invention without infringing the claim.3 Surely then the logical method of testing the claim is to put one’s self in the position of a potential infringer and see if one can readily get the benefit of the inventor’s work and ideas without infringing the claim. This must involve a measure of inventive ingenuity and design, and it seems to me incontestable that a patent agent cannot draft a satisfactory claim to an invention without directing his mind to the possibility of constructions alternative to that suggested by the inventor. Obviously this process can be overdone, and it is no part of the patent agent’s business to design in detail any modification of the applicant’s construction.4 It is sufficient to reach the stage of saying it seems probable that something on those lines could be done. Nor am I suggesting that any description of such modified constructions need necessarily be put into the specification.

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Personally, I often find it helpful to make very diagrammatic little line sketches in the margin indicating possible modifications, when deciding which should be included and which should be excluded, for lack of novelty or because they do not really come within the invention envisaged. Let us assume that, either by this process, or in any other way the individual drafter may prefer, the mental picture of the invention is now crystallised into something like its final form and appears prima facie to be tolerably well represented by the draft wording.

The second phase – saying what you mean. At this stage many people are content to pass on to Claim 2, but in so doing they are neglecting to check what I have termed the second phase of claim drafting. Both from reading printed specifications and from marking examination papers, I am convinced that it never occurs to a large number of people that they have not said what they mean and certainly do not mean what they said. This second phase of drafting is, or should be, much more a question of scientific accuracy than the first, since, in conception at all events, it is a matter of reproducing in words an accurate definition of the mental picture that has been conjured up. Perhaps I might digress for a moment to give one or two examples of the type of fault that may occur in what I have called the second phase of drafting. In examination paper J for 1936 (below) there was a question concerned with a tube bent into the form of a closed figure and containing a quantity of liquid to serve as a gradient-meter for use in a motor car. Many candidates referred to this as a closed tube, thinking that they had thereby limited the claim to a tube in the form of a closed figure or in other words an endless tube, but if they had thought about it they would have realised that the term ‘closed tube’ would include a straight tube closed at both ends. Again, many candidates stated that the tube was filled with liquid. Since the indication of the gradient was given by the surface of the liquid, the instrument would obviously have been quite useless if it had been filled with liquid. It was about that time that Mr Leistikow and I motored across Europe and we often found it prudent to carry a few bottles

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8. Brushing up our drafting of beer. Some of the candidates’ claims would have been invalidated by this prior user, but had one said to any candidate: ‘Do you intend your claim to include a bottle of beer in the back of a car?’ I feel confident he would have said: ‘No!’ This was an example of a drafter not saying what he meant, or in other words not making his wording coterminous with his mental picture. It is therefore also necessary to scrutinise the claim carefully to see whether it includes something which it is not intended to include and to see whether it incorporates all the features which appear to be essential to the invention and does not introduce any undesirable limitation. One method of doing this is to read through the claim, trying as far as possible to banish from one’s mind the construction actually employed and to make a rough diagrammatic sketch of what the claim defines. Generally it is best to attempt to be rather stupid when doing this, and imagine oneself a rather obstinate artist drawing just what was not intended, but always complying with what is required by the wording of the claim. In this way it is probable that the candidates who referred to a closed tube would in many cases have drawn a straight closed tube and realised that something more was required in their claim. This process of translating the words into little diagrams is the converse of that described previously which involved translating little diagrams into words. It may also be useful at this stage to make a list of all the elements of the specific construction and see whether the essential ones are represented in the claim. This should be done with caution as the claim may be such that individual integers are not recognizable in it. Let us consider, as another example, a claim to a pendulum compensated for temperature (below) reading as follows: ‘Apparatus comprising an iron rod rotatable about its top end, two or more brass rods supported vertically from its bottom end, and an iron rod depending from the top of each brass rod, the last mentioned iron rods being yoked together at their lower extremities.’ In the first place the claim starts: ‘Apparatus’. This may be satisfactory in some cases but it gives no clue to what it is all about, or how it is to be arranged. It leaves the whole burden of defining the invention to what follows. Why not call it a pendulum?5 There is always a danger that something quite different will possess the features enumerated in the claim but will have other features which at once render it impossible for the purpose of the invention. If a claim is drafted in such broad terms as to include a five-barred gate or a grand piano or a gridiron, what

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8. Brushing up our drafting justification is there for saying the inventor (or his agent) never intended it to include such things. He should say what he means. If the claim starts with the words ‘A pendulum’ one can say of such a red herring: ‘It is obviously not a pendulum.’ Now let us look again to see if the claim includes all we wish to include and excludes all we wish to exclude. The whole point of the pendulum claimed is that the weight is not to go up or down with changes of temperature. But the claim has no reference to any weight at all. Surely we ought to include a reference to a weight.6 It is limiting the claim to an essential and excluding constructions which would be pointless and inoperative. Now does the claim cover all one wants to cover? Putting oneself in the shoes of an infringer and selling one’s ingenuity to work to devise a construction which falls outside the claim and yet enjoys the advantages of the invention; we have not far to seek. What if we turn the thing upside down and attach the pivot to the yoked iron rods and the weight to the single iron rod? This illustrates a common fault, namely, describing or claiming a construction only in one position or condition. In a specific description it is often convenient, and probably permissible, to describe a structure in its normal position if it has one, and there can be no possible objection to this if it is stated that the description assumes the structure is in the normal position or the position shown in a particular drawing. In a claim this becomes more doubtful and a claim would be on very doubtful ground if it referred to the upper and lower ends, for example, of an engine cylinder which is described with its axis vertical but could be arranged with it horizontal. The pendulum example quoted above is even worse than this, since only part of the structure is inverted. If the thing is to work at all as a pendulum the weight must be below the pivot and hence it is not possible to argue that you have only to invert the complete article to make the claim read on to it. If the connection to the weight is specified in the claim then when it is one way up it is excluded by one limitation and when it is the other way up it is excluded by another limitation. This aspect of accuracy is discussed further in a later section, but it may be said at once that in its most serious form it may render the patent very nearly useless. Before leaving Claim 1, the wording must be checked for inaccuracies, inconsistencies, non sequiturs, carts before horses, and other similar faults. We will leave these questions to section 2.6 in which we discuss the general question of accuracy.

The broad fighting claim – nicely graded subsidiary claims Let us assume now that we have arrived at our final wording for Claim 1. As discussed in Part 3, this may have involved some decisions as to policy or some compromise. It may be that we have decided to risk a claim broad to the borderline of vagueness, and possibly in somewhat functional form. We may want to draw a comprehensive search, but of course we cannot be certain that the claims initially filed will not be accepted as they stand. This leads on to the question of the second claim of the specification, which is often the weakest part of a shoddily-drafted specification. This is particularly apt to be the case where the first claim is a broad functional claim. It may be that the client has himself set out the purpose of the invention and the agent sees fit to claim in his first claim any structure achieving this purpose. Or it may be that the agent has himself dug out the matter for a broad first claim. Then he heaves a sigh of relief, like a man on the completion of an arduous and unpleasant

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8. Brushing up our drafting task, and settles down lightheartedly to draft a series of constructional claims packed with arbitrary limitations and describing in more or less pictorial detail the specific constructions. This is no good at all. If he sees fit to put in a broad functional first claim to anything fulfilling a given function, he must then analyse the specific constructions to see what in them represent the essential features for achieving that function. In this way a nicely-graded series of claims can be drafted, each of which introduces some perhaps minor but definitely advantageous feature as compared with earlier claims. Here again one may go to first principles. The question is what is the point of a subsidiary claim, and I take it the answer is to give protection, either under section 32A7 or by amendment, if the broader claims are found to be invalid. So one may check for too great or too small a gap between claims by asking: ‘If Claim 1 were just anticipated, could one support a broader claim than that?’ or, on the other hand: ‘If Claim 1 were found to lack novelty or patentable subjectmatter is there any chance of Claim a being upheld?’ This last point brings me on to consider the incidence of one claim on another. It has been emphasised before and I will emphasise again that the wording of an appendant claim may affect the interpretation of an earlier claim in a way quite unintended by the shoddy drafter. Thus, if claim 1 refers to a peg and claim 2 says: ‘in which the peg is of circular cross-section’ claim 1 will be interpreted as covering square pegs, and if they have to fit into round holes claim 1 may be bad. Such a claim has been well described by Mr Gill as ‘worthless but not harmless’.8 I think this trouble only arises from slack drafting and will not do so if one has a really clear idea of what are the added features of each claim and what advantages follow from them. Again the little marginal sketches may be used to indicate what each claim covers and how they differ. One other point I might mention is the undesirability in general of including in any claim features which are not essential and which introduce limitation but no subject-matter. People sometimes feel that a claim is rather weak and decide to narrow it down by limitation to a feature that has nothing whatever to do with what is already claimed, and without considering whether the subject-matter is in any way strengthened. If both claims are equally weak one might as well have the broader one.

The introduction I think most people agree that in normal cases it is desirable to include in the early part of the specification some broad statement of the invention. Some suggest that the statement should not adhere to the words of the claim but I think any departure is liable to be dangerous.9 If one has spent time and thought bringing the claim to the best wording one can think of, it seems illogical to employ a second best for the statement of invention. If its meaning is identical why not use the same words, and if not, surely it introduces grave danger of ambiguity. On the other hand the introduction to the specification close to the statement of invention is just the place to put in chatty explanations, examples of rather obscure generalised phrases, references to purpose and so forth. On the same basis there may even be occasions for putting some sort of restatement of invention at the end of the specification to be read only by those initiated into the mysteries of the specific examples.

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8. Brushing up our drafting On the other hand there are cases when I think drafters often err in not putting the statement of invention very early in the specification, but waiting until they have completely stolen all their own thunder. Some inventions are the solution of a problem which has cost many a pint of midnight oil. In such a case by all means make a song about the problem. But many inventions are just a bright idea (perhaps more are just an idea). A dress shirt with a zip fastener. The more we elaborate the annoyances of being late for dinner and the expense of the consequent taxi, the convenience of the well-known zip fastener on the ladies dress, tobacco pouch, brief case, hand bag and even golf jacket, the less epoch-making seems the idea of putting a zip fastener on the dress shirt. If you put it all in after the statement of the invention it makes just as good a legal document and much better window dressing. Perhaps I might include a reminder that a specification is not an advertisement, and inventors, like mothers, often think nobody has ever produced anything quite so beautiful. In blowing the trumpet of an invention phrases guarded to the extent of vagueness are in my view permissible. I regard as most dangerous phrases like: ‘The object is to obtain 100%. efficiency’ and much prefer: ‘The object is to improve the efficiency and certain constructions may achieve an efficiency approaching 100%’. It must be remembered that even if the claim made is true of the inventor’s preferred construction or even of all the inventor’s constructions, it may well be quite untrue of many constructions coming within the claims, and even some marketed by an infringer. In the case of the liquid level mentioned above some candidates said the sensitivity was enormously increased whereas a little consideration would have made it clear to them that the greatest possible improvement (involving a limb of infinite cross-section) would only have doubled the sensitivity. To give another example, paper J of 193510 was about a centrifugally variable drive for a windscreen wiper. The object was to keep the speed of the wiper more nearly constant than that of the car. ‘How constant?’ ‘The more constant, the better.’ In these circumstances it is shoddy drafting to say, as the majority of candidates did, ‘substantially constant at all car speeds’. First of all, what is meant by ‘substantially constant’? Then when the car stops the wiper stops so we can only consider a certain range of car speeds. Suppose we say 5-60 m.p.h. existing wipers have presumably been usable with a speed variation of 1,200%. Actually the range of the gear ratio was about 3 or 4 to 1 and the wiper speed variation might be reduced from 1,200% to 300%, which could hardly be called substantially constant. The question merely said the device prevented the wiper speed rising in proportion to that of the car.11

Accuracy It may seem merely a statement of the obvious to say that everything in the specification must be accurate and true, but it is an aspect of drafting that requires continual watchfulness. I have referred above to the fault of saying that the object of the invention is to achieve results that are not, or need not be, in fact achieved. Then again one must avoid saying, for example, that the object is to produce a cheaper article when in fact the article is more expensive but possibly worth it due to its higher efficiency.

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8. Brushing up our drafting For the rest there is little to say of a general nature, but a few examples may be mentioned. In the gradient meter question already referred to it was perhaps permissible in the specific description to refer to the vertical and horizontal limbs of the tube, although the instrument’s primary function was in connection with hills where this description was not strictly accurate. But it was definitely shoddy drafting to go a stage further and refer to the horizontal limbs being inclined to the horizontal to prevent air locks, or to fluid when liquid was essential, filled when containing was intended, parallelepiped when trapezium was intended, or to refer to the difference between the levels of the two ends of the liquid column, or the diameter of a tube that was not necessarily of circular section and of which one part was definitely described as flattened. Then again consider the claim quoted above to a compensated pendulum, which starts by referring to an iron rod rotatable about its top end. This is putting the cart before the horse for if the rod is horizontal it has no top end. It may be argued that the reference to a top end implies that the rod is not horizontal, but if possible it would be better to say so directly, and not merely by implication. Then the phrase gives no clue as to the axis of rotation, so the obstinate artist may draw a picture of a sloping rod pivoted about a vertical axis.

Jargon and wordiness Accuracy throughout the specification is essential, but not high-sounding pomposity. Some people seem to think that in the pendulum claim one could not be scientifically accurate without saying: ‘a rod disposed with its length extending vertically or substantially vertically and mounted at its upper extremity so as to be rotatable about an axis which is substantially horizontal and which passes through that extremity’. I think we should not be far wrong if we said: ‘hanging from a horizontal pivot near one end’. Mr Tennant used to say something to the effect that: ‘Sesquipedalian expressions of a redundant character inherently introduce a tendency towards obfuscation’, but: ‘short words make things clear’. In my paper on ‘Clarity and Brevity in Legal Documents’12 I made some references to the unfortunate choice of language (I will not call it English) adopted by some patent agents. No doubt there are those who feel that their first duty to their client is to alter the wording he has used to describe his invention, and that once they have altered the client’s clear but specific description into a vague and ambiguous but high sounding jargon their fee is earned. There are those who cannot bear to call a spade a spade and the handle of a spade the handle of a spade, but must cloak such rude implements in the guise of, ‘said first aforementioned cultivating member associated with said second aforementioned cultivating member’. It is as if they purposely use obscure language in order to make the specification a mystery unintelligible to the uninitiated, but they should remember that their client will be among the latter class, and if an agent has not perfectly understood his client’s intention the client may point it out when he has the specification for approval, but only if he can understand it, and not if it appears to him so much unintelligible jargon. Even to the agent himself clear language goes with clear thinking, and if the invention is expressed in an obscure and roundabout way it will probably be thought out in a similar way. So too a judge is less likely to condemn for ambiguity a definition which strikes him with vivid clarity than one which he has to read a dozen times and then ask

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8. Brushing up our drafting Counsel to explain before he begins dimly to discern what is intended. Most people are familiar with plain English, so let us use plain English wherever plain English will do the job. There are certain words I have never heard used in conversation or in a book, but somehow they are always cropping up in patent specifications. Words like ‘thereto, therefrom, thereafter or thereup’, sound more pompous than ‘to it, from it, after it or up it’, but are they really any clearer? In this connection one must also have regard to its effect on the sentence in which it occurs. Such words as I have mentioned often make a sentence more cumbersome than it otherwise might be. Then again the word ‘said’ meaning ‘the’ is largely peculiar to specifications, though it has infiltrated into technical jargon generally. ‘A wheel on said shaft’, conveys very little more than the English equivalent ‘A wheel on the shaft’. Christening of individual parts is often a great help towards achieving a clear and easy style rather than a heavy and cumbersome one. In many cases this can be done without introducing any restriction, and in such cases the part’s nickname can be used both in the claims and description. In other cases a broader term may be required in the claims, but the nickname will none the less be of great value in the description. It should be unnecessary to add that having chosen a name one should stick to it. I believe one cause of cumbersome and wordy expressions is the attempt to correct a fault such as ambiguity by adding words rather than rewriting the sentence or if necessary the paragraph. It appears as if the writer, dissatisfied with a word or phrase, seeks to correct it by adding a further word or phrase, and if still dissatisfied adds still more words until he has built up a monstrous edifice of tangled verbiage. In many cases this could be avoided by cutting out the faulty phrase and substituting a better one. A horrible example of this occurs in the Trading with the Enemy Act, 1939 (c. 89).13 Here the drafter has used the phrase ‘in particular’. This phrase is inherently ambiguous as nobody seems to know whether what precedes it is limited to what follows it or whether the latter is merely by way of illustration. The drafter has seen this, but instead of cutting out the ambiguous phrase he has inserted further words until he has built up the monstrous phrase ‘in particular but without prejudice to the generality of the foregoing provision’. In fairness to him he has removed the ambiguity, but at what cost? We all know what he means. In two words, he means ‘for example’. It may be thought pedantic to criticise a phrase such as this, since, if carefully examined, its meaning is quite clear. But if every phrase in a specification is inflated with windy jargon in this manner the result becomes most indigestible. This is an aspect of the choice of words which needs to be borne in mind throughout a specification, or indeed any other document. Whereas a single cumbersome word or roundabout phrase may seem adequately clear and reasonably concise when standing alone, the cumulative effect of a number of such phrases put together in a specification may be intolerably cumbersome.

Arrangement of description – keeping the reader in blinkers Some specifications seem to be drafted with the object of keeping the reader as much as possible in the dark as to what it is all about, although ultimately it may be impossible not to reveal the secret of what is being described. This seems to apply particularly to specifications drafted in the US.

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8. Brushing up our drafting It may be partly that what we regard as plain English is regarded by our friends in America as an obscure and archaic dialect, but I think the chief explanation lies in certain rules of US practice. I have received official objections on the ground that I have described the function of a mechanism before describing the mechanism.14 This in itself may seem quite reasonable and undoubtedly it prohibits what is an undesirable extreme. But if it is made a rigid rule the natural tendency is to force practice to the opposite extreme to be quite certain of avoiding objection. This means never saying what a mechanism is for, until every nut and bolt of it has been described. The effect is aggravated by another feature of US practice. I will quote a letter from America commenting on a 67-page US specification; it said: To understand this it must be remembered that the value of a US patent is also linked with the extent of the description, and the technical contribution that it gives to the art. That means that the courts are more likely to sustain patents where the applicant has been liberal and efficient in his efforts to describe everything he knows. Such policy, as far as I know, is not used by the courts in Europe.’ His last sentence is not of course quite correct as British courts attach very great importance to sufficiency of description, but the difference is that they measure disclosure by facts and not by folios. I am not for a moment criticizing the practice of another country or suggesting that they should alter it to suit me. But the question assumes relevance when a British Specification has to be prepared corresponding to a US, and it would naturally save trouble to adopt the same wording for the description. It is interesting to try to analyse the reasons why certain such descriptions seem less clear than they might be. To begin with, the mechanism is not described as a whole, starting with a main framework indicating the main parts and what they are for, and later describing the details of the parts and how they perform these functions. If this is done the reader can appreciate at every stage how the details fit into the general picture. This is impossible if the description starts in one small corner of the mechanism with minute details the significance of which is veiled in mystery until the end of the last chapter. (It is of course possible the writers of these specifications are more familiar with the writing of detective novels.) This is carried to an extreme in the case of phrases such as ‘the function of which will presently appear’. Surely in most cases one could indicate the purpose very briefly, even if details are to follow later, by using some phrase such as ‘to hold the baby as described in more detail below’. If this is not done, the reader is expected to carry in his head details of a mass of meaningless structure; shafts and wheels, first-mentioned members and second-mentioned members, until at the last moment, after wading through pages of description, he is let into the secret of what it is all for. A very good test of a description is that it should be intelligible without any reference to drawings. In fact if the description relies entirely on drawings it is not really pulling its weight, and there is no doubt that the labor of following a description is enormously increased if every phrase has to be interpreted by searching the drawings to find the corresponding reference letter. Perhaps the worst type of description is that which starts, ‘A is a shaft, B is a wheel, C is another shaft’. Such a description gives no idea at all of the relationship between the various

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8. Brushing up our drafting parts referred to, and in the absence of drawings conjures up no mental picture of any sort at all. The length of the specification is not unduly increased by employing a phrase such as ‘the mechanism includes a driving shaft A carrying a wheel B and mounted coaxially with a driven shaft C’. This gives at any rate some idea of the arrangement and makes it very much easier to identify the parts on the drawing without searching about for the reference letters concerned. Even if the length of a specification is slightly increased by adopting a pictorial style it must be recollected that the length of a specification is really unimportant. Again going to first principles the purpose of the specification is to convey a description of the apparatus as clearly as possible, and in fact a reader may obtain a clear picture more rapidly from two pages of clearly-worded pictorial description, than from a single page which he has to read three times.

Inspection and checking Some patent agents, who have been concerned with the methods of inspection used by industry during the war, such as the multiple gauge which with a single blast of air checks a dozen dimensions of a cartridge case with incredible accuracy, may sometimes wish they could subject their patent specifications to some such automatic scrutiny, inserting Claim 1 into a neat little slot and reading on a huge dial, too narrow, too broad or OK. Although I cannot offer anything of this sort it may be worth summarizing certain questions which can usefully be asked in reviewing a specification to help one judge whether it covers the invention as well as possible. No doubt many other questions may be added but it seems that some of the more important are as follows: 1. Has Claim 1 utility; i.e. does it include the features from which the advantages of the invention follow? 2. Can Claim 1 be avoided by any obvious modification? 3. Has Claim 1 patentable subject-matter or does it cover something obvious? 4. If Claim 1 is weak are there strong, independent sub-claims? 5. Do the claims say what they mean and mean what they say; i.e. do the mental picture and verbal counterpart agree? 6. Can the claims be avoided by selling subordinate integers? 7. Do the claims cover the construction when empty, idle, placed on its side, upside down, etc.? 8. Do the claims include any limitations which lend no patentable subject-matter and are not essential to the purpose aimed at? 9. Are the claims based on any doubtful theory? 10. Are the claims accurate in substance and terminology? 11. Can the claims be made less pompous and more succinct, for example, by making them more colloquial or pictorial without sacrificing accuracy? 12. Are all the client’s information, modifications and remarks included (if this is desirable)? 13. Is there sufficient explanation of parts, operation and terms, and mention of advantages, bearing in mind the state of the art and the need for clarity to a judge? 14. Are any doubtful terms defined, in particular ‘the type specified’? 15. Is the description of the drawings complete in itself?

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8. Brushing up our drafting 16. Is the technology consistent throughout the specification, especially if the claims have been amended? 17. Does the description lead up to and amplify the claims and set forth the purposes and points of the features claimed? 18. Is any unnecessary or doubtful theory included, and if so is it guardedly introduced? 19. Is any unnecessary or doubtful modification described, and if so is it guardedly referred to? 20. Are there any superlatives or are results claimed which need not be obtained, or worse still are not even obtained by the preferred construction? 21. Is everything stated in the specification true? 22. Are there reference letters to all parts of the drawings likely to be pointed at in Court?

Policy in drafting claims Form of claim to suit each case The question of the form of claim to be adopted is included in this part of the paper since some members may make it their policy to prefer one type of claim to another. One man may always start: ‘In a so and so the combination with...etc.’, another starts: ‘A so and so comprising in combination’, another prefers: ‘A so and so in which or wherein’, while others use the word ‘characterised’. The question of functional claims is discussed more fully in section 3.2. My own view is that the patent agent should have all these forms of claim in his repertoire and in each case should select the form which best suits the particular invention. I would suggest using the term ‘characterised’ only when a single feature really does characterise the invention, and one of the combination forms when a combination of features is involved, especially if each feature by itself is already known. But even here there is no hard and fast rule and each case should be considered on its merits.

How broadly to claim In some cases it is fairly obvious that the invention enables certain clear-cut advantages to be obtained; and it is relatively easy to complete one’s mental picture of the invention to be covered. In other cases it may be extremely difficult to decide how broadly to claim the invention, and there may be no limit to the possible breadth beyond the fact that the claim becomes impossibly vague and functional. One example of this difficulty is where the invention is a case of, for example, ‘the hotter the better’. It is clearly asking for trouble on the ground of ambiguity to limit the claim by a phrase such as ‘very hot’ and the only way to make the claim definite is to select an arbitrary limitation such as ‘above 1000°C.’ Then, of course, if the nearest prior art was just under 500°C an infringer may get much of the advantage of the invention by using 950°C. On the other hand if our claim specifies ‘above 500°C’ it includes at its extreme limit a case having no appreciable advantage over the prior art. Presumably the best makeshift is to select an adequate breadth of no man’s land between the claim and the known prior art and be content to let the infringer into this territory.15 Further limitation can, of course, be brought into later claims. It may be

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8. Brushing up our drafting desirable to make it clear that there is no magic about the limits chosen, by stating specifically that the precise temperature is not critical. The matter is, of course, made worse if the prior art is vague about the exact temperature, and uses phrases such as ‘heated to a high temperature’. If any members have a real solution to this problem I should very much welcome it. The question of functional claims is another about which opinions differ, but my own view is that this again can be usefully viewed from first principles. If this is done it will at once be clear that functional claims cover a wide range of very different types. The purpose of the claim is to tell the reader as clearly as possible what he is prohibited from doing, and if this is done most easily, most clearly and most unambiguously by means of a functional claim there seems no reason why a functional claim should not be adopted. On the other hand if the functional claim merely sets the reader a problem, and purports to prevent him from adopting any solution that he may devise, with whatever ingenuity and research, then it is clearly not defining an invention that the inventor has made, but calling upon the reader to make an invention himself and then telling him he may not use it. A claim of this type was once described by Mr Ballantyne by the term ‘Free beer,’ covering, as it does, something which many people regard as highly desirable, but which nobody has so far found a process of producing. Since the No Fume decision16 the profession in general views functional claims more favourably. This brings me on to one of the most general questions of policy in relation to the drafting of claims, namely its dependence on decided cases. Naturally enough the interpretation of specifications is to a considerable extent affected by High Court decisions in particular cases, and we should be foolish not to give due weight to such decisions and to any advice we may from time to time be fortunate enough to receive from those closely connected with court work. At the same time I suggest that such decisions need not be followed too slavishly in drafting specifications. The vast majority of specifications never come into Court at all. For example, in the five years from 1934 to 1938 the number of complete specifications accepted was about 100,000 whilst the number of patents forming the subject of cases reported in the R.P.C. (including applications for extension) was about 60. Admittedly the remainder are viewed in the light of court decisions, but there is always a margin of doubt as to the decision that would be obtained, and the deterrent effect of the cost and trouble involved in infringement proceedings. A gloomy counsel may well advise a prospective plaintiff that a certain claim is weak, but at the very same moment a cautious patent agent may be advising a potential defendant that it would be most inadvisable to risk an infringement action. Moreover, one must consider the alternative. It would of course be very nice to have a claim which was much stronger and was also infringed, but too often if the doubtful claim were not there the patentee would be advised without any doubt at all that the patent was not infringed. A further point is that the Court decision may subsequently be over-ruled, or altered by statute. In brief, there is one over-riding consideration which applies to the drafting of claims, namely that it is easy to cancel them later on, and utterly impossible to put them in [after grant]. Naturally there is a limit to the extent to which this policy should be carried, but if there is any serious doubt it would appear that the cautious policy is to include the claim rather than leave it out. A doubtful claim may present a difficult task to counsel or experts. The lack of it may present an impossible task.

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Mullard v Philco17 We are all familiar with the decision in the pentode valve case in which the claim to a valve in its circuit was upheld, but the claim for the valve per se as an article of manufacture was held not to involve patentable subject-matter although it was new. It would be impertinent for me to question the decision of all the courts which decided this case, but from my limited knowledge of the case I entirely disagree with the decision. It is a principle which if carried to its logical conclusion would result in the most ludicrous absurdities and render all patent protection worthless. A chair would be unpatentable except in combination with a person sitting on it, since it clearly fails to perform its function when there is nobody sitting on it. A sparking plug would not be an infringement of a patent when made by the manufacturer or when sold by the vendor, nor even when fitted to a motor car if the motor car contained no petrol. It might even be argued that the sparking plug would cease to be an infringement every time the user of the motor car switched off his engine. Be this as it may the decision has been given and cannot be altered merely by my disagreeing with it. But this does not mean that it must necessarily be followed in drafting claims. In the first place it may be over-ruled or altered by statute long before the patent expires or comes into Court. Secondly, it is not suggested that the claims to a subordinate integer should be substituted for claims to the complete combination but that they should be included in addition. If it is not intended to rely upon them in an action they can always be cancelled.

Sufficiency of claims It is sometimes suggested that a claim is liable to be held invalid if it does not specify all the features which are necessary for the mechanism to be operative. In a chemical case if the claim refers generally to halogens and one of the halogens will not give the desired result it is generally agreed that the claim is invalid. On the other hand there must be a limit to the extent to which this is applied, at all events to mechanical cases. If a claim refers to a piston and cylinder it will generally be unnecessary to state in the claim that the piston must fit the cylinder, and that if it were either too large or too small the desired result would not be obtained. The body of the specification must describe one means of carrying the invention into effect in sufficient detail to enable a competent technician to do it, and clearly the claims cannot be expected to go into the same detail nor need the claims be limited to that one embodiment. No doubt members will have various opinions on this question but it is suggested that there is a distinction between the extent of detail required in connection with features which are germane to the invention and features which are well known. For example, if the invention related to a shock absorber in which the whole point was that the piston did not fit in the cylinder, it would clearly be essential to specify this in the claim, whereas in the ordinary way a reference to a piston and cylinder would be assumed to refer to a cylinder with a piston fitting it.

Subsidiary claims We have discussed in part 2 the purposes of subsidiary claims, one of which is to obtain the benefit of section 32A.18 The question arises whether this section applies to a portion of a claim; for example, an alternative or a preferred or optional feature.19 It is thought that the

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8. Brushing up our drafting Court might reasonably be expected to give relief where preference is expressed, or even an optional feature included, on the ground that this implies selection, and in fact a claim of this form is merely a more concise way of writing what could be equally well covered by two separate claims. On the other hand a direct alternative is merely a means of expanding the scope of a claim; for example, a reference to the right hand or the left hand could be expressed generically by the phrase ‘one hand’. It is therefore thought that where a direct alternative is included in a claim there is no suggestion of selection, and if one limb of the alternative lacks novelty the Court would not grant relief in respect of the other limb. One of the most widespread forms of alternative embodied in British claims is that caused by making claims appendant to ‘any one of the preceding claims’ and this is discussed in the next section.

Notes and References 1. The reference is to the Second World War, 1939-45. 2. Leistikow, F.W.R., ‘The Institute Final Examination’, Trans. C.I.P.A. LXIV (1945-46), 41 3. [Editor’s emphasis]. Mr Micklethwait’s proposition is substantially the same as that set out at the conclusion of the inventive step chapter at page 37, The fundamentals of good patent drafting have remained little changed. 4. [Editor’s note: many of us have contributed suggestions in outline. Bur we are not persons skilled in the art, and straying into detailed design is indeed dangerous.] 5. [Editor’s note: ‘Pendulum’ is a field-defining feature, whereas the iron rods, brass rods and yoke are other technical features. The relationship between these aspects of a claimed invention is discussed under Technical Field beginning at page 185.] 6. [Editor’s note: Or to a fixing for a weight if the pendulum body and the weight are components that might come from different suppliers and be assembled together subsequently.] 7. of the Patents and Designs Act 1907, as amended by the Patents and Designs Act 1932 8. The Effect of Recent Decisions in Patent Cases. Trans. C.I.P.A., 1936-7, at p.63. Note that the same point is referred to by US practitioners as ‘claim differentiation’ and can be important for the construction of the claims of a UK patent. 9. [Editor’s note: Mr Micklethwait’s comments were made before the entry into force of the Patents Act, 1977, Section 76 or Art. 123(2) EPC. His comments remain applicable for the patent as granted, but may be inadvisable for the specification as filed, where some elements inconsistency between the written description and the claims may be deliberately introduced in order to preserve flexibility. Furthermore, some US practitioners now omit a statement of the invention in order to minimise the risk of the US courts reading unintended limitations into the claims.] 10. Published in CIPA Transactions for 1935. 11. See also Kraft Cheese Co. v McAnulty, (1931) 48 R.P.C., p.536; No Fume, Ltd. v Frank Pitchford and Co., Ltd., (1935) 52, R.P.C., p.231. 12. Trans C.I.P.A LX (1941-42) p. 220 13. Section 1.2a, see also Trade Marks Act, 1938, Section 37.3. 14. [Editor’s note: The approach to drafting has changed, and such objections are nowadays uncommon.] 15. [Editor’s note: It is very often not desired to leave a no-man’s land. Then a phrase such as more than 500°C excludes 500°C itself and covers all temperatures above this value; this format is extremely useful, especially for process-related inventions.] 16. No Fume Ltd. v F. Pitchford and Co., Ltd., (1935) 52 R.P.C. at p.231. 17. (1936) 53 R.P.C., p.323 discussed below. [Editor’s note: The Mullard decision which gave concern to Mr Micklethwait did not prove influential and is nowadays seldom cited. Such an invention

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8. Brushing up our drafting Permutations and combinations of claims It is not always realised what a lot of claims a British specification contains. Claim 1 is of course only one claim, and so is Claim 2. When we come to Claim 3, if it includes the phrase ‘as claimed in Claim 1 or Claim 2’, it is obviously in fact two different claims. Similarly, if Claim 4 contains the phrase; ‘as claimed in any one of the preceding claims’, it is in fact four claims, since it may be appendant to Claim 1 or Claim 2, or either of the two Claims 3. And so it goes on until when we get to Claim 21 we have totted up no less than 1,048,576 separate claims, and Claim 22 adds a further 1,048,576. It is not suggested that this is necessarily a reason for not adopting this form of wording for appendant claims. It is not the arbitrary result of adopting a particular form of words, but is a natural mathematical outcome of the fact that, if we have 22 separate features which can be combined in different ways, there are over a million separate combinations of these, bearing in mind that they must all possess unity of invention, in that every combination must include the first feature. could be treated as a ‘distributed invention’ (see the discussion on this topic at page 218 onwards) with the main independent claim being for the pentode valve in place in an amplifying circuit for which the valve was intended, with a second independent claim to the pentode valve for use in the previously defined amplifier. In order to use the distributed invention format, however, the claim to the component must be novel and inventive. The problem for Mullard was that there had been a progressive increase in the number of electrodes within an evacuated glass envelope from the single electrode lamp of Edison to the two electrode rectifier of Sir Ambrose Fleming, then to the three-electrode amplifier of Lee DeForest, and again to four electrode thermionic valves. Against this background the House of Lords did not find it credible that there was inventive step in adding a further electrode, especially since a pentode valve might find utility in circuits whose design owed nothing to Mullard’s invention, and on this basis their decision is understandable.] 18. Of the 1907 Act as inserted by the 1932 Act. 19. See Williamson, E., ‘Alternatives in Claims’, Trans. C.I.P.A., LXII (1943-44), p. 44 20. [Editor’s note: The law has developed since Mr Micklethwait wrote his paper. Sections 27 and 75 of the Act now require the Court or the Comptroller in considering whether or not to allow the application to amend to consider any relevant principles under the EPC, which is being amended to allow the claims of granted specifications to be amended as of right provided that they comply with Articles 84, 123(2) and 123(3) EPC. In the circumstances he postulates, an application to amend will be necessary but should be available as of right.] 21. [Editor’s note: This comment was made before the decision of the House of Lords in Raleigh v Miller (1948) RPC 141, (1950) 67 RPC 226, afterwards referred to as the ‘hub dynamo’ case. The patent in issue related to a commercially valuable invention, and the only claim that has held to be valid and infringed was the omnibus claim. For a more recent example of a patent that was saved from ineffectiveness by the omnibus claim see Rotocrop v Glenborne [1982] FSR 241. The continued availability of ‘omnibus claims’ in the UK is out of line with EPO practice and is questioned periodically. The Editor’s view is that such claims provide valuable fall-back protection for a patentee, and should be included whenever appropriate. It is submitted that their scope is neither broad not narrow but, when carefully drafted, the same scope as a Court would have accepted for the patent in issue if it had been granted under the nineteenth-century UK law where the inclusion of detailed claims was not required and the ambit of protection was decided by the court on the basis of the specification as a whole. Omnibus claims should be written as independent claims with an informative preamble, but should not be made dependent on one of the independent claims, otherwise the opportunity to argue for broadened scope as in Rotocrop may be lost. Both of the above cases are required reading for students.] 22. Williamson, E., ‘The Omnibus Claim’, Trans. C.I.P.A., LX (1941-42), p. 113

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8. Brushing up our drafting We must therefore take the responsibility either of including all these combinations or of ignoring some of them. In either case it is necessary to consider the results very carefully. In the first place with regard to the question of selection it seems clear that it cannot possibly be said that if one of these combinations is novel and inventive, or even if a little group of a few thousand are novel and inventive, the claim can support a selective interpretation covering just that combination or group. For example, if Claims 1, 2, 3 and 4 respectively introduce features A, B, C and D it is quite conceivable that A + B + C would be old and A +B +D would be old, but that A + C + D might be new and useful and used by an infringer. In short, the first three claims would be anticipated and Claim 4 would be anticipated as appendant to Claims 1 and 2, but not as appendant to Claim 3. This is an instance where the drafter of the specification, if he had foreseen how things would turn out, could have drafted the specification so as to include the alleged infringement in a valid claim, but in fact has not done so. This emphasises the desirability of concentrating on combinations of claims which are likely to be of importance and which co-operate with one another in some particular way, although it is quite clearly impossible to include claims directed to all the combinations and in many cases it will be out of the question to hope to foresee what combinations will ultimately prove novel or be adopted by competitors.20

The omnibus claim21 The question of the omnibus claim, directed to the particular construction shown in the drawings, is one that has already been discussed very fully, and I do not propose to add to what has already been said about it.22 Indeed it appears to be a never failing topic for argument and might be described as ‘A widow’s cruse filled with bones of contention.’

Concluding remarks In conclusion I must apologise for having taken up so much of your time and yet being so far from having exhausted the subject. I can only hope that my remarks may suggest new trains of thought and resurrect old ones, and that a discussion will follow that will represent a real contribution to the subject of drafting, which occupies so much of our lives.

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9. Claim drafting – the British tradition By M.J. Daley This paper was first published in (1981-82) 11 CIPA 110. It was republished at [2003] CIPA 431; and in Fundamentals of Patent Drafting (2006) by Paul Cole (page 175). It builds upon the preceding Micklethwait paper and provides useful introductory material for students as well as advice that all of us in the profession should follow.

ver the last ten years much emphasis has been laid on change in our profession and the need to seek new skills and possibly even a new role. Implicit in this emphasis has been the suggestion that the traditional skills of claim drafting and interpretation have somehow become less important. I am in strong disagreement with this. I believe, on the contrary, that as a claim can now define protection in a number of countries the drafting of that claim needs the very greatest care and skill. A patent agent should, by way of introduction, acknowledge his [Ed.: Throughout the masculine includes the feminine!] principal source and this I have much pleasure in doing. I have been considerably influenced in the preparation of this Paper and indeed through my professional life by Mr E.W.E. Micklethwait’s Paper1 (entitled ‘Brushing up our Drafting’ and I will refer to this Paper specifically from time to time. Everyone here who has not already done so should read Mr Micklethwait’s Paper and the account of the discussion which followed the Paper. It is perhaps of value to reflect, by way of introduction, on the nature of the exercise of claim drafting. Those seeking to instruct patent law and practice on an academic basis have, in my view quite correctly, avoided claim drafting as a conceptual exercise and rather concentrated on the form and possible effect of claims. Most practitioners, I believe, take the view that claim drafting though requiring without doubt acquired knowledge and intellect is essentially a skill or craft only properly learned by carefully supervised practice over a considerable period of time. One of the attractive features of our work is that this learning process only stops when we retire. It follows from this that no-one has produced, or is likely to produce, a credible and effective rigorous analysis of the craft of claim drafting and hence a means of learning the craft on an academic basis. Most of us owe such skill as we have to our teachers and colleagues. In this spirit I offer some comments based on my own experience. The drafting of a patent claim is an exercise which can be divided into several stages.

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9. Claim drafting – the British tradition Stage I The analysis of the received disclosure to produce a mental picture of the invention which it is desired to monopolise. The phrase ‘mental picture’ was used by Mr. Micklethwait and seems quite apt and is so familiar to me that I propose using it in this Paper. I apologise to those of you who do not think, as I do, in pictorial terms and offer respects to those who are able to develop concepts in terms of words without the need for intermediate steps. The opening phase of the analysis must be a thorough technical comprehension of all the material communicated to you by the inventor or your correspondent, and I stress the word ‘all’ for it is a common error to come to a view of the invention too early and to consider only material which seems to fit our own premature conclusions. It is sometimes tempting to pick out a few prominent features which seem at first sight essential and to organise them into claim language which looks professional and may even satisfy a client and the Patent Office. The drudgery of reading through much unnecessary material seems to be avoided. It will be purely fortuitous if such a claim, drafted without a proper analysis of the received disclosure, does have the correct scope. Only when all the communicated material has been totally understood, preferably to an extent such that it can be held in the mind while distanced from your written information, should the work of synthesising the mental picture begin.2 For this vital early stage of receiving and comprehending information the draftsman needs a good technical background but more importantly he requires an appetite for technology. He should have a genuine interest in the subject-matter in question and a desire to expand his knowledge. I believe, with the undoubted need to acquire new legal, linguistic and other skills, there has been a certain tendency to under-emphasise the technical and scientific side of our work. The view seems to be that, if we insist on very high technical entry qualifications, the technical side of work can be put behind an entrant to the profession on admission and before he undertakes his formal training. We also see this tendency in the departure of the Manufactures Paper from our own Chartered Institute Examinations. A patent practitioner must not only enter the profession with adequate technical qualifications but also maintain an abiding interest in technical matters, preferably not merely those confined to those of his own academic disciplines. A wide range of technical interests and hence knowledge is a symptom of the vital quality of what I have called ‘technical appetite’. Let us assume that the inductive work of thorough comprehension, which may involve dialogue with the inventor or our correspondent, is behind us and we can embark on the analysis of the invention and the production of our mental picture which will include all that is essential and nothing more. It is here that the fascinating quintessence of our work lies and we have all observed how some of our colleagues seem to be able to produce this vital synthesis rapidly and indeed almost instinctively both as a result of their innate mental ability and the application of their experience. For most of us, however, some specific mental techniques are required here and whilst referring you to Mr Micklethwait’s Paper may I suggest two techniques that I have personally found helpful. Firstly there is the technique of problem and solution. An inventor usually has some purpose in mind and finds it possible to give a reasonably clear indication of the problem with which he was grappling. The realised embodiment of the invention is before you so you can address

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9. Claim drafting – the British tradition yourself to the vital question of how has the solution been achieved. Expressed as two short questions: (i) What is the inventor trying to do? (ii) How has he achieved his solution? Very often in my experience this line of questioning will at least catalyse the production of the vital mental picture. The second technique calls for a careful and critical assessment of the invention as perceived by the inventor; what has he achieved in actuality? I have always been profoundly impressed with some remarks made by an eminent barrister at the Holborn College Lectures. Addressing himself to the question of ‘broad’ and ‘narrow’ claims he told us that breadth of claim monopoly should be coterminous with understanding of the invention; breadth beyond understanding is mere speculation and will result in invalidity on one ground or the other. As I recall, the example used was that of the notional discovery that common table salt killed dandelions growing on a lawn, leaving the grass unharmed. If that statement genuinely indicated the limits of the inventor’s understanding then that is all that he is entitled to claim. Any extension would be mere speculation; ‘sodium chloride or the like’ would not do as there was no knowledge as to the property of sodium chloride which achieved the desired result. Was it the fact that table salt was white and granular or what? There was no basis to construct the mental picture in other than totally specific terms. If it is known, however, either by evidence or soundly based deduction, that the solubility of the halogen ion is involved, as is the fact that dandelions have broad leaves, then we can do a little better.3 It may be that we will have to prod and question an inventor and even make him do more work but this must ultimately benefit the patentee. Let us take a mechanical example where often we are confronted with a machine stated to have an improvement in performance arising from a specific modification. The modification may be the mere insertion of a spring linkage for a previously rigid connection but by relating the modification to the result and discussion with the inventor it is usually possible to advance our understanding. Inventors in the mechanical arts have the habit of immediately translating quite broad conceptual invention to operational hardware and we must ‘understand back’ from the hardware and not merely speculate. Now these are two techniques that I personally find helpful and I will briefly refer to another which is so widely used that it must be mentioned. That is the systematic consideration of alternatives.4 In broad aspect this consideration can be helpful. The question: ‘Why has the inventor arrived at this solution rather than another?’ may enlighten. However at this stage I prefer to attempt an accurate identification based on the material I have digested and tend to be confused by hypothetical exercises. After all, if my mental picture is clear and correct any alternatives will not have the invention and thus need not be conceived and subsequently discarded. The consideration of alternatives may be more helpful when we come to check our claim in the finished form Implicit in my remarks is my incorrigible belief, supported by experience, that most inventions are susceptible of precise definition and arbitrary choices between ‘broad’ and ‘narrow’ claims

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9. Claim drafting – the British tradition do not have to be made as often as the columns of CIPA might suggest. It is my view that work at this synthesis exercise should continue until a clear and well-focused mental picture is produced. This mental picture represents the invention to be protected. At this time it is not my practice to occupy myself with the problems of expressing this mental picture into claim language and I commend this negative practice of not writing too early. In Imperial China it was customary for a craftsman, before undertaking an important piece of work, to travel to a remote location and remain there for at least a week without written information, tools or writing materials. During this week he organised his mind so that he had a complete conception of the work that he was attempting to undertake. I commend this attitude, if not the specific practice.

Stage II When you have the mental picture, reduce it to a written statement quite rapidly using language which comes naturally to you. It is at this stage that your experience will be of value to you and I have found that undue attention to wording at this stage hinders what I might term the intuitive influence of this experience. If you adopt this technique you may be surprised at how often you do choose without effort the correct wording. Too much linguistic struggling at this stage may blur your carefully produced mental picture. This plain language statement of the invention fixes the mental picture.

Stage III Now review and revise your Statement of Invention in a careful and critical way. One of the necessary skills of a patent agent is to be able to read his own work and to receive the message of the written word rather than to have the words act as a mere trigger to bring into his mind what it was he intended to write. This review is an important occasion in which this skill of self-criticism should be brought to bear. Obviously what you are seeking to do here is to satisfy yourself that your words create exactly the mental picture that you have so carefully prepared. Whilst the words that you finally select should be appropriate and accurate, the solution to successful claim drafting does not, in my estimation, lie in the over-careful selection of particular words and one must strive to identify the thoughts that you have by description rather than by mere labelling with a word which may seem to you to be particularly apt. I incline to the view that neutral words such as ‘parts’ and ‘members’ are to be preferred in a claim and words which, though in common usage, have a number of meanings both literal and metaphoric are better avoided. ‘Bars’ and ‘plates’ are examples of such words. If your carefully assembled mental picture really requires a part to be characterised as solid, long in relation to its width and rigid, then it is probably better described as such than labelled as a ‘bar’. The problem with descriptive words, particularly if they are metaphoric in character, is that they are capable of conveying different impressions to different people.

Stage IV Now with a clear and accurate Statement of Invention in the English language you can consider matters of form and presentation. The exercise of organizing claim wordings into accordance, for example, with Rule 29 EPC can be carried out at this stage.

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9. Claim drafting – the British tradition I do not wish to belittle the knowledge and skill which is involved in the organizing of a claim into a form appropriate to a particular country. What I am saying is that once you have your claim drafted for example in the British form in the manner envisaged in this Paper then the exercise of preparing claims for other countries is essentially a conversion exercise. If there is a totally different way of approaching invention for claim preparation in, say, the US, then I regret that I am not familiar with it. My impression is that when we come down to a bedrock such as an assessment and definition of invention there is not a great difference from country to country. What is different is the way the protection enforced is achieved and certainly there is still a strong body of opinion on the Continent of Europe that feels that claim drafting as envisaged in this Paper is an impossible exercise and therefore an unfair and essentially futile one. Obviously I do not share that view. In my estimation poor claims tend to be produced when these organizational considerations of claim form are brought to bear too early in the exercise and before the draftsman has a clear notion of the invention he is striving to protect. A criticism of the claim drafting technique outlined above which involves ‘total immersion’ in the received disclosure followed by a synthesis of the mental picture is that not sufficient account of prior art is taken. It could be argued that an inventor and his patent agent could evolve a perfectly drafted claim to a well-known device. I would say to this that the prior art, whether received from the inventor or discovered by searching, should form part of the disclosure to be digested and if necessary discussed before the mental picture is drawn. Quite often the patent draftsman synthesises his mental picture in the form of a ‘step’ from a piece of prior art. This usually arises when the inventor has been working to improve a known construction or process. In this event, with the step properly identified, the drafting of the claim may be quite simple and certainly the organisation into EPC or other ‘Continental’ form is straightforward. If, after filing, more relevant prior art is revealed then the claim drafting exercise may have to be repeated but experience tells me that prosecution redrafting is rarely as difficult and as time consuming as original drafting, as the task of understanding the disclosure is behind. Although this is beyond the scope of this Paper, I should briefly state that claims drafted as envisaged in this Paper must accompany a specification which has a very full disclosure of all the material imparted by the inventor and not merely that which tends to support the invention as originally envisaged. Let me address a few words on some adjectives which are often used to describe claims or even schools of claim drafting. Amongst others there are ‘broad’, ‘narrow’, ‘functional’, ‘structural’, ‘peripheral’ and ‘central’ as applied to claims. For myself I do not find these adjectives particularly enlightening or helpful; the identification and definition of invention seems to me a sufficient and complete operation. I have already stated my view that the arbitrary choice between ‘broad’ and ‘narrow’ claims for a particular invention occurs rather rarely. With regard to functionality most inventions have a functional aspect in that invention rarely resides in the choice of a specific component or integer. Thus you will tend to have in your mental picture the introduction of resilience in a particular part of a machine rather than the provision of a metal helical spring, or the maintenance of a certain degree of alkalinity rather than the addition of a specific chemical.

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9. Claim drafting – the British tradition A very convenient form of claim wording has a recitation of the integers of your mental picture together with a statement explaining how the integers interact. This statement of interaction is often called a functional statement but one must beware of functional statements that are mere speculative statements of desired results and reveal only lack of proper analysis and consideration. Turning to ‘peripheral’ as applied to claim drafting, according to my understanding the proposition is that as the purpose of a claim is solely to define the outer limits of a monopoly rather than to identify an invention, all that is needed is to identify and eliminate the inessential features from a constructional embodiment. This seems rather a negative approach and one dealt with by Mr Micklethwait in the following words: ‘Some people consider that a satisfactory way of drafting a claim is to write down a list of integers appearing in the specific construction designed by the inventor and then to cross out those features which are not essential. To be content with a claim so drafted is in my view very shoddy drafting. If in addition one goes to scrutinise the integers remaining, alter and reword them as necessary, and perhaps add one or two others until the final product is quite unrecognizable the result may be a perfectly good claim. My own view is that this is an indirect way of reaching one’s goal and one can develop a more direct method by going to first principles.’ With regard to the so-called ‘central’ style I had thought that that was the one adopted by me but contemporary usage has ascribed a pejorative sense to characterise a claim that is a slightly generalised description of an embodiment with a consequent appeal to the mercy of any Court which might interpret the patent. In fact the view has been expressed that certain decisions of the Courts are rendering the skills of claim drafting unnecessary. I do not feel that the pyrrhic victories of Catnic5 or even Barking Brassware v Allied Ironfounders6 justify this point of view. Although it is perhaps unfair to use hindsight, I believe it reasonable to say that in each of the two cases a claim could have been drafted which would have achieved a successful result without the expensive controversy. It is, in my view, a mistake to emulate claims which have narrowly and expensively succeeded in the Courts; rather our function is to prepare claims which will protect our clients’ interests in a less public way. In passing I have heard it said that the relative decline in numbers of patent cases reported at the expense of copyright and other intellectual property matter indicates a decline in the importance of patents in industry. I do not accept this proposition. Cream is not the only substance which floats to become visible on the surface and a properly drafted patent specification with good claims and relating to a genuine invention seldom needs to be considered by a Court to achieve its purpose, be that to restrain competition or to attract licence royalties. May I deal briefly with sub-claims, and state that in my view these should be arrived at in a rather similar but perhaps not so exhaustive manner as the main claim or claims. That is to say we should produce a mental picture of the preferred but optional features of the invention and express them in claim wordings as before. One should be wary, however, of introducing features into a sub-claim to cover indecision as to whether these features should really be

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9. Claim drafting – the British tradition incorporated into the main claim. There is the implication that the expression of a feature as preferred in a sub-claim is a statement that the invention can function without that feature and it may be safer in the rare case of real doubt to express that feature as a statement in the body of the specification rather than as a claim. Each and every feature supporting a sub-claim should, in my estimation, introduce some minor but definitely advantageous feature and I do not favour a list of all conceivable preferred constructional variants. How can the skills of claim drafting be acquired? The traditional training route of dealing with Examiner’s objections forces one to consider claims prepared by others and to see to what extent these claims discharge their functions. The reading of reported cases is also extremely helpful as the Courts are our ultimate audience and more importantly the patent specifications which we prepare will be read by others in the context of decided cases. Ultimately however, supervised practice is the only route to success and here I stress the word ‘supervised’. One does not become experienced simply by doing a thing for a long time. The trainee must receive and indeed seek out criticism, even if this runs contrary to his personal inclination which may be to practise solo as soon as possible. However I am quite confident that claim drafting is only really effectively learned by putting best efforts to a careful and critical principal.7 I may say that this exercise will not only benefit the pupil but ensure that your principal maintains his own high standards. The imparting of a skill to a pupil from a teacher is much more than the mere transfer of information. A skill such as drafting a claim involves the exercise of unconscious as well as conscious mental operations. A pupil learns partly by imitation, partly by listening and partly by the interaction of minds in the mysterious process of the dialectic. Thus progress will not be

Notes and References 1. 2.

3. 4.

5. 6. 7.

Trans. CIPA, LXV (1946-47), Page 72, reprinted above. [Editor’s note: A good test for whether you have understood an inventor’s description or the disclosure of a reference is whether you can explain it orally to a colleague without notes or reference to the original, possibly some days after you have studied it. The work needed to fully understand disclosures and documents is easily and frequently underestimated.] [Editor’s note: see the paper on Empirical Research Inventions, page 249, where this theme is further developed without in any way impugning the correctness of the opinions expressed here.] [Editor’s note: see the paper on Functional Claims at page 135, which explains that to support a US patent claim with an element in means-plus-function or step-plus-function format, not only is systematic consideration of alternatives required but also specific mention in the written description of all alternatives which it is intended to cover, in order to comply with the ‘public notice’ requirement.] [1981] FSR 60, [1982] RPC 183. [1962] RPC 210. [Editor’s note: The benefits of discussion do not end with qualification. At least in the case of a newly drafted specification covering a potentially important invention, it should be routine to discuss the claim with one or more colleagues. They can read the claim without the original draftsman’s assumptions and with a different knowledge base, and are therefore in a strong position to suggest improvements. Patent attorneys work alone for much of the time, and the value of collaboration and teamwork in our profession is underestimated.]

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9. Claim drafting – the British tradition a steady advance from one defined objective to another but more in the nature of an organic growth. Not uncommonly the arrival at a good professional standard of claim drafting seems to be quite sudden; one day after months, or even years of endeavour the pupil finds that he can analyse disclosure, produce the all important synthesis which is at the heart of a well drafted claim and express this synthesis in clear language. When this does happen there is rare satisfaction for both teacher and pupil.

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APPENDIX: Paper P3 2007 The following paper is available from the PEB website. We have reproduced the paper here to accompany Chapter 7 of this book. However, when working through Chapter 7 you may find it easier to print off a separate copy from the PEB website. All past papers can be found on the PEB website at https://www.cipa.org.uk/patent-examination-board/support/past-examination-materials/pastexamination-materials-qualifying-examinations/

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Examiners’ Reports This section includes selected extracts from Examiners’ Reports (ERs) from 2014 to 2022 inclusive, organised into topics, with indicative marks available shown. The extracts are copied verbatim from the ERs and haven’t been paraphrased. Please bear in mind that they might therefore contain ‘spoilers’ for the past papers in question. However, candidates are also advised to review the ERs themselves as they contain pertinent information not included in the table. ERs can be found on the PEB website at https://www.cipa.org.uk/patent-examination-board/support/past-examination-materials/ past-examination-materials-qualifying-examinations/

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Examiners’ Reports Introduction 2022: The 2022 paper included a relatively short client letter. Candidates made good use of the time to work out what was needed in the main claims, to suitably protect the client’s position. The main claims were generally dealt with very well, and there was considerable flexibility in the mark scheme to reward candidates who had ‘safe’ device and also method claims, as is explained below. Although it was possible to achieve the Pass mark with just a set of device claims, candidates who did not include any sort of method claim rarely accumulated enough marks elsewhere to pass. Examples of those achieving the Pass mark with just a device claim were thus few and far between, emphasising the importance of carefully considering the appropriate claim types to protect the invention being disclosed. Candidates are also reminded that not every type of independent claim is always necessary. For some reason candidates appear to claim routinely a ‘kit of parts’ whenever there is any sort of device or apparatus. There have been recent papers where a kit made sense. However, that is based on the disclosure, and what would be useful to the client. Including all claim types from a list of claim types simply wastes time that could be better spent accessing marks elsewhere. A surprising number of candidates limited themselves to 15 claims, possibly in view of the EPO’s excess claim fees structure, rather than the 25 that can be included in the UK without additional charge, as may be important if a client has noted costs. This resulted in the inability to acquire dependent claims which could have been important, as well those available for corresponding statements of invention. The quality of the specific description and the statements of inventions varied significantly between candidates. Those that expanded on the claim features and advantages in the statements of invention section gained the most marks. Such advantages are almost always noted (somewhere) by a client to save candidates risking using their own, personal knowledge or assumption. Higher marks were obtained for the specific description section by candidates who provided a detailed and clear description of the structure of the various embodiments and then explained in detail how they were used. Significantly fewer marks were obtained when large blocks of text were simply cut and pasted from the client’s letter with little extra thought. 2021: This year’s examination saw a disappointing drop in the pass rate with many more candidates than usual scoring below 40%, particularly below 30%. In contrast to recent years, the mark distribution was weighted towards the claims to provide a more focussed examination of the skill being tested in this paper, namely claim drafting. In particular, 40 out of 100 marks were assigned to independent claims, for which candidates were expected to identify and draft independent claims to a device attachable to a screwdriver, a screw and, ideally, two different kit (or equivalent) claims. Successful candidates provided independent claims that included all the essential features necessary for the device/screw to function. Broader independent claims were also duly rewarded, providing they included all essential features. Narrow claims were deemed acceptable only if they were accompanied by sensible reasoning within the specification, although this was rarely seen. While the paper provided a lot of text to read, candidates were specifically instructed to cut and

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paste appropriate passages. While some modification to that copied text was inevitably required, it was minimal to encourage and allow candidates to spend most of their time drafting claims. There was little in the way of prior art and so the test was more on drafting claims that suitably protected all aspects of the device, screw and kits, rather than novelty/inventive step. Candidates are reminded that the instructions on the front of this paper are inter alia ‘to prepare a complete patent specification that is ready for filing at the UK IPO’. Therefore, Examiners expect to see the claims following the specific description, then the abstract and, lastly, figures. Suitable ordering of the sections necessary for filing should be straightforward in electronic format. 2020: This year’s examination saw an encouraging rise in pass rate for which successful candidates are to be congratulated. The Examiners felt that the paper was possibly more challenging than last year’s, with less clear novelty, but this feeling was not born out by the scripts. Successful candidates were the ones who showed experience and/or understanding of drafting claims. Unfortunately, a scattergun approach to claim drafting is still seen in a disappointingly large number of scripts. The mark scheme is a guide to Examiners on where and how to award marks but, unless a candidate demonstrates an understanding of the invention, a pass is difficult to achieve. It is acknowledged that this year’s paper was longer than is typical, but the amount of reading did not seem to disconcert candidates unduly. The Examiners try to provide the language that candidates need to draft the claims within the text to assist those for whom mechanical subject matter is not their field. There is a specific lexicon for mechanical drafting which pharma and bio trainees do not necessarily have awt their fingertips, and if terms are offeredto candidates for use in claims, they are present to avoid them having to work out what may be appropriate. In addition, the information is provided in a disorganised fashion to encourage candidates to think about what they are writing and to discourage cutting and pasting. This is a particular concern of the examining team going forward with the facility to copy and paste available in online examinations. 2019: This year’s paper involved the same ‘client’ as last year, but no knowledge or experience of last year’s paper or subject matter was required. Any information that was needed was provided in the client’s letter. The good candidates clearly read what the client said, did not get overwhelmed with the invention relating to the drying of wet goods, like last year, and read and understood the prior art. These candidates wrote well-constructed claims from which everything else flowed. Some candidates appeared to spend insufficient time working out the invention. Many included multiple unnecessary limitations in a main claim which would have been easy to work around and often bore little relation to the specific description. A disappointingly large number of candidates claimed either Figure 3 or, more commonly, every feature in Figure 5. A picture claim to Figure 5 is certainly novel and inventive but is far too narrow and limited in scope to meet the client’s commercial requirements. Candidates whose claims and specification did not encompass both embodiments of the invention were not able to accrue enough marks to pass.

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Examiners’ Reports 2018: This year’s paper seemed to be more accessible to candidates, as evidenced by the higher pass rate. It was indeed a straightforward invention with a number of embodiments that simply needed untangling from the information provided by the client. Most candidates seemed to grasp the general concept of the invention and showed a good understanding of how to draft a patent specification. Candidates who did not achieve enough marks to pass either did not describe the interaction between the claimed features, and so ended up claiming a bag with a hole in it or the prior art, or failed to capture all the embodiments and so ended up with narrow claims. Time did not seem to be an issue this year and there were fewer notes to Examiners to try to justify a poor claim (instead of backing up the claim with a good statement of invention). Candidates are reminded that an error in the claims is likely to result in a fail as the claims are critical for a business: a perfect specification is not sufficient to provide a client with a suitable monopoly, not least because the statements of invention always mirror the claims in these scripts. However, candidates are given the benefit of the doubt if an error in claim 1 is clearly correctable, and the candidate appears simply to have chanced an arm on breadth, but has understood the invention and drafted a suitably considered specification. Candidates are also reminded that the claims provided in the mark scheme are a suggestion. Marks are awarded for claims that are suitably drafted to meet the requirements of patentability in the UK and meet the client’s needs, as required by the syllabus for this exam. Although all the wording considered by the Examiners to be required for the claims is included in the information provided, each candidate interprets information differently and the Examiners do not expect to see a main claim that is identical to the one suggested in the mark scheme. 2017: This year’s paper was an exercise in invention-spotting, which is a skill that this paper seeks to test as an essential part of the unique skill set of a patent attorney. Candidates who had sufficient knowledge or experience of claim drafting were duly rewarded, while those who adopted a scattergun approach in the hope of hitting the right target, or those who appeared to set about drafting claims without taking the time to think about what the invention was, were not. For example, the information provided by the client was very clear that the client’s product was a laminate. A Claim 1 directed to a product was expected. While method claims are usually valuable, candidates who opted for a method as a Claim 1, leaving insufficient time to draft good product claims, raised concerns with the marking examiners as to whether the candidates had understood the invention, which was a laminate having heat-sensitive layers in a specific order. Many candidates appeared to think that printing on both sides of an existing laminate layer was the invention. While this may have been novel, such an arrangement would not have been inventive. Candidates who appreciated the specific ordering of layers of the laminate generally achieved enough to pass. The Examiners were looking for the inclusion of thermal transfer, the application of heat or a temperature sensitive adhesive. The candidates who spotted this feature generally did well. Marks allocated to Claim 1 were awarded to candidates who included all the necessary features in high-ranking dependent claims, providing the features were accurately claimed and supported by an appropriate understanding of the invention in the specification. Alarm bells should have rung for those candidates who found themselves writing a second set of

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product claims, typically directed to a substrate including the laminate, with identical features to the first set of product claims. With more and more patent offices introducing excess claims fees, there is usually a broader and more efficient way of claiming the product and all its optional features and indeed there was with this paper. Only a very small handful of candidates correctly observed that the figures related only to one specific embodiment. While an understanding of figures is required for all technical fields, more description in place of figures was provided in an attempt to assist candidates who do not routinely come across figures in their day-to-day practice. The increase in the total number of marks available in this year’s paper reflected what was felt to be a straight forward exercise in claim drafting, once the invention had been understood, with appropriate dependent features needing to be listed. As a result, more thought was expected for statements of invention, particularly to support novelty over the prior art, together with the drafting of a full and complete specific description. Candidates should be focussing on preparing a full and complete specification rather than fretting about which section requires the most marks and so is the best to tackle properly to pass, not least because the mark scheme is balanced so candidates need to achieve sufficient marks in all areas to be able to pass. Candidates are reminded that they do not need to submit their notes or musings with their answer pages. Notes pages and notated question papers add bulk to the script, which pages are neither considered nor read by the marking examiners. 2016: Part of the test with FD2 is invention-spotting and then preparing a set of claims that maximises the scope of protection, bearing the given state of the art in mind. The claims also need to be fully supported by the specification. This year’s paper really separated out the candidates who understand how to craft a set of claims of suitable scope and those who do not. The Examiners felt that some candidates were either a long way from being equipped with the necessary skills to pass or simply did not take enough time to consider how to get the best scope of protection for the client. Drafting is one of the core skills that separates patent attorneys from others in the IP profession. As a result, passing competent candidates, as well as those who demonstrate that they understand what is required but do not necessarily get the claims spot on, is of paramount importance to the Examiners. For the avoidance of doubt, the text that is provided includes all the language and terminology that the Examiners expect to see in the claims and candidates are advised to use this rather than trying to make up their own terms to describe the invention Lack of time did not seem to be an issue for the majority of candidates this year, considering the amount of information supplied. Some candidates appeared to only understand the invention while writing up the Specific Description, leading to the late inclusion of independent claims, which had little or no basis in the Description they had just written, or otherwise lacked unity with their original independent claims. 2015: The technology in this paper was very straight forward, but candidates generally made heavy weather of it. The invention was incredibly simple and exposed those candidates who are skilled enough to

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deal with such simple inventions. More thought was probably required than in previous years as how best to set out the information, particularly the specific description. Candidates who are ready to pass this examination do the single most important thing you can do in the four long hours available. They stop, and they think. Candidates who do not do this showed up in two main ways this year. Firstly, by claiming the product the client had made, which was not the invention (it was too narrow). This is indicative of little more than rushing. Secondly, by not grasping the differences between a product type claim, and a method type claim (by confusing the two, or just not claiming one of them). 2014: This was a straightforward question that was answered well by good candidates and poorly by those who appeared not yet ready to sit this examination. The inventive mechanism was grasped by most candidates, but many still failed due to a poor understanding of claim drafting. Some candidates continue to submit Notes to Examiners with their answer in spite of guidance to the contrary. These notes attract no marks and candidates are reminded that their answer should contain everything for which the candidate wishes to obtain marks. One candidate mentioned an alternative construction in his/her ‘notes’. It would have been wiser simply to include it in his/her answer, including a specific description to the embodiment, provided always that full justice has been given to the inventors’ embodiments.

The invention 2022: The most primitive form of the 2022 invention was a frame which provided a (flat) reference surface against which a pallet could be secured, using what was described as a ‘re-leasable securing means’. That alone gave novelty and an arguable inventive step over the prior art method of checking if a (wooden) pallet was not too warped of having one person stand on one corner of a pallet to be checked, and have another person compare any cur-vature against what is assumed to be a flat surface, using a simple visual check. A safe claim would also include reference to a ‘measuring means’ in that main claim, which gave a clearer inventive step as it set out how that comparison would be achieved, and avoided the inventive step argument risk of the releasable securing means being caught by one person standing on a pallet corner. A method of using such apparatus was expected. It was possible to broaden such a meth-od to not rely on the apparatus disclosed, which attracted only two more marks than in-cluding it. 2021: This year’s invention related to a releasably tensioned device for attaching to a screwdriver to reduce the likelihood of slippage of a screwdriver tip out from the slot in the head of a screw. A screw adapted for use with the device was also described, as well as an indication that the client was interested in selling just the device, a screwdriver with the device, and both in combination with the specific screws. 2020: This year’s invention was a receptacle lid incorporating an integral actuation mechanism that drives mechanical expansion and retraction of the lid via an expander. Two different embodiments

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were described, and candidates were expected to draft a main claim that encompassed both embodiments, together with a sensibly-nested set of dependent claims. It was appreciated that the balloon and pump embodiment was sparsely described but the majority of candidates included at least some of the specific claims suggested by the examiners based on the disclosure. 2019: This year’s invention was a development of the commercial problem faced by the same client as seen in last year’s paper. However, last year’s invention and prior art was included in the client’s letter as prior art to this year’s invention. No prior or additional information or knowledge was required. Specifically, the inventive concept was a way of drying an umbrella faster than last year’s invention, which constrained the umbrella canopy halting airflow around it, while or alternatively ensuring water did not drip on the floor or get people wet. This was achieved by permitting air flow. In one embodiment this could be achieved either by way of rotation or a fan. An alternative embodiment was the inclusion of a barrier which was not tightly wrapped around the wet goods, i.e. the barrier performed a different function to the prior art, and so enabled air flow around the wet goods and contained run-off water. 2018: The invention in this paper was a unitary receptacle for an umbrella that substantially prevented water captured from a wet umbrella from re-wetting the umbrella. 2017: The invention was a laminate with a specific order to its heat-sensitive components, as well as methods of making and attaching the laminate. 2016: The invention described was an insert for a machine tool bed and a mount for a machine tool bed. The invention also encompassed a kit of parts comprising the insert and the mount. 2015: The invention was a reaction vessel with an electrically conductive coating and a method for producing the same. 2014: The invention is a very simple flexible hoop shaped to support a refuse sack. The circumference of the hoop is moveable between two positions in which one position exerts an outward force to hold the sack on the hoop.

Main claim(s) 2022: There was flexibility in the mark scheme for how the device part of the invention was claimed. Candidates were told expressly: ‘A frame 9 is a term known to people who work with pallets,’ and the vast majority used that term. Many added the sensible qualifier that the frame comprised a flat surface, or otherwise acted as a reference. A releasable securing means and its purpose was also expected. The measuring means was not deemed essential to the invention. However, it was brave to risk a claim with just the two features given the obvious additional advantages of including them, and thus candidates were not penalised if they included the measur-ing means to their main claim.

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Where a claim not including them was rewarded, the Examiners expected to see meas-uring means referred to in a high order claim (meaning the candidate likely recognised them as an important feature, and thus considered them a good fallback position to in-clude). In total up to 19 marks were available for those three features and an explana-tion of their interaction, regardless of whether they were set out in one or two claims. A basic method setting out that a pallet could be releasably secured to a flat surface of a frame – not forgetting the skilled person was clear what a ‘frame’ was – and meas-urement of deflection away from that flat surface, was also rewarded with up to 5 marks. Marks: 24 2021: The Examiners thought that claims directed to the generalised structure of the described embodiments would provide acceptable coverage of the invention, provided they did not include undue limitations. However, candidates that attempted to claim more broadly or functionally were duly rewarded, provided the claim still had all the essential features. Attention was required for the claiming of features that were best described in terms of function when in use. Candidates are advised to consider which features are essential for the functioning of an apparatus and to make sure all those features are included in the independent claim. In this paper, the Examiners felt that a tensioning mechanism was an essential part of the device. Candidates who omitted this feature from claim 1 but included it in a high-ranking dependent claim were rewarded because the Examiners considered that such answers suggested the candidates understood the need to draft broadly but provided a sensible fall-back position in case they had drafted too broadly. Inclusion of a tensioning mechanism low down in a set of dependent claims, particularly without reasoning to explain its importance, suggested a candidate hadn’t appreciated all the essential features of the invention. For the screw claim, it was important to distinguish the extra side notches from the traditional slot(s) in the screwhead. A slot in the screwhead for engagement with a screwdriver was required since the screw is for use with a device that is attachable to a screwdriver. An independent claim that does not provide the client with sufficient scope cannot be rewarded with marks unless suitable reasoning and/or back-up is provided in the statements of invention. An example in this paper was limitation of the screwdriver device to three or more arms. The client letter stated that a single ‘notch’ on the screw would not work and that two arms on the device ‘was not stable’. Thus, two arms should have been encompassed in the scope because there was nothing to suggest that such an arrangement did not work. Therefore, the preferred wording for the arms and notches was ‘a plurality’. However, candidates were not penalised for claiming ‘one or more’ arms, even though the Examiners considered that a single arm would require significant re-engineering of the device to enable it to work. As in previous years, additional marks were available for the clarity of the screwdriver device claim: such marks are used by Examiners to reward a well drafted claim. Marks: 40 2020: For a pass, the examiners were looking for a claim that was novel over the Tupperware® tab which also enables a lid to expand and retract. It was considered that actuation or expansion ‘means’ was not necessarily sufficient to provide novelty, unless the term ‘means’ was defined in the specification because the term risked encompassing the Tupperware expansion tab. If Claim 1 was deemed to lack novelty, appropriate marks were awarded to candidates who

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provided high ranking dependent claims which could be used in examination to overcome a novelty objection. If features required for Claim 1 novelty are provided towards the end of a (long) list of dependent claims, the specification needs to show very clearly that the candidate has understood the invention and is not merely throwing in everything in the hope of accruing sufficient marks to pass. Additional marks were available for the clarity of Claim 1: such marks are used by examiners to reward a well drafted claim. Marks: 22 2019: The paper provided two options for the invention of Claim 1 and a large number of candidates struggled to understand the features that provided the technical effects of the invention, namely an air gap for drying. This meant that marks were often missed in Claim 1. When deciding on claim features, the Statements of Invention that would be associated with such claim features should be borne in mind to help candidates understand what features are needed (i.e. essential) and for what purpose in order to define the inventive concept(s). Most candidates opted for introducing an airflow around the goods to be dried. This was clearly novel over the prior art but was present in Figure 3 through nothing but ambient air. As a result, candidates needed to consider how to ensure Claim 1 did not simply read on to Figure 3. Many did so by positively securing the wet goods, which the balancing act of Figure 3 did not provide. The second option was to introduce a barrier (or means to hold one) to the apparatus of Figure 3, clearly circumventing the Figures and the prior art. Marks: 18 2018: Three possible embodiments were provided by the client – crimping/drawstring, a waterpermeable membrane and a one-way valve – and the key was to draft a main claim that captured all three while avoiding the prior art. Candidates whose Claim 1 lacked novelty over the two bag arrangement of the prior art were given the benefit of the doubt if all other features were present in Claim 1 and a unitary bag appeared in an early dependent claim. Some candidates claimed the layered valve separately, but marks were not awarded for such claims because an independent claim to the valve lacked unity. This paper was drafted so that a unified set of claims was possible. Marks: 20 2017: Candidates were expected to draft Claim 1 as a product claim directed to a laminate having a carrier sheet adjacent to a varnish layer which, in turn, is adjacent to a heat sensitive adhesive. Additional marks were awarded for inclusion of the varnish layer being separable from the carrier sheet upon the application of heat. There was scope for an independent claim directed to a method of protecting a security document including the application of heat to melt the adhesive and release the varnish layer from the carrier sheet. An additional independent claim to a method of making the laminate was also expected. Marks: 32 2016: The Examiners expected the insert and the mount to be claimed separately to maximise the scope of protection. ‘Plug-and-socket’ types of claims should be easily within the capability of candidates from all technical backgrounds and such claims require no specific legal or technical knowledge. It was still certainly possible to pass if candidates included a single claim to both an insert and a mount, however it was much harder as, for example, no kit of parts claim is then relevant.

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No marks were allocated (or awarded) for an independent method claim unless candidates constructed a claim directed to a novel method of attachment. Otherwise, the method claim simply recites the features of the apparatus claims and the Examiners believed greater value was to be had through apparatus claims. Marks: 36 2015: Independent claims to the vessel per se and a method for the preparation of a vessel were expected. A majority of the examiners considered that a reaction vessel having an electrically conductive coating or layer distinguished over the prior art arrangement of a vessel having carbon incorporated with the extruded material forming the reaction vessel. Claims to the coating per se or thermocycling methods and apparatus attracted no marks because the paper indicated that all were known. Candidates who claimed only one aspect of the invention should have found themselves running out of dependent claims fairly quickly which, when told up to 20 were possible, should have been a clear indication that something was amiss. Marks: 30 2014: Suitable wording for Claim 1 was provided in the question paper, though candidates continue to create their own lexicons without providing definitions. This can make understanding a paper both difficult and time-consuming. Many candidates included a lot of non-essential detail in Claim 1 directed to how the hoop worked. Method features have little place in an apparatus claim and so rarely attracted marks. Candidates appear to think the more, rather than less, approach is best but a good main claim was succinct and to the point. While three apparatus features were expected in Claim 1, many candidates opted to describe the means to move the circumference in method terms. Marks were not deducted for this approach, provided the method features referred to changes in the circumference. However, the candidates who failed generally made desiderata statements with no link to the operation of the apparatus. Marks: 32

Dependent claims 2022: The majority of the dependent device claims followed a format the candidates should recognise from past papers. In general, candidates can expect to find features, often with alternatives, and supersets thereof, set out. They may not always be in convenient clusters in the disclosure, which is why reading the client letter several times is sensible, reducing the risk simple marks from recognition of the patterns are missed. This year the mark scheme grouped dependent claims together in themes, hopefully al-lowing candidates to see how and where such marks were both expected to be set out, and how dependencies might work. Those for the ‘material’ for the frame are a good example of this format. Candidates were told: ‘The frame 9 needs to be light so one person can use it, but strong so it does not warp or deflect itself. Manufacturing it from a substantially rigid material helps.’ Candidates should take the hint that the frame should comprise a ‘substantially rigid material’. In this case wording such as the more definitive ‘the frame is a substantially rigid material’ was not penalised and the mark was awarded. The advantages of this particular material are of course there for the corresponding statement of invention.

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Where the language was not a 100% pattern match, candidates were expected to ap-preciate when told: ‘Steel or composite are easily available and largely rigid materials’ meant a dependent claim to your frame, when comprising or being a ‘substantially rigid material’ meant that the substantially rigid material was steel or composite, was expected. That such materials are ‘easily available’ is a straightforward advantage for that correspond-ing statement of invention covering both alternatives. Dependent claims for the method permitted reference to the device if it was not already in the claim. Up to 11 marks were available for explaining the broader possible use of the device over mere deployment of the disclosed features. Candidates were given an explanation of the removal of a pallet, and then different types of rotation. The penul-timate paragraph, and two Figures, were used to assist. Many candidates picked out the key words of perhaps ‘flip’ or ‘rotate’. However few went on to explain what they meant despite the explanation and Figures, and risked using relative terms that lacked clarity. Respective parts of a pallet were deliberately set out to allow candidates room to explain what they meant by ‘flip’ or ‘rotate’ in relation to such things as the ‘upper face’ and/ or ‘sides’, and even a ‘corner’. Marks were not deducted, but candidates are reminded claims need to be clearer than a casual reader saying ‘we know what you mean’. If there is language there, it is sensible to consider including it. A ‘long claim’ in itself is not necessarily a bad thing, if it gives the reader clarity, and does not introduce any undue limitation. Marks: 31 2021: There were a number of features suitable for inclusion in dependent claims this year, and most candidates identified them and achieved good marks. As in previous years, candidates who provided a considered and well-constructed set of dependant claims scored highly. Candidates are reminded that the purpose of dependent claims is to add features that might be used to impart novelty and inventive step to a non-patentable independent claim. Marks: 20 2020: As in previous years, the client letter provided all the subject matter suitable for dependent claim features, which simply needed to be picked out and ordered sensibly. Candidates who provided a considered and well-constructed set of dependent claims scored highly. Indeed, candidates are advised to spend time working out how the features fit together as it was possible to score half of the marks with ease. For example, the expander, with the options for walls, struts and connections therebetween, could have yielded six marks in total, and the balloon and pump with its options was worth up to five more marks. Achieving all of those marks required the candidate to separate the information, and think about how they should be ordered. There was some tendency to draft dependent apparatus claims with solely method features, for which no marks could be awarded. The nature of an apparatus claim is that it claims apparatus unless the apparatus can only be described functionally. Quite a number of candidates chose to include claims directed to features of the prior art, namely the rotatable tongue of the travel mug lid. Candidates should question whether the such feature(s) add patentability to a main claim in the event that the main claim is found to be unpatentable – this is the purpose of dependant claim features. A worrying number of candidates also included claims directed to a method of closing a receptacle.

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While methods should always be considered, in the scenario of this paper, the person carrying out the method would be the consumer who has a right to quiet enjoyment and so cannot and would not be sued. The inclusion of method steps in the statements of invention is encouraged where and when appropriate, but care and consideration should be given to including such potentially unenforceable features in a claim set. Marks: 28 2019: The client’s letter provided ample and clear subject matter for dependent claims and the client was explicit that claims fees were to be avoided, giving candidates the space to draft a suitable number of dependent claims. Indeed, because of the amount of detail provided, the mark scheme was weighted towards the dependent claims to encourage thoughtful claiming and ordering of features. In general, an improvement was seen from previous years and dependent claims were usually sensibly constructed and ordered. However, many candidates seemed to think that claims fees start from 16 onwards, as per Europe, rather than 25 allowed by the UK IPO. As a result, features that would have been useful to the client, and thus marks, were missed. For example, it was common to see a claim for an electric fan, and no more, leading to an inability to maximise simple marks. Marks: 32 2018: This paper particularly tested candidates’ understanding of the role of dependent claims and the ability to draft a well organised set of claims to provide suitable fall-back positions if Claim 1 fails during prosecution. As has been said before, a scatter-gun approach to the ordering of dependent features suggests a candidate who hasn’t yet grasped the function of dependent claims and, in most cases, the invention. Marks are awarded for correct dependencies and, each year, the paper tests whether candidates understand this, together with trying to encourage a well-structured set of dependent claims. Marks: 30 2017: The paper set out a clearly identifiable list of optional features which most candidates spotted for the laminate. Candidates are cautioned against using method language in apparatus claims because such language can impart a lack of clarity to a claim. In addition, there was scope to claim such features via suitable method claims. No marks were awarded for laminate features that were either clearly obvious (e.g. weight of paper) or already known from the prior art (e.g. invisible inks). The client’s letter provided specific optional features for either the method of making the laminate or the method of application to a substrate. Only a few candidates appreciated the differences, with many candidates repeating method claims for the two different methods suggesting a lack of either understanding or organisation of information provided. No marks were awarded for omnibus claims, in keeping with the law change, although a surprising number of candidates included such claims. Marks: 28 2016: The paper set out a clearly identifiable list of optional features which most candidates spotted. Candidates are cautioned against using method language for apparatus features because such language can impart a lack of clarity to a claim. Candidates are also recommended to take their time to identify correct dependencies, particularly if they have more than one independent claim.

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Marks were not awarded for a dependent claim to specific dimensions: if such a feature needs to be included in an independent claim during prosecution, the invention probably has little to distinguish it from the prior art. As a result, such a dependent claim adds little value. Marks: 24 2015: A suggested maximum number of claims was included to encourage candidates to think carefully about the most important features to claim. Marks were awarded to dependent claims that were considered to provide a useful fallback in the event that the independent claims were held to lack novelty and inventive step. Marks were also awarded where skilful claim drafting which helped limit the number of claims. Marks: 30 2014: This part of the paper continues to be poorly attempted by many candidates who continue to throw together dependent claims in any order they see fit and directed to as many features as possible. This neither attracts marks nor instils confidence in the marking Examiners. If a main claim is borderline, well drafted dependent claims may enable a candidate to pass and so candidates are reminded of the value of the dependent claims. As a reminder, the dependent claims should be a series of graduated claims covering all the various integers of the invention, preferably with one integer per claim. No marks were provided for dependent claims that did not provide a realistic prospect of recovering an independent claim that lacks novelty and/or inventive step. For example, no marks were awarded for dimensions of the hoop or the stand as there were plenty of far more important features to claim. A few candidates try and shoe-horn in every claim heading just in case. As always, such an approach is never rewarded. If candidates are worried that they may have missed out on a claim type then such claims should appear as suitable text in the statements of invention. While kit and method claims were not expected, a single mark was awarded if appropriately written. A mark was also given if candidates chose to daft an independent claim to the stand per se. Marks: 28

Introduction and background 2022: Simply copying and pasting will not generally suffice. Even with as short a disclosure as this one, the disclosure will likely need some re-ordering and thought. Most candidates had little difficulty in largely copying the explanation of the prior art, and methods used. It is also useful to set out the problems that will be addressed, to leave the reader under no illusion as to what the aim of the claims will be. Marks: 4 2021: The majority of candidates achieved good marks for this section, possibly because all the information required was provided in the client letter: candidates were invited to cut and paste from the client letter, and many included additional comment which was duly rewarded. If text was wholly cut and pasted, it may not have made sense and so some adjustment was expected. For example, the client frequently stated ‘I’ when explaining what had been done. Candidates are reminded that the statement of field should set out the technical field of the invention rather than a description of the invention per se. Marks: 4

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Examiners’ Reports 2020: The reason for the introduction and background section in a patent specification is to set the scene against which the invention has been devised. As a result, some appreciation and discussion of the drawbacks and pitfalls of the prior art is expected. A simple cut and paste of the information provided in the client letter is usually not sufficient to achieve all the marks available in this section. Marks: 6 2019: Candidates should bear in mind the typical mark allocation when describing the prior art and the purpose of the section – one only needs to go into extensive detail if the prior art should be pertinent to understanding the invention and its differences. Therefore, considered discussion of Figure 3 was expected, together with an explanation as to how and why the client’s invention was inventive. After all, this is the main purpose of describing the state of the art. Marks: 6 2018: This section was generally done well, not least because the information provided in the paper was obvious. Marks were awarded for a clear description of the prior art whether provided in the introduction or the specific description. Marks: 4 2017: A concise title related to what has been claimed as the invention, followed by a credible description of the field of invention, is expected. The field of invention should not be a mere recitation of an overly detailed title, or indeed, just the title itself. As in previous years, too many candidates know that a title and field are necessary and do not know their purpose which often shows in the answer provided. Candidates should be familiar with the Patents Rules (particularly Rule 12), which will guide them to something of merit in both these essentials. Description of the state of the art needed regurgitating, which almost all candidates did. Marks: 4 2016: A concise title related to what has been claimed as the invention, followed by a credible description of the field of invention, is expected. The field of invention shouldn’t be a mere recitation of an overly detailed title, or indeed, just the title itself. Too many candidates know that a title and field are necessary but do not know their purpose which often shows in the answer provided. Candidates should be familiar with the Patents Rules, which will guide them to something of merit in both these essentials. The paper provided a lot of background information, mainly to assist candidates who do not deal with mechanical inventions on a day-to-day basis, and candidates were credited for using all or a credible selection of the information provided. A description of at least Figure 2 (which showed the prior art) was also expected in this part of the specification. Marks: 4 2015: Applications commence with a title (Patent Rules 2007 12(4) and it is conventional to indicate the technical field and the most relevant prior art as background (MPoP Code of Practice). Candidates are cautioned against disclosing the invention in the title. Some candidates wrote a handbook on PCR but yet the script stated that PCR has been around for 35 years and is well known. Most candidates set out the problems of the given prior art quite well but it is important not to depart from the script. Marks: 4

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Examiners’ Reports 2014: The title, statement of field and prior art are generally well answered, not least because these are parts that are easy to write. However, the occasional candidate provides a narrow and highly descriptive title or a statement of field that fails to mention the field. The prior art section is supposed to be scene-setting which makes the case for there being an invention. This is sometimes missed with text from the paper simply regurgitated with little thought. Figure descriptions continue to fox many candidates. There were no tricks in this paper but candidates were expected to know how to identify plan, cross-section and exploded views. The figures showed two different embodiments of the hoop and so different numbering was expected for each embodiment. Candidates are expected to use all the figures provided. Candidates who elect to ignore information provided by the ‘client’ run a risk of providing inadequate protection. Marks: 4

Statements of invention 2022: Candidates are not expected to have specific subject matter knowledge, and they are not penalised for not being familiar with it. Unless there are remarkably obvious advantages to a feature being included, it is reasonable to expect them to be set out, even if, per the materials explained above, on occasion they can appear trite, and such explanations may well be disbursed about the client letter. Candidates should certainly be prepared to spend time explaining complex claims. Most candidates appreciated this, scoring well as a result. Marks: 19 2021: It was pleasing to see an improvement in statements of invention this year, possibly because much information was provided in the client letter. There were many more claim features than marks awarded for this section and so Examiners awarded marks for the most pertinent features, as well as those that had particularly well drafted statements of invention. It was also good to see the occasional explanation for a particular chosen scope of independent claims. There has been a rise in the use of ‘In some embodiments ...’ to introduce a feature, and candidates are advised to be careful about the circumstances in which such a preamble is used as it is not always appropriate. Marks: 14 2020: The purpose of Statements of invention is to provide a credible basis for inventive step arguments. Therefore, simple regurgitation of claim language is not sufficient. As with previous years, the examiners were looking for a link between the statements of invention and the claims to ascertain why a candidate has selected to claim such a feature. In this way, the candidate is able to demonstrate their understanding of drafting, as well as the invention. If there is no underlying or credible reason as to why a feature is included, candidates should question why the feature is being claimed. There are, occasionally, some wonderfully creative advantages for features which are appreciated and duly rewarded. Marks: 20 2019: Statements of invention were tackled better than in previous years, possibly because the features were straightforward and the client’s letter provided a lot of the information required.

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Some of the features, such as the airflow being generated by a fan and the fan being electrically or manually driven, did not have significant explanation for their benefit, meaning candidates had to think if they could explain why they were included. A disappointingly large number of candidates simply repeated the claim wording without making a proper statement of invention. As clearly shown in mark schemes for previous years, marks are awarded for stating both what a feature does and the associated advantage. Marks: 16 2018: Candidates again struggled on the statements of invention which are almost as important as the claims. Throw-away statements such as a features being ‘cheap and easy to produce’ garner no marks because if that feature needs to be added to Claim 1, it would serve no apparent purpose to overcome novelty and/or inventive step. The purpose of the statements of invention is to provide support for a particular feature in the event that it is included in an independent claim to impart novelty/inventive step to that claim. As a result, candidates are expected to consider why a feature should and could be important to the invention. No marks are awarded for simply listing the claimed features. Marks: 18 2017: Candidates are, yet again, reminded that the role of the statements of invention is to provide support for inventive step arguments during prosecution. Simple recitation of claim features is a waste of a candidate’s time and attracts no marks. In marking, the Examiner are looking to see whether the candidate has a) understood the invention and b) understood the reason for the inclusion of particular features. Marks are awarded for what the feature does and why it is advantageous. Some very obvious assistance was provided in the paper. Marks: 26 2016: Candidates are reminded that the role of the statements of invention is to provide support for inventive step arguments during prosecution. As a result, marks are awarded for providing a) a description of what the claimed features does and b) a credible explanation of why the inclusion of such a feature is advantageous. Many candidates seem to struggle to explain why the addition of an optional feature is advantageous: marks are not given for vague statements such as ‘it is cheap to manufacture’ because such a statement is unlikely to support an inventive step argument during prosecution. If no credible advantage is available, inclusion of the feature should be questioned. Statements of invention to provide basis for other possible and plausible independent claims (e.g. method claims) were awarded bonus marks. The figures were generally well described this year. A surprising number of candidates chose not to use Figure 1 and/or Figure 2. In practice, one is advised to use as much of the information provided by a client as possible. It is suggested that exam candidates should do likewise, although there are no penalties for omission of some figures if this does not detract from the description of the invention. Marks: 10 2015: On the whole candidates provided a reason why a feature was claimed. Because the statements of invention provided support for inventive step amendments during prosecution, the Examiners look for an explanation of what the feature does and why it is an advantage in order to award full

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marks. For example, the weir arrangement provides constant movement of the fluid [this is what the feature does] that helps to preserve the homogeneity of the ink [why is this an advantage?] which, in turn, ensures that a homogeneous coating is applied. Candidates should question their inclusion of a feature if only a facile ‘advantage’ can be provided. Because of the limit on claim numbers in this year’s paper, really good candidates included claim language to provide basis for features that were not in the claims set but could be introduced later or in a divisional application. When describing the drawings, candidates should have some idea of the international convention on patent drawings. A line from a reference numeral indicates an element. An arrow indicates an assembly. If it is desired to reference an element on the actual element, the reference numeral should be underlined. Marks: 5 2014: Candidates are reminded that the statements of invention are an important part of a specification, as reflected by the number of marks available. This is because an inventive step argument may succeed or fail based on information provided in this section. Good candidates craft a narrative that tells a story and provides sensible reasons for the inclusion of a feature. A poor answer is usually repetitive and formulaic with little apparent thought for reason behind the statements. Candidates are cautioned about including critical features in this section that then fail to appear in Claim 1. Marks:13

Specific Description 2022: Generally speaking the Examiners are looking for the function, structure, operation and alternatives to be made clear. For example, if the material in the example given was said to be or comprise, say, steel, at some point saying it could equally be or include composite, or any substantially rigid material, would be awarded available marks. As the method would take longer to explain, particularly if the extended uses were disclosed, the flipping or rotation about axes or in respect of those parts of the frame explained by the client, it was apportioned a higher amount of the total available. In this case the explanation of the pallet motion relative to the device had a significant explanation in the client letter, much of which could be copied by candidates, and if suitably amended (to ensure inclusion of, for example, element numerals indicating features shown in the Figures), could score highly. This year several candidates appeared to spend very little time on this whole section. That was a surprise given the brevity of disclosure, as large amounts of the description can be gleaned from having spent time understanding how the invention works and what those dependent claims are. if the answer provided is significantly lacking in this area, few marks can be awarded, and the candidate risks not achieving a pass. Marks: 14 2021: The Examiners were aware that there was more text than usual in this paper and so candidates were given specific instructions to cut and paste appropriate passages from the client letter while removing any less formal language. It was pleasing to see that many candidates didn’t simply cut and paste but provided sensible and considered specific descriptions.

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Unless directed otherwise or it clearly makes no sense to do so, candidates are advised to use all the figures provided and also to take care when labelling. Candidates do need to know the difference between reference lines with and without an arrowhead. Both were provided in the paper to test this knowledge. Candidates are reminded that marks are awarded for a specific description that specifically describes the embodiments and methods. Relational information to provide a visual image of a device is required, not a simple list of features, so that interpretation may be derived from the specific description rather than the drawings. Marks: 15 2020: The specific description for this paper was predominantly provided in the client letter and was generally tackled adequately. Good candidates described all the features and provided a clear description of the arrangement and workings of one embodiment, followed by highlighting the differences in the other embodiments. A significant number of candidates still struggle to provide relational information for features, which has the effect of making the specific description hard to interpret and forces reliance on the figures for interpretation, which is not advisable in practice especially since the demise of omnibus claims. Marks: 16 2019: As with previous years, many candidates relied heavily on the drawings rather than actually describing the embodiments. A good description, and one which receives high marks, describes the embodiments in a manner which is supported by the drawings rather than requiring a heavy reliance on what is shown. In this regard, it is good practice, where the embodiments are a product or an apparatus, to describe at least what the embodiment generally relates to, what it is, what component parts are provided, how they are formed (shapes, features), how they are connected, what their functions are and what materials would be suitable. Many candidates simply described what the apparatus did and often did not include optional or alternative features. Marks: 20 2018: There was a worrying lack of understanding and care when drafting a specific description with candidates relying heavily on references to the figures without actually describing what they see. Simply stating each feature gains few marks if any: relational information is required to support a description and explain how something is constructed and functions. The figures should merely provide a visual representation to support the specific description. Marks: 18 2017: This section was generally poorly constructed with candidates providing a disorganised description of the product and its methods of use. Information in the paper is necessarily jumbled up to dissuade candidates from cutting and pasting, or copying verbatim, although a surprising number of candidates do just that. A lot of information was provided in this year’s paper from which candidates were expected to draw a specific description, particularly in view of the lack of figures. As already stated, the figures provided were to illustrate a specific embodiment, a point that was missed by most candidates. Candidates who collated the different snippets of information and organised them into discrete descriptions of the laminate and the methods achieved high marks. Marks: 22

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Examiners’ Reports 2016: The specific description was generally well constructed this year. Marks were awarded for describing i) the insert, ii) the mount, iii) how the insert works, iv) how the mount works, and v) how the mount and insert co-operate. Candidates are reminded that a specific description needs to be specific: description of a feature as ‘possibly having’ or ‘may have’ is not appropriate for this section of the specification. Marks: 18 2015: In general this section of the paper was poorly tackled. The paper provided a lot of detail which was simply regurgitated by most candidates with little thought on the sense or logic of the information. For example, good candidates changed the order of the figures and described the vessel, the method of coating followed by the specific use of the vessel. While the coating method was straightforward to describe, some candidates simply described the apparatus only and failed to explain the coating method. A lot of information was provided in the paper to describe the coated vessel but which was picked up by only a few really good candidates. Marks: 12 2014: Such a simple device is often hard to describe and many candidates did indeed struggle, with few narratives including relational detail on the general arrangement of the device. Candidates are reminded that a specific description should be exactly that – a specific description of what is shown in the figures. There should be no references to ‘means’, ‘preferably’, ‘alternatively’ and ‘optionally’. A good specific description describes the construction of the device in such a way that it is able to stand alone without the drawings being present. This should be followed by the modus operandi of the device and then, and only then, alternative constructions. This was eminently achievable in this paper as evidenced by a few good scripts. Candidates are starting to run out of time and to panic at this point and so text becomes muddled and inconsistent as writing becomes less and less legible. Many candidates failed to provide a good description of the stand/handle extension and how the hoop and stand co-operate. Marks: 13

Abstract 2022: The vast majority of scripts had an Abstract, which remains a positive trend. Where there is no guarantee an abstract will feature in future papers, Candidates are advised to look at previous mark schemes, as there is a pattern to what is being sought, and thus what is re-warded. Easy marks can be gained from ensuring the title is not just the word ‘Abstract’, and stipulating which of the Figures should be used. In general candidates will be expected to set out the field and/ or main use, and explain the main features in independent claims. This year there was a tendency to stay quiet about any method claimed. Those that did make a reasonable reference to one were duly rewarded. Consistent use of reference numerals is also expected. This year with such simple tech-nology, it was all too easy for Candidates to refer to a ‘pallet’ in their introductory state-ment, but forget to use a reference numeral, when the strong likelihood was element 1 in all of their marked up Figures would be a ‘pallet 1’, ie that term is something shown in the Figures, denoted as 1. The Examiners appreciate this is often the last task done at the end of the exam, but it makes sense for Candidates to just check they have got the basics covered, to ensure they add, for example, the

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title if they’ve missed it, or add in reference numerals against terms from the Figures, in order to ensure they can achieve as many marks as possible. Marks: 5 2021: As in previous years, abstracts were seen in the majority of scripts and were generally adequately written. More marks are awarded for an abstract that provides a broad description of the invention in the context of the technical field, rather than simple regurgitation of Claim 1. Marks: 5 2020: Like last year, abstracts were generally well written and seen in the majority of scripts. The 4 marks available are relatively static from year to year, so it is disappointing when candidates miss the simple things like use of reference numerals which are easily-gained marks. However, one point that is generally lacking from many abstracts is an adequate description of the field. Simple recitation of Claim 1 is not sufficient to garner maximum marks. Marks: 4 2019: Abstracts were generally well written and seen in almost all scripts. The four marks available are relatively static from year to year, so it is disappointing when candidates miss the simple things like use of reference numerals which would give easy marks. Marks: 4 2018: On the whole, candidates draft a suitable abstract and most of the marks available for this section are typically awarded. Candidates are reminded to include a statement of the technical field or main use of the invention. Marks: 4 2017: This section was generally well done with candidates providing a title that matched the one given at the top of the specification. Marks were generally lost for failure to include a statement of the field. Marks: 4 2016: This section was generally well done with candidates providing a title that matches the one given at the top of the specification. Marks were generally lost for failure to include a statement of the field and/or reference numerals. The Examiners were pleased to note most candidates did include an abstract this year, which meant there was a chance of getting the marks available. Marks: 4 2015: Full marks were awarded where the Abstract complied with S.15 of the Patents Act. Candidates should remember to mention all aspects of the invention. Marks: 5 2014: The abstract is usually well answered by candidates, although rather too often they include the wording ‘according to the present invention....’. Candidates are reminded that the abstract is for searching purposes and so a little more than simple recitation of Claim 1 is expected. However, a number of candidates included critical features in the abstract that were missing from Claim 1. Candidates are also reminded that the title should ideally be the same as the title at the beginning of the specification and certainly no narrower. Marks: 5

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