Amendment of Specifications Paper (2020) by CIPA Journal

AMENDMENT OF SPECIFICATIONS PAPER

CIPA FD3 STUDY GUIDE

The Chartered Institute of Patent Attorneys (CIPA) is the professional and examining body for patent attorneys in the UK. The Institute was founded in 1882 and was incorporated by Royal Charter in 1891. It represents virtually all the 2000+ registered patent attorneys in the UK, whether they practise in industry or in private practice. Total membership is over 4000 and includes trainee patent attorneys and other professionals with an interest in intellectual property matters. This new 2020 edition of the CIPA FD3 Study Guide for the Amendment of Specifications Paper has been updated from the 2017 version to take account of recent changes relevant to the response candidates must give. The book includes considerable new comment on technique and strategy derived from the author’s continued involvement in writing and marking UK Final exams, as well as his experience gained through tutoring. There is also a comprehensive worked example of the method it suggests candidates apply against a recent FD3 paper. The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20–23 Holborn London EC1N 2JD

Tim Allsop

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CIPA FD3 STUDY GUIDE Tim Allsop

2020

11/08/2020 12:16:46

AMENDMENT OF SPECIFICATIONS PAPER

CIPA FD3 STUDY GUIDE Tim Allsop

2020

As with previous editions the UK Intellectual Property Office has kindly given its permission to include parts of the Manual of Patent Practice under the terms of Open Government Licence v3.0. CIPA retains 100% of any surplus generated from the sale of this book. Questions/comments/corrections, etc more than welcome, find me (infrequently) @timallsop 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. © 2020 Tim Allsop. Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20–23 Holborn London EC1N 2JD Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk

ISBN 978-0-903932-70-7 Printed and bound by Hobbs The Printers Ltd, Totton, Hampshire

Preface and Version Information

elcome to the Third Edition of this study guide. The first edition was published for the 2016 exams, and rather than assume it was my own, brilliant content, I am happy to believe the print run sold out before the exam was taken simply because it was the first time there was an FD3 CIPA Guide. As they had none left, that meant for the 2017 exams I could have been lazy and just asked CIPA to reprint it, but as there had been changes to the legal landscape it made sense to give it a brief update. There has been more of a gap until this third version thus there is slightly more to change; not least of which is my continued involvement with setting and marking these exams, as well as giving extensive tutorials and training courses on them, from which I often learn as much as candidates. As an overview of what has gone before and what’s new:

At the time the first edition was published the IPO’s consultation which, among other things, considered the conditions around omnibus claims being acceptable, as well as the foreshadowing of divisional applications, had closed, but the outcome was not known. Shortly after printing the proposals were accepted in full. The impact on the FD3 paper was that where omnibus claims (which you may see in prior art cited against you from time to time, usually a final ‘sweeper’ claim reading similar to “a thing substantially as described herein with reference to the accompanying figures”, which have been found to be valid and infringed in the past1) are not “illegal” (as one candidate expressly pointed out as their reason for not including one in a 2016 response), it’s just now in the UK the circumstances in which they are permitted are very limited indeed, and one being present in a new application will lead to an objection being raised by the UK IPO. Importantly though, omnibus claims in granted patents will be considered valid in postgrant proceedings. In the past it was often custom for an attorney to ask the IPO to delay issuing the s.18(4) notification so that their client could file one or more divisional applications, which became known as “foreshadowing” grant, so that time was given to allow a divisional to be filed if the applicant wished. As it was not a formal system, it risked the IPO not acting if the language from the attorney was not perfectly clear, or if the IPO simply missed the request. To remove any doubt, when an application is now in order for grant the IPO expressly states by way of response to the applicant (or their agent of course) the date that

Amendment of Specifications Paper

grant is expected to be published. This provides a window for the applicant to act if they wish to file a divisional, and there is no need for an attorney to ask for a delay. The first edition thus had to contemplate what the state of play was, as well as what the impact would be if the consultation changes were accepted in time for the exam (or indeed future ones). As those matters are now settled, the implications were included in the second edition. Somewhat frustratingly, the second edition was printed while another IPO consultation was under way, and I was left having to explain an “if this then that, if that then the other” set of positions, and then some of the proposals ended up being watered down anyway. One of the most significant was the IPO seeking to introduce excess claim fee from claim 16 onwards, i.e. applying an additional charge for every claim after the 15th as the EPO currently does. However, following responses to the consultation they moved that up to claims beyond number 25, i.e. for excess claim fees to become applicable from claim 26 onwards. You will note the EPO still wants more money from claim 16, and perhaps because of the 2017 edition of the book suggesting the same number, perhaps candidates not knowing, or just exam pressure particularly if studying for UK and European exams concurrently, in both the amendment and drafting paper response, candidates for 2017, 2018 and 2019 exams have fairly frequently thought more than 15 claims in the UK is something to highlight as there will be an additional cost. Which is unfortunate, as having written the drafting exam papers for that whole period, there is nothing worse than reading a good answer that stops at claim 15, when a further ten claims could have been included without additional charge in the UK, and a candidate then can’t score enough to pass. That’s a hint if you’re also taking FD2. The good – and bad – news is I’m writing this third version during the COVID-19 “lockdown”, when the UK IPO is running a much-reduced service with a significant

Links and Notes 1. See Raleigh v Miller (1948), 65 RPC 141 HL, and Surface Silos v Beal (1960) RPC 154 as examples. In Environmental Recycling Technologies Plc v Upcycle Holdings Ltd in 2013, HHJ Birss said when permitting an amendment which simply renumbered an omnibus claim in the Patents County Court that: “The UKIPO might like to consider whether omnibus claims serve any useful purpose today save in exceptional circumstances. I question whether they can really be said to satisfy the requirement of clarity”. Following a Patents County Court judgement between the same parties (2013, EPWCC 12), you can see what differences can apply to omnibus claims if they’re not worded in the exact template format set out above in BL O/523/13, a review of an IPO opinion in a matter between Interiors Manufacturing Limited and Lizzanno Partitions (UK) Limited on 31/12/2013.

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number of “interrupted days” prolonging deadlines, and where there are always quite rightly questions/queries/postulations being considered there. I’m not expecting them to immediately surprise us all with significant new ideas. However as nothing is ever easy, I’ve held off waiting for confirmation the exams are going ahead, which at the time of me needing to send this to CIPA’s publisher is only waiting on IPReg to confirm they can go ahead electronically, which means some of the preparatory stages I’ve covered may well be redundant. Let’s be fair, if they work electronically, can you see them going back to pens, paper and exam rooms? I’ll leave in the parts which refer “just in case”, and hope you don’t need to use them. Of more interest perhaps, in this version I have re-framed the technique to be more clearly part of a broader strategy, with some additional suggestions on the precursive activities to starting to determine how you will personally apply your technique to the paper. Some of these are simple things that you may do anyway, but I think it helps candidates to more thoroughly consider their preparation, and to appreciate the effort they put in. I’ve reordered some of the content of Chapters 4 (Preparation and Your Strategy) and 5 (The Technique) accordingly. It also leads to two further steps being set out in the Action Checklist in Chapter 6 to make them easier to understand. The even better news is that in this edition I’ve included a worked example of the technique in a new Chapter 9 against the 2017 paper. Where the pass rate of 57% for that paper is a touch below the long-term average of ~61.3% over the ten papers to 2019, a rate perhaps slightly skewed by the remarkable 72.97% in 2018, it’s a good example of the format and style of recent papers. Tim Allsop, June 2020

Amendment of Specifications Paper

Amendment of Specifications Paper CONTENTS 1.

Introduction . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9

The paper itself . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 13

Your submission . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 15

Preparation and your strategy . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 21

The technique . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 27

Action checklist . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 57

Template response to examiner . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 61

The 2017 FD3 Paper itself . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 65

Worked example – the 2017 FD3 Paper . . . . . . . . . . . . . . . . . . . . . . . . . . . . 87

10. The 2017 FD3 Mark Scheme . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 123 11. The 2017 FD3 Examiner’s Report . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 127 12. Manual of Patent Practice, added matter . . . . . . . . . . . . . . . . . . . . . . . . . . 131

Amendment of Specifications Paper

1. INTRODUCTION he tests which must be applied in this exam and the UK Intellectual Property Office (the “UK IPO”) requirements relevant to FD3 are in any sense of the phrase, core attorney skills, which means this is the best Final Diploma paper. “Best” does not mean “easiest”; far from it, there’s no easy Final Diploma paper! It’s the best as it’s the only one where the answer can definitively be found in the paper itself. It has to be there, as amending to a claim or claims outside the scope of what has been filed (however much you may rue any missed opportunity of the person who drafted it, especially with the benefit of hindsight now an examination report has been received), is not going to get you a pass mark. As IPReg’s Examination and Admission Rules 2011 have only been amended once to date (in May 2014), and the “Requirements for Academic Qualification” are not the same as for the EQEs (they do not require a scientific or technical degree for a candidate to be eligible to sit the Final Diploma exams), the invention presented is designed to be open to all candidates regardless of their technical background. The paper will need to explain the technology, and where it doesn’t always do so in the classical way you might like to set it out yourself, somewhere in there basis for amending has and realistically can only be in a few lines or paragraphs. Where of course there's more to do than simply identify and read those few sections and rejoice that you’ve found the necessary changes, you can be sure that there will be at least arguable (and often very solid, and indeed frequently repeated) basis for any or all of:

• one or more additions, subtractions (or both) to existing claims, • current claims to be combined, • one or more standalone invention(s) which may not have been claimed to be identified and dealt with, and your response may make use of any or all of them, to give you a replacement claim set that is supported by the specification, does not add matter, is novel over the prior art, and of course, is inventive. The trick, if there is one to passing any FD paper, is to create your own, personal exam strategy to the maximum extent you can stand. Some people confuse that statement with simply having “an” exam technique, and plenty will sit these exams having read a book like this, gone on a course, or listened to their experienced colleagues after sitting a few past papers, then thinking they know what they’re going to do by running through a series of steps – if they can remember them all at the time – and, frankly, hope for the best. Understandable if you’re taking many exams at once, especially as we’d be kidding ourselves if we didn’t accept FD1 and FD4 are the ones, people taking all four UK Finals at once, will be spending most their time working on, and we all only have so much time we can spend Amendment of Specifications Paper

Introduction sitting past papers or otherwise studying. On occasion, what is, let’s face it, the bare minimum, can be enough to accumulate sufficient marks to pass. But it’s rare. The exams are written with a view to ensuring those who do pass demonstrate they really are ready for it. If you read the Syllabus it states expressly under Guidance for Candidates: “The aim of the Final Diploma examinations is to assess whether a candidate has built on knowledge gained at the Foundation level and reached a minimum level of competency at which the candidate is deemed to be safe to practise.” After all, the consequence of waking up to an email with the word “PASS” four times is that you can be unleashed on the world in your own right as a patent attorney. That’s a privilege; not a right. A proper exam strategy is more than just an exam technique, because more is needed to demonstrate you’re ready to pass. And to be honest, the best strategy is one which is as complete as it can be to keep you calm. We all know how much rides on these exams, which puts candidates under huge pressure. Thus, you should do everything you can to reduce the chances of you feeling that pressure, and there are some really simple things that can help with that. Some of them are so simple (and you probably do them already) that you don’t even realise they’re helping you. I’ll go in to them later in the book. The core of your strategy should be making sure that for any FD exam you use a solid technique and apply ideally, two types of experience. The technique you choose has to be one that firstly, works for you, so you understand what to do – and why – and secondly, allows you to work your way through all the material you’re given in sufficient time to be able to produce an answer that covers enough of each section to get a pass mark. The first type of experience that is best to apply comes from learning how to apply your own exam technique, through practising exams and marking up and amending your own notes to refine your technique. The more experience you have of sitting past papers to time, under exam conditions, the more you will come to realise that a single rigid method or technique does not guarantee success. Experiencing different papers will let you see how you apply your own technique, what is important for you to work on, for example which tests you know backwards, and which you find harder to remember so need to work on or create mnemonics to assist, as well as what order to do things in. Getting feedback from others on your output, and reading the examiner’s comments and acting on them if you’ve missed or gone ‘light’ in areas the examiners considered were important after you’ve taken any paper to time is hugely beneficial and, crucially, will show you where you may have to spend more or less time in any particular area. Where time management is critical in the mere three hours you have for this paper, sticking rigidly to a “timing plan” can be stressful, and you really don’t need that in the exam itself. Exam practice will give you confidence you can be flexible. 10

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Introduction The second type of experience best to apply is practical, work experience – provided you’re careful. As an examiner for papers like FD4, it’s fair to say experienced candidates can stand out, as they will be the ones with knowledge to deal with the “fiddly bits” where some of the high-end marks can be found. However, it’s not that unusual for such candidates to miss out on say, the “simpler” (or really, basic, which often means fundamental) marks, because they forget to explain their working. Experience can mean you can take some basics as read, and either gloss over detail or make assumptions to what’s required rather than write everything down. The two marking examiners can’t assume you know something if you haven’t written it down. So even if you have solid work experience, remember to write the basics – and your working – down! Cumulatively what does this mean? If you do the bare minimum, you’re taking a big risk that you’ll get away with it, when the reality and statistics show that you’re most likely to get your result back, will be annoyed and frustrated, and will have to take the exam(s) again. The very worst thing is where people use techniques which haven’t worked for them, because they haven’t got them a pass mark, and the next year, convincing themselves perhaps they just need a little more polish, they do the same thing again, and end up with the same result. Don’t fall into that trap, it’s incredibly demoralising. Spend time to learn from experience to apply confidence to your own, personally tailored exam technique, gained from exam practice and what you’ve learnt through realworld work experience, and you’ll be in good shape. In the rest of this guide you’ll find: • Chapter 2, The Paper Itself: An explanation of the constituent parts of the exam paper • Chapter 3, Your Submission: What you have to submit • Chapter 4, Preparation and your strategy: A guide to how to ready yourself for the paper • Chapter 5, The Technique: A step-by-step guide as to what to do in the paper • Chapter 6, Action Checklist: The steps from chapter 5 presented in a simplified manner • Chapter 7, Template Response To Examiner: A suggested format for your response to the IPO in this exam • Chapter 8, A copy of the 2017 FD3 Paper itself • Chapter 9, Worked Example: A worked example of the technique from 5 applied to the paper in 8 • Chapter 10, A copy of the 2017 FD3 Mark Scheme as published • Chapter 11, A copy of the 2017 FD3 Examiner’s Report • Chapter 12, Manual of Patent Practice – Added Matter: An extract from the IPO’s Manual with commentary where relevant

Amendment of Specifications Paper

2. THE PAPER ITSELF Historically candidates have received an envelope containing • Some instructions; • A copy of an application as submitted (typically comprising the specification including claims, along with figures); • A response from an examiner to those claims, setting out one or more objections; • Correspondence from a client, typically with an indication they have seen the examiner's response, usually with some sort of comment on it; and • One or more apparently relevant prior art documents, typically those cited by the examiner (and/ or in the application itself, which have been acknowledged as being prior art). An additional copy of the claims may be provided for you to modify, so that if one or more claims are lengthy you do not need to spend time copying them out. Naturally, this will be easier if the exam is electronic. You may receive these in the pack in any order, and the examiners do not have significant scope to change this. As per Section 17 of the UK Patents Act, you will have to receive – per (d)(i) – a description, so you can understand what has been invented, and what basis you will have for making amendments to the claims. And – per s.17 (d)(ii) – at least one claim, ideally more of course, as otherwise not only will you not have had a search report, let alone an examination, but it becomes a drafting exercise, and there’s another FD paper for that. You will have to receive some sort of objection from an IPO examiner, however thorough or otherwise, as if not, it is not an objection you have got from them, but you’ve gone clean through to a s.18(4) report, i.e. notification the application will proceed to grant. Arguably that could be the case – it then gives you a window to file a divisional (see the Preface and Version Information). However, it would be such a deviation from the norm in this exam and the flags would have to be raised so high to ensure candidates actually dealt with that, it’s really quite unlikely to take place. And you’d have to wonder if such an exam would allow candidates to demonstrate they meet the requirements of the syllabus, which currently states for FD3: “This syllabus tests candidates’ ability to: • demonstrate the skills of amendment and argumentation to support such amendment for UK patent applications; • recognise novel and inventive concepts; • analyse an invention for essential and non-essential features and distinguish features of an invention from those of the prior art; Amendment of Specifications Paper

The Paper Itself • draft a specification, or amend claims, as required, of reasonable and appropriate scope based on the information available.” If the task was to identify a new (or unclaimed) invention from claims that were acceptable in the form they were given to you, where you could address most of these, I’d have difficulty believing the first was going to be met in full. Correspondence from the client has historically been useful. Useful does not mean essential. It’s possible the examiners could leave this out. If they did, where you’d be missing out on the direction it has historically provided in respect of, for example, advantages of the invention (over the cited prior art or in general), indications of inventive step over the same, or aspects which are important to the client, losing it would simply leave you reliant on amending the claims in the light of the examiner’s comments as of course, you do not have the opportunity to go back to the client during the exam. What I’m getting at is, if there’s no letter from the client, where you should check you have all the paper’s pages, don’t unduly worry; it’s entirely possible it’s deliberate. In fact, it would be true to say that for all PEB exams; everything you get from those setting the papers is absolutely deliberate. That having been said, as “The needs of lay clients” forms part of the syllabus, with the accompanying learning outcome to “Incorporate the wishes and priorities of the lay client into the response and amended claims where possible“, it would be a challenge for a candidate to do so if they had nothing from said client. It could of course be possible for a lay client to have made an application themselves, and either within it to have made representations as to what they wished or considered a priority, or for the IPO examiner’s response to make reference to either that, or separate correspondence indicating the same. But it would make for an ugly paper which risked being at best, difficult for candidates, at worst potentially unfair, which could be overcome simply by having something from the client, as has customarily been the case. You may be aware that the current format of the equivalent EQE Amendment exam (Paper B) includes a draft set of amended claims. The main reason for this is because of the way that paper is marked, and by providing some claims which are “in about the right area”, the examiners hope that it means candidates will not be tempted to risk a valid, yet completely whacky set of claims, which will risk scoring zero (despite, as I say, being valid). This is not done in the UK as the examiners are confident that they have given you all you need to validly amend the claim(s) you’ve been given. This means if there is a copy of the claims included, they will not be ones with anything amended, they will simply be a direct copy of what was in the application you have. Recent papers don’t usually include abstracts. You will of course be aware of the purpose of an abstract in the UK, and that anything within your own, cannot be used as basis for your amendment. See the Manual of Patent Practice (“MoPP”) extracts in Chapter 12, 76.08.2, for reference.

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3. YOUR SUBMISSION Historically, the requirement has been to submit three separate things which are set out in the syllabus: “Your task is to prepare: 1. a letter to the UK Intellectual Property Office in response to the Examination Report; 2. a set of amended claims, if considered necessary; 3. notes on which you would base advice to your client in which you i. explain the actions you have taken and why; ii. provide full reasoning for your actions; iii. outline future actions, if any, that your client could take to secure full protection of its commercial interests.” This list is likely to be repeated on the exam instructions. I will go through them in a different order, given the more logical way in which you’re likely to produce them.

“A set of amended claims, if considered necessary” This means making a replacement, or producing a modified, claim set, using a copy set of claims if provided and if you so wish – you don’t have to use them, to include proposed divisional(s), should they be relevant. It is permissible to modify the originally submitted claims by simply writing on or over them (or the copy thereof, if provided) to save you having to copy them out, if you can do so in a manner which is clearly understandable. Naturally, if you prefer to write them out longhand you can always do so without taking up too much time that’s fine – what works for you is what matters. If the exams use paper, unlike the EQEs, it is not permissible to physically cut wording and glue it in to your response (in any of the UK exams). There are two reasons for this; firstly because the papers are scanned electronically, and there’s a risk half your claims will end up wrapped around the scanner (upsetting the company greatly) rather than being stuck to the paper, and if the examiners don’t have your complete response, they’re not going to spend time speculating on what it could or should be. Secondly, that you’d likely be wasting your time, as most of the text doesn’t lend itself well to being copied directly. Certainly, there are not likely to be big slabs of text that readily fit within claims, and you’re not likely to be amending the specification as you’d most likely be adding matter. And if you add matter you’ll probably be doing the exam again. You’ll also see in Chapter 4 that there is a list of prohibited items you cannot take into the (historic, nonelectronic) exam with you; adhesive is on that list. Naturally, if it’s all on a computer the guidance will tell you what you can have with you, and what you cannot.

Amendment of Specifications Paper

Your submission

“A letter to the UK IPO in response to the Examination Report” This is your response to the IPO examiner, covering the basis for replacement claims, their novelty, inventive step, unity, clarity, any administrative action or direction, ensuring this covers anything raised, or missed, by the examiner.

“Notes on which you would base advice to your client” The instruction sheet may direct you as to how this needs to be set out, be that notes to form the basis of, or a complete response to, the client, justifying and explaining the actions you have taken. Unless the instructions specifically set out the aim of your response to be to achieve grant at all costs (i.e. to play it very safe indeed), as a generalisation, the aim of your submission will be to ensure the client has a good chance of the claims you submit being granted. A “good chance” means not playing it perfectly safe by submitting a very narrow claim set; you can afford to think more broadly than that, to try and protect aspects of the invention (which is not necessarily restricted to merely the product as presented to you), which are likely to be of commercial importance to the client, and hence the term used is often to provide “optimal protection”. Given this is an exam, everything you set out to the examiners explaining what decisions you have made to arrive at what you consider to be “optimal protection” must be more, how can I put it, “thorough”, than you might necessarily feel the need to in a real response (because as I labour here and there, and particularly the more experience you get, in the real world, you may ordinarily take some of the basics as being read). In this exam, it is utterly critical that you “show your working” and set out everything in detail so that the examiners can see that you understand exactly what is needed. As in Chapter 1 (the Introduction), as you get more real-world experience, you’ll know more, you’ll understand the tests, and if you compare the content of your office actions even a mere six months apart, just how different they most likely are with the additional knowledge and experience you gain. However, your confidence here needs to be in the detail: You need to make sure the examiners reading this know everything they need to. Dates. Actions. The fundamentals and each step of relevant tests. And this takes time. And needs to be legible. Because your response to the examiner must conform to the prevailing UK standard, it can most likely be submitted in a near-template style, and one for you to consider is in Chapter 7 [see page 61]. The examiners know this. They have referred to it in their comments as “turning the handle” on a submission, so you would think it may not be a good way to score points. However, making sure you run through all of the basics thoroughly will show you have read the points raised in the paper and dealt with them in a structured, logical and complete order. Naturally, slavishly following a template without considering the relevant issues and applying detail when necessary rather than blindly is far from guaranteed to score points, however, having a template or plan for one will help you to structure your thoughts, and drives you towards what absolutely needs doing.

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Your submission What do these parts of your response look like?

“A set of amended claims, if considered necessary” These are best presented as the first part of your submission. Not just because it makes it easier for those marking your paper, but because the rest of your response will flow from them, which is why I mention them first. Realistically, unless you’re super confident (see the worked example in Chapter 9) it’s where your response will be starting. The number of claims you submit should be sensible. The examiners have repeatedly reminded candidates that a clarity objection can be raised if there are too many. Unless the client expressly tells you how many claims you should be aiming for, between 15 and 20 makes sense. Far fewer than this and you may not have captured the essence of the invention, your fall-back claims may not give sufficient protection, or the appropriate features and variations the examiners have deliberately put into the paper might not be claimed. Many more than 20 and you should be worried you have got too much detail (or a lot of free beer with claims that add little or nothing; kits of parts or method claims do not need to be there purely for the sake of it, nor does every variant in a feature – think what it offers the client before claiming it). More to the point, the examiners need to apportion around 100 marks to the paper (or more, the syllabus only states “the pass mark is 50%”, it does not say what that 50% is of), and if there are only ten relevant claims, it’s pretty difficult to apportion marks across them. If there are 25+ claims that need to be explained, candidates getting everything done in only three hours might be difficult, so you can see the sense in aiming for a reasonable number. On a more general practice point, as noted in the Preface and Version Information, more than 15 claims in a corresponding EP application will bring extra cost because a “claims fee” start under the EPC from claim 16 onwards. It is unlikely that you will be making an EP application which claims priority from the UK one in front of you, as you are probably no longer in the priority period. But that’s not the point. In the exam, unless you have been told to aim higher, advising your client to submit a large number of claims may not be deemed commercially astute, and if you have not yet looked at past papers, you may be surprised how many times your client is both silent on how many claims are desirable, but also has empty pockets (despite big ambition). Naturally, if this is an issue, make sure you put a line in about excess claims fees when responding to the client. The claims should be logically set out, and will ideally unify embodiments, or if unity cannot be found, one or more divisional applications proposed. A divisional means you have found an additional invention. These can of course vary in terms of how close they are to the main inventive concept of what the inventor is telling you they have done. Sometimes they are very close indeed, in which case you will need to spend time making sure you are certain you cannot unify them. On other occasions they may stick out like a sore thumb, by being really quite different to the main inventive concept. If this is the case, you will need to use your judgement as to how much time you spend assessing and dealing

Amendment of Specifications Paper

Your submission with it. Where you will need to at least note it as a possibility to the client, whether you recommend separately protecting it or not will depend on the amount of money they have, the utility a separate application may give them, as well as the sufficiency of disclosure supporting it. Practice will show you how to identify the issues, and their variation. Experience will show you what to do with it. Some, if not all of which in this context, can be gleaned from… more exam practice! SPOILER ALERT: If you look at footnote 1 below, which talks about a past paper within the last decade, there is an example of at least one paper where there is what looks to me to be a clearly separate invention disclosed by the client, but no marks are available for noting it beyond simply using it as an additional feature for a dependent claim.1

Specialist subject knowledge needs to stay away, and it can be annoying to see what looks like missed opportunity from whoever did draft the claims now you have the hindsight of an examination report. This means simply accepting the revised claims you submit might not necessarily be your ideal response, but as you did not draft the application and do not know why it was crafted as it was, you can only work with what you have got. Naturally, you’ll have read that title as having included “if considered necessary”. The hint there being it’s wholly possible the claims are fine, and the examiner has got it all wrong, so no amendment is necessary. Every year, someone will argue for that. Do you think that might be correct? It happens in real life of course, where post argument with an examiner, your claims remain intact with no changes at all. In this exam there is usually something in one of the disclosures that is a slam dunk over your claim 1. Quite often this is repeated in the same document or others, or it is spelt out as being something well known. The hint being that it’s quite unlikely your claims won’t need amending; so unlikely it’s never happened before. The PEB is open to new ideas and will support a different approach to exam papers, so long as what’s being done fits within the syllabus and is not something that would be unfair on candidates. That’s why one of the exam papers I have written had 120 marks, not the usual 100.2 What this means where you need to be alive to the possibility no change may be necessary, it’s really quite unlikely to be the case, and if you find yourself thinking the examiner really is wrong, double, and triple check, every disclosure to make absolutely sure you’re right.

“A letter to the UK IPO in response to the Examination Report” The main difference between a real-life response and the exam is the need to be much more verbose than the Act and Manual of Patent Practice requires, i.e. making sure you cover the basics in every area. These are the sorts of things that may be so obvious to you (in the pub-quiz sense of the word ‘obvious’) that ordinarily your response to the IPO would not

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Your submission include them, as both you and the examiner are sufficiently experienced that they do not need to be said. However, unless you write simple points down, it will not be obvious to the marking examiners that you know that they exist, let alone they may be relevant and required. Gratuitous use of the word “because” here, either written by you, or at least thought about when you prepare your answer, is very helpful indeed for that. Thus what you need to do is ensure you cover every issue the IPO has raised, as well as any they may not, however basic, by ‘showing your working’. Given much of this can be considered that “turning the handle” to a templated response, the bulk of marks available is most likely to be found in dealing with the novelty and, in particular the inventive step, of your revised claims, in more detail than you might ordinarily expect. That’s both in terms of producing claims which are novel and inventive, but also explaining they are novel and inventive, “because”…

“Notes on which you would base advice to your client” This is your chance to set out to the client (who will of course really be the two PEB marking examiners who separately blind mark your paper), what you’ve understood the paper to be about, to explain the options you considered to address the objections (and anything that should have been objected to but the IPO examiner was silent on), and critically, to set out why you chose to take the one(s) you did. This also allows you to deal with any general questions that may have been asked, which in some cases may not rely on the specifics of the paper, and provide practical guidance in the light of the client’s circumstances.

Links and Notes 1. If you haven’t already done the 2012 paper to time and under exam conditions, look away now. It’s the pizza oven paper. Page 5 of 20, there’s a paragraph about “basket-like grids”. They rest detachably in individual sectors, and allow the proximity of foodstuffs to the heater element to be altered without requiring any adjustments inside the oven. Which means these grids have no reliance on the specific oven (they fit conveniently in the individual sectors but could easily just sit on any reasonably flat surface in any oven), and they perform a clear technical function in themselves. An example is shown in Fig 4. You could add it as a simple dependent claim, as is suggested on page 3 of the Examiners’ Comments. But. The Holding table 10 in GB 1,111,111 is fixed (see Page 15 Line 6), and there is nothing remotely comparable disclosed in the Pizza World Monthly article. I think there’s scope there for a divisional application to cover this, given GB 1,111,111 is noted by the examiners as being similar to the pizza oven the inventor has devised, with a fully enclosed turntable. If you included it as a dependent claim, you scored marks. Personally, I think there should have been a few for it being claimed separately. 2. Yes, that was me! 120 marks! And did anyone notice? Did it cause a problem? No! When tested it was perfectly fine, and there was a fairly conventional pass rate. Which goes to show, different papers can be produced provided they are suitable for candidates with all relevant checks in place. Which means you can never assume a paper will be “standard”; they really can change from year to year.

Amendment of Specifications Paper

4. PREPARATION AND YOUR STRATEGY our strategy should be all encompassing to make sure you minimise the chance of stress you could otherwise avoid. Some of this is really very basic, to the point where it may seem like teaching granny to suck eggs. If you are taking all four papers for the first time, with the amount you will have to fit into your head, if you are offered any sort of basic advice, personally I’d take it (even if hearing the same thing time and time again about basic exam technique grates). I have not numbered these steps, as I do not want to risk confusing you with the convention. I have put in the Action Checklist in Chapter 6. What I don’t know at the time of writing (meaning the first part of this section may potentially age very badly) is what the impact is of these being electronic exams in 2020 will be. Certainly, if it affords candidates the chance to avoid going to an exam centre, an awful lot of basic stress can be avoided. No travel, no traffic, no public transport to go wrong. And that’s got to be a good thing.

Well in advance of the exam: Start by gathering the things you’ll need in the exam itself. Historically, when you’ve applied for the exams, the PEB has sent to candidates, either directly or via a hyperlink, a copy of a document entitled “Essential Information for Candidates” for the relevant year. This sets out venue information (and links to travel information for them), what you have to take, and what you may take into the exam room, and what you most certainly must not. This may of course be different if the exams are electronic only, so make sure you read carefully any paperwork you get to ensure you don’t get caught out by something unexpected. If there is a physical venue, your first task is to work out how you’ll get there (and venues do change from time to time). If it’s relatively close to you, for your first time it’s well worth a trial run at the time you’d have to leave, as the reality of public transport or parking can be rather different to published timetables. If you need maps, directions or have made any useful notes, print them out and keep them all in a specific folder. If it’s electronic it remains to be seen if you can do it in your lounge or will have to go to an office or another venue to access the paper. Don’t forget, some exam rooms can be a very long way from any access point to a venue – take the Barbican in London for example, where the room you need can be a further 15-20 minutes from your arrival at the Barbican. For a physical venue, you will be asked to arrive at least 20 minutes before the exam starts, so that the invigilators can give instructions before you enter the exam room itself, as well as then giving instructions in the room when you have been admitted. You do not want to be late. It does not matter if this is your first time or 21st time sitting this exam, you are told to be there for a reason. If there is, for example, a problem with

Amendment of Specifications Paper

Preparation and your strategy wording in the paper (a typo, something known to be missing or any other problem), you are much better off knowing about it in advance than sauntering in with two minutes until the start time and then panicking when you find something amiss, or a planned fire alarm test taking only you by surprise. Your second task, if required for an electronic exam, but certainly as has been required historically is to make sure you know where your photographic ID is, and your examination instructions letter from the PEB, the latter of which you can keep with any maps etc until the exam itself. You don’t want to find yourself scrabbling around the day before (or day of) the exam trying to find these things. That just gives you unnecessary stress. Thirdly, work out what else you’re going to take. You can usually take food or drink provided it doesn’t make noise or unpleasant smells risking upsetting other candidates. You’ll need a clear plastic bag to put your tools in. Those tools should include: • A small pair of scissors which you should use to cut open the bag the paper comes in. It’s thick and hard to tear, deliberately of course, which is why I’d cut it. • At least two black pens. BLACK. Not blue. Not multicoloured. Just plain black. • At least two pencils, along with an eraser, and a pencil sharpener • Several different colour highlighters • Some small bulldog clips If you’ve dug out your school pencil case, you would be wise to remove anything you don’t need. Protractors and stencils, plus calculators with dead batteries are just dead weight, and risk causing you problems you didn’t anticipate. You must make sure anything you do have with you conforms to the set list of permitted equipment the PEB sets out. They expressly state you cannot have correcting fluid or pens (like Tippex® and the like), calculators, sticky tape, treasury tags or staplers. Naturally, if the exam is electronic, this is likely to be different, depending on the format of them, and if the whole thing is electronic, or if you get a hard copy of the paper and are ‘just’ responding electronically. If the exams are in a venue where invigilators are present, having an item of “banned” equipment with you, the invigilators will find it. Their eyes work much faster than you can, and they will be all around the room during the exam, helping candidates with all manner of things. If you are seen with something you should not have, there is a chance you will be back next year, if you are lucky enough to be permitted in, that is. An invigilator might talk to you about it. Or they might submit a report to the PEB about what they have seen, and you’ll be none the wiser on the day. Just make sure you only have what you need, within the list of what’s permitted. Unnecessary stress – avoided. If you have paper to use as part of your answer, I will emphasise the point about pens being black. You have no idea how many times “write in black ink only” is stated before people even get to the room, and candidates still arrive with only a blue pen, or no pen at 22

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Preparation and your strategy all… The invigilators have a few spares in the box of equipment PEB provides, but don’t bank on it. If your submission is a paper one not electronic, as soon as the exam finishes your paper is scanned and copied, and if you have written in blue, it may be hard (or impossible) to read. And if it cannot be read, you cannot get marks, so please, take only black pens, so that if your submission is on paper there is no chance you will write in anything other than black ink. Naturally, you’ll need to make some notes for your specific exam technique, so now it’s time to think about how you’re going to use them, as you won’t be able to have them with you in the exam itself. As far as practice goes, the best way to prepare is by sitting past papers, especially under exam conditions, particularly, to time. When invigilating I have seen what happens to people when they get flustered; it’s not pretty. Making time to go through the motions with past papers is one of the best ways to see that rigidly sticking to a pre-determined timing plan is not always possible, and candidates who clearly are winging it often have no plan at all. As much as there can be office bravado about how easy these things are, and legendary tales of those who came in from the nightclub to sit the exam got the prize one year, this is a professional, post-graduate legal exam, and preparation for it needs to be treated as such. Suffice to say where your reading of this book is a good start, reading it alone guarantees nothing. The format of papers has changed over the years, thus sitting some from different years (preferably different decades even) can give a good indication of the wide spread of areas a candidate has had to focus on to pass, and so what sort of time the different tasks may take. Going through past papers can also help familiarise you with the “little things” which are said or stated by a client or situation (or indeed not said or stated by a client or the situation), which must be addressed in your response. These are the sort of basic things that in day-to-day practice you might skip over or ignore, as they are implicit or otherwise do not need stating, but in an exam may make the difference between you getting a pass and fail mark. Past papers also introduce you to the different types of technology that can be present, which given the paper is typically based on an apparently simple mechanical invention, is of great benefit to those who are not mechanically trained, and can be of surprising benefit to those who are. Is there a rule of thumb? Some people state that a minimum of “X” papers should be taken to time, under exam conditions. I’d say X should be at least six. I think that sitting three of the past six years’ papers means if, unfortunately, you have to sit the paper again, you’ve not exhausted all immediate past papers, which differ in format from older ones. Adding three more older ones will give a pretty good “spread” of what to expect. Your experienced colleagues will remember them from their own exam practice, and will be able to help you understand what was necessary and how well you’ve done. Amendment of Specifications Paper

Preparation and your strategy You will also see the quality and granularity of information provided by the exam board, and in particular, commentary from the examiners, has changed over time. In the distant, past commentary has been brief text with little to go on as to what was expected. In recent times, it has become a much more comprehensive and useful guide as to what was needed, along with greater consistency of material and guidance for candidates. Once you’ve done a past paper, it is well worth going through everything available that the exam board has released, regardless of how well you have done. The PEB website currently links to past papers from 1991 onwards. Your employer or colleagues, or even the CIPA library may have copies from before this; it may be worth checking. One thing’s for sure, however many you sit: I don’t think I can remember anyone saying they did too many past papers when they passed any FD exam.

Create a “timing plan” Whilst I appreciate this sounds a little risky, I would suggest that for the first one or perhaps two past papers you do, you don’t worry too much about time. I do not mean take all day to do a paper in-between normal work or other distractions, I mean perhaps do not be too hard on yourself if you take around four hours for the first paper (or even first two) you do. Timing really is everything in the exam, but as there are set things you have to get done, I think it best to find out how long you think it will take you to put each part of the response together, and actually complete all of them, rather than panic that you have got to the threehour point, have not finished, and just stop. I personally think it is more valuable to completely finish papers a few times first, and then, if necessary, refine your timing expectations. As you have done, or will do, a reasonable spread of past papers, building up to ensuring you put a complete response together to time, I would suggest you create your own “timing plan”. I use the word “plan”, as I think everyone should have a plan; it focuses your mind. Managing your time efficiently and effectively is critical in FD3, but that does not mean you should watch the clock so intently you stop after X minutes to move on to the next section, because that is what your plan says. This makes your timing plan really one of intent, rather than complete rigidity, and what works for you will depend on which sections you find hardest to complete. Which will vary paper to paper, because they are all different. I would suggest a starter for ten is that for the first few papers you sit, your aim is that by the half-way point, you have not just decided what your amended claims should be, but that you have written them up (either from scratch or using copy claims, if that works for you, they are provided, and you’re not just typing them up). That hides a lot of reading and work of course, but it leaves you with then two, perhaps equal, 45-minute chunks to do both the response to the IPO and letter to the client. You may or may not need to split your time on those sections equally, usually the IPO letter takes far longer than people think it will, and often the letter to the client is rushed. Which is a shame, as there are an awful lot of marks 24

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Preparation and your strategy for the client letter, so producing at least something for it can be really valuable, both in terms of marks awarded, but also the examiner to gauge your understanding of the paper. Others would say you do not need to be finished with the claims until you get to two hours, with two 30-minute sections for the IPO letter and client response respectively. This is possible, provided the arguments you put in to your response to the IPO are crystal clear. However, I risk labouring the point that as the bulk of marks are available for novelty and inventive step, I find that in practice, most people spend more time on the IPO letter than they expect, even when largely using a memorised template, just because of the amount of effort needed to give comprehensive and precise argument. If that means 45 minutes on that aspect, but leaving only 15 minutes for the letter to the client, you might not have much chance to clearly explain to the examiners what the rationale for your actions was. To give you an indication of how important that letter to the client is, when invigilating I see very few people at the end of this paper with their feet up. I would guess that over 98% are still furiously writing right up until they are told they have to stop. That should tell you something. As I say, the first paper or two you do I would not just stop after specifically 90 minutes and move on, I, personally, would finish the paper. I would certainly note how long each part had taken me, and then see if any element came as a surprise, i.e. if it took longer than I expected. That should act as your guide to work out what your timing plan needs to be. I would not set a plan after just one paper of course, as it may be that you found one area particularly easy or difficult in just that paper. I would see if you can determine a pattern from what you find from repeatedly sitting papers. Speaking as a marking examiner, albeit for different papers to ensure there is no conflict of interest here, I appreciate how infrequently people hand write for lengthy periods these days, and thus how difficult it can be to ensure it remains legible over many hours. Historically, the five-minute warning (and now the only time check you get in the exams) was given as there was no additional time at the end for candidates to fill in the page numbers, etc.; when pens had to go down, they had to go down, so you had to get everything done within those 180 minutes. Under the current regulations, which may or may not remain in place for an electronic exam, you can leave numbering your pages until after it has finished, effectively giving you more time in the exam to focus on the content, and not admin, which can be rather time consuming. That having been said, the fiveminute warning is still useful. If you are not typing and instead are writing and think yours may be hard for others to read (or gets harder to read as time goes on), once that warning is given, it might be wise to consider if you should spend the remaining time attempting to make your writing clearer. After all, if your writing cannot be read, it cannot get marks, however good the intent. The specific technique I would suggest you apply is next.

Amendment of Specifications Paper

5. THE TECHNIQUE ith your basics dealt with to get you to the venue in a prepared state, I offer you two precursive options you may wish to include, and then break down what needs to be done into a dozen steps. From steps 3 through 11 there are “core activities” I set out as sequential alphabetical headings, and when relevant I explain each in turn. With some of them a general explanation is more appropriate as the activities themselves are often self-evident, or mere prose will help you best understand what is meant by them. There are an awful lot of words here, but don’t worry; the Action Checklist in Chapter 6 that follows this condenses it all down to the steps and relevant headings. Here’s what you have to do:

• Depending on the method of examination of course, if the PEB has set out what is required, you have with you some photographic ID in the form of a passport or driving licence, your Examination Instructions letter (from the PEB), and a clear bag containing only permitted items. • Your notes are outside, or are definitely in your bag which is kept in the designated area for personal items; they’re not on your desk, in any of your pockets or on your person. • You’re at the exam room at the venue at least 20 minutes in advance, probably even 30 (if not an awful lot more) and don’t forget, some exam rooms can be hard to find in large venues, so make sure it is the exam room you aim for in time, not just the venue. • You’ve turned your phone properly off (not to silent) and have put it where you’ve been told to. Or of course you’re in the office where you cannot be disturbed, or are at home with a nice cup of tea because you’re doing a past paper. In any event, I would run through things in this order:

Optional: a) Write down any mnemonics you need before you even open the envelope. b) Start a “rough notes” sheet. Let’s start with two optional ones, which can apply for all UK exams:

Amendment of Specifications Paper

The technique a) As soon as you’re permitted you can start the paper. You can start by opening the envelope and cracking on, but there might be sense in doing something else. When practising papers, you may find there are some specific things you find difficult to remember – be it the steps to go through in general, or the specifics of one or more of the tests you can expect to apply. You should be able to glean this from your exam practice, and as we’re all only human and there’s a ridiculous amount to keep in your head in these exams, it would be more of a surprise if there was nothing you needed help with. Which means you might like to think about creating a mnemonic, or otherwise working out how you can quickly shorthand what you need to know. As you can’t take your notes in with you, if you think it would be useful, it’s entirely permissible that as soon as you’re told you can begin, to immediately write that down before you open the envelope. I don’t know why you wouldn’t if you think it’s helpful – if there are any specific notes you need to in effect recreate, which might well be the last ones you look at before you enter the exam room, then as soon as you are told you can start, you can dump it out of your head on to a sheet of paper. Then you can get on with the exam itself. This can take seconds, and can be of immense value, reducing unnecessary stress (spotting a theme here?). b) Some people also like to make a sheet of rough notes; something where they can scribble/doodle/gather their thoughts, or try and work through skeleton claims or ideas, which they won’t hand in as it’s not something the IPO would see, nor would your client, and won’t get you any extra marks, as examiners cannot “see what you’re thinking”. I call mine “scratch”, which is a strange name, which I put in bold to make sure it stands out to me, and reminds me I’m not going to hand in.

Open the paper, separate the parts and get yourself organised

Brought scissors? Save your nails and use them to cut the envelope open. Immediately separate the bundle of documents in to their respective parts. I suggest you hold them together using the bulldog clips you’ve brought with you. Staplers are not permitted because they’re noisy, and the scanners that read your submission get awfully upset with them too. Stapling pages together is also impractical if you want to see several pages at a time. Paperclips are not good at holding large numbers of paper together as you leaf through them either, and the last thing you need is the added anxiety and wasted time of asking for an invigilator’s help to pick up your papers if they are all over the floor, or to be distracted if someone else’s paper has just floated under your desk. Which is why I suggest bulldog clips. While you separate the papers you can do some basic admin. If they are not already marked as such and you want to refer to the disclosures in short

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The technique hand (for example using D1, D2, etc.), mark that at the top of the front page of each respective disclosure now, and check the details against the prior art cited by the examiner, to avoid confusion. Personally, I use dark highlighters to mark the D number (i.e. not bright yellow or similar, it’s hard to see, blue or green is easily visible but doesn’t obscure text if you’ve had to write over some), and I mark it on the front and back of each complete document, even when it’s a single page as some of the prior art can be, so it doesn’t matter which way round they are on the desk, I know exactly what and which “D”’s are front of me all the time. I know people who write “D1” (etc) in all four corners on both sides of each bundle, which only takes seconds more. See what works for you. The important thing is you can recognise each document in the shortest possible time, regardless of where it is on your desk. While you’re looking at the documents you can check the dates on prior art (if any dates are present – sometimes there are, deliberately of course, none), to see if they are available for both novelty and inventive step at this stage, and note it now (if anything is s.2(3) prior art, i.e. available only for a novelty attack, I would mark it on the front page of the document in the same highlighter as the D number), to save tripping up later or forgetting to check, potentially wasting time doing nugatory work – and if you construct a perfect inventive step argument with a document that’s not available for it, you won’t be getting the time back in the exam, nor will you get any marks for it. The clock is ticking, and you’ve probably spent a few minutes fighting to open the bag and getting things together, so now the parts of the paper are clearly marked and not just a big pile, it’s time to start reading. I think the order that you read the different things you receive really does matter, as you can logically separate out the actions that are required, be confident that you have read everything, and if you follow this order I suggest it will lead you to some solid conclusions, with everything else you need falling out of it. Where it sounds ridiculously obvious, I start by reading the instructions.

Read the instructions, make sure you know what the task is, and what you must submit

Often skipped over on the assumption they’re static – if indeed candidates have ever read them at all. They may not have changed since last year. But you’ll only know if you read them; and they tell you exactly what you have to do. It doesn’t take long, they tell you exactly what you have to include, and what format your submission needs to be in. It should take about a minute, and the last thing you need is to have not bothered checking them, and then spend three hours putting a response together which might not have a chance of scoring all available marks. Naturally, if you’re familiar with how they should read, i.e. what they were last year, you can skim read through the ones you have in front of you and check they are the same – any differences should stand out.

Amendment of Specifications Paper

The technique

Read the client letter Aim to identify: a. Your relationship with them (new client or not). b. Basic standalone questions you can answer. c. Their commercial position or intent (money, timing, product(s) or embodiment(s) of importance). d. Novelty or inventive step pointers against the art. e. Any further advice needed (e.g. questions that rely on paper specifics, i.e. need a response but cannot be answered in isolation).

Read the letter at least twice. I, personally, have always been too overexcited to be able to read it the first time and do nothing. This is because as I read it, I try and work out what the client is saying, and actively mark the letter up. What I look to mark-up includes indications of your relationship with the client, i.e. are they new to you or not, basic questions the client may ask (expressly or not), which may be hidden in their immediate plans, which often also give an indication of their position. By “their position” I mean their finances (if referenced), if there is any need to act quickly, what is commercially important to them (think “product X outsells product Y by a factor of ten”) or even their future plans (think “in the future I would like to do/develop/include X”). Sometimes future plans are almost hidden, with a third party suggesting a change or inclusion is or will be needed, for example to ensure ease of use, or sales will be achieved. I also mark up any commentary the client has provided on either the IPO’s comments or the prior art disclosed, which may give me pointers to the novelty and/or inventive step of the client’s invention. They can also ask questions you can simply answer, like explaining how something works, or what’s needed, or to do or not to take a specific course of action. The way in which I mark the paper up is to use the pencil, and as well as underlining important phrases, I create tick boxes in the margin (i.e., I draw a square). I do this so that later when I have got my response together, I can look at those boxes, and tick them, once I know I have dealt with the point. This is not fool proof. You may of course miss something. You may also think something is important, and then later in the letter (or when completing your response) decide it is not. This is why I use a pencil to do it, and I include an eraser in the list of what to take in with you. You may also prefer to create your own method of identifying the type of point you are marking up. As an example, if something appears important for novelty, I will not just draw a [tick] box, but I might write either an “N” or the word “novelty” next to it, if space allows, or even more – there’s no point doing it if it doesn’t leave you with things that are useful to you. This means that later when I’m checking my novelty arguments, I can (hopefully) quickly see what the client has said, rather than waste time reading through the 30

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The technique letter again because “I know there’s something in here somewhere”. Some people use highlighters for this, with a different colour denoting a different topic or area. You will know what works for you. After I’ve gone through the letter once, I then read it again and try and see if there is anything I have missed or am not sure about, which it is best to deal with now if I can without reference to the rest of the paper. It will probably only be a page or so long, but you can guarantee every word is in there for a reason, which is why it merits a very thorough analysis. Other people find it easier to read through the whole paper once and do nothing, taking it all in, before marking it up (or indeed not marking it up); again, you will know what works for you. I certainly suggest that not marking the letter up risks missing things, given the volume of information you have to deal with in such a short space of time, and wasting time, by having to go back to try and find where “something” was said – if you can remember it all. Thus, having a method of cross-checking what is there (with what you later intend to submit) is, in my opinion, a good idea. In respect of a couple of points I suggest you identify, there are a few things worth noting: a. Your relationship with them (new client or not). If the client is new to you, you’ll need to register yourself as their agent and include Form PF51, and tell them you’ve done so in your letter to them. If they’re an existing client you don’t need to do any of that, and would waste your time and look foolish if you did it. b. Basic standalone questions you can answer. The client can ask standalone or general questions, which may be answerable without reference to the application or process at issue. This might be asking about fees, foreign applications, a “how to” do something or similar. Identifying this means that when you respond to the client, you can spend a short amount of time covering this off and collecting the marks available for doing so. Sometimes these are implied rather than direct questions, so if the client indicates an intention to do something (for example to sell abroad, send a nasty letter to someone they perceive is infringing, delay taking action and the like), think if it merits you giving them a few lines in your letter to them to set out the implications and possibilities of what they may, or must, do. c. Their commercial position or intent (money, timing, product(s) or embodiment(s) of importance).

Amendment of Specifications Paper

The technique If the client tells you, implicitly or explicitly, how their finances are, take note of that and try an act accordingly. If, for example, they have little money, it is unwise to suggest they incur the cost of a divisional, or excess claims fees. If one or both cannot be avoided, you had best make sure you explain to the client that you recognise they have little money, but you recommend this because. And find a good way to end that sentence. Things which are important to the client may also include which embodiments or variants they really want covered. You would be mad to ignore this. And I’m not sure I can emphasise that enough. You may well be able to cover off what the client wants (and ideally more of course), and if that is the case, I would very much point it out to the client in your letter to them. If you cannot protect what they want – and just like in real life it is possible you genuinely cannot – then make sure you tell them. All of this is as valid for their future plans as it is for their existing product(s), if they have told you about them of course. Whatever you do, the important point is that you make it clear you’ve read what they want, have at least tried to meet their wishes, and comment on it. Make sure that if you get some sort of indication a particular embodiment is the most important to them (key phrases are things like “I sell 10 of X to 1 of Y”, “so and so says it must do X to sell”, “I intend to make a version which includes” and the like), that you make sure what you cover in your claims is at least that if you can. And again if not, you explain in full, why. I’ve heard advice which is “protect that embodiment come what may”, and I think that’s a little risky. I think that risks a tendency to aim to protect just that (with potentially narrow claims), rather than thinking a little more broadly about the possibilities, and that perhaps it may be possible (and of course desirable) to unify all embodiments, which means not just the one embodiment of clear importance is covered, but more as well. This is also applicable should the client tell you there are things they want to do in the future, which means you will also (sensibly) tell them in your letter to them what you have (or have not) been able to do about it. d. Novelty or inventive step pointers against the art. Rubbishing the competition is never a good idea, but if the client does, it will be because their solution has an advantage over what the cited prior art says or uses. This advantage will probably be a hint to novelty, inventive step, perhaps both. Often the client will use language that indicates their solution has something the prior art does not. That is often a nod towards novelty. If there is language about how their solution has an advantage over/is better than the prior art/what others use does not work, or has downsides, it’s probably a direction to an inventive step argument. If there is the word “because” after any of those sorts of statement, you may be able to lift the remainder of the sentence directly in to your response in the relevant section. Sometimes the client is clear, and uses claim-like language in their letter, which can be tremendously useful. “Advantage”, “benefit” or 32

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The technique “improvement” and the like are all good indicators. Sometimes they’re more subtle, comparing what they have done, and either later, or more generally saying that their solution is for example; better in some way, the prior art is deficient, or perhaps that they “do not understand” why someone would want to do anything other than their way. Where there is more on inventive step later on, you should remember that the legal test you will apply comprises a number of steps, all of which will need detail added. So for example and assuming the UK test is used, where your client may be skilled in the art, they may not be the person skilled in the art. When you run through the test later you will need to work out who that person is, as well as their common general knowledge. The client is unlikely to tell you exactly whom the person skilled in the art is, however, if they use phrases in their letter like “as everyone knows”, which may suggest what they are telling you is commonly known in the field. e. Any further advice needed (e.g. questions that rely on paper specifics, i.e. need a response but cannot be answered in isolation). Which, naturally, you’ll have to note now, and deal with when you have the information you need to be able to answer. As an example, the client may tell you that they cannot understand why a document has been cited when it is in a completely different field. Where this might mean you want to argue about relevance with the examiner, you might also have to address novelty and inventive step against it, and also give the client a brief explanation as to why things are (or are not) relevant, i.e. you should consider it a question to be answered, but you’ll have to read the art to form an opinion as to why the IPO considered it relevant. Reading the letter first may seem odd, after all there might not be one, and just doing so may mean you have no idea what the client has invented. But, the more of these client letters you see, the more you will start to learn what can be asked, what the examiners want you to do, and hopefully, not just identify the glaring, but also the subtle issues, which will start to jump out at you. I now read the claims.

Read the claims a. b. c. d. e.

Type and number of independent claims? Dependencies? Clear mistakes? Antecedent for features? Omnibus or not?

Some people prefer to read these first, and I can see why. Personally, as I know the claims

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The technique as they read have not passed muster, I would rather find out what the issues are that the client wants or needs me to deal with, before looking at claims which might be presented in a less than elegant way. That way I resist the temptation to try and completely correct what I am seeing before knowing if it is in the right direction, nor am I flustered if there are multiple independent claims, dependencies all over the place, claim types that simply cannot work together, or just no structure at all. As you do not know what emphasis there will be on change to the claims, I think it is sensible to spend enough time on them to understand what has been claimed, as it will likely be helpful later. If you scrap all of the claims and start again you have probably gone too far. There is a strong likelihood that you will need to combine some of the existing claims, and certainly some or all of them may prove useful fall backs (and thus may remain substantially unaltered). Bearing that in mind will be useful later when thinking about the amendment, as I will also need to be thinking about fall backs which suit the client. At this point I know the IPO has objected to at least some of what is there, but the IPO report may be light on detail, and may not (deliberately of course) have picked up on errors, which will still need correcting. Also at this stage, as you do not know what is supported in the description, I exercise some restraint, as I do not think you can be definitive about changes at this point. I like to mark the claims up as I do the client letter, also in pencil. Usually at this stage all I am really looking for are clear issues that may be treatable without reference to anything else. Examples are: • Noting the presence of multiple independent claims in the same category. • Any obviously incorrect dependencies, both those unworkable, and those which could be expanded. • Are there clear mistakes? Incorrect units, the wrong term used, the wrong feature said to have something it cannot, etc, etc. • Features introduced without an antecedent (the word “the” preceding a feature when it has not been introduced before is often a giveaway as you think “what feature?” or “where did that come from?”). • An omnibus claim has been included. Are all things I think are worthy of a box to later tick off, once you have dealt with them of course. More generally at this stage, what I am looking for is a gist of what has been claimed. Just a single invention, as broad as a concept or as narrow as a product on the shelf? Is there a second invention claimed? A process or method too? It is also worth noting what the relationship is between claims. Having claims that seem to be the classic scattergun approach of a bunch of (potentially unrelated) independent claims, or claiming a result to be achieved and the like, have been present in past papers. A good list 34

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The technique of what not to claim is frequently listed in the examiners’ comments for FD2 (formerly P3, the Drafting of Specifications paper), and if you are still claiming what examiners do not like to see after you have finished your amending, you should be a little worried! There may be easy marks on offer which you can identify now, for example, are there simple mistakes? There can be basic spelling mistakes, incorrect dependencies, or a lack of (or incorrect) antecedents in one or more dependent claims. You might not know if correcting one adds matter at this stage, but I would certainly be drawing a tick box next to something like that, even if the examiner has not picked up on it, to make sure I addressed it one way or another in my response. Is there an omnibus claim? They are still permitted in the UK (and in plenty of other jurisdictions), however the circumstances in which they are permitted in the UK are very particular, and in reality are likely to be really quite rare. As the Manual of Patent Practice states in the October 2018 version at 14.124: “As a result of the Patents (Amendment) (No.2) Rules 2016, it is not possible to include omnibus claims in UK patent applications, unless this is the only way to define the technical features of the invention clearly and concisely. If in response to an objection to an omnibus claim the applicant demonstrates that the invention cannot otherwise be clearly and concisely defined using words, a mathematical or chemical formula or any other written means, the examiner should allow the omnibus claim to remain. An example might be where the invention involves some peculiar shape, illustrated in the drawings, but which cannot be clearly defined either in words or by a simple mathematical formula.” Thus an objection will be raised if one is included in the application when filed, and the only logical reason you would be permitted to have an omnibus at the point of grant is if it is the only way to claim what the specification describes as the invention. Are the examiners going to give you a paper where that’s the case? If an omnibus claim is included in the set submitted (regardless if the IPO has commented on its presence or not) it is highly likely you’ll need to delete it, and remind yourself to make reference to having done that when writing to the client. Please note, if the MoPP has been updated and you can’t find that reference (currently being 14.124), just search the MoPP for “omnibus” and find the language in section 14. The website is very useful, you can just “search this manual” and terms like this which are not frequently used, should be easy enough to find. The online version is currently found at: https://www.gov.uk/guidance/manual-of-patent-practice-mopp Personally, I do not do a lot more with the claims at this stage, because you cannot yet be completely definitive; beyond the clear issues and simple things which may have been missed, you do not know what amendments will be supported by the specification. So I move on and read the specification. Amendment of Specifications Paper

The technique

Read the specification a. b. c. d.

Work out how the invention works. Reference diagrams as necessary. Identify support for current claims and embodiments. Variants and embodiments not claimed. Advantages of claimed and unclaimed subject matter, and/or disadvantages of other approaches (i.e. the art). e. If you have time, take a note of what the unclaimed subject matter is. The specification contains the amendment. I don’t need to look at the figures or read the IPO’s letter to know that, as I know I must have at least one problem with at least one claim, and I know that if I do not overcome it, I will not get to grant. Reading the specification in detail is thus critical, and fortunately, because of the way the exam must be passable by non-subject matter experts, you can almost guarantee that unless the technology is incredibly simple, space in the specification will need to be devoted to explaining how the technology and invention works. What this means is – as a massively risky, broad generalisation – if a complex invention is presented, because the examiners will need to explain what it is and how it works, there might not be many options for amendment, so it might be, for want of a better expression “easy” to find one or more candidates for an amendment. Conversely of course, if you are looking at an improved pair of scissors, the basic concept for which might not take much explaining, it may be quite a subtle or complex amendment to draw out, or you may end up with an awful lot of things to choose from which could conceivably yield novel and inventive claims. The good news is, however, regardless of which extreme (or anywhere inbetween) is chosen by those setting the exam, there are only three hours to do all of this, and the specification will not be an unlimited number of pages. And somewhere in there must be basis for your main change(s). I do not separate out reading the figures as a specific task. There is a technique that starts with comparing the figures from the off to identify the differences between them which is assumed to be “the difference” and therefore, the pointer to the required amendment. The problem I have with that is it assumes the figures are all encompassing and show everything, and also that the difference is immediately apparent. The figures probably do not show all embodiments. Moreover, they do not give you express language to state the difference(s) between what your client has done and the art, and, if that is all, you then go hunting for, where you might find support for it, it might not give you an amendment that works when the totality of the art is considered; or of course any client direction you’ve had. In fact, they may show differences that are simply not relevant to the client. In real life things can be very different, and going straight from one set of figures to another can be very helpful indeed, but once again, this is not real life. Clearly you do need to reference 36

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The technique the diagrams, and of course doing so while reading the specification is a good idea so that you can understand the invention. I write out the name of the elements shown in full (when present) on the diagrams themselves for ease of reference, which helps with comparing your client’s invention with the prior art, but I certainly would not risk making an amendment based only on what I perceived the difference between diagrams to be. When reading the specification you can see which aspects of the extant claims have basis – from the statement of invention (if present in longhand and mirroring any of the claims at all that is – there is a hint there by the way – if the statement of invention does not precisely mirror the claims, it may be basis for change). It will also show you if there are different variants, be that wholly different embodiments with features unique to that embodiment, basis for broadening the claims, or wholly separate inventions (i.e. divisionals may be needed, if desirable and the client can afford it). I would suggest, therefore, that you really take your time reading this. In many past papers the “key” (if there is one single crux for a paper) is set out in the examiner’s comments as something subtle. Your first pass of the specification should be to help you make sure you understand what you think the invention is, and how it works. Naturally, the more complex (or unfamiliar to you) the technology is, the longer that may take. This may have implications for your timing plan. There is an FD3 technique which looks at determining what in the specification is little more than a general explanation of the technology, and also identifying what is supporting the claims as submitted. This technique makes the assumption that as the claims are not acceptable and you will need to amend, the “answer” (well the amendment at least) will be found in the remainder. There is some merit in this approach and to an extent, it forms the basis of this one. I hesitate to recommend adopting it wholesale and alone in its own right, as I think it makes too much assumption that the amendment will be completely separate from the claims as filed, when it may well be reliant on a combination or subtlety of language, and I think this approach encourages too much focus on trying to identify things which are completely different to what has been filed. There have been years when this alone has been the perfect method to identify the amendment, but they are few and far between. I do not believe there is a magic bullet for this paper, if there was, this book would be very short, and the pass rate would be 100%. I think spending time reading the specification at this point, when you know what is important to the client, and you have seen what claims have been submitted, is the important bit. You do not have to make your amendment decision yet, and I think if you do, you are taking a big risk that this “ID the difference” technique alone hits the sweet spot this year. What this means is that what and how you mark up the specification will largely depend on the complexity of the paper. I would suggest what you are looking for as a minimum is: a. Work out how the invention works. Reference diagrams as necessary. Amendment of Specifications Paper

The technique An explanation of the technology and how the invention works, so that you understand it, if it is completely clear and severable that is. In itself this is highly unlikely to be basis for your amendment; it is there so that the subject matter is understandable for all. Make use of the diagrams of course. b. Identify support for current claims and embodiments. You will also need to identify support for the extant claims, taking particular care to note where any feature is specific to an embodiment, as if you later want to retain one or more of those claims (and you probably will do), you will need to ensure your dependencies are correct. Correct dependencies show that you have read and understood the paper. c. Variants and embodiments not claimed. d. Advantages of claimed and unclaimed subject matter, and/or disadvantages of other approaches (i.e. the art). This leaves the rest of the disclosure. Unclaimed subject matter gives you scope to claim it. Unclaimed subject matter usually comprises not just basis for a claim (i.e. one or more features), but the advantages of those features, and/or disadvantages of other approaches (which hopefully of course will be the art) which may be a hint to an inventive step. I’ve put these steps together because ideally you need both the feature and advantage (or disadvantage of an alternative), and sometimes you get a nice block of text setting out both what a feature is or how an embodiment works and the advantage of doing so, but not always – sometimes the advantage might be set out elsewhere in a throwaway line or linked to a different thing. If you can’t find an advantage at all, think carefully if the claim is one that should be used. There are some claim features that are so basic or obvious they don’t need special knowledge or understanding – they’re the sensible features that you could look at and think “sure, that makes sense” without any solid explanation needed. Just don’t forget, as I said way back in Chapter 1, contrary to often cited belief, no scientific or technical degree is necessary to sit these exams, and it wouldn’t be fair for an exam to be written that assumed knowledge of any particular subject matter. Thus if there is no advantage anywhere in the paper of a feature which is either complex or doesn’t seem to be quite an obvious extension to what’s in front of you and you want to claim it, just think if you’d be happy to have it there in a real-world application. You may find direction in the language, with clear pointers to some things being a form of advantage in an explicit or subtle way. Any advantage may be enough of course. Wording that chimes with what the client has said in their letter to you can be particularly helpful. Sometimes they will say “it is cheaper” and the spec will say “using X is cheap”. 38

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The technique Sometimes the specification may make reference to something else being more expensive, either directly or subtly, such as being “rare”, “hard to source” or in “limited supply”; all of which are pointers to the same advantage (in this case of an alternative of X being “cheap”). You may also find them near-disguised, for example with subtle throw-away lines in embodiments where alternatives are discussed in a care-free manner. This is often prevalent at the very end of the specification, where some casual language may hide several alternatives or embodiments – you have to try and concentrate the whole way through. If you’re lucky the same sort of (or identical) advantage is stated more than once. Examiner’s comments have often said there is more than one set of wording which can be near lifted from the specification as evidence of the same advantage. Practice will help you here, as you start to understand what the examiners are setting out and their ways of doing so. And at least you know that with a specification being fairly short, they do not have much (physical) room to do so. Any statement about background art or common things in the field should be noted as being of possible use in your inventive step argument, as they may form part of the common general knowledge. In marking up the specification to find these things you will definitely need to refer back to what you’ve marked up already – in particular what’s important to the client. If they’ve stated explicit variants or embodiments are important to their business, you’ll need to be looking for what will support them. There may also be language which helps unify embodiments – look for wording that’s a superset of the integers your client has used. If this is possible you may be able to claim not just the embodiment of particular interest to the client, but more, securing that “optimal protection”. You do not yet know what the IPO has said or what the prior art says or precludes, so there’s no particular need to wordsmith an amendment yet. What you need is to determine where in the specification you will find basis for change over what has been submitted thus far. If you can mark those areas up, which can take some repeated readings and to-ing and fro-ing with the letter from the client; you’re probably looking at having found areas which are candidates for your amendment. Learning to do this effectively takes time, which is why I suggest you do multiple past papers. e. If you have time, take a note of what the unclaimed subject matter is. This is an utterly critical step, but is one you can do now, or later. If you have time, it’s a good idea to take at least a brief note of what the unclaimed subject matter is, i.e. where you’ve put checkboxes against features and combinations which have not been claimed. You don’t need to spend hours re-writing them all out or grouping them together now, you just need to develop an awareness of what’s available to you. In some papers you can get to this point and there really is only one thing you can use for an amendment, which can Amendment of Specifications Paper

The technique indicate what the outline of your answer is likely to be. But that’s increasingly rare. More commonly there are lots of things, and you don’t yet know what is going to be best. The paper I chose for the Worked Example in Chapter 9 is (deliberately) an example of the latter. Unless there really is only one thing you can use, you aren’t deciding what your amendment is yet, you can just identify from your checkboxes where there is material which is definitely not in the claims thus far. If you do this now, when you read through the prior art, you’ll find several of the features you have not claimed also appear there, i.e. you can narrow down what matter you have left which has not been claimed, and by the time you get to the end of the prior art, you should be able to be pretty sure what is left over. Then you go back to the client letter et al and work out which of your remaining options is going to be best for your amendment. Naturally, the remaining features in your specification where potentially revealed in the art doesn’t mean they’re not things you can claim, they’re just going to be features in dependent claims. The alternative to doing this step here is doing it after you’ve read through the prior art. If you do it now or then simply depends on either your own personal preference and how you want to approach each paper, or if you’re feeling confident in your own technique and can be flexible, how much time you have when you get here, which is basically down to how you’ve personally found the specific paper in front of you. If you’ve found the subject matter in the specification understandable and, dare I say “easy” and you’ve got here quickly, now would be a great time to do this. If not, you’ll need to do it when you get to the end of section 7 below. If you do it now you may have a long list, mentally or otherwise, simply by looking at the checkboxes you have against this unclaimed material, suggesting what you have available to provide you with a novel and inventive step over the art. Some of the things will be trivial, likely candidates for claim(s) to add, other things may feel closer to what the client has told you is important. Some people choose to do it here every time, then read the prior art with the list in mind. Others find they’re better off getting through all the reading first and then going back. Practice. See what works best for you. At this point you should have read three things, have done a lot of marking up, have an idea as to what’s important to the client and already, even at this early stage, have an idea of where in the specification you will find basis for change. Now it must be time to see what the IPO has made of it.

Read the IPO letter a. How this is marked up depends on how thorough it is – see above.

The format varies from very high level and general (from almost “one or more claims lack novelty and/or inventive step, the end”), to extremely specific objections to aspects of claims.

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The technique As the IPO letter is what you have to respond to, you will need to ensure that as a minimum you do two things. Firstly, where there is likely to be an awful lot more than this required, reply directly to the points the IPO raises. You would be amazed how many people don’t do that. Secondly, in your response to the client, you should state your opinion as to what you think of the IPO’s objections, i.e. did you agree with them, and what else did they miss that you attended to anyway? Examples might be where dependencies needed to be corrected which were not highlighted by the IPO letter, or typo’s corrected, but are done and the IPO has been informed (as well as the client when you write to them). When you think about it, your amendments need to satisfy two types of customer; the IPO, who have given you specific objection do you’ll need to tell them what you’ve done about that, and what else too, and your client. As your client has probably seen the IPO letter, and may have given an opinion about it, and may have told you what they want done or is important to them, you have to respond to them covering all that off too. Again, I like to create numbered checkboxes adjacent to points in the IPO letter (if it is long enough to do so), which again, I can check off as I write my response to them. Depending on the paper, by now you may think you have an amendment in mind, or nothing other than confusion given the wealth of information you have seen and read. So now it is time for a breather and to gather your thoughts. Time is against you, but you have a lot to take in. I think a brief moment just to compose yourself is a good idea. I suspect at this point, you are somewhere around 45-60 minutes in to the exam, although I would not be unduly worried if it was later than that.

Read the prior art a. Do you agree with the IPO? Worth noting for the client letter. b. How does it work? Diametric opposite to the client’s invention? Similar material, which affects your claims? c. Is there express teaching about the problem which is being solved, advantages of the approach or disadvantages of other approaches? d. What is the delta between your disclosure and the art? See 5e if you’ve not already clearly identified all unclaimed subject matter in your specification.

The amendment you make will need to overcome objections the IPO has made (which is why you need to read their letter first, to see if they have been specific against the prior art and, if so, if you think they are right), as well as being novel and having an inventive step over what is known. You are likely to have to mark the prior art up. If you have not already done so and dates are at issue, do make sure you identify if any document is s.2(3) prior art (and thus is only available for novelty). If the client has pointed out what they think are deficiencies with what

Amendment of Specifications Paper

The technique has been done, check and see if you agree there too (or at least can see the point being made, most likely in their letter to you, but potentially in the specification if other approaches are discussed). Checkboxes here are perhaps less important, what is essential though is a thorough understanding of what has been done. What is most likely in marking this up is that you identify what look like relevant passages as to say, how the prior art works, what embodiments exist (as of course you will need to argue for novelty and inventive step over everything that has been disclosed). That means that as per your client’s specification, you need to be wary of throwaway lines, alternatives or generic statements that indicate different ways to achieve or make whatever the invention is. They can be easy to miss in the last paragraph or two and can make all the difference between your amendment working and not. Certainly you need to be alive to the features and advantages set out in the prior art, which should be the way you determine what your inventive step is. If an advantage is set out it may be the “teaching” you need to determine that the prior art actually does teach away from your client’s solution. If the problem the prior art is solving is set out, it may be a different technical problem, which again may be potential evidence of your client’s invention having an inventive step. By working out how the technology works, you will then also know if your solution is incompatible with the cited prior art. There will likely be quite a few things your client has disclosed that don’t feature in the art, some of which will be more important than others, some of which will have clear strengths, and some may have clear weaknesses. Some will hopefully have been identified by the client as being important to them, and if they have given comment, they may then also tell you about any inventive step considerations assisting in directing you as to which one(s) of the features they expect you to choose to form the basis of your amendment. Thus the task here is, if you haven’t done so per 5e above, go back to your own specification and take a note of what the unclaimed subject matter is, i.e. where you have put checkboxes against things which have not been claimed. Some of this may now look interesting given what you’ve seen in the prior art. Some may be in the art, so won’t likely make for a useful amendment in itself, but may still look like useful features to claim. Some may be in a combination of the art, with the same result. And some may well look like good options for your amendment. As per 5e above, if you’ve sped through the paper and got to that part sooner than you expected, it’s a great time to do it. If you do it then, you should have what would, if time permits, look like a list of unclaimed subject matter. Then while reading through the prior art, you will likely see some of it also appear, meaning it would not be good basis for an amendment. If you do this step here, after reading the art, you have to try and put everything in your head at once – looking through the specification to pick the unclaimed matter out, then also trying to remember what is in the art and making sure you don’t inadvertently think something unclaimed is really good, only to later find it in the art. So when should you do this? At the end of 5 before you’ve read the IPO letter (step 6 above) and also before you’ve read the prior art (7 above), or now? “It depends”! On two 42

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The technique things, both a) your own personal preference, which you should determine from exam practice, and b) what you make of the paper, and frankly how much time you have when you get to the end of #5. The important thing is you do do it either then or now, as it’s undoubtedly the fastest and most complete way to get to the amendment. If you’ve done it at 5, you’ll get to this point and will in effect be going back to check which of those are clearly important now. You could argue that’s inefficient as it’s going back to something, and we all know time is a serious issue in this paper. However, I’d argue the opposite – there’s so much information here, doing it at 5 means you should have at least a mental list of what is where, how features and embodiments link, and what’s important, before you go back to it now and look at express language and so on. Alternatively, if you haven’t done it at 5 but do it now, you still have to check where all the new material is, and to be sure about all the relationships between features, embodiments and so on, you’ll need to spend pretty much as much time as going through it at 5 and revisiting. Thus I don’t believe either option will save you time over the other. In the worked example in Chapter 10 you can get an idea of how it can work, and the reasons why for that paper I chose the option I did. Which is “best”? It depends! What matters is you do it, and by having read the paper in the order I suggest, and by having marked it up in the way I suggest, you can identify all the relevant areas of the specification, quickly, maximising your chances of finding a suitable amendment, and minimising the stress of having to try and read multiple documents without any useful pointers as to where is useful to spend your time reading. I’ve not put a great deal in here about the prior art, as by now you should be getting the gist of where this is going and how it all starts to come together. Now that you have read everything, you need to work out the amendment.

Work out the amendment a. Sketch it out if necessary. b. Cross-check against letter from client to make sure any embodiment important to them is at least covered. c. Cross-check for novelty and inventive step against the art. d. Ensure sub claims are sensible and work for the client. e. Consider the need for one or more divisional applications.

Now you must bring everything together, and if there’s a secret to passing this paper, irrespective of the method you use to do so, this is it: • If you’ve got a letter from them, you’ve seen what the client thinks. If they’re particularly nice, they will have told you what is important to them to be protected as

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The technique well as what they think is beneficial with what they have done, or is deficient with the prior art, given what they’ve invented. • You’ve seen what has been claimed, have possibly identified a few straightforward issues which need to be corrected in the claims irrespective of anything else, and you‘ve seen what support you have in the specification for claiming something different. • The IPO’s objections are set out, and now regardless of the detail or otherwise the IPO gave you, you’ve seen what the prior art makes clear is known. Now you have to try to reconcile what the client wants or needs protecting, with what scope you have from the specification to do so, which concurrently overcomes those IPO objections, ensuring your claims are novel and have an inventive step over the prior art… And people sit this exam without doing a single past paper? Your task is to navigate through this maze and focus on what is in the specification that you’ve identified as unclaimed subject matter, along with its associated advantages, which protects at least what the client wants, and hopefully more besides. The feature(s) you use must be novel over the prior art, and the advantages you find of including it or them must give you an inventive step too. You might have liked even more time here, and I really wish it was possible. Alas with the content of every paper, and thus the required changes, being different, there is a limit as to what constitutes useful advice. All I can say is that if you have followed the steps, at this point, you should have everything you need to make your amendment decision. The worked example later on in Chapter 10 will hopefully show you how you can achieve this.

Write up your claims a. Remember to check embodiments, and dependencies! b. Retain existing claims unless there’s a good reason not to! c. Don’t forget plenty of new claims may be features of some of those existing claims, so you may be inserting claims to the old ones as they’re best placed there. d. Don’t forget about divisionals.

Everything you write in this (and all FD exams) should be on every other line. Yes it is basic, but if you need to make a change, it is best to ensure you have some room to make it clear. There is no prize for brevity or penalty for over filling the envelope. I would strongly suggest as you should have identified basis for candidate amendments (or at least scope therefor) from going through the specification as filed, you now consider at least sketching out what you think a new main claim (or claims) needs to look like. I say “at least” as you may prefer to write a new main claim out in full. The choice is yours based

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The technique solely on how confident you are at this point (which depends on nothing other than the paper in front of you). The reason for considering a sketch rather than the full thing first is so that when your main claim is in sight, you can cross-check against the letter from the client (to make sure you are doing what they want), as well as a cross-check against the prior art, to make sure your proposed new claim will be novel and have a justifiable inventive step over what is known. Pretty much every year, one or more candidates will argue for the novelty of the claims already submitted. Pretty much every year, something looking remarkably like your submitted claim 1 (possibly even claim 1 itself, word for word) can be found in one of the prior art documents. If you are convinced the examiner is wrong (and it is both possible this is what the examiners want you to do, and in real life many an argument succeeds in retaining everything), then please do check very, very carefully, so you will not be back the following year. Check through the art to make sure that the combination of features you're saying is novel does not appear in any of it, in that form at least. Check what the main thrust of your inventive step argument(s) will be. Where (there is more on this below) does the art positively teach away from your claim? Is the art solving a different technical problem? Is it incompatible? Would the skilled person not use the document? The last thing you need is to decide on your amendment. Write the claims out in full, get into the flow of “turning the handle” to your response only to find that with some hindsight (or when later checking things), what you are doing is great but is not what the client wanted, or your argument for inventive step falls flat just as you are making it and time is running out. Basis for your amendment(s) will need to be clear, as you will need to set it out in the response to the IPO. That does not necessarily mean completely literal basis, although it is clearly easier to reference something word for word if possible. The IPO can be tolerant of minor deviations to what is literally written, provided it is clearly justified. On occasion such justification can be found in the client letter, key phrases are things like “as everyone knows” or the like, indicating something known in the art. The Manual of Patent Practice (MoPP) has extensive guidance against s.76 of the Act on the tests that are used to decide if matter is added. I strongly recommend you download the latest version of the MoPP from the .gov.uk website to check your understanding aligns with the latest case law. For your convenience, current (October 2018), relevant extracts of the MoPP are reproduced in full, courtesy of the IPO, in Chapter 10. Naturally, I cannot stress enough the importance of ensuring you are looking at the most up-to-date version of the manual (along with any case law, should it be relevant). It is not possible to easily summarise what is permitted other than saying the more you deviate from what is literally in the material given to you, the more risk you take of either being fanciful, or bringing your own knowledge in to the equation, both of which are likely to add matter. The examiners do not want you to use your own knowledge, as they have no way of knowing if everyone Amendment of Specifications Paper

The technique sitting the examination would come to the same conclusion or supposition, so it is safe to say they are not going to put candidates in a position where it is necessary to do so. I am not going to go through ordinary claim drafting here and how you would craft something from what you find, because the specifics of the paper will dictate what is needed. Some excellent, easily digestible and relevant advice can be found in Iain Russell’s book How to Pass P3, which sets out the claim types you should consider. Other guides are available, such as Paul Cole’s Fundamentals of Patent Drafting, both of which are available through CIPA. That having been said, all the usual recommendations apply when you put your claims together – do not lose existing dependent claims if they are useful fall backs, and do not put claims in for the sake of it (I refer again to spurious kits of parts). I also repeat again, be mindful of how many claims you have, especially if the fees change and claims fees are brought in. As far as dependent claims go, you will need to cross-check against the existing claims, which should indicate which of those should remain where they are good fallbacks for the client. This will also remind you of any deficiencies you noted with them that need correcting, such as incorrect dependencies or missing antecedents. I cannot emphasise enough how important it is to make sure your dependencies are correctly aligned with disclosed embodiments, as care here can mean easy marks, and a lack of care here misses them. Likewise with antecedents. I can tell you from marking drafting papers, if I had a pound every time “the” something turns up in a dependent claim (despite this being the first time “the” thing has been disclosed); I would be a very rich man!

A note on divisionals You need to be conscious of embodiments in the specification. Can you unify them and gather everything the client has done with a single main claim that covers at least what (if any) embodiment they have said is important? Checking for language in the specification that appears to be a superset of specific items may be useful, expect the odd throwaway line here and there, and of course if you are unifying several embodiments you need to ensure that your dependent claims are correct, i.e. that features you add in are common to all embodiments, and if not, that you separate out the dependencies accordingly. You should not be unduly worried if you cannot get to a single claim which covers everything. Sometimes that’s life. Naturally, if you are not able to unify everything I would certainly re-visit the specification and see if you have inadvertently missed something. I would take extra care to see what particular embodiment(s) the client wants or needs covered, as if you do not protect that the client may be exposed to unnecessary risk. It may be possible that in the specification you find support for stand-alone inventions. In some cases these can be a little trivial, with limited basis for a decent claim set, and limited benefit to the client. If that is the case, I would be saying to the client that there is

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The technique basis for something like that, but if the disclosure is a little “thin”, you should use your judgement to determine you will not recommend a new filing. Conversely, you may determine that there is something new of value which does standalone (and on its own two feet). In that case, if it suits the client’s position, recommending a divisional would be appropriate. If you are going to recommend a divisional application be filed, not only must you point out in your letter to the client that there are extra costs involved, but also that you will have a definitive date set by the IPO in which to file it, or the opportunity is lost. Making both of these points could be worth a mark each. Save the numbers of course, In case you’ve not seen their template language, this is what the IPO sends out at the time of writing: 1 June 2017 Dear Sir/Madam PATENTS ACT 1977: PATENTS RULES 2007 NOTIFICATION OF GRANT: PATENT SERIAL NUMBER:GB0123456 1. I am pleased to tell you that your patent application number GB 0123 456.7 complies with the requirements of the Act and Rules, and that you are therefore granted a patent (for the purposes of Sections 1-23 of the Act) as from the date of this letter. 2. Grant of the patent is expected to be announced in the Patents Journal on 1 March 2017. In accordance with section 25(1), the patent will be treated for all later sections of the Act as having been granted and as taking effect on that date. The patent specification will be published on the same date, and you will receive the Certificate of Grant for your patent shortly afterwards. If you would also like a copy of your granted specification, this will be freely available from our website at www.ipo.gov.uk/p-find-publication. Naturally, you’d not be receiving this as part of the exam, because you’re not at the stage where the application can be granted, so you can’t tell the client what dates they’ve got to work with. What you can do though, is be clear to them that if the IPO accepts your changes, they will let you know the patent will be granted, setting an express date by which a divisional must be filed. If you have included a proposed divisional, naturally you are not responding to an IPO objection letter to it having been filed, but it is a good idea to make sure you give a brief skeleton of your divisional claim’s validity. You should set out the proposed main divisional Amendment of Specifications Paper

The technique claim on a separate sheet of paper to your main claim set, clearly marking it as a “proposed divisional”. Naturally, you may have more than one. As it is not likely to take up a whole page, you could briefly include your basis for the claim on the same page. The place for your arguments that it is novel and inventive are either on the same page if space exists, or where you alert the client to the possibility in your letter to them. This should be accompanied with any relevant commentary, such as how the divisional will meet their (expressed or implied) needs, or in any event, what the advantage is to them of incurring the additional cost. It will not need to be as thorough as the argumentation for your main claim, because you do not yet have to argue with the IPO, but knowing how you would do is important. I have suggested you at least sketch out a main claim above. Now, post your cross-check against the client letter and prior art, you must produce your final version.

10. Write your response to the IPO a. Use template in Chapter 7. b. Cross-check against response they sent, and answer their questions! When you produce your final claim, I suggest you do so concurrently with the first part of “turning the handle” on your response, where in the response to the IPO you set out basis for your amendments. There is some basic admin to start off that letter to the IPO (see proposed template below which covers what is necessary). Usually this covers things like saying you enclose form PF51 to register yourself as agent for the case if they’re a new client, and dealing with a missed deadline if that’s happened, for the simple reason it’s the way you’d set that out in any letter to the IPO, so that they knew you were representing the client, and were responding in time. Then you’d get on with the substantive part of the response. Firstly, that’s the basis for your amendments, usually set out in a tabular format for the reader’s ease. Please do not get too hung up on this having to be a set, specific, rigid table. There are suggested headings in the template later on, and provided it is clear what changes have been made and what the basis is for each of them, there is no need to spend time worrying about how many centimetres you need for each column. What matters here is being clear where things have literal basis, and where not. If you are risking stretching it, your rationale for doing so should be set out, and if you are covering more than one embodiment with a claim, you need to expressly set out where the feature can be found for each of them. Now if this sounds a little messy and you would prefer to do one action (write up the claims) before the next (start the response to the IPO) that is fine. Personally, I find doing it concurrently reduces the need to “to and fro” with the papers, given that when drafting

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The technique claims I need to know where I am finding basis, particularly where you are lifting wording directly. If I put that reference in a table on another piece of paper, it saves me having to flick back to it only a few minutes later, and the time wasted re-reading it all (to be sure). It also means that when I get to the end of this I have both complete claims, and basis, all done at the same time, leaving me free to get on with the rest of the response to the IPO. Whether you do them concurrently or separately, at this point you have now got a claim set completed, and you are part way through your response to the IPO, so it is time to deal with the rest of what the IPO (and examiner) needs to see: novelty, inventive step, clarity, unity, and any remaining administration.

Novelty Novelty is binary; either your claim has it or not, so you can afford to be brief. What do your independent claim(s) have that the art does not? Unlike a real-world response, the examiners do like you to state what the art does have instead, although you should be wary of launching in to lengthy inventive step type arguments as to why you are different, so do be brief. Naturally you will want to make sure you address all embodiments in the art to ensure you are novel over them, but fortunately, you only need to make novelty arguments for any independent claims you have, which may mean this is fairly simple and quick to deal with.

Inventive step The importance of a robust and correct inventive step argument cannot be laboured enough. As the examiners say frequently, for example in 2010: “This is the key section for candidates to pick up marks, particularly those with a ‘borderline’ claim 1.” Making a good inventive step argument in FD3 is as much about knowing what to do, as ensuring you avoid a bad one. As you will also see in the examiners’ comments, inventive step arguments are typically weak, frequently risk being little more than a rehash of novelty arguments, or are otherwise just not clear. Therefore, if this is new to you, I strongly suggest you spend time understanding not just the relevant tests, but bend your supervisor’s ear to ensure that your approach in the exam will get marks. To avoid a bad argument firstly, make sure you know which legal test you will apply, and stick to it. It is permissible to use either the UK’s Pozzoli test, usually stated in these circumstances as “Windsurfer as modified by Pozzoli”, or the EPO’s problem-and-solution approach. It is essential that you decide now, not in the exam, which one you will use. That way you can be 100% clear on the steps required, commit their language to memory, setting out the steps in your response, and stick to them. The importance of candidate’s own understanding is repeatedly reinforced in the examiner’s comments, for example those from 2009:

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The technique “Some candidates appeared to apply the European problem/solution approach and others referred implicitly or explicitly to the UK Windsurfer or Pozzoli test (the former now being out of date of course), and both approaches were considered acceptable for the purpose of the exam. […] When applying the UK approach, one is not normally expected to discuss the ‘closest prior art’ or the ‘problem solved by the invention’, and when using the European approach one is not normally expected to discuss ‘common general knowledge’ (CGK) or the ‘inventive concept’.” Some candidates remained confused as to what steps were relevant to which test in 2010: “In this regard, the concept of the ‘closest prior art’ does not feature in any of the steps laid down in Pozzoli, although applying the European problem/solution test is admissible provided that candidates are consistent and stick to either the UK or European approach.” If you do not use the right language, you risk not applying the right legal test. Neither is particularly complex in isolation, so make that decision now, understand the applicable language, and set out your response accordingly. I will at least nominally stick to Pozzoli (on the basis this is the UK exam, and Pozzoli is the UK test), when considering the relevant steps below. They are set out in the proposed template at the end. There is extensive commentary in CIPA’s Guide to the Patents Act (the “Black Book”) about inventive step, which you should make time to read. It discusses the specifics and requirements of both of the possible legal tests and their respective steps. In a more general sense about the inventive step section, the 2010 comments also go on to say: “Candidates are also strongly advised to base their arguments on information given in the paper, rather than to speculate wildly or try and be too creative/clever. The examiners are not looking for advanced mechanical insights but a competent analysis of the facts at hand. Again, if no inventive-step arguments spring readily to mind it is more likely that Claim 1 needs a rethink. In real life, far-fetched inventive-step arguments can store up problems for later if they turn out to be technically incorrect or implausible.” Which tells you it is essential to base arguments on what is in the paper, not anything you may know, speculate or guess about. Using the right language is not limited purely to the legal test, all too often it is easy to be lax with wording (as time ticks away), risking using intermediate generalisations or paraphrasing, thus not arguing from the documents in front of you but in a more generalist, informal way. This risks making the wrong argument, or an argument that just does not stack up (when it would if the language is correct). Taking time here is then, clearly essential. 50

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The technique Some of the most useful general comments on inventive step came in the 2011 Examiner’s Report, from which I copy without giving the specifics of the paper away: “When constructing inventive-step arguments, one is usually looking to the text of the application and the prior art, and to the feedback from the client (to whom it is often clear not only how the prior art differs from the present invention, but why) for source material. It is not normally necessary, and it can furthermore be dangerous, to rely on anecdotal/unsubstantiated and/or specialist information known to the candidate, or to base arguments on overly convoluted or speculative technical analyses. This is not only true of the exam but also in real-life situations. A candidate who is only able to construct arguments of the latter type should consider carefully whether or not they have chosen a suitable amendment. It is noted that a rigorous application of the ‘Pozzoli test’ requires an identification of differences between the inventive concept and the prior art, but candidates should not place too much emphasis in the inventive step section on statements such as ‘the prior art does not teach or suggest feature X’, since this is essentially a restatement of a novelty argument without using the word ‘disclose’. The real meat of the argument comes afterwards, explaining why the skilled man would be directed elsewhere, faced with such a deficit of features, or would be prejudiced against consulting a document, or would be unable to combine the disclosures of two documents, and so on. Candidates should as ever take care not to base inventive-step arguments on features which are not present in Claim 1, for example by arguing that […X…] is easier for a user [than Y ] but not specifying in Claim 1 that (only) […X…] is provided. This issue did not seem to crop up very often this year, but, when it did, it was typically in more subtle ways: candidates often used a more ‘conversational’ style of language in the inventive-step section, as a result casually introducing synonyms for, or abbreviations of, claim features […] without apparently considering the significance of the change. This sort of thing can be considered a question of style rather than substance, but candidates should remember that the examiners very much want to be persuaded that a candidate knows what they are doing, and a clear, precise use of language is a good way to do so.” The more past papers you do, the more inventive step arguments (of this specific format) you will have to make, which will hopefully make you look more closely at ensuring you are not just using novelty language, but are clearly applying the legal test and hence, satisfy the examiners that you can make the correct argument. As before, the client letter can provide useful hints as to where an inventive step can be found, so it is worth revisiting that and seeing if you have marked anything up with an “IS” next to a tickbox (if you have adopted that approach, or a specific colour if that is what Amendment of Specifications Paper

The technique you have done). Do not forget, your client is probably at least skilled in the art, even if they are not the person skilled in the art for the purposes of the Pozzoli test. To determine the person skilled in the art, I suggest you look to those sorts of people who would not likely be mere users of the technology (which your client may be – often you are looking at one or more levels above what they do), but are those in need of understanding how an invention works across the whole field and what the options are; product designers, manufacturers, architects, etc. Both the Black Book commentary and past examiners’ comments touch on these points (in addition to the case law), so are well worth reading. As per the UK legal test, the common general knowledge of this skilled person (or persons) must be set out, and then the inventive concept in the claim made clear. That common general knowledge may comprise the art the examiner has found, as well as anything cited in your own specification as being art. You may also find that in the client letter there are statements about what is known. You will need to use your judgement as to what to include, which will depend on how relevant, severable and justifiable it is. For example if the client is very blasé with their language (one of those “as everyone knows” type statements), ask whether everyone in the field would reasonably know? If the description is to some sort of long-standing or ingrained practice, they may be right. If the description of what everyone knows is lacking detail, it is harder to consider it as common general knowledge for the purpose of the test. Then it is time to determine the differences between the new claim and each of the embodiments in the art (one by one of course). Then you decide, is there an inventive step, or would what is in the claim be obvious? Naturally, there is a problem with your chosen claim if you end up with the latter. So why is it not obvious, and why is there an inventive step? This is where your argumentation skills come in to play. In the exam you are not likely to have time to use every possible argument for inventive step, and the kitchen-sink approach will not curry favour with those doing the marking. Certainly, if you are scrabbling about with one of the outlying ones (as the Black Book says, 7th Edition at 3.33 “A court views with suspicion arguments based on prior art that an invention was obvious if, despite the prior art, the invention has been a commercial success”), you need to check you have the right amendment. In the main, you will be given ammunition in the paper to give one or more solid arguments in favour of an inventive step, which have tended to revolve around only a few of the main, solid ones: • Being careful to ensure you do not just say the art does not have what you do, as that risks being just a “re-hashed novelty argument” which the examiners are not going to score you highly for. • If you are going to say your inventive step is present because a document teaches away from your solution, make sure it actually does. Look for language in the art which is indicative the thing it uses is good, or of course that what your client uses is bad. This 52

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The technique might range from a subtle claim or statement about the benefit of what is used to something explicitly trumpeted by the author. For example, if a force is used by the art and its benefits are made clear, the force your client uses to achieve the same may be an opposing one. If a laminate is used, the art may specify an exact, or upper or lower limit to the number of layers for a specific reason, and your client may be on the other side of that. In any event, it leads to a clear direction away from your client’s solution. This means as a minimum, identifying which page and line (and it may be necessary to conjoin several paragraphs to do this) such teaching can be found in. If it helps your argument to copy out the wording, so be it. • If you are going to claim that the art solves a different technical problem, usually it has to be clear that there is a different problem at issue in the art. The art may not identify the problem, it may subtly hint at what it is solving, such as dealing with a deficiency elsewhere (i.e. in other art you do not see or the industry in general), which its solution overcomes. Often there is a fine line between something teaching away, and a different technical problem being at issue; you will need to use your judgement to know which argument to use. • If you claim incompatibility between your solution and that of the art, you will have to say what would happen if the two were combined, to make it clear what the result of combination would be, however daft (and therefore implausible) the end result. As I say this is not an exhaustive list of possible inventive step arguments, there are plenty more which may be valid. For example, if “it would not occur” to the skilled person to consider using a particular document, you had be pretty confident as to why. Distant fields and the age of documents alone may not be enough for that to carry weight. If that is the case, the client may well have given you a hint in their letter to you. Combinations of documents, even where not expressly telegraphed, should also be considered, and hopefully should be easy to dismiss. Given all of this, do not be surprised if addressing inventive step takes up the bulk of your time when responding to the IPO, as where with novelty you can just set out arguments for your independent claim(s), you are expected to spend time presenting inventive step arguments for all of your claims. A suggested format for presenting this is set out in the template below.

Clarity Were there clarity objections by the IPO? If so it is time to respond, either by having done something to deal with them, or arguing that you do not need to, and in either event citing what objection you are responding to (so if, for example, the IPO letter is kind enough to list specific paragraph numbers as points like a real one does, use the same reference). Often Amendment of Specifications Paper

The technique dealing with an objection like this from the examiners is arguable either way, and you need to use your judgement as to which of dealing with it or dismissing it is appropriate. The circumstances probably set this out, so if for example there is a “safe” option with limited or no impact and time is of the essence for your client, take it, and explain to them why you did. Alternatively, you may have made minor changes to deal with incorrect dependencies or other errors of your own volition. This is the right place to set out what you have done and why it is permissible, usually by making reference to your earlier table about where basis can be found.

Unity If there is one main claim then unity is not at issue. Given it takes less than 30 seconds to write that, do so, to make it clear to the examiner you have considered or are aware of it. If there is more than one independent claim in the same category, naturally, you have to set out why there is unity of invention between them. If this is at issue your rationale can probably be succinct, and you should be looking to wording in either the client’s letter or the specification to aid your justification.

Anything else Completing the response to the IPO means not just covering off basis for the changes, but also responding to any of their specific objections if you have not already done so. Finishing the letter also means dealing with any admin, for example asking to accelerate prosecution (for which of course, you need to specify a reason, such as a likely infringer). You also now should go back through the letter to the IPO, and if you have made check boxes, tick them off when you are confident you have addressed everything they raised. And finally, put together your letter to the client.

11. Write your letter to the client: a. Answer any basic questions asked, standalone or ones you needed to read the paper to answer. b. Your opinion on the letter from the IPO (agree or not), then explain what the options you had were to circumvent the issues, which may take time, and also what has been done. If there is anything you're unsure about, for example if you think there are weaknesses with your response, e.g. is your inventive step argument arguable, could it be read in more than one way? Now would be the time to set that out. c. Next steps if relevant (e.g. accelerate or delay prosecution, file divisional…)

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The technique First thing to check – what format should this be in? The instructions state what the examiners want, and since 2007 this has been: “an outline memorandum.” In 2006 it was: “a memorandum consisting of notes (not a letter).” Which suggests that unless that changes, a fully addressed letter containing exact prose ready to post is not required, but however you choose to set it out, make sure you get your points across. The best way to make sure you cover everything required here is to start by crosschecking against the tick boxes you have on the letter from the client, which allows you to deal firstly, with any admin points required (e.g. have you registered yourself as their agent), and then any standalone questions the client has asked (by just answering them). After this you should give your opinion as to the validity of what the IPO report said. Usually you can quickly reference the issues from a cross-check against the tick boxes you made against the IPO’s letter. Did you agree with what the IPO said? And if so, what did it lead on to? That gives you a chance to set out the options you considered for change, and also why you decided on what you did. You can point out if the IPO got something wrong – meaning either you had to argue with them, or you did something they did not expressly note, such as make corrections. The implications of your response to the IPO need to be set out, in particular stating how you have met the client’s needs, and what this leads on to. So if, for example, you have proposed a divisional, stating that along with the implications (additional cost, the need for speed even though if under current Patents Rules you have asked for a delay to the 18(4) being issued, or if the new ones are adopted you make your application prior to the date you have been notified grant will take place, etc), need to be stated. If there are other things to follow up, such as if there are prospective infringers lurking, or the need to consider international applications, they should also be addressed here. There is no rule of thumb for how long an “outline memorandum” is or needs to be, all you have to do is make sure that if you have made a lot of check boxes in the paper itself, by the time you sign off as the vaguely amusing name given to you in the letter from the client, you have ticked through every one.

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The technique

12. Cross check! Make sure all tickboxes you have made are ticked! This is a pretty simple step. From the start of your reading in #3 above you’ve been making tickboxes, now make sure all the ones you made are ticked. If not, do something, to make sure you have ticked all of them! As you’ve been using double line spacing, if you need to put something in, you should have space to do so. And that’s it. The best way to do the exam would be to start with a cup of tea and your feet up, immerse yourself in the invention and the art, have a chat with your colleagues about it, taking your time to decide which of the options given to you would best suit the client. Unfortunately, you only have three hours, and with such a lot to do, there is no time for a relaxed approach. Given the amount of information presented to you from the off there are many possible starting points, because so much has to be done, having “a” technique really is a must, even if not this one. This one has proven effective across a range of papers to drive candidates towards a solution that works for the client by focusing on them from the start, whilst not risking candidates looking for a possible solution which will not work or is pre-determined because of where else they start to read. Whichever way you choose, I wish you good luck. A quick reference to the main tasks is set out next in Chapter 6 as an “Action Checklist”, as is a proposed template response letter to the IPO in Chapter 7. This might be similar to what your firm uses, and if you are used to something more polished then by all means use it. What I’ve set out is what I would consider to be the bare minimum necessary to ensure you cover the points the examiner expects to see.

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6. ACTION CHECKLIST There are a dozen things you need to do in this exam, with potentially two precursive options too:

Optional: a) Write down any mnemonics you need before you even open the envelope. b) Start a “rough notes” sheet.

Open the paper, separate the parts and get yourself organised.

Read the instructions, make sure you know what the task is, and what you must submit.

Read the client letter. Aim to identify: a. Your relationship with them (new client or not). b. Basic standalone questions you can answer. c. Their commercial position or intent (money, timing, product(s) or embodiment(s) of importance). d. Novelty or inventive step pointers against the art. e. Any further advice needed (e.g. questions that rely on paper specifics, i.e. need a response but cannot be answered in isolation).

Read the claims: a. b. c. d. e.

Type and number of independent claims? Dependencies? Clear mistakes? Antecedent for features? Omnibus or not?

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Read the specification: a. b. c. d.

Read the IPO letter: a. How this is marked up depends on how thorough it is – see above.

Read the prior art: a. Do you agree with the IPO? Worth noting for the client letter. b. How does it work? Diametric opposite to the client’s invention? Similar material which affects your claims? c. Is there express teaching about the problem which is being solved, advantages of the approach or disadvantages of other approaches? d. What is the delta between your disclosure and the art? See 5e if you’ve not already clearly identified all unclaimed subject matter in your specification.

Work out the amendment: a. Sketch it out if necessary. b. Cross-check against letter from client to make sure any embodiment important to them is at least covered. c. Cross-check for novelty and inventive step against the art. d. Ensure sub claims are sensible and work for the client. e. Consider the need for one or more divisional applications.

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Action checklist

Write up your claims: a. Remember to check embodiments, and dependencies! b. Retain existing claims unless there’s a good reason not to! c. Don’t forget plenty of new claims may be features of some of those existing claims, so you may be inserting claims to the old ones as they’re best placed there. d. Don’t forget about divisionals.

10. Write your response to the IPO:

a. Use template in Chapter 7. b. Cross-check against response they sent, and answer their questions!

12. Cross check! Make sure all tickboxes you have made are ticked!

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7. TEMPLATE RESPONSE TO EXAMINER For the avoidance of doubt, anything below in speech marks is template language, which you could consider remembering and including verbatim. Anything in square brackets is commentary, or options to be considered as part of your response.

1. Introduction and basics “To IPO Examination Division, by fax & special delivery, [insert today’s date].” “Re: GB [Clients Application Number, including an abbreviation to save you having to type long hand, e.g. “Re: GB2,500,001 (NB = “01” throughout this response)]” [Repeat abbreviations for art if not already done for you, e.g. “NB, GB123456 is referred to as “D1”, US123456 = “D2” etc.] [If new client insert] “I enclose form PF51 to register myself as Agent for this case.” [Omit if not a new client, or you look like a numpty]. [If replying within the deadline] “I respond within the deadline of DD/MM/YYYY” [i.e. set out the deadline in full]. [If replying within two months of now passed deadline] “I hereby retrospectively claim my two months as of right extension under s.117B, and thus respond within the revised deadline of DD/MM/YYYY” [i.e. set out the new deadline in full]. [To be clear on this, in either event, calculate the date specifically, and cite it.]

2. Basis for replacement claims “I enclose a replacement claim set which addresses all issues raised by the examiner, basis for the new claims is as follows where “P” means “page” and “L” means the “line” where basis can be found:”

Amendment of Specifications Paper

Template response to examiner

New claim

Basis

Comment

1. Introduces feature x

P2 L3

From statement of invention

Old claim 2

3. adds in feature y from old claim 3 plus limitation from claim 4

Old claim 3 plus claim 4

4. delete feature z

Stated as “optional” on P4 L7 for all embodiments

…

Omnibus claim deleted

“Thus, I submit there is no matter added. Where matter has been removed the applicant reserves the right to reinstate it later” [i.e. reserve your position].

3. Novelty “Replacement claim 1 is novel over D1 because claim 1 contains X. D1 uses Y instead” [naturally you’ll need to do this for all independent claims] “Replacement claim 1 is novel over embodiment 2 of D2 because…” [Make sure you deal with each embodiment in the art. Also ensure you set out what feature(s) the prior art has instead, to highlight the difference and demonstrate you have identified it. Be cautious as to limit your language and arguments to strict novelty; do not stray into inventive step territory. Address any specific comments about novelty the examiner has made which you have overcome if they are not implicitly dealt with here.] [Finish this section with boilerplate] “All claims depend on claim 1 thus are novel by virtue of dependence.” [Or not if you have multiple independent claims, i.e. “claims 2-9 depend on independent claim 1, claims 11-15 depend on independent claim 10, thus all remaining claims are novel by virtue of dependence”.]

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Template response to examiner

4. Inventive step [Unless you wish to use the EPO’s problem-and-solution approach, in full and correctly:] “Applying Windsurfer as modified by Pozzoli:” [to make it 100% clear that you’re using this test, then go through the process, and I suggest you add some sensible abbreviations from the off to save you time]; “1a) The person skilled in the art (“PSIA” [to save you having to write it out in full every time]) is: [And make a reasoned argument as to who that would be. A user? Unlikely. You will probably need to think bigger – designer, architect, overarching person who would need to know about construction methods/ techniques/ decisions. Ask your supervisor and see the examiner’s comments for help in this section if necessary].” “1b) Their common general knowledge (“CGK”) would be: [Prior art in your specification is acknowledged as being valid prior art. The validity of prior art cited by the examiner can be argued with – for example is it s.2(3) (novelty only) prior art? If not, is it far flung? You can argue about the relevance of cited prior art here if it is necessary and appropriate, but do not get too hung up on it, you are better to deal with all prior art.]” “2) The inventive concept in the claim is: [and say what it is, noting the examiner’s comments as set out in the inventive step section above]” [Then, for each art document, and each embodiment thereof, what is the difference between the inventive concept of the claim as per #2 above and it? So;] “For D1: 3.1) The difference between the inventive concept in the claim and embodiment 1 on page 4 line 3 is…” 4.1) [Decide, is there an inventive step or is it obvious? If the invention is obvious it is back to the drawing board. Likely arguments may include: the art “teaches away from”, the art is “incompatible”; or the art “solves a different technical problem”. Make sure you check the language in your claim to make sure it corresponds – i.e. you are arguing for your claim! Also if you are saying there is express teaching away, say where it can be found, i.e. do not make it up or just make the statement, usually there is something in the art that will claim an advantage to their method or apparatus, and some degree of satisfaction with it. If it is incompatible, it is because the difference identified above at 3.1 means inserting your mechanism/ method step simply would not work.] Amendment of Specifications Paper

Template response to examiner [And repeat for all embodiments of all claims, e.g.] “3.2) The difference between the inventive concept in the claim and embodiment 2 on page 6 line 5 is ….” [4.2) Decide, is there an inventive step or is it obvious?] [When complete] “Thus claim 1 contains an inventive step over the art.” [Now repeat for all of your claims, noting this takes time, and can feel rather futile when you are getting in to the later and narrow ones, but at least it should be quick.] [Cross-check against – anything else the examiner has raised about inventive step? Again, throwaway comments? – combine the embodiments?]

5. Clarity Deal with any points raised or missed by the examiner, and say that you have done so, e.g. you have corrected issues or argue that change is not necessary.

6. Unity [If no issue, a brief statement to that effect is fine, likewise if you have to argue your case, make sure you do.]

7. Anything else [If want to accelerate prosecution] “Please kindly accelerate prosecution, reason: Likely infringer” [do not forget there must be a reason, which should be set out to you in the client’s letter]. [NB, under the old Patents Rules, you may have needed to ask for delay in issuing grant to let the applicant file a divisional. This is no longer the case as is set out in Section 5 above, as you are given an express window to act, so please don’t ask for a delay. If you need to file a divisional make sure you create a skeleton claim for it, set out the basis, and tell your client what it is and why you think it’s a good idea to file it.]

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8. THE 2017 FD3 PAPER ITSELF

Amendment of Specifications Paper

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The 2017 FD3 Paper

Amendment of Specifications Paper

9. WORKED EXAMPLE – THE 2017 FD3 PAPER Make sure you do the paper to time, under exam conditions, before reading this. I will show you what I did overleaf.

Amendment of Specifications Paper

Worked example – the 2017 FD3 Paper

Optional: To start, personally I’m not taking Option (a), but I am going for Option (b); I write the word “Scratch” on a piece of normal exam paper at the start. Others write “Notes”, “Important notes” or similar, giving me a dedicated piece of paper to write down anything of specific importance on if I feel the need at any time. I give it the odd name as it’s clearly not something that’s going to be handed in, so I won’t mistake it for anything else. I put this on the desk to one side. Then:

Open the paper, separate the parts and get yourself organised

Paper taken apart and D1 clipped with a bulldog, “D1” in the top right of the front AND back of that document, D2 is a single sheet so no need for a clip, but “D2” on the top right on both sides for ease of identification if later required. I’ve also written “CL” on the client letter top right front and back, and lazily “XR” on the top right of the examination report, just so when I inevitably have them scattered around the desk and want to refer to something, I know exactly what each sheet is at a glance. It’s probably overkill with this paper as there are several single sheet docs, but still, it works for me; it’s part of my personal strategy regardless of what the paper brings, reducing my personal stress level. From the cover sheet which has no page number I know today is Wednesday 11 October 2017. My application doesn’t seem to have a date on it, D1 was granted 3 March 1982, D2 is an article in 1985. I can be pretty confident that’s telling me they’re both good for novelty and inventive step as this is a 2017 paper.

Read the instructions, make sure you know what the task is, and what you must submit.

This is a paper with 100 marks (from #3 in the instructions), which is standard so should contain no surprises. It’s a multi-part answer (#4 – “Start each part of your answer on a new piece of paper”), thus may well be the same as has been the case before, I will find out, and there are a massive 21 sheets, which include: Nine sheets of the application, only one of which is drawings, so that’s eight pages of disclosure, which means either it’s very complicated (if I’m lucky) so it will take a lot of space for the author to explain, or it’s simple, with many variants, or possibilities to claim, including possible divisionals, given there is so much to read (and which can thus, act as basis for claims). I can’t know without reading it of course; we shall see. The prior art is both a US patent application as D1, and D2 has no reference, so may be non-patent literature. Which is always the worst kind, as the language can be colloquial, 88

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Worked example – the 2017 FD3 Paper suggestive, or drawings can smash right into your independent claim(s), or even those you wanted to amend to. Or it might be wholly or partially superfluous, given it’s one page against eight disclosed in the specification from which I have to find the answer. I can see the Assessment task set out on page 1 is word-for-word as it was the year before, so it does not surprise me, and as I’ve done this an awful lot of times, I’m sufficiently confident to write at the top of another sheet of paper: “Notes on which I’ll base advice to my client”, sufficiently parroting part 3 of the task. I won’t need this again until later, so I’m going to put it on the floor to my right, face up. It will form part of my answer, and at this stage I can read my own writing, later on that may well not be the case! I also then know from this I must produce the standard response to the IPO, with amended claims if I think it necessary, and notes to the client to explain myself. I’m reminded at 3.(iii) [see page 66] these notes are for future actions to secure “full protection of its commercial interests” (my emphasis) are what’s required, as well as any further information I might want to ask for, that notes should relate to the inventions outlined in the client’s correspondence to me, that I should limit comments to patent matters only, and per c) it’s important not to use my own knowledge, worry about any other art that may exist (per d) and that I need to clearly identify any amended claim set and/or divisional claim(s) as at (e).

Read the client letter

There is a huge amount to this particular letter. Para 1 tells me my name is Mr Crow, this will be a new client, which means I need to register myself as the agent when I reply to the IPO, and tell the client I’ve done that. That’s at least 1 mark, perhaps 2. “Low-hanging fruit” one could say. I would make a checkbox there with the word “Agent” next to it. I’ll tick it when I’ve registered myself as agent with the IPO response, and have told the client I did so. It also tells me the deadline is at issue so I need to work out what that is, reply within it (or have a draft for consideration if there is time or need to revert), and tell the client so. In this case a quick check overleaf says the last date to reply was 18 September, so as I’m still within the period to do so I will need to claim my two-month extension as of right (1 mark) in the letter to the IPO and reply within it (probably, along with noting this to the client, another mark, even if it, and the solution, are on a plate). That’s potentially 4 marks available from that paragraph without any significant thought on your part and no need to think in detail. Or zero marks if you don’t do anything with it, with ~96 to go, and you still need 50 marks to pass. The whole aim of the approach I set out is to make your life as easy as it can be in the exam. I’d have a checkbox with “AOR” against it, meaning “as of right” of course (I could have put “extension” I suppose), again something to deal with the response to the IPO.

Amendment of Specifications Paper

Worked example – the 2017 FD3 Paper Next paragraph, what are you telling me dear client? That the author knows the field given they make garden supplies of various types, and that the invention is a squirrel-proof bird feeder that I don’t yet see or understand. They also say the art found shows something similar – the mechanism being similar, but it doesn’t work against squirrels, because they could “reach down from the top hanging point”, whatever that is, “unless you put the feeder in a squirrelinaccessible place”. OK, can’t draw too many conclusions from that other than the invention is aimed at squirrel-proofing, and the client doesn’t think the art found is squirrel-proof. What then, gives rise to that advantage, i.e. why is the client’s invention squirrel-proof, that the art lacks, especially given I’m told the mechanism is “fairly similar”? We shall see… Next paragraph: I’m told that the whole sidewall of the “feed holder” is made of mesh “and so does not need perches”, making it “accessible to the small birds”. That tells me at least one technical effect of the sidewall being made of mesh, which is in effect the advantage of claiming it. Checkbox – “Adv?” against it with that bit underlined, telling me there is an advantage and no more. “Bird and Feather”, which could be D1 or D2 of course, has “only a few holes” which can align, or not if other things fail. I am not wholly clear what that means, but if alignment leads to birds being able to use it, then I can see that having more than “only a few” holes can be beneficial – provided I can ensure it remains squirrel proof! That means the client’s design is, or could be, probably straightforward, and less complexity can be evidence of an inventive step. We shall see. I’ll have a checkbox with “IS?” next to it. The client also says that transparent materials can be quickly damaged or destroyed by squirrels. That is interesting, as the client makes a squirrel proof bird feeder, and as transparent material is merely damaged by them, I’m not quite sure if that helps or hinders! Checkbox with “?” in it, in case it’s important. The client also says mesh walls for feeders are not new, so novelty may be at issue with just mesh being your invention. Just when you were thinking the answer was on a plate (or found in a mesh sidewall). I would suggest responding to this to the client would be wise, and to see if there is something in the art or elsewhere that suggests this is common general knowledge beyond this mere statement. It may be that mesh is known, but not in this context. We shall see. Checkbox, “N?/R” for [is this] a novelty issue? And the R for “reply” to the client about it. As a quick aside, you can see from the shorthand I use, I have a glossary. I would suggest you create one for yourself. Some people prefer to colour code things with each colour meaning a specific thing. I find that can be awkward as there are some things which can be two things, so you end up with two colours in a short space. Or “a mess” as I call it. Which later may not help you. Your decision, whatever you do must be meaningful to you, and not something that later confuses you, risking time being wasted trying to work it out. Keeping it simple is thus, often best. Para 4: Metal mesh has been used, however, there have been improvements in other types of meshes since then. This suggests you will want to aim for a claim to a general mesh, rather than a specific metal one, if there is basis to do so. I’d be putting a checkbox 90

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Worked example – the 2017 FD3 Paper and writing both “claim” and “R” (for reply) adjacent, i.e. not only do I want to see if I can claim that if it’s not already in there, but I should tell the client if I have or have not. You are given non-technical reasons for the plastic mesh – a more aesthetically pleasing design and colour, and a sufficient one to justify a claim to it – it’s cheaper. This implies you should aim for dependent claims to the mesh being both to metal, and to plastic, if possible. Para 5: Time continues to be at issue – if there is time the client wants to see a draft and discuss. You will want to follow their instructions if you can, checkbox and “R” of course. I have until 18 October to reply with the two months as of right, which as I know from the today is Wednesday the 11th means I have until next Wednesday to reply within the twomonth as of right period, which should be sufficient to get a draft over, and underpins the reason to discuss dates. By now the letter should have a number of tick boxes on it, and we know we have a number of things we can do to pick up some easy marks. We’ve had some hints to look at a mesh sidewall and a request to look at it not being limited to metal if we can, although novelty needs to be considered, and that a current design can only be used when “a few” holes line up, which may or may not also need perches, and that transparent materials get damaged by squirrels…. Wow, what a lot from such a short amount of words! You will note the client said nothing about money. With excess claims fees being an issue, now if you’re going over 25 you should certainly be wary of the additional cost and point it out when you reply to them with your draft for discussion. In this case, I’d take the lack of money constraint to mean you could hit 25 claims or more if you had time and thought additional claims really had merit.

Read the claims

Now let’s see what was claimed, not forgetting that I don’t know much about the invention yet so I don’t need to worry too much about detailed corrections or change: Claim 1, I think I’d prefer the foodholder itself to merely “comprise” apertures for permitting birds access to the food, so if there is scope to broaden this to more than the sidewall I’ll be grateful, but I won’t be surprised if this isn’t possible. The shroud is movable yet is “mounted on” the bird feeder between two positions, which seems to be missing something to facilitate that, we shall see. The predetermined value is interesting as it implies a threshold, so I hope we can quantify it if we need to as it risks being a relative term. There is nothing about a mesh, which the client was worried about, merely apertures for permitting birds access to the food, which is promising as it appears to me to be a superset of such materials. There is also nothing about perches, and nothing about a sidewall being exposed, which are the other things the client mentions.

Amendment of Specifications Paper

Worked example – the 2017 FD3 Paper Where this can wait until the next step, at least how it generally works seems to be easy enough – the bird feeder can be suspended from a fixing point, and has two positions, a first “open position” permits birds to access bird food via apertures in the sidewall of a food holder which line up with a shroud around it. This is the default position as biasing means maintains it in this position. Until a big bird or animal stands on the shroud, overcoming the biasing, and the shroud descends to the closed position, the holes no longer line up, covering the apertures, so no food is accessible. Claim 2 is a bit of a mess, there is an “attachment means” in claim 1, and now we have some sort of support seemingly being inbetween the food holder and this attachment means. In short, it’s an extension of the attachment means. Claim 3 tells me this support now “includes” a rod on which the shroud is slidably mounted. The difference between the “support” and “rod” not being wholly clear, the claim language implies the rod is a part of this support (“includes”). Claim 4 then tells me there is a helical spring in the embodiment from the 3rd claim, which acts as the biasing means, and it is “on” the rod, and is between the shroud and food holder. Claim 5 is a sensible choice of metals for the shroud itself. Claim 6 appears to use a rather large number, which may be a mistak unless there are a lot of very hungry birds. Claim 7 brings in a metal mesh or perforated sheet material, which is good as the repercussive effect is that claims higher than this cannot be such things, so could include a plastic mesh. Claim 8 cannot depend merely on claim 7, as it refers to merely a mesh. That suggests claim 7 should be a metal mesh (or a generic mesh at any rate, if I can find support for it), and then one or more claims that depend only on that could be given, including a list of mesh types (again, if there is support). There can be another claim to a sidewall being formed from a perforated sheet material, which does not depend on that claim 7 (but does depend on earlier claims of course), so the two embodiments do not trip over each other. As a general drafting point if there are merely two alternatives they can be in a single claim. If either alternative has further features, you can’t have a claim dependent to that which refers to just one of those features, or it’s a right mess and you’ll get a clarity objection. When marking the drafting paper it’s amazing how many times I get to read something like the only way this current configuration would work, which would be akin to “Claim 8: A bird feeder according to claim 7 but only when claim 7 is a mesh, wherein…” If you are also doing the drafting paper and find yourself doing that, please do us both a favour and reconsider your claim ordering! Claims 9 and 10 appear sensible, if a little cheap, and you can spend as long as you like at this stage wondering if claim 10 should depend only on claim 9, or if they can both work as they are. Worth noting with a checkbox for “D?” [dependency?] perhaps and coming back to if there is time. To be honest as in the real world, if you’re this far down the claim stack and are hoping this is your novel and inventive set of features, you may get to grant, but is it really worth it? 92

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Worked example – the 2017 FD3 Paper

Read the specification

The first thing to do is understand the invention. It looks relatively straightforward, especially now we’ve read the claims to give us a head start which give a good indication of general function. Referencing the figures and explanation in the specific description on pages 6 and 7 should help. At first glance on page 6 it appears to be similar to a conventional bird feeder as per the art explained by the client. I’ll use the reference numbers as per the specification. You have a cylindrical food holder 1 made from (in this case) galvanised wire mesh, where the apertures 7 are small enough to ensure bird food doesn’t come out, but the food can still be accessed by birds who can grasp the wire. A closure cap 5 at the base can be removed to fill the food holder 1 when turned upside down. The top section is explained in an overly complex manner, in essence a rod 13 is a constant on top of the food holder 1, despite it being connected to a “support disc” 3, which if you were drafting this afresh you’d probably avoid specifying in detail unless you really had to include it. The function of this support disc 3 is simply to act to connect the food holder 1 to the rod 13, which you can imagine being achievable in any number of ways, and potentially it being a one-piece unit, but let’s not get too hung up on what could have been – you’ve got what you’ve got and have no idea what prior art was being worked around or what the client’s instructions or experience of manufacture were. At the top of the rod 13 is a hook 11. There is a shroud 15 that we know about from claim 1, clarified, between the end the of page 6 and the start of page 7, as being movable with respect to the food holder 1. The shroud 15 is also cylindrical and has a roof 17. Thanks to a helical spring 25 between the roof 17 and the support disc 3 which holds the shroud 15 above the food holder 1, the whole sidewall of the food holder 1 is exposed, so birds can easily access it. This is called the “open” position. If something too heavy, like a squirrel perhaps, stands on the shroud 15 or the roof 17, it will apply tension to the spring 25, meaning the sidewall of the food holder 1 is covered, and no food is accessible, effectively making it “closed”. If the heavy animal leaves, the spring 25 biases the shroud 15 back to the “open” position. If I was overthinking this, I’d wonder if an animal that jumped onto the mesh without contacting the shroud could happily have its fill, as the spring would do nothing more than stretch further. Thus where this is squirrel inaccessible (or rather, heavy animal inaccessible) from above, I’m not convinced it’s foolproof. However, that’s not the purpose of the exam, where the paper is my world, so I must assume that this will never be located in a place where animals can jump on to it, and they only try to get to it from the top, in which case it works as described. I find engineers are particularly bad at overthinking this (and other) exams, worrying constantly about how things can and do work. In this case, if you find your mind wandering like mine just did, forget it – you’ve been told how it works, animals are only able to get to this from above, so if one that’s too heavy comes along and tries to get on to it, their weight will pull the shroud down and the food will be hidden from them. It’s as simple as that. You have no further disclosure to tell you that there are additional Amendment of Specifications Paper

Worked example – the 2017 FD3 Paper means to do anything else, beyond how these main features work together, what they’re made from, and how they interact. Now let’s look at the specifics of the disclosure, and see what explanations there are and what support exists for current and potential claims: Page 4: The title is bird feeders, and the field is that of bird feeders, according with the preamble of claim 1. Then we have some prior art. This is important – para’s 2 and 3 in the client’s application acknowledge known art which does not necessarily accord with what the IPO has found, which means we have more art to consider for both novelty and inventive step, including potentially combining them together with whatever the IPO has found. That is annoying as it will take time. At least the art in these paras appears simple to understand, and the way the invention works is more complex, but offers advantages over the simple openings cannot. Lines 14-17 tell you about a problem, you need strength to stand up to squirrels, but also need to make your feeder inaccessible to them, and further hitherto undisclosed prior art [at least that which has been acknowledged here] doesn’t do this. Lines 18-21 tell you the aim is to both provide resistance to squirrels, but also to not restrict access to birds. Lines 22-28 and rolling to page 5 line 7 are akin to a statement of invention, which should ordinarily support claim 1. It appears to have a few words in it that differ from claim 1 that deal with the shroud moving issue. An amendment to include this potentially clearer explanation of how the features work would thus have clear support, and may prove sensible even if the IPO has not picked it up, and we later think it worthwhile. Checkbox and comment, “C1, Clarity?”. Because we’ve had a look at pages 6 and 7 we also know the shroud moves with respect to the food holder. The statement does not appear to limit the food holder to be made of a mesh or a type thereof, as per claim 1, which is good for the client’s wish to use plastic as well as metal if the food holder is made of mesh. Another checkbox and comment “C1, mesh?”. Page 5: Paragraph 2 covers the support from claim 2. although here it’s a rod, in the claim it’s a support. In claim 3 of course you are told “the support includes a rod on which the shroud is slidably mounted”, so we’ll have to see if there’s cover for the broader feature of claim 2 elsewhere. Checkbox and comment, perhaps “Claims 2/3?”. Paragraph 3 is the basis of claim 5 as a metal, but without the claim’s specific types (to save you looking they are covered at the end of page 6). Checkbox and comment, perhaps “Claim 5+ list end P6” Paragraph 4, lines 14-18 talks about mesh, which appears to be variations of some sort 94

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Worked example – the 2017 FD3 Paper of wire, not yet helping us with that being plastic as well, but we know from the client this is an important feature. This appears to align with some of claim 7, the claim refers to the same “perforated sheet metal”, but the first part is a generalised metal mesh. In this example it’s “ideally of mesh formed of galvanised wire… alternatively.. stainless steel wire mesh”. Not as broad as a generalised metal then. Perhaps there’s more later. Checkbox for “New claim general metal mesh?” Paragraph 5, lines 19-22, we have some dimensions which may be relevant to a new dependent claim, this spacing is not in the statement of invention for claim 1 above, nor is it in the claim stack. Checkbox, “New claim?” the technical effect of the spacing is set out on lines 20-22. Paragraph 6, lines 23-27, we have some relative terms, which if they can be quantified may be useful. If they can’t then they may make for a dependent claim anyway, as I’m sure the skilled person knows exactly how long a squirrel’s reach is. Doesn’t everyone?! Checkbox, “New claim/detail is ___” to see if there is an indication later as to what that length may be specifically. Paragraph 7, lines 28-33, we talk about the lack of perches, which the client told us was possible because of the [wire] mesh sidewall, and the “whole surface [of which] is exposed” until the weight of an animal pulls it down. So we have an alignment with what the client thinks was important, with support in the specification. We don’t have a general mesh, but we do have a “wire mesh sidewall”, which would appear to be enough to cover a plastic mesh, and a generalised metal mesh, by just claiming a “wire mesh sidewall”. This is only the second page of the specification though, so there is plenty more to read through, for now all I do is put a checkbox with “claims?” as there are none to either a lack of perches (if such a thing can be claimed), or expressly to the whole of the sidewall being exposed. We’re only two pages into the spec of which five and a half pages are disclosure, and we’ve already got some possible clarity additions for claim 1, and around four additional features which could be claimed. Page 6: Page 6, starts by introducing the figures. Drafting tip, there is a convention for wrapping round stock text before and after you list figures. The text at the top is about right, however after you have listed the figures, it’s also convention to state something similar to “In the figures, like elements are denoted by like reference numerals”, unless they’re not. There are only two figures on the same page, but there is crossover between them, so it’s good practice to add the end boilerplate text. Not that you’re amending the description here of course so you’re not going to put it in now. However, when you’re in the FD3 exam and are drafting afresh, it’s always good to see. And both parts of that stock text can be worth half a mark each… Line 9 we are describing something which is a galvanised wire mesh, underpinned on line 18 with the food holder sidewall being this mesh material. Still no sign of express Amendment of Specifications Paper

Worked example – the 2017 FD3 Paper support for a plastic mesh. Here’s a hint – it’s the second time this mesh feature has been disclosed. I can tell you that means it’s important. The examiner’s don’t want to be accused of hiding anything, so in general, they refer to features more than once so that there is little excuse for not finding them, if they want you to claim them. Lines 17-25 assist with more claim support. I’d expect two checkboxes here, the first for a claim to the wire diameter and mesh size, as they assist “small birds to grasp easily” (line 23), and we have support for a general metal mesh (at last!) on line 25. Lines 26-31 are interesting. Further support for a rod to be connected to a support “disc”. Relevant for claims 2/3 then. Checkbox. “Claim 2/3 Support?” It’s certainly not as simple as the claims make out – claim 2 of course let us not forget says: “…comprising a support for supporting the food holder at one end thereof, the attachment means being supported at the other end of the support for allowing the bird feeder to be suspended from the fixing point.” In this para we have: “The food holder 1 is connected to a fixing point 9 via a hook 11 connected to one end of a rod 13 of the bird feeder.” Thus the hook must be my attachment means, and then: “The other end of the rod 13 is connected to the support disc 3, thus forming the support to which the food holder 1 is attached.” So it seems this “support” may be made up of a rod and a support disc. Which may or may not be important. It does at least end with: “The hook 11 forms the attachment means of the bird feeder.” So that at least is indeed straightforward. The last three lines are, as above, my express list of types of metal for the shroud, noting the shroud in this case: “is slidably mounted on the support, i.e. on the rod 13, so as to move with respect to the food [holder – overleaf on page 7]” It is a simple thing for an examiner to make a paper which has multiple embodiments, and for those looking for support for claims to take those things from different embodiments, even if they might not work together. See the prior art set out in FD4 for 96

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Worked example – the 2017 FD3 Paper many an example, where people will often argue there is or is not a lack of novelty or inventive step because they find claim features in a document, not checking they actually work together. I don’t think that’s the case here, but I do think there is a bit of a muddle over what this “support” is, if it has to include this “disc”. The terms “rod” and “support” are used near-interchangeably, like they are on page 5 second para. In the UK, you may well get away with what is clearly, and deliberately, sloppy drafting. Perhaps less so before other offices, but we’re not arguing before other offices, so we have to be confident the terms in our claims will be reasonably evident to an examiner, with sufficient support to withstand further scrutiny if ever required. Page 7 We’re given a technical effect of a generally cylindrical shroud per claim 10 (which also requires a generally cylindrical food holder too): ease of manufacturing. Perhaps it’s not beyond the wit of the skilled person to assume the food holder would also be cylindrical. Checkbox, “support for cylindrical food holder?” I like support. I really do. We’ll see if we get it. In the first para we also have new claim material. We have a pitched roof portion for the shroud which has got to be worth claiming as it provides a surface difficult for squirrels to grip. The roof being made of wood or plastic is certainly claimable, although neither have an express advantage stated. I would claim it because it’s there, and suspect you would too. Checkbox “claims – roof angle/material”. The downwardly extending portion 19 doesn’t seem to do much, other than perhaps provide another surface for a squirrel to grip! I don’t’ see a clear advantage of it there or in the figures. A quick canter through the rest of the spec reveals no further reference to feature 19 at all, so no claim to it from me. The rest of that para does little for us claim-wise. Para 2, lines 10-13, we introduce a sleeve diameter larger than the rod. Checkbox, “Claim to sleeve?” Lines 14-18, I have two things here and it would be easy to miss one of them: Firstly, we have the location of the spring. Don’t see that in the claims, so a checkbox for “Claim, spring loc’n?” goes in. Then we have further support for “essentially the whole sidewall surface is exposed and easily accessible to birds” when the shroud is open, I’d best also point out this is the second time this feature has been mentioned, with a paraphrasing of that at the end of page 5: “… small birds can perch directly anywhere on the wire mesh sidewall, since its whole surface is exposed until the weight of an animal pulls the food holder down.” Let’s have a quick check back to the art on page 4, i.e. that acknowledged by the client, which has no shroud. That may be important as the client says mesh walls were not new, but they are new if they come with a shroud – over the art the client has set out anyway, although we don’t know what the IPO has found. Checkbox, “Claim per end page 5?”. Lines 19-27 Discuss the operation of the spring, setting out what it has to do. This Amendment of Specifications Paper

Worked example – the 2017 FD3 Paper clarifies, in case it was not clear, the way this invention operates. You have a constant food holder 1 and rod 13. It is the shroud 15 which is held above the food holder 1 by the spring 25, and the spring 25 is compressed if an animal that is too heavy gets on the shroud 15 or roof 17, pulling the shroud 15 down. The long para that follows from page 7 line 28 to page 8 line 3 gives two alternatives for the location of the spring. The latter has a rock-solid advantage. Checkbox, “claim”. I would claim the latter config myself, not the former, as having the latter brings in the repercussive effect, so the spring must be somewhere else, and there are only so many options for where it could be. Page 8 Page 8 continued. Lines 4-13 seems to give me little more than the average weight of a squirrel. If I have unlimited time, perhaps I can go back to the force constant spring calculation on page 7 (lines 19-27) and see if I could fashion a claim where perhaps that force constant is sufficiently low to be biased by 500g. I would in the real world, but I’d also have given myself a clearer way to support that. And as it’s just an example of a spring that could be used, it may not add a lot. I’ll put a checkbox and “claim, if time, + P7 19-27” meaning I don’t think it’s critical, and I think I could have an argument about that weight limit being a relative term which I may not win. Lines 14-19, arguably support for a claim for the length of the shroud, but it may also be a fiddly one (or two). I could claim the shroud to be at least the length of the food holder, there’s a clear support for it, noting it is unclear if the food holder includes the cap, and the requirement is for the shroud to extend below the cap when in the closed position. Surely that’s telling me the shroud needs to be longer than the food holder and cap combined? It is then further suggested the shroud “should” be greater than or equal to the combined lengths of the food holder and spring when compressed. No cap mentioned. Do I spend ten minutes tying myself up in knots with this when if I’m using common sense as well as what’s written down, if the shroud is not longer than the food holder, a heavy animal could jump on the top, compress the spring, and have a gap to food at the bottom. Thus I think there’s a pub-quiz obvious test to be applied here. but for now, I’m just going to write “claim?” adjacent a checkbox. I think there is a cheap claim for the second option here, and as it relies on the spring being compressed too, there may be a dependency issue to think about. Thus I will add “dependency?” to the word claim. Lines 20-26, I can go back to page 5, para 6, and link the “claim/detail” checkbox to this para. I also have the support I need for amending claim 6 of course. Checkbox “claim 6”. Lines 27 – Page 9 line 2. I can go back to the top of page 7 and say “see P9 L27->” as my support for a cylindrical food holder as well as the shroud. I’ve also got support for my claim to a 1-1.5mm space between the inner surface of the shroud and outer surface of the food holder, per page 5 para 5, so I should go back to the checkbox there and write adjacent “support P9 L28-30”, so when I’m adding the claim I know where my support is in the spec. 98

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Worked example – the 2017 FD3 Paper I also have support here for a non-cylindrical shape, for a new claim as an alternative to claim 10. Checkbox, “claim”. I would be claiming it as the shroud and food holder are noncylindrical, “such as square” per the text. You could If you had time not put the bit in speech marks in, and a claim expressly as square. It doesn’t really matter, and time is against you, so I’d be efficient if you can get what seems to me to be pretty much the same thing with fewer words. And in a paper were money or direction from the client seeks to avoid or minimise excess claims fees, fewer claims too. Page 9 Lines 3-7 could really twist your mind. The first sentence appears straightforward, and could be worth a checkbox and “claim?” to be honest I am unclear what value is in a claim to a negative feature, there being no apertures in the shroud. Why would I want apertures in a shroud when it protects the food holder from unwanted eaters? A claim to the literal first five words of “the shroud is without apertures” means repercussively, in all earlier claims, the shroud would have apertures. You have as current claim 7 two choices for the sidewall, metal mesh, or perforated sheet metal. The second sentence only works when the food holder is a perforated cylinder. Thus a claim to this would currently be “dependent on claim 7, but only when claim 7 is perforated sheet metal” which is of course utterly horrid and should be avoided. Second checkbox, “claim?” Back to drafting tips, if you want to claim the second option here, you’d sensibly split that claim 7 into two. One for “formed from a metal mesh”, another for formed from “perforated sheet metal”. Then a claim dependent on that is something equally hideous to write like “wherein the shroud has no apertures opposite the perforations when in the closed position” based on what I’ve seen. We will wordsmith later if we need to. The last three lines on page 9 are clearly worthy of a checkbox and “claim” to be added. Wow, what a lot of material that didn’t feature in our original set of claims! That’s a blessing and a curse of course, as I don’t know what, if anything, I’m going to need to circumvent the art, and where I’ve had the hint from the client about direction – sidewalls is basically what they have focussed on, there are some things that could easily be features in an independent claim. Do remember my last line at #3 above though – claims can be added if they have merit. In this paper usually that means either the client has told you about them, or there is a clear advantage for including the feature to the claim. Sometimes that advantage is spelt out for you in the spec, hopefully adjacent the feature, sometimes written somewhere else, and sometimes you just have to use your own basic common sense. That means things like from page 7 line 28 to page 8 line 3 where you’re given two alternatives for the location of the spring, and a clear advantage of the latter, you should really make sure you include a claim to the latter. But where things are more sketchy, mainly those where I’ve put a question mark adjacent the world claim, perhaps those are things best left until last, to see if you think you have time to include them. Don’t forget, as also Amendment of Specifications Paper

Worked example – the 2017 FD3 Paper pointed out in the last paragraph of 3, the client has not mentioned money, so I don’t feel overly constrained by claim numbers. What I will find myself constrained by is time. Which means if I wish to I can make some notes on my Scratch sheet to remind me that: a) There is some basic prior art on page 4 which I need to remember to think about for my later novelty and inventive step arguments. b) There are a lot of possible additional claims, and that I need to think dependencies when I do so, as well as making sure there is at least tacit support for each. c) I’m not going to do stage 5e here, I’ll do it at the end of the prior art stage this time, and will explain why there. In short, it’s because there are a huge number of things not claimed thus far, and if I spent too much time going over them all, I risk confusing myself with what is and is not important.

Read the IPO letter

Now we must read the IPO letter, which is set out, partially at least, against the claims we now know we can probably improve on. Firstly, let’s be clear on the date issue: The last date for reply was 18/09/2017, we know from #2 above today is Wednesday 11/10/2017, so I’ve missed that deadline. What to do about it? As I’m within two months of that deadline, under Rule 109 I know I can make a request in writing for a two-month extension, claiming it as of right and retrospectively without reason (or cost) under s.117B (2). This means the extension granted by the IPO will be two months, to be 18/11/2017, which I’ll include in the letter back to them. If I was feeling incredibly brave right now, as that’s so straightforward to deal with, I could start my letter to the IPO, as I know the patent number, dates and the extension to ask for. I also know I need to register myself as agent using Patents Form 51, which I would notionally refer to enclosing as well. I won’t this time, but I could. If it works for you depends on how you are with multitasking, or if you prefer to simply put a tickbox on that letter from the IPO noting the two-month extension to ask for. What else does the letter tell me? That the application as filed does not seem to have been modified, which is good, and that there is no current claim which is not objectionable. I’m told that D1, which we know is a reasonably old US patent application which we’ve assumed to be valid for novelty and inventive step, contains among other things, a holder, a moveable shroud, and has open and closed positions. Only claim 5 survives direct attack. I’m also told that claims 7 & 8 lack inventive step over D2 combined with D1, and that claim 5 appears to be generally non-inventive. I say generally as replacing plastic with metal is not proven to lack inventiveness, it’s just a statement by the IPO, they have not run through the relevant test to arrive at that conclusion. That sort of generic objection is frustrating, and needs dealing with properly.

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Worked example – the 2017 FD3 Paper I am further told that claim 1 lacks clarity with respect to the location of the shroud about the bird feeder, and that claim 6 has probably got an incorrect number in, which we worked out from reading the claims and saw the basis for a more sensible one above. To be honest, apart from one checkbox against “N”, two for “IS” given one point is against a document combination, and one is general, and then two separate ones for the clarity lines just as reminders to make sure I address all points when responding to this, I am not going to do much more, as it’s pretty clear I’m going to have to argue for novelty and inventive step, and deal with those clarity points. The good news is I don’t have much to do with this letter. The bad news is that means the detail will be elsewhere…

Read the prior art

Firstly note it’s referred to as both D1 and the long US patent number. Writing “D1” in your answer takes two characters, so do so, don’t waste your time rewriting 9 (or 11 if you include the commas) instead. Just call it D1. A quick sanity check shows on page 18 we also have “D2”, so don’t need to spend time needlessly writing out reference numbers. Which is excellent, not all papers do that. D1 starts on page 13 of 20, and fortunately only has four pages of text, plus figures. Four pages is a lot to wade through though, so this will take time to work out what has been disclosed at some point before it was granted in 1982. From page 13, immediately I can see it’s in the same space; “only birds of less than a predetermined weight can gain access to birdseed or feed within the feeder”. Line 8 tells me the invention, among other things, seeks to exclude squirrels. I’m just going to highlight these, not that they add much, more through frustration than anything that it’s not something nice and spurious! The summary of the invention gives me two aims, reiterating the selective use according to weight, and also, curiously, for people and birds to see bird feed in the feeder. My invention doesn’t seem to be concerned with that. We’ll find out later if it’s important. The good news is there isn’t much information here, which is to my advantage – there are four pages of text (well, three and a half really with what’s on page 16), and the more “mere puff” there is, the less of it I have to worry about. The next two paragraphs tell me how the basic invention works. A hopper has at least one side opening. A cylindrical concentric shroud is mounted on the hopper, and moves relative to it, under bias of a compression spring. The shroud has an opening alignable (is that even a word?) with the hopper opening. Birds can land on a perch, light ones don’t compress the spring, and the openings are aligned, so can get to the bird feed. Heavy birds will compress the spring, which means the openings will misalign, so no food. My client has told me “the mechanism is fairly similar”, which indeed appears to be the case. I will

Amendment of Specifications Paper

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Worked example – the 2017 FD3 Paper put a checkbox here with “Opinion/agree w client?” on that point at least, should I find time to put that in my reply, although it may be I am better to spend time down in the weeds. We’ll see. It’s worth remembering that my claim 10 is to a shroud and food holder which are both cylindrical. With lines 16 and 17 stating: “A bird feeder in accordance with the invention has a vertical cylindrical hopper provided with at least one side opening. A cylindrical concentric shroud is…” That claim acting as a limitation will not confer novelty. Page 14: I now get told about the pictures, which I’ll mark up using the reference numerals for two reasons: Firstly, so I can really understand it all and what each feature disclosed is, secondly because as you’ll recall, the IPO letter used them to tell me some elements in D1 are the same as those in all of my claims, bar claim 5. As I’ll need to expressly address that, it’s best I understand what they’re saying, so I can tell me client if I agreed with what they said, or not. Let’s remind ourselves what the IPO said specifically about my claim 1: “D1 shows a holder 2, apertures 42, 48, attachment 60, a moveable shroud 14, and open and closed configurations (Figures 2 and 3).” Interestingly, there is no numeral 2 referring to an element or integer for a claim, in Fig 1, the line “2<- - >2" is the vertical view where Fig 2 is. 48 is an “access opening”, as is 42, 60 is a “wire hangar”, 14 is a shroud, and indeed they are correct there are open (Fig 2, the “normal feeding position”) and closed (Fig 3, the “non-feeding position”). Which is a weak effort at paraphrasing some of my claim 1, specifically omitting any of the relevant references to the (from claim 1): “bias means for maintaining the shroud in the open position except when…” Unfortunately though, I already know a compression spring provides a biasing means to permit motion between these two positions as page 13 has told me that on line 19, so it would be foolhardy in the extreme to just reply to the IPO, merely taking their understanding as read. Because I know that, I know that claim 1 simply has to be lost. Every feature is present given its breadth, and if I argue for claim 1 to stand, I will most certainly be back next year. The only other specific from the IPO is: “As concerns claims 2 and 3, the upper tube 28 is in effect a support as claimed.” 28 is most clearly seen when the “coil compression spring 16” is compressed in Fig 3, which bears a striking resemblance to some sort of support I have done a bad job of describing. 102

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Worked example – the 2017 FD3 Paper I said that the support was seemingly inbetween the food holder and this attachment means. It clearly is in Fig 3. I said “In short, it’s an extension of the attachment means.” Can’t really see it as anything else. Claim 2 is toast. My claim 3 tells me this support now “includes” a rod on which the shroud is slidably mounted. I’m not sure I need to read more to work out that’s how this will work from Fig 3. Let’s not forget my claim 4 tells me there is a helical spring which acts as the biasing means, “on” the rod, and is between the shroud and food holder. Yup, that’s Fig 3 again clearing me out. Before I get too disheartened as I know claim 5 is not attacked by D1, I will return to the text and see exactly what it says, as ultimately I’m going to be arguing about words, so I need to know what those words are… Back on page 14 then, in case I was in any doubt, I am told on line 15: “A coil compression spring 16 is mounted on the container 12 and supports the 15 shroud 14 on the container 12 for movement between the two positions shown in FIGS. 2 and 3 as described below.” And I am going to have to jump about a bit to find element 18 so that I can be sure my top four claims are gone, lines 25-17 tell me: “An upper portion or sidewall 28 is of a smaller 25 diameter than the lower portion 24 and is joined thereto by a circular, ring-shaped shoulder 30.” With time against me I accept I have nowhere to go with those claims, and can think if I need to in detail about the effects of the shoulder, etc, but probably don’t need to as I have little disclosure of my own that focusses on that. I’m then told on lines 17-20 on page 14 that there are several rungs or perches at different heights to allow access to different parts of a full container of feed. I am then told again on lines 20-22: “Both the container 12 and the shroud 14 are made of transparent plastic to allow external observation of the feed and level thereof.” This is the second time this is mentioned, and is not something I am concerned with it seems. Lines 23-28 tell me little, my cylindrical shape from claim 10 has already gone on the previous page, and a ratio of container at a length of 4x the diameter of the main portion is not precise enough to affect my surprisingly long container, which we know I have basis to correct. Lines 29-33 appear largely conventional to me, leading on to page 15 first para which Amendment of Specifications Paper

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Worked example – the 2017 FD3 Paper tells me I could have been cleverer with my tube from claim 2 as this one can be filled from the top, I have to suffer the indignity of removing my closure cap (5) and can only refill my feeder when its inverted (page 6 lines 14-16), the top of my food holder has an inaccessible support disc 3. Did no-one do any prior searching here, or apply any common sense?! Page 15 lines 5- 11 introduce a new concept over my disclosure, this retainer pin 38. It exists to: “limit relative movement between container 12 and shroud 14 and define the two limit or end positions of movement of the shroud 14 relative to the container 12.” I’m also told: “The pin 38 also prevents relative rotation between the container 12 and the shroud 14 and holds these parts together” Which is going to be important when you have holes that have to align for feed to be accessible. The next, lengthy paragraph from lines 12-22 is useful in explaining how the holes in both the container and shroud cooperate. Exactly where they are and where perches are relative to them is interesting, but is not something I’ve disclosed, so I’d have no claim to it anyway. Lines 23-25 disclose a conventional hanger 60 with no specific attachment means or point, it performs the same function as mine. Lines 26-the end of page 15, we learn some specifics about the spring. This can be summarised as knocking out the fancy spring constant possibilities I might be able to use to save an independent claim had I spent time thinking about them from page 7 lines 1927, i.e. that alone won’t be my saviour. Specifically also on lines 32-35 I am told: “The spring 16 can be precompressed to force the pin 38 against the lower end of slot 40, the precompression being sufficient that no movement of the shroud 14 will occur unless the weight of a bird or birds on the perches exceeds a predetermined value.” I don’t know if that’s important, but it tells me there is a definitive starting point to the position shown in Fig 2, backing up the way the mechanism works in Fig 4. I also know from the first three lines on page 16 the specifics of how the mechanism will work, it is both this “spring constant” of the spring that works with the diameter of the holes that results in determining the weight of a bird that will either “close” or “misalign” the access openings to prevent feed being accessible. You can understand that I hope, if you had bigger holes then it would take more weight to pull down the shroud to misalign/cover them. Which can be affected by how “springy” the spring is too. 104

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Worked example – the 2017 FD3 Paper Lines 4-13 tell me again how it works. Lines 14-18 don’t tell me much more than the cap is sensible. Earlier I looked at what happened with the claims made and this disclosure, so let’s run through the end of those. The IPO made no reference to claim 5 and this specific disclosure in terms of novelty, and it’s true to say it does not reference the or indeed any metals. I am told expressly on page 14 line 21 that: “Both the container 12 and the shroud 14 are made of transparent plastic to allow external observation of the feed and level thereof.” The IPO says using metal is an obvious alternative. However, if it was metal, how would you see the level of feed? On that page/line I’ll make a checkbox and will write “IPO IS cl.5”, shorthand of course for UK IPO letter, inventive step argument, claim 5, and as I can remember it, I’ll also write “P13 L14/15” which said for reference: “Another object is to provide a bird feeder which allows both people and birds to readily see any bird feed within the feeder.” Not sure I need to run a full inventive step argument on that to say a significant degree of transparency is going to be required to achieve that aim, so how can metal be obvious? Having said that, metal alone may in general terms be something the other bird feeders my client has referred to, and if all I had in claim 1 was a limitation to metal, or specific metals indeed, I could believe it’s a weak claim which may still be vulnerable to an IS attack, or would be easy to circumvent. The IPO didn’t like claims 6, 9 or 10 against D1, so let’s quickly check: Claim 6 was the length, circa 25cm. The only reference to length in D1 was on page 14 lines 27/28 with its ratio reading: “The total length of the container 12 is roughly four times the diameter of the main portion 24 to accommodate a sufficient quantity of feed.” I see nothing else specific in D1 that would leave 25cm lacking novelty, however, it does seem like a reasonably sensible length, and if any independent claim was limited to “about 25cm”, again it would be easy to overcome, if it was readily defensible. I’ll make another note at that reference “Cl 6 IPO” as I’ll either argue with the IPO there is no disclosure that the length is not disclosed, or will tell the client that the IPO was probably wrong, even if it isn’t something that strictly helps. Claim 9 is where the inner surface of the shroud is similarly shaped to the outer surface of the sidewall. Given I have on page 13 lines 16/17: Amendment of Specifications Paper

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Worked example – the 2017 FD3 Paper “has a vertical cylindrical hopper provided with at least one side opening. A cylindrical concentric shroud” Then at least one example is given where that’s going to be about the case, even if it doesn’t specifically state surface alignment, however, popping down to page 14 lines 29 and 30 I see: “The shroud 14 is similarly cylindrically shaped, with a circular cross section, but has a diameter greater than that of the container 12.” Let’s look at claim 10: Both the shroud and food holder are cylindrical. That’s not looking like it will give me novelty and inventive step. Let’s take a look at D2 then and the IPO arguments as well: Good news, there really isn’t a lot to it. Which saves time dealing with it. A first version where “the container is a tube of mesh” seems plainly to ward me off the idea of having a sidewall which is a generic mesh, although I don’t think it’s that straightforward. D2 has no shroud and is not squirrel-inaccessible, that there’s a squirrelresistant aluminium base doesn’t seem to indicate to me that squirrels wouldn’t easily get to the food. If I run a micro-inventive step argument combining this feature of D2 with D1 in a general sense, a mesh sidewall and a shroud with some holes in will always allow access to food, even if the shroud moves. This sounds like there is a technical incompatibility here. There is a ‘second’ version being “a tube of plastics material with individual holes spaced around it”. This cannot be immediately dismissed, for the simple reason I have an embodiment where the sidewall of the food holder is of “perforated sheet metal”, which may be similar in nature. I’ve been told by the IPO that replacing plastic with metal is generally non-inventive. I suppose there is a risk here that having a tube of metal with individual holes spaced around it could work with D1. I then have to think if I have anything to guard against that, which I do at the end of my application where the specifics of that are set out – the penultimate para on page 9. The good news is I have a way around that if I need it, although it seems a little in the weeds to me. I’m then told in D2 there’s a special design for the “upwardly projecting plug” at the base, that appears to act to assist food to move to the sides when it descends, making as much of it accessible as possible. A fine choice for a squirrel then. I’ve discussed the aluminium base, and see nothing in it particularly. If this was an EP argument then would the word “squirrel” alone be a reason why someone looking for squirrel-proofing their invention to turn to this document if seeking to combine one with another? Potentially, but we already know the mesh alone doesn’t help us. I’m told there are “shields” which prevent the loss of food. With no indication what that 106

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Worked example – the 2017 FD3 Paper is on the Figure, I can only guess what they are. As they perform a different technical function than the shroud of D1, I seem to also have an outline inventive step argument over this combination. A quick check against the IPO’s letter says that claims 7 and 8 lack inventive step when combined with D1, those claims are: 7. A bird feeder according to any preceding claim, wherein the sidewall is formed from a metal mesh or perforated sheet metal. 8. A bird feeder according to claim 7, wherein the mesh is of galvanised wire or stainless steel. Not convinced myself as we know the sidewall doesn’t work with D1, despite D2 including a generalised mesh. D2 on its own then, not much to worry about. In contemplation of D1 as well, I have technical incompatibility of the main feature of one variant, a way round the other, and a feature which appears to perform a different technical function than a shroud. Quick check with what could be D3, the prior art acknowledged by the client, that’s para’s 2 and 3 on page 4, where a mesh material sized to hold food in but let birds get to it, which has a hook to permit it to be hung. Any significant difference over D2? Not really, it’s a subset of it as D2 is more complex with its upwardly projecting plug and shields, so I probably won’t have to worry about that too much either beyond acknowledging it exists. Final points to check are the outstanding issues from the IPO letter, simple clarity is raised. The first point about claim 1 seems easy enough to deal with thanks to the statement of invention on page 4 lines 26/27, and that correcting claim 6 is worth a mark seems like a nice one to have without undue effort. Ref 5e as above, I didn’t do that there, as I think if you’ve followed the prior art section in detail you’ll understand more of the relevance of it here. In short, I now revisit my own application and quickly check where there is material I could use for an amendment, with the art now fresh in my head. I know full well there is a lot of material which went unclaimed, some of which seemed like sensible features, a lot of which I now know features in the art, e.g. my current claim 10. If I’d spent time at the end of a feature-rich specification really understanding what was available to me, I’d likely get lost with options. Now I’ve seen the art, I know some of my claims, and their surrounds, won’t be candidates for the amendment; they have been disclosed. Thus, I can now go back to my own disclosure and work out what’s left, based on what the art has left me with. With other papers this is different, it will be preferable to do it at the end of step 5. From page 5: Lines 12/13, D1 doesn’t give me the metal in general, or even specific types as later. And I don’t buy the IPO argument it would be “obvious”. Amendment of Specifications Paper

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Worked example – the 2017 FD3 Paper Lines 14-18, setting aside for now on page 4 I openly admit containers made from wire mesh are known, as it is in D2, and perhaps interestingly, a mesh sidewall, of interest to the client, would not function with D1 when you have a shroud with holes in – mesh would simply be accessible all the time through those holes; misalignment would not be possible. In IS language that would be a “technical incompatibility”. I have the alternatives of sheet metal with perforations and mesh too. Lines 28-33: That the whole sidewall can be exposed is also not shown in D1. That seems to be what leads to there being no need for perches, a clear feature of D1 as it relies on birds accessing specific apertures provided in the shroud. It is probably shown in D2, but D2 has no shroud. Page 6 lines 21/22, I have mesh sizes which are not relevant to D1 as it has these apertures that can align, as above mesh would not work with D1. There is no disclosure of this in D2. Page 6 last para is the metal types again. Page 7 first para: There is nothing about a roof and its pitch in D1, and in Figs 2 and 3 it would be easy to see the wire hangar 60 as having an angle when all it is is a hangar, 36 is the cap allowing the food holder to be refilled, and 34 is a “ring shaped upper end wall” which “overlies and is spaced from the container shoulder 30” from page 14, last two lines. D2 has a lid, it’s not the same thing. Lines 10-18 give me detail on a “sleeve”, and then a location for the spring. The latter of which appears to resemble the location in Figs 2 and 3 of D1, although there is more later from lines 28 onward, a choice of location from current claim 4. I have nothing about a square shape, which wasn’t claimed, and I can see some advantages of a square for D1 – you wouldn’t need to worry so much about rotation between the shroud and food holder as there are natural stops at the corners. D2 is silent on this. The rest of page 7 seems to give me nothing I can clearly use to distinguish over D1 or D2. Page 8 line 11, I have a predetermined weight of a squirrel which may be of use working out the complex spring calculations. Page 8 lines 14-19 I have lengths of the shroud and food holder, relative to each other and with a suggested length. I don’t agree with the IPO on that as above, but I do think it might give me a claim. Page 8 at the end, I have a non-cylindrical shape covered, not contemplated by D1 or D2. Page 9, I have a few things which may be of interest – a shroud without apertures, and in the embodiment where the food holder is a perforated cylinder then the apertures must not be opposite the perforations. That differs from D1 in that at some point, the apertures in the food holder must be opposite those in the shroud, or everyone’s going hungry. D2 is mesh. I also have a flared open end to the shroud right at the last, with a nice, solid technical effect associated. That’s not in D1 or D2. 108

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Worked example – the 2017 FD3 Paper This is of course on top of the support I do have for existing claims, both those which can remain untouched, and those that may need tweaking. Now it’s time to earn your money:

Work out the amendment

I know my claims are not going to stand as they are with what’s disclosed in D1 alone. I’m going to need to make change. As I’ve done the work to know what the delta is in my application over the prior art as I’ve gone along, I also know what freedom I have. I think it’s sensible to do at some point; either at the end of #5, or #7; perhaps both if you have time as doing it post-art means you can refine what you know to be available. That would then leave me with (in this paper at least) a large number of options to choose from. To glue it all together I’ll need to cross-check against the client letter, so let’s smash through that quickly again: Para 1, what I have to do about the deadline which I’ve covered above. Para 2, the client doesn’t think D1 is very good, but acknowledges the mechanism is similar. Para 3, the whole sidewall is accessible to small birds, which in terms of the feature not claimed in the specification is that the whole sidewall can be exposed. This dispenses with the need for perches, and means more birds can use it as there are more holes accessible [than D1]. I’m also told this sidewall is made of mesh, but that’s curtailed at the end of the para with the client not thinking mesh is new. The next paragraph is about details of the mesh, and where aesthetics are a good reason to use plastic not just the client’s former metal, plastic is cheaper which is a sufficient advantage to try and include it, and he thinks will make it more saleable. Where is this driving me? To a dilemma. I know there are lots of other features I could limit claim 1 to which will help, but the client is sending me toward two things it seems. Both the whole sidewall being exposed, or a mesh, as my limitation. This means I’ll have to have a check as to what the implications are of either being the main restriction. In short, this means running a quick novelty and inventive step check with both options, and also undertaking a basic sanity check given the disclosure I have to work with. Let’s start with the whole sidewall being exposed and what I know about it: • The client likes it per his letter above. • Bottom of page 5, I’m told as per the letter the whole of the sidewall being exposed means you can do away with perches.

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Worked example – the 2017 FD3 Paper • I’m also told the same on line 17 on page 7. I can now surmise from what I’ve immersed myself in over the past hour or so, that no perches is an advantage as it will limit the number of birds that can feed. I can distil other advantages, but I’d be guessing or otherwise be using my own knowledge or assumption, for example that no perches will mean a reduced cost to manufacture. It may be true, but I’m assuming that, the paper hasn’t told me. What do I know about mesh? • Client letter, the sidewall is made of mesh, but Harry thinks that alone lacks novelty. • Specification, page 4, I accept “wire mesh” is known. • My statement of invention for claim 1 refers to “apertures” for birds to access the food – lines 24/25 on page 4. Hold that thought. • Page 5 lines 14-18, I have mesh formed of galvanised wire, stainless steel wire mesh, or even perforated sheet metal. Hold that thought too. • Page 5 line 31, a nebulous “wire mesh sidewall”. • Page 6 line 9, galvanised wire mesh again. • Page 6 line 9, reference to the same material (“the” not a further generalised mesh), • Page 6 lines 23-25, I have a cylinder of sheet metal as an alternative to a preferred “metal mesh”. • Page 7 line 25, I’m back to describing “apertures”. • Page 9 penultimate para, talks about the choices between perforated cylinder versus “a mesh”. Goodness, a lot. Two thoughts held then – if I insert a mesh to claim 1, it strikes me I’m dispensing with the alternative which is a cylinder of sheet metal. It’s an alternative, so I’d have to have two independent claims – one to a mesh, one to a cylinder with perforations, if I was going to protect both. Where the client hasn’t told me about money, that strikes me as expensive as I’m effectively forcing a divisional or leading to a loss of protection if the cylinder option is not then claimed. Indeed no-one else could get protection for it, but if they made it, I couldn’t stop them. The superset of both types is the “apertures” per the statement of invention for claim 1. I’d want to claim apertures, then specifically follow two embodiments in the claims to give the client that maximum coverage, also avoiding the need for a divisional. I think mere mesh alone is going to be novel over both D1 (mesh doesn’t work), D2 (no shroud), and the combination (the shroud ceases to have effect over mesh), as I’ve run quick checks above. So if I put it in claim 1 I think I’m safe, but I also think I’ve limited the end result. I do have to think if I have support for a generalised mesh, and the support for it is thin, perhaps that on page 9 being the broadest, or the “wire mesh” on 110

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Worked example – the 2017 FD3 Paper page 5 line 31. The client has told me he wants to work with a cheap, plastic mesh which will be saleable, so at least I don’t think this would cut that route off. How about a sanity check – if the whole sidewall is exposed in claim 1 with mere “apertures”, is it novel and inventive over D1, D2 and the combination? D2 is easy, the whole of the sidewall is exposed it seems, or certainly it’s likely given the client’s description of prior art in the spec so I should assume it is, but I have novelty as D2 has no shroud. We know the shields it does have perform a different technical function to a shroud keeping food in, not preventing squirrels from accessing it. Am I novel over D1? Yes, as the whole of the sidewall is not exposed – only the holes in the sidewall are exposed when they line up with those in the shroud. From an inventive step perspective, for D1 if the whole sidewall was exposed, the shroud would have to be different – it would have to be mine, because it has a shroud with holes in come what may. For D2 am I inventive? Well it is not directed at being squirrel inaccessible, it solves a different technical problem of forcing feed to the edges when it’s running low. With a combination of the two, well we’re back to mesh from D2 and the shroud from D1 which we know does not work, the whole sidewall being exposed not helping that. So I think I have my answer. I’m probably 80-90 minutes in to this now, so need to write it up. I have many checkboxes to go back and tick, so I’m going to be lazy and not give you the answer in full with the amount of space this has already taken up, the intent of this section is so you can see how I’ve arrived at the answer for the claims using this technique. What I’ll do is set out what I would change the claims to read, along with basis for the amendments, so you can trace the changes to the paper.

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Worked example – the 2017 FD3 Paper

Write up your claims

Amended claims (1) A bird feeder comprising: a food holder, for containing bird food, having a sidewall including apertures for permitting birds access to the food; attachment means for allowing the bird feeder to be suspended from a fixing point; a shroud movably mounted on the bird feeder with respect to the food holder between an open position, in which the apertures are accessible to birds and the whole sidewall surface is exposed, and a closed position in which the shroud surrounds the sidewall so as to prevent access to the food; and bias means for maintaining the shroud in the open position except when an animal having a weight exceeding a predetermined value attempts to gain access to the food by standing on the shroud, whereupon the shroud descends to the closed position under the weight of the animal against the action of the bias means. – Basis: First insertion: page 4 lines 26/27. Note: Deals with the clarity issue raised by the IPO. Second insertion: Page 5 lines 31/32, note the reference on page 7 lines 16/17 may refer solely to the embodiment where there’s a sleeve, and a helical spring between a roof and support thanks to the whole of the paragraph from lines 14-18. Note: Restores novelty over D1, D2 and inventive step over the same and a combination thereof. (2) A bird feeder according to claim 1, comprising a support for supporting the food holder at one end thereof, the attachment means being supported at the other end of the support for allowing the bird feeder to be suspended from the fixing point. – Basis: old claim 2. (3) A bird feeder according to claim 2, wherein the support includes a rod on which the shroud is slidably mounted. – Basis: Old claim 3. (4) A bird feeder according to claim 3, wherein the rod comprises a downwardly extending sleeve for permitting the shroud to slide freely on the rod. – Basis: Page 7 lines 10-13.

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Worked example – the 2017 FD3 Paper (5) A bird feeder according to claim 3, wherein the bias means is in the form of a helical spring positioned on the rod and is disposed between the shroud and the food holder. – Basis: Old claim 4 Note: dependency, because of the awkward way in which these features exist, you have a rod, which can have a sleeve, hence claims 3 and now new 4. The spring location in old claim 4 is on the rod with no reference to a sleeve. Arguably the only reference to the helical spring in the position in claim 5 is where a roof is present, see page 7 line 14, and also 21, a feature which I will later add in. For now I will not concern myself with it too much, I don’t have a completely literal basis for it. what I do have is clarity where the spring is in relation to the rod from claim 4, thanks to page 7 lines 28 onwards which I’ll deal with now: (6) A bird feeder according to claim 4, wherein the bias means is in the form of a helical spring positioned on the outer surface of the sleeve, or is housed between the rod and the inside surface of the sleeve. – Basis: Page 7 lines 28-31. (7) A bird feeder according to claim 6, wherein the length of the shroud is greater than or equal to the combined lengths of the food holder and spring in its compressed state. – Basis: Page 8 lines 16-19. Note: This is potentially a useful feature, however the embodiments in this paper are, as one might expect, all over the place. There is only one reference to this feature which comes after the disclosure of the biasing means being a helical spring operating in conjunction with a sleeve, i.e. the embodiment embodiment in claim 6. If you think differently I would understand, and I suspect even the mark scheme may have been more general with this and not required it to be tied to something so specific. I would note this to the client showing an awareness of the issue, even if the examiners did not think it a material issue. (8) A bird feeder according to any preceding claim, wherein the shroud is formed of metal, such as copper, steel or aluminium. – Basis: Old claim 5 (9) A bird feeder according to any preceding claim, wherein the shroud has a length of about 250 mm. – Basis: Old claim 6 plus correction of units from page 8 line 25, mm not cm. Note: Deals with IPO rightly pointing out the mistake. Amendment of Specifications Paper

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Worked example – the 2017 FD3 Paper (10) A bird feeder according to any preceding claim, wherein the sidewall is formed from a metal mesh. – Basis: Old claim 7 broadened to a “mesh” per page 9 line 6. Note amended to reduce it to one variant because of claim 11 below for the deleted part of the claim which is an alternative embodiment. Also note, this basis is “thin” for reference to all meshes, as discussed above. (11) A bird feeder according to claim 10, wherein the mesh comprises galvanised wire or stainless steel. – Basis: First is page 5 line 14 at least, second is page 5 line 17 at least. (12) A bird feeder according to claim 10 or claim 11, wherein the wire diameter is about 2mm and/or the mesh size is substantially 5-8mm. – Basis: Page 6 lines 21/22. Note: Dependency, both claims 10 and 11 are mesh so this applies regardless of the material in 10, but doesn’t apply to earlier claims as the only disclosure of these sizes is at this reference, which requires a mesh. Arguably this implies the stainless steel in claim 11 is also a wire, which being realistic, it probably is what’s meant, but the disclosures for “stainless steel” don’t expressly say it’s the wire. If it isn’t, I’d be struggling to see what it was, but it does leave me slightly unhappy there appears to be a disconnect. And I could spend hours worrying about it, but I don’t have hours so I’ll move on. (13) A bird feeder according to any of claims 1-12, wherein the portion of the shroud lying adjacent to the sidewall of the holder when in the closed position comprises no apertures. – Basis: Page 9 lines 3-5. Note: Hideous claim defining a feature by what it hasn’t got. Oh well, moving on… (14) A bird feeder according to any of claims 1-9, wherein the sidewall is formed from a metal mesh or perforated sheet metal. – Basis: Old claim 7, second part. (15) A bird feeder according to claim 14 wherein the portion of the shroud lying adjacent to the sidewall of the holder when in the closed position comprises no apertures opposite the perforations.

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Worked example – the 2017 FD3 Paper – Basis: Page 9 lines 3-5. Note: Even more hideous claim than new 13, defining a feature by what it hasn’t got in a very specific configuration. Had it not been easy enough to just copy the language from page 9 verbatim, I would have thought twice about including these two claims. (16) A bird feeder according to any preceding claim, wherein the inner surface of the shroud has substantially the same shape as the outer surface of the sidewall. – Basis: Old claim 9 (17) A bird feeder according to any preceding claim, wherein the space between the inner surface of the shroud and the outer surface of the food holder is around 1-1.5mm – Basis: Page 8 lines 28/29. (18) A bird feeder according to any preceding claim, wherein the shroud and the food holder are both cylindrical. – Basis: Old claim 10. Note: Originally there were 10 claims. I’ve now used all of them in one way or another, having only spent time adding in new claims logically fitting in around 3-7 as best I can work out with the unclear embodiments, and unpacking the numerous options and features from old claim 7. If I had undertaken a comparison of what material I had which was unclaimed as I have above at the end of section 7, or could have done at the end of 5, I would now be able to see what was left which could still be claimed. In short once I’ve scrubbed out the features now in the claims above, I have in sequential order from the specification: Page 7 the roof, then the non-cylindrical (square) shape, page 8 line 11, a predetermined weight of a squirrel, page 9 lastly, a flared open end to the shroud. So it’s time to work these in. As I’ve just used old claim 10 it make sense to continue the shape first, so I would include: (19) A bird feeder according to any of claims 1-17, wherein the shroud and the foodholder are not cylindrically shaped. – Basis: Page 8 lines 33/34. Note: Personally, I cannot stand examples in a claim, thus did not want to include the “such as square” from the reference. If the client wants to make a square shroud/foodholder, well Amendment of Specifications Paper

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Worked example – the 2017 FD3 Paper they’re not cylindrical, so they’d be covered. Had it been an important point raised by the client, and it wasn’t, I may have spent time working out how to claim the cylinder per new claim 13, and perhaps made this a claim expressly to a square, and seen if I could contort the language enough to then have a generalised non-cylinder claim, which also doesn’t cover a square. How to do that is not immediately apparent based on the disclosure, so on I go as I’m a long way down the claim stack now, so these will be low-value claims, and I should think about apportioning my remaining time appropriately. (20) A bird feeder according to any previous claim, wherein at its upper end the shroud comprises a pitched roof portion. – Basis: Page 7 lines 2-5. (21) A bird feeder according to claim 18 wherein the roof portion is formed from wood or a plastics material. – Basis: Page 7 line 4. Note, does this really add much? I include it purely as it may be these materials are different to the rest of the apparatus, or as the disclosure in respect of the roof is limited to this single few lines, the IPO may consider new claim 15 to lack support across its whole breadth, as the only example is when made from wood or plastics. So I’d keep it here in case I’m unable to argue for new 15 and have to bring in the materials for more literal support. (22) A bird feeder according to any previous claim, wherein the predetermined value of an animal’s weight comprises about 500g. – Basis: Page 8 line 11. Note: I could add more explanation, but there appears to me to be sufficient info in claim 1 to know what this relates to. It’s not a pretty claim and you could spend time making it more complete, however I think this alone is a reasonably efficient way of getting the value in. (23) A bird feeder according to any previous claim, wherein at least one end of the shroud has a flared appearance. – Basis: Page 9 line 8. And that’s my claim set done. Quite an increase from what was in the original set.

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Worked example – the 2017 FD3 Paper

10. Write your response to the IPO I’m going to shorthand some of this for the sake of relative brevity, given I’m up to 15,000+ words already in explaining the process above, and I think you can see where it’s going. Suffice to say here are the headlines: To IPO Examination Division, by fax & special delivery, 11/10/2017. Re: Application Number: 1428571.4, “Application”. I enclose form PF51 to register myself as Agent for this case. I hereby retrospectively claim my two month as of right extension under s.117B, and thus respond within the revised deadline of 18/11/2017. I enclose a replacement claim set which addresses all issues raised by the examiner, basis for the new claims is as follows where “P” means “page” and “L” means the “line” where basis can be found (and I’ll give you one example to show you what I mean, you have traceability from the claims above to see the rest):

New claim

Basis

Comment

First insertion: Page 4 lines 26/27

Addresses your point 5, clarity issue, confirming the shroud moves with respect to the food holder and is not a part of it.

Second insertion: Page 5 lines 31/32 at least, where stated “since its whole surface is exposed”.

Old claim 2

Old claim 3

Page 7 lines 10-13.

Old claim 4

NB, this reference at page 5 covers all embodiments. [Note for you, see above for the second of the references which I don’t think is as broad].

Note for you, not the IPO, this is an alternative embodiment to what’s now in claim 5.

Page 7 lines 28-31

Note for you, this is a variant which only works with claim 5, so is dependent on it. I can’t see disclosure where it works with what’s in new claim 4. Can you? If so, let me know!

Page 9 line 8

“The open end 27 of the shroud is flared”

Etc, etc, until: 23.

Thus, I submit there is no matter added. Where matter has been removed the applicant reserves the right to reinstate it later.

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Worked example – the 2017 FD3 Paper Novelty: Replacement claim 1 is novel over D1 because claim 1 now has a food holder sidewall which is exposed when in the open position. The shroud of D1 is retained by a retainer pin shown in the Figures as 38 (and page 15 lines 5-11), which limits relative movement between the container 12 and shroud 14 so that hopper surface is substantially covered during the entire mode of operation. Claim 1 is novel over D2 as D2 has no shroud. [Note for you, I mentioned earlier the client has acknowledged some prior art. As it was in reality an approximation of D2 but with less detail, I can ignore it here. I may remark accordingly to the client if I have time to do so, it will come in handy below though.] I trust this deals with your points at 2 and 3 in your letter. Inventive step: Applying Windsurfer as modified by Pozzoli: The person skilled in the art (“PSIA”) would be a bird feeder manufacturer. Their common general knowledge (“CGK”) would include the prior art acknowledged by my client on page 5 lines 5-8, a bird feeder comprising a “container made from a wire mesh material, the openings in the mesh being large enough for birds to be able to access food within the container but small enough to contain the food therein.” The inventive concept of claim 1 is to provide a bird feeder which facilitates bird feeding but protects against larger animals, which is operable and biased between two positions. In a first, “open” position where the whole sidewall surface of the food holder is exposed, permitting birds of any side to be able to feed (see page 4 line 20, allowing birds to feed “whilst not restricting access to birds”), and a second “closed” position, in which a protective shroud that is biased above the sidewall descends under the weight of an animal, which exceeds a predetermined value against the action of the bias means. The difference between the inventive concept in the claim and D1 is that D1 has only a discrete number of side openings in its hopper, see page 13 lines 16/17, “at least one side opening”. Further on line 19 “The shroud has an opening alignable with the hopper opening.”, and also from lines 19-22 “A bird perch is attached to the shroud whereby heavier birds or animals cause the shroud to 20 move down and misalign the openings to preclude access to the feed while allowing lighter birds to obtain feed through the normally aligned openings.” It would not be obvious for the PSIA to permit the whole sidewall to be exposed as it provides perches for birds to sit on to access feed, on the shroud. As the way D1 operates is to misalign holes in both the hopper and shroud to prevent larger birds to eat – see page 13 last para which confirms the intention is to “preclude access to the feed by heavier birds or animals.” Larger birds would be able to feed if the whole sidewall was exposed. See also 118

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Worked example – the 2017 FD3 Paper page 15 third para (lines 12-22), which clearly defines the invention to be concerned with permitting small birds to feed, but preventing larger ones. The perches would become moot, reflecting the PSIA being concerned not with stopping larger animals from feeding, but larger animals and birds too. Claim 1 is thus inventive over D1. As all remaining claims depend on claim 1, they are novel by virtue of dependence. The difference between the inventive concept in the claim and D2 is that D2 has no shroud. D2 concerns a different technical problem, it has an upwardly projecting plug, which appears to exist to push food to the sides. It has a squirrel resistant base purely because it is made of aluminium, no effort is made to prevent larger animals from feeding from the sides. If any animal larger than a bird were to contact the side of either embodiment, there is nothing to prevent it from accessing food. Claim 1 is thus inventive over D2. As all remaining claims depend on claim 1, they are novel by virtue of dependence. D2 has two embodiments, which could be combined with D1, although there is no express teaching as to why the PSIA would be minded to do so. For the first embodiment, where the container of D2 is a tube of mesh, applying it to D1 would leave a shroud with some holes about a tube of mesh. In which case at any time the shroud descends, as there is mesh behind it, food would always be accessible. This means it is technically incompatible and offers the PSIA no functioning product. For the second embodiment, where the container of D2 is a tube of plastics material with individual holes spaced around it, there is the risk of the same if there are too many holes, or if they align only with those in D1 already, no further advantage to the PSIA. Accordingly, with no benefit of combining either embodiment of D2 with D1, claim 1 is thus inventive over a the same. As all remaining claims depend on claim 1, they are novel by virtue of dependence. I trust this deals with point 4 in your letter. Clarity Ref your point 5, this has been dealt with in the amendment to claim 1 above. Ref your point 6, thank you for pointing out the obvious error, new claim 9 as above which has basis in old claim 6 corrected with reference to page 8 line 25 now addresses that point. [Unity, nothing to say, anything else, not in this case as no divisional is proposed, so if you have time I would finish with something like:] As the amendments address all points you raised, I look forward to notification of allowance in due course. –ENDS– Amendment of Specifications Paper

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Notes for advice to client [I’m not going to write these out in full, but would suggest making sure you include in this case]: • Will register self as your agent, I complete and submit a form with the response to do so, there is no IPO fee. • Deadline can be extended as of right at no cost, so will request it with submission, new deadline is 18/11/17. • Which means please find draft attached as you requested, there is time to discuss before it must be submitted. • Examiner was right about some claims, because… • Thus have to amend to restore novelty and inventive step. • Two choices of amendment to claim 1, either mesh, and risk losing cylinder option (or put it in a divisional application costing time and money), or whole sidewall exposed… pros/cons as set out above. • Know it’s of interest but no express support for a “plastic” mesh. Claim 1 covers any material with apertures, so is implicitly covered. • Have tried for a broad mesh in new claim 10, note there is only one reference to a mesh not qualified with it being wire or metal in some way, so will have to see if the IPO allows it. Fallback would be to a metal mesh in that claim as has basis in old claim 7 or a wire mesh, and new claims depending on this one are all metallic. [Insert comment here from the mesh claims and surrounds, explaining some of the issues set out in the claims notes as above.] • Have added more claims to features in the specification which you did not say were of express interest, but include… • I note the specification also mentioned some prior art, it was not sufficiently detailed for me to consider it for novelty or inventive step, I considered it more CGK for the PSIA as set out in the draft response. [Note, I’ve already defined the terms CGK and PSIA so can use them here even to a lay client.]

General comments and conclusion As far as my specific claims go, it won’t surprise me if I have some of the dependencies wrong, I spent 66 minutes from starting the paper to the end of writing up my claims, concurrently marking the basis for them and making a cup of tea. That’s probably a lot less than it will have taken you, but I do this a lot. I haven’t changed what I originally put down and I am only human, and more than accept mistakes can be made. If you spot any issues let me know and I’ll correct it in future versions. There are a few claims which may be arguable, like a claim to a generic “mesh”. Where in the real world you’d have drafted it properly, here you can’t, so you have to make decisions on what you see. Personally, I’d

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Worked example – the 2017 FD3 Paper give it a go with the note to the client explaining why I did it, and setting out a fallback just in case. If you think differently, I’ll be happy to discuss – unusually for an attorney perhaps, I’m happy to not be right! The embodiments in this paper are deliberately convoluted, and unlocking them and working out exactly where to insert new claims is really difficult, especially under exam pressure. If it took you far longer to get this far, don’t worry about it. If you have the claims done by about 90 minutes in, you still have 90 to write everything up. By the time you’ve covered the start of the letter to the end of the basis section you can easily be at 120 minutes and still have plenty of time to get novelty (which is trivial in this case) and inventive step (fortunately self-evident as we’ve gone along) done, and a decent response to the client. Now I’ve written up the rest and having got another cup of tea, I shall use some ex-post facto analysis by looking at the mark scheme itself to self-critique what I’ve done. The Mark Scheme as published is next in Chapter 10, with the Examiner’s report at Chapter 11. When you’ve picked all the low-hanging fruit with a PF51/sorted the deadline and dealt with the claim amendments even the IPO mentioned, clarity in particular in this paper, the total number of marks you got came down to how much time you spent thinking through the whole sidewall exposed versus the sidewall being mesh issue. That you could have had a mesh for claim 1 and still scored strong points suggests the examiners thought so many had gone for it they should award marks, or that the disclosure was in places ambiguous. The client did mention both. If you didn’t get all the claims I did, again don’t worry about it, there were heaps to choose from and I spent lots of time on new claims, and marks were capped at “up to 8”. Which is pretty disappointing with the time I spent on my scratch sheet working out how to deal with the spring/sleeve business and dependencies, which would have gained me no additional marks. That’s often a risk of these papers, and at least it was “up to 8” marks, and not merely 8 for some specific claims only being those that scored marks. It would have been more annoying to spend time covering one area and find where they were valid claims, the examiners had decided others were more worthy. There are other oddities too, like consideration that mesh and a solid shroud are probably essential in practice. I am not convinced that’s true, the second of the client’s embodiments (a perforated cylinder) could work with a suitable shroud. If you had mesh and didn’t have a solid shroud, perhaps they have a point, per combining D2’s first embodiment of a mesh tube with the shroud with holes in from D1; it wouldn’t really work. I am also surprised with the contemplation that length of at least 25cm was deemed probably essential. I find that challenging to be honest. I can’t really see why that is. Happy to be enlightened if you can understand why. When you think about it, you could have included many different features to claim 1 and have a novel and inventive claim over D1 and D2. A roof for example. I see a sample past papers on the PEB website put that in as a divisional. Unfortunately, there was not enough time for the candidate to explain why they chose that beyond saying “I believe this is Amendment of Specifications Paper

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Worked example – the 2017 FD3 Paper inventive”. It would be easy to get around though, and the client was silent on that point, which is why when there is a client letter, you really need to read it and be led by them. If the ticks are indicative of where marks were given it was awarded one mark. Was it an easy paper? Well the pass rate tells you it wasn’t one everyone got through. If you have a strategy and logically follow it through, you’ll stand a good chance of finding the amendment, and in this case at least if you weren’t convinced with the whole of the sidewall being exposed, you could still have got a good pass mark with a mesh as claim 1, decent discussion of the point, a reasonable range of additional claims, and picking up the easier to spot marks too.

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10. THE 2017 FD3 MARK SCHEME

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11. THE 2017 FD3 EXAMINER’S REPORT

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12. MANUAL OF PATENT PRACTICE, ADDED MATTER ith kind permission from the IPO, which means this contains public sector information licensed under the Open Government Licence v3.0, this section is largely a direct copy from Section 76 of the version of the Manual of Patent Practice issued on .gov.uk, save the commentary I’ve added here and there, and as noted below at the time of publication, was last updated in October 2018. I would strongly suggest you check for the latest version of the Manual itself in case of change, particularly as not only does case law risk changing the guidance, but the relevant cross-referenced sections too can also change, and they can be as, if not more, important. The IPO provides a concise overview of changes at www.gov.uk/guidance/ manual-of-patent-practice-mopp/changes-to-the-manual-of-patent-practice

Section 76: Amendments of applications and patents not to include added matter Sections (76.01 – 76.28) last updated: October 2018. 76.01 This section, which bars the inclusion of additional matter in a patent application or specification, was rewritten by the CDP Act. The changes then made had little effect with regard to the prohibition on the introduction of new matter when amending an application or patent, but changed the consequences of the presence of such matter in a new application based on, and claiming the filing date of, an earlier application or patent. Section 76(1A) was added to this section by the Regulatory Reform (Patents) Order 2004 to prohibit the introduction of new matter in a description when the initial filing includes a reference under s.15(1)(c)(ii) to an earlier application. Section 76(1) An application for a patent which (a) is made in respect of matter disclosed in an earlier application, or in the specification of a patent which has been granted, and (b) discloses additional matter, that is, matter extending beyond that disclosed in the earlier application, as filed, or the application for the patent, as filed, may be filed under section 8(3), 12 or 37(4) above, or as mentioned in section 15(9) above, but shall not be allowed to proceed unless it is amended so as to exclude the additional matter. Amendment of Specifications Paper

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Manual of Patent Practice, added matter Section 76(1A) Where, in relation to an application for a patent (a) a reference to an earlier relevant application has been filed as mentioned in section 15(1)(c)(ii) above; and (b) the description filed under section 15(10)(b)(i) above discloses additional matter, that is, matter extending beyond that disclosed in the earlier relevant application, the application shall not be allowed to proceed unless it is amended so as to exclude the additional matter. 76.02 Section 76(1) requires that an application which seeks divisional status under s.15(9) – or to be treated as a new application under s.8(3), 12 or 37(4) following entitlement proceedings – and which discloses matter extending beyond that disclosed in the relevant earlier application, shall not be allowed to proceed unless it is amended to exclude that matter (see procedure in 15.35 and 15.45). Once amended, it should be published (provided all requirements are met) under s.16(1) as filed (see 15.38 – 39 and 16.08). Similarly, where an application contains a reference to an earlier application under s.15(1)(c)(ii) and the description of the invention sought required under s.15(10)(b)(i) discloses matter extending beyond the earlier application, the application shall not be allowed to proceed unless it is amended to exclude that matter (see 15.06.3 to .5), but once amended, the description as first filed should be published under s.16(1). 76.03 The tests for deciding whether a later application discloses matter, which extends beyond that disclosed in an earlier application are the same as the tests for determining whether amendment of an application adds matter (see 76.05 – 19). Author’s note: Where this sounds ridiculously obvious, there is a reference here to 76.05 before you even get to 76.04. In order for 76.05 to make sense, you have to read 76.04 first. For the whole of 05-19 to make sense, you also ned to read 76.20 and 21 too. Thus, I would suggest you simply read everything sequentially, and revisit anything you think you need to afterwards.

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Manual of Patent Practice, added matter Section 76(2) No amendment of an application for a patent shall be allowed under section 15A(6), 18(3) or 19(1) if it results in the application disclosing matter extending beyond that disclosed in the application as filed. BEFORE GRANT 76.04 Section 76(2) disallows amendment of an application which results in it disclosing matter extending beyond that which it disclosed when filed. Its strictures apply to amendment of an application made either in response to an objection made in the course of preliminary or substantive examination or at the applicant’s own volition. [RC9 may be used to object to a specification which contains added matter as a result of amendment under s.18(3), r.31(3) or r.31(4). It is not however appropriate for amendments requested under r.31(6) which would add matter.] (See further 19.19, 19.21) 76.04.1 In addition to the following UK precedents, decisions of the EPO’s Boards of Appeal are also relevant. In Lowndes’ Application (BL O/019/93), the hearing officer noted that, although s.76 is not one of those specified in s.130(7) as having been framed to have the same effect as a corresponding provision of the EPC, there is an indirect link to the EPC through s.72(1)(d), which concerns added matter as a ground for revocation. This latter provision is worded in similar terms to s.76(1) and (2) and is covered by s.130(7) (see also 76.22 and 91.02). Moreover, in Merrell Dow Pharmaceuticals Inc v H N Norton & Co Ltd (BL C/089/96) Jacob J came to the firm conclusion that s.76 is not intended to have a different effect from a.123 EPC. 76.05 The same general considerations arise under s.76(2), and s.72(1)(d), regardless of whether an amendment relates to the description – including any drawings (see paras 76.06 – 14 or to the claims in paras 76.15 – 22). Questions as to whether amendments disclose additional matter can arise both pre- and post-grant in the context of claim broadening. However, it is important to realise that the stricture against claim broadening in s.76(3)(b) and the sanction provided by s.72(1)(e) only apply to post-grant amendment (see 76.24 – 7), as was confirmed by the Court of Appeal in Texas Iron Works v Nodeco [2000] RPC 207. The only stricture governing pregrant amendment is that no additional matter should be disclosed, and s.69(2) clearly Amendment of Specifications Paper

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Manual of Patent Practice, added matter contemplates allowability of claim broadening (or “lateral shifting”) so that acts that did not infringe the claims of the published application could yet infringe those of the granted patent (see 76.16). The same possibility is contemplated by ss.17(8) and 18(1A). 76.06 When considering in Bonzel and Schneider (Europe) AG v Intervention Ltd [1991] RPC 553 whether an amendment to the description had the result that a patent as granted disclosed matter which extended beyond that disclosed in the application, Aldous J described his task as: (1) to ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application; (2) to do the same in respect of the patent as granted; (3) to compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly. As summarised by Jacob J in Richardson-Vicks Inc.’s Patent [1995] RPC 568, “the test of added matter is whether a skilled man would, upon looking at the amended specification, learn anything about the invention which he could not learn from the unamended specification”. (With regard to the narrowing of a claim to claim a sub-range not specified before, see 18.69 – 69.1 and 76.27). 76.07 In the Bonzel case, it was decided that additional matter was disclosed by an amendment resulting in a guide wire lumen of a dilatation catheter being described as “relatively short” (compared with the prior art), rather than as “about as long as the (catheter) balloon” (the original description of its length). The terms of the comparison at (3) above conform broadly with those of the test for novelty adopted in some EPO decisions as a basis for determining the allowability of amendments – i.e. no (new) subject matter may be disclosed by amendment which is not derivable directly and unambiguously from the original application by a person skilled in the art; see, e.g., Technical Board of Appeal Decision T201/83, OJEPO 10/84. However, in A C Edwards Ltd v Acme Signs & Displays Ltd [1990] RPC 621 at p.644, whilst acknowledging that the novelty test could often prove useful, and 134

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Manual of Patent Practice, added matter would have given the same result in that case, Aldous J observed nonetheless that it should be applied with caution. 76.08 r.15(2) and s.14(2) is also relevant. In order to determine the original teaching of an application, the whole of the description, any drawings and any claims which was or were present on the filing date may be considered (for later-filed original claims, see 14.145). When viewed as a source of disclosure, the claims of a patent specification are no different from any other source. The Court of Appeal so held in A C Edwards Ltd v Acme Signs & Displays Ltd [1992] RPC 131 at p.142, applying the decision of the House of Lords in Asahi Kasei Kogyo KK [1991] RPC 485 (see also 2.10.2). 76.08.1 A priority document does not form part of the application, and matter disclosed in the priority document but omitted from the specification as filed may not be subsequently added (as confirmed in VEB Kombinat Walzlager [1987] RPC 405, see 15.08. 76.08.2 s.14(2) is also relevant. Matter that is only disclosed in the abstract cannot be added to the specification, regardless of whether the abstract was filed on or after the filing date. The abstract is part of the application, though not part of the specification, and so the hearing officer in ARMCO Inc’s Application (BL O/84/85) accepted that matter present in an abstract filed on the date of filing could be considered to be part of the disclosure of the application when determining under s.76(2) whether an amendment adds matter. However, the Patents Court in Abbott Laboratories Ltd. v Medinol Ltd [2010] EWHC 2865 (Pat) held that the content of the abstract, filed on the date of filing of the application, could not be used to determine the content of the application as filed for the purpose of s.76 – see 14.171. Examiners should therefore disregard the content of the abstract in determining whether an amendment adds matter. Author’s note: Not all exam papers come with an abstract in your disclosure. When they do, just as in real life, in the exam, even if there is basis for what would be a perfect amendment in that abstract, do not use it. There may be a mark for noting it in the letter to the client, and that you are sufficiently competent to know you should not use it.

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Manual of Patent Practice, added matter 76.09 It is allowable to add to the description or claims matter disclosed in a drawing provided it does not go beyond what a skilled person would judge to be disclosed in the drawing. If it is necessary to rely on the drawings for support and the formal drawings were filed later than the application date, then the informal drawings should be consulted. A drawing treated as omitted under s.15(2) or (3) (see 15.07 – 15.16) may be reinstated by amendment, or a new drawing may be added, provided that it shows nothing not originally disclosed in the application (including any other drawings) on the date of filing. A similar criterion applies to the amendment of a drawing. IMPLICIT DISCLOSURE 76.10 Matter may be regarded as having been disclosed if the skilled reader would realise that it was implicit in the original document (cf 18.22) – see, for example, DSM NV’s patent [2001] RPC 35 at paras 197-200. In this decision, Neuberger J gives the hypothetical illustration of a description which refers to carrying out experiments at a certain acidity, but which does not contain a reference to the fact that pH is a measure of acidity. Since the skilled person would take this for granted, it means that a claim which was amended to refer to this acidity in terms of pH would not amount to added matter. 76.11 Consider a further hypothetical example. If an applicant seeks to amend a disclosure of a rubber composition comprising several ingredients to specify that a further ingredient is present, this is prima facie not allowable. However, the amendment may be allowable if the applicant can show convincingly that the further ingredient is an additive normally used in rubber compositions of that kind and that its omission would be questioned by the skilled reader; such an amendment may be regarded as clarification and as introducing nothing not already known to such a reader, since the presence of the additive is implicit in the description of the composition. If, however, the additive is merely common but by no means universal, or if it is merely one additive selected from several that are generally used, then the reference to its presence constitutes added matter. A third example is an application originally disclosing “resilient means” without disclosing any particular form of such means. An amendment introducing the specific information that the resilient means is, or could be, a helical spring, will not normally be allowable. If, however, it can be convincingly argued that in the kind of apparatus in question use of a helical spring is universal (for example if the “resilient means” is for retracting the tip of a ball-point pen), then the amendment may be allowable. 136

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Manual of Patent Practice, added matter 76.12 Matter which is not disclosed, but which the skilled reader would find it obvious to add, is not regarded as having been implicitly disclosed. The specification of Flexible Direction Indicators Ltd’s Application [1994] RPC 207 concerned a traffic bollard characterised by its flexibility and originally indicated that the bollard was made from a compound of two polymers. The applicants produced evidence, suggesting that a skilled reader would immediately see that one of the polymers alone could provide the desired flexibility. They argued that removal of the reference to a second polymer would be no more than rendering explicit that which was already implicit. In refusing the amendment, Aldous, J observed that s.76 “is concerned with what is disclosed, not with that which the skilled reader might think could be substituted or what had been omitted”. 76.13 If a generic term used in the document can be regarded as necessarily disclosing a relatively small number of particular alternatives, then restriction to one of these may be an allowable amendment. For example, if a pump or valve is disclosed as for use with “fluid” then it is reasonable to construe this as disclosing use with either liquid or gas, so that a statement that use with only one of these is contemplated can be regarded as a restriction of the disclosure rather than as added subject-matter. However, in Noxell Ltd’s Application (BL O/137/92), the hearing officer refused to allow the applicants to specify that a layer of plastic film was non-peelable, rejecting their submission that the word “layer” disclosed two particular alternatives: peelable and non-peelable layers. The hearing officer also rejected the applicant’s submission that s.76 does not apply to disclaiming amendments. 76.13.1 In Protoned BV’s Application [1983] FSR 110, the invention as originally described and claimed related to a mechanism for adjusting the seat and back of a chair, which used the co-operation of a gas spring and a mechanical compression spring. The applicant sought to delete from the claims the word “compression”, and argued that a skilled reader would at once realise that a tension spring could be used equally effectively. This was rejected by Whitford J, who stated that even if this were accepted to be the case, the amendment was not allowable, since it added notionally to the body of the specification a whole range of springs which were not originally in the application as filed. However, the claim could well have been allowed if the approach taken later in A C Edwards Ltd v Acme Signs & Displays Ltd and Southco Inc v Dzus Fastener Europe Ltd (see 76.15 and 76.20) had been applied.

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Manual of Patent Practice, added matter PRIOR ART 76.14 There may be no objection to an amendment introducing information regarding prior art, provided it does not alter the construction of the claims of the patent in suit (Cartonneries de Thulin SA v CTP White Knight Ltd [2001] RPC 6). For example, while the originally filed description of prior art may give the impression that the inventor has developed the invention from a certain point, cited documents may show that certain aspects of the alleged development were already known. The subsequent inclusion of a reference to or a brief summary of the relevant documents would not contravene s.76 (Merrell Dow Pharmaceutical Inc v N H Norton & Co Ltd BL C/089/96). Likewise, an amendment may be allowable, which sets out disadvantages of the prior art, and thus helps to put the invention in its proper perspective in the art. If, however, such an amendment implies an advantage of the invention, or if a statement of such an advantage is sought to be introduced, for example in order to distinguish the invention from the prior art, then this will be allowable only if the advantage would have been apparent to a skilled reader of the specification who was aware of the prior art (EPO decision T344/89; [1993] EPOR 209). In Palmaz’s European Patents (UK) ([1999] RPC 47, upheld on appeal [2000] RPC 631), Pumfrey J stated that the practice, allowed by Advanced Semiconductor Products OJEPO 8/94 & [1995] EPOR 97 (G 01/93) of adding an acknowledgement of prior art to the body of the specification and limiting the claim by reference to the prior art so acknowledged was too generally used in proceedings before the EPO to be challenged, but noted that caution must be exercised where the patentee himself described the prior art in terms which he proposes to use in the limitation of his claims. SCOPE OF THE CLAIMS VS. DISCLOSURE 76.15 In the case of A C Edwards Ltd v Acme Signs & Displays Ltd [1992] RPC 131 (see 76.08), the claim had been reduced in scope during examination by the introduction of further features in generalised terms which, the defendants contended, had the result that the claim covered, and therefore disclosed, certain variations not disclosed in the application as filed. The Court, in rejecting this argument, distinguished between the ambit of the protection which the claim identified and the matters which it disclosed. The Court decided that although the claim covered certain variations, it contained no disclosure of any of them; thus there was no added information and the disclosure had not been extended. The Court also held that, in any event, the variations in question had been implicitly disclosed to a person skilled in the art by the contents of the application as filed. 138

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Manual of Patent Practice, added matter 76.15.0 Similarly, AP Racing Ltd v Alcon Components Ltd [2014] EWCA Civ 40 concerned an appeal of a Patents County Court decision to revoke AP Racing’s patent due to added matter. The patent related to a disc brake caliper with the claimed feature of asymmetrical peripheral stiffening bands (PSBs). However, the application as filed did not explicitly refer to the PSBs as being asymmetrical and contained instead disclosure of [… one particular geometry of PSB in a “hockey stick” shape…]. The Patents County Court judge recognised that the PSBs disclosed in the application were necessarily asymmetrical but said that a skilled addressee would not have derived from the application “a concept at the same level of generality as” the feature of claim 1. Thus he held matter had been added in claiming the general feature of asymmetrical PSBs. However, this was overturned by a decision of the Court of Appeal, in which Floyd LJ stated: “Having correctly concluded that the description in the application of the hockey stick shaped PSBs was of something ‘necessarily asymmetrical’ [the judge] should have gone on to ask himself whether there was any added disclosure in the granted specification. The description of the PSBs in claim 1 as ‘asymmetric’ has to be read as part of the disclosure of the specification of the granted patent as a whole, taking account of the different function of the claims and the specification. When this is done the skilled person would understand that the patentee has drafted his claim so that it covers asymmetric PSBs generally. However, I am not persuaded that the specification read as a whole discloses any configuration of PSB which is not disclosed in the application”. It is therefore possible to broaden the scope of a claim without disclosing new information about an invention also see 76.15. That is, although broadening the scope of a claim may result in the claim covering matter which was not previously disclosed, this does not necessarily mean that the claim itself (and the specification as a whole) actually discloses any additional matter. In contrast, Koninklijke Philips Electronics NV v Nintendo of Europe GmbH [2014] EWHC 1959 (Pat) illustrates that a granted claim may cover new matter and also disclose new matter over what was filed. A granted claim referring to “at least one room localisation beacon” was held to add matter over an application that disclosed only the use of plural beacons. The judge determined that the granted claim clearly covered a system with only one beacon, and also disclosed such a system, because that idea is conveyed by the language of the claim. He stated: “The skilled addressee reading the granted patent would have the idea that one of the things they could build if they put the ideas in the document into practice was a system with a single beacon in it.” Amendment of Specifications Paper

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Manual of Patent Practice, added matter 76.15.1 The addition of what, in essence, was specific new disclosure was considered in Van der Lely’s Application [1987] RPC 61. In that case, a divisional application claimed a baling machine comprising “at least one swingable conveyor” whereas the main application only disclosed a machine having three such conveyors. In the absence of any suggestion in the main application that the baling machine could have less than three swingable conveyors, and because the claim of the divisional application embraced a machine with only one or only two conveyors of this type, the disclosure of the divisional application was considered to extend beyond that of the main application. 76.15.2 As discussed in paragraph 4A.27.1, it does not add matter to amend a “Swiss-type” second medical use claim (e.g. “The use of substance X in the manufacture of a medicament to treat disease Y”), or an unpatentable method of treatment claim (e.g. “A method of treating disease Y by administering substance X”), to the equivalent direct form of second medical use claim (“Substance X for use in the treatment of disease Y”). Although such a change in claim format does not add to the technical disclosure of a patent application, it would extend the scope of the claims and is therefore contrary to s.76(3)(b) if made post grant (see 4A.27.1 and 76.26). INTERMEDIATE GENERALISATION 76.15.3 Amendments which limit the scope of a claim by the introduction of one or more features from the description or claims may in certain circumstances add matter through what is known as “intermediate generalisation”. This concept was explained by Pumfrey J in Palmaz’s European Patents (UK) ([1999] RPC 47, upheld on appeal [2000] RPC 631): “If the specification discloses distinct sub-classes of the overall inventive concept, then it should be possible to amend down to one or other of those sub-classes, whether or not they are presented as inventively distinct in the specification before amendment. The difficulty comes when it is sought to take features which are only disclosed in a particular context and which are not disclosed as having any inventive significance and introduce them into the claim deprived of that context. This is a process sometimes called ‘intermediate generalisation’.”

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Author’s note: And you thought this was an EP thing! My first supervisor called intermediate generalisations simply “lazy language”. Referring to something general when only a specific has been disclosed, or otherwise not using the exact integer you are claiming risks making an argument in favour of an amendment you have not made. Take your time, take care, and think when you are referring to what is in your claims, and hence are making valid arguments. If you have to generalise to something which you are claiming and is not clearly disclosed in the specification you have to work with, your claim is probably wrong. The same is very much true when checking your embodiments – you’ll often find useful features in one specific embodiment in this exam, and it can be all too easy to just whack them in the claims depending on all earlier ones. You’ll see the minefield I’ve tried to navigate in the worked example – this paper will frequently make suggestions that may not apply to all embodiments when you’re claiming them. Where incorrect dependencies may lose only half the marks for any particular claim, you need half the marks to pass, so the more you get right, the greater the chances you have of not coming back to do it again.

76.15.4 This definition has been endorsed in subsequent decisions of the courts, such as Vector Corp v Glatt Air Technologies Ltd [2007] RPC 12. In particular, if a feature is taken from only one, or a subset, of the embodiments, stripped of the other related features of the embodiment(s), and claimed as a defining feature of the invention, then unless the application suggests that this feature has a particular significance this is likely to constitute an intermediate generalisation; as in Datacard Corp. v Eagle Technologies Ltd. [2011] EWHC 244 (Pat), [2011] RPC 17. 76.15.5 As discussed in Nokia Corporation v IPCOM GMBH & Co KG (No. 3) [2013] R.P.C. 5 it is not permissible to introduce into a claim a feature taken from a specific embodiment unless the skilled person would understand that the other features of the embodiment are not necessary to carry out the claimed invention. Put another way, it must be apparent to the skilled person that the selected feature is generally applicable to the claimed invention absent the other features of that embodiment. Teva UK Limited & Anor v AstraZeneca AB [2014] EWHC 2873 (Pat) relates to a patent for a therapy for asthma. In his decision, Mr Justice Sales applied the teaching of Nokia Corporation v IPCOM and found that a specific example given in the patent specification could not be used to generate generalisable patent claims. He held that the skilled addressee would not be able to derive from the example that Amendment of Specifications Paper

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Manual of Patent Practice, added matter the dose amounts set out are capable of abstraction from the details of the factual scenario set out in that example. The proprietor was thus held to have added matter to the application in attempting to generate patent claims based on particular details from the example. In Starsight Telecast Inc & Anor v Virgin Media Ltd & Ors [2014] EWHC 828 (Pat), the invention presented in the application as filed was a detailed and specific method of using parental controls to restrict access to programme schedule information displayed on a television. The judge, however, considered that the claim 1 in the granted patent was directed to a method of restricting access to programme schedule information based on parental control options per se and was not restricted to the specific features set out in the specification as filed. Therefore, the granted claim 1 presented the skilled team with new information about the invention, which was not directly and unambiguously apparent from the original disclosure. It was further held that claim 4, in combination with claims 1 and 2, generalised the invention in a way that omitted important parts of the disclosed method and thereby told the skilled team, for the first time, that those parts were inessential. Consequently, claim 1 and the combination of claims 1, 2 and 4 were held to be intermediate generalisations and, therefore, invalid on the grounds of added matter. 76.15.6 It is worth noting that the disclosure of the application includes all the information that the skilled person may ascertain about the invention. An intermediate generalisation is considered to add matter (at least in part) because it results in the skilled addressee being presented with information which they could not have derived from the application as originally filed, concerning the importance of the newly claimed feature. This new understanding is the ‘matter’ which is added. In a similar vein, an amendment limiting the scope of a claim to a single pill comprising 70 mg of alendronate by deleting other tablet weights and dosage combinations was held by the Court of Appeal, in Merck & Co Inc’s Patents [2004] FSR 16, to add to the teaching of the patent by introducing the importance of the 70 mg dosage being in the form of a single pill. For discussion of amendments which restrict a claim to a sub-range of a range disclosed at filing see 18.69.1. 76.16 See 76.20

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Manual of Patent Practice, added matter OMISSION OF A FEATURE 76.17 Thus the omission from an amended claim of a feature specified in the original claim may be allowable if it is apparent from the whole document that its inclusion as a characterising feature was arbitrary and unnecessary. On the other hand, if the specification gave the impression that a feature was regarded as an essential element of the invention then amendment to omit this feature is not allowable. In Raychem Ltd’s Application [1986] RPC 547, the applicants sought to amend two divisional applications by omitting the final (crosslinking) step from a process for producing a heat-recoverable polymeric sleeve assembly. The hearing officer’s refusal to allow the applications as so amended to proceed under s.15(4) was upheld in the Patents Court where it was held that the cross-linking feature was clearly disclosed as an essential feature of the invention described; claims relating to the “intermediate” product obtained without the final crosslinking were not supported by that disclosure and would offend against s.76 as disclosing matter extending beyond that disclosed in the applications (and parent) as filed. In decision T122/90, not published, concerning corresponding European patent applications, the EPO Board of Appeal similarly supported objection to claims “which did not specify that the bonded parts could be crosslinked so that the sleeve assembly was presented out of its original context”, but allowed claims to the intermediate product which required the relevant material to be cross-linkable so that the bonded parts could be cross-linked, thus preserving the cross-linking feature. 76.18 Likewise, if a feature is necessary in order that the invention may fulfil an originally-stated purpose, then its omission will not be allowable. In International Playtex Corporation’s Application, [1969] RPC 362, the specification originally stated that an object of the invention was “to design a brassiere with maximum resistance to riding over derived from its builtin differential stretch patterns”, and the claim included “a triangular piece of stretchable fabric”. Objection was upheld to an amendment which sought to delete the statement of object and to replace the reference in the claim by one to “a triangular insert”. The same outcome would appear likely under the current law. 76.18.1 The Court of Appeal, in Nokia Corporation v IPCOM GMBH & Co KG (No. 3) [2013] R.P.C. 5, considered whether matter had been added by omission with reference to the “Houdaille Test” set out by the EPO Board of Appeal in T331/87 Houdaille/Removal of feature [1991] E.P.O.R. 194. The test was summarised by Kitchin LJ: Amendment of Specifications Paper

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Manual of Patent Practice, added matter The skilled person must be able to recognise directly and unambiguously that (1) the [omitted] feature is not explained as essential in the original disclosure, (2) it is not, as such, indispensible for the function of the invention in light of the technical problem it serves to solve, and (3) the replacement or removal requires no real modification of other features to compensate for the change. CLAIM BROADENING 76.19 If an invention has been claimed narrowly and the applicant subsequently realises that they could have claimed it more broadly, this will not generally be possible if the whole teaching of the original specification was that the invention related only to the narrow aspect. For example, Glatt’s Application [1983] RPC 122 was for an article (suitable for conditioning fabrics in a laundry dryer) comprising a flexible woven or non-woven airpermeable web. It was held to be wrong to allow claims to go forward omitting the requirement of air-permeability “upon a description of the invention in the body of the specification which only supports an article in which the use of an air-permeable base fabric is an essential feature”.

Author’s note: There is a propensity for candidates to attempt to broaden claims if they possibly can. In the main, the specification in these papers will make it clear if that’s possible, and if it’s possible for that to apply to all embodiments. The client may well indicate a broadening is of interest, and of course you need to think if you can do so and, naturally, make sure you reply to them on that point.

76.20 Nevertheless, the fact that an amendment has the effect of broadening the scope of the claims does not necessarily mean that it will be regarded as adding matter (see 76.05). Aldous J said in Southco Inc v Dzus Fastener Europe Ltd ([1990] RPC 587; upheld on appeal – see [1992] RPC 299) that “What the Act is seeking to prevent is a patentee altering his claims in such a way that they claim a different invention from that which is disclosed in the application. Thus, provided the invention in the amended claim is disclosed in the application when read as a whole, it will not offend against section 76”, and that “section 76 is there to prevent the patentee disclosing either by deletion or addition any inventive concept which was not disclosed before but not to prevent a patentee claiming the same invention in a different way”. From a consideration of ss.125 and 130(3) in that case, the 144

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Manual of Patent Practice, added matter judge concluded that although there was no definition of the word “matter” it was wide enough to cover structural features of the mechanism and inventive concepts, and that it was reasonable to look at the claims construed as part of the whole document to see what was the invention. 76.21 In many cases it will be possible to raise objection to unacceptable claim broadening under either s.76 or s.14(5)(c); if both are contravened, then in general objection should be raised under both. When objecting under s.14(5)(c), a warning should be given against an attempt to overcome the objection by amending the description in a way which would contravene s.76(2). (For divisional applications, see 15.30.) Author’s note: Section 76.22 of the MoPP simply now says “See 76.15.1”, 76.23 has been deleted, and relating to section 76(3) of the Act and beyond, section 76.24 in the MoPP onwards concerns post-grant amendment. I’ve not included any of it here as it’s not going to be relevant to this exam as things stand.

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CIPA FD3 STUDY GUIDE

Tim Allsop

Patents

Trade Marks

Designs

Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk

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CIPA FD3 STUDY GUIDE Tim Allsop

2020

11/08/2020 12:16:46