Infringement and Validity (2018)

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Infringement and Validity CIPA FD4 Study Guide

By Philip Barnes based on an original version by Nigel Frankland

2018 Edition

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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. © 2018 Philip Barnes Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20-23 Holborn London EC1N 2JD United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk

ISBN 978-0-903932-67-7 Printed and bound by Hobbs The Printers Ltd, Totton, Hampshire

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Infringement and Validity CONTENTS Foreword . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . v Bibliography of cases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . vii 1. What is FD4 all about? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 2. How should I prepare to sit FD4?. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 3. How do I begin with a FD4 paper? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17 4. How do I begin to tackle interpretation?. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23 5. Now I have done ‘interpretation’, what comes next? . . . . . . . . . . . . . . . . . . 59 6. How do I deal with novelty? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 71 7. And what about inventive step? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 79 8. Surely that’s the end of validity? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 91 9. Amendment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95 10. Is there anything else? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99 11. How do I achieve all of this in the examination room? . . . . . . . . . . . . . . . 107 12. So much for the theory… . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 113 Past paper – P6 1998 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 189 Past paper – P6 2010 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 205

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FOREWORD igel Frankland wrote (and kept up to date for years) this book as a guide to passing what is probably one of the harder finals examinations and I think I am safe in saying that many in the profession are grateful for the work he put in to show candidates how to approach the examination.

Recently, as a P6 and then FD4 examiner and because of my involvement in training for the finals examinations, I was asked by CIPA to update this book now that Nigel has retired. I hope I have risen to the challenge!

I have worked from the latest version of Nigel’s book and my aim was to edit it to make sure it was in line with what the examination seeks to test and the latest papers that we have set and marked.

As Nigel said in his original foreword, this book is intended to introduce a trainee patent attorney to the Infringement and Validity or Final Diploma 4 paper set by the Patent Examination Board. The book is addressed to a candidate who has been active in the patent profession for over two years, and who has passed the Foundation level examinations (either by the PEB Foundation examinations or for example via the Queen Mary or Bournemouth courses).

It is assumed that candidates are familiar with the formal requirements of the law, and that you have some experience of working on files where questions of infringement and validity arise. You are, of course, familiar with the latest edition of CIPA Guide to the Patents Acts (a.k.a. the ‘Black Book’) and also Fundamentals of Patent Drafting by Paul Cole (a.k.a. my first boss).

You must, of course, have some knowledge of the relevant case law.

I have to make very clear that simply reading this book will not guarantee a pass when you sit the FD4 paper. It does, however, set out features of the paper that you will need to understand and appreciate to have a good chance of passing at a first sitting, and also gives an indication of some techniques that may prove to be useful in the examination room.

FD4 is a test of skill, rather than a test of knowledge, and this skill will only acquired by practise. The best thing that you can do before attempting the FD4 paper is to ascertain what the examiners are looking for, and then have a go at answers to as many past papers as you can bear (preferably getting a qualified attorney to review and perhaps even mark your efforts in order to get some feedback).

FD4 is an examination with a reputation, and the statistics on the pass rate show that the examination is not easy. In a typical year the pass rate is less than 50% of the candidates – and in some years the pass rate has been below 40%. Nevertheless, it is possible to pass FD4, at a first attempt, and with a respectable mark.

This book sets out to show you how.

I take responsibility for the material on the following pages, in that any errors are mine and mine alone and not an official PEB position.

N

Philip Barnes, April 2018 v

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Bibliography of cases This bibliography identifies the cases mentioned in the text, listed in alphabetical order with page references. Some cases are of lesser importance than others.

Actavis UK Limited and others (Appellants) v Eli Lilly and Company (Respondent) [2017] UKSC 48...........................................................................................................................2, 25, 36 Ancon Limited v ACS Stainless Steel Fixings Limited [2009] EWCA Civ 498; http://www.bailii.org/ew/cases/EWCA/Civ/2009/498.html.......................................................26, 28, 30 BOS GmbH & Co KG v Cobra UK Automotive Products Division Ltd [2012] EWPCC 38; www.bailii.org/ew/cases/EWPCC/2012/38.html .................................27-28, 35, 83 Catnic v Hill & Smith Ltd. [1982] RPC 183 (not on Bailii) .....................................3, 14, 25, 29, 30, 81 Goldschmidt v EOC Belgium BL/83/99 (not on Bailii).................................................................44, 52 Improver Corp. v Remington [1990] FSR 181 (not on Bailii) ...............................................3, 25, 29, 32 Kirin-Amgen v Hoechst Marion Roussel [sometimes quoted as Transkaryotic Therapies, Inc.] (No. 2) [2005] RPC 9 at page 169;[2004] UKHL 46; www.bailii.org/uk/cases/UKHL/2004/46.html ..........................................................................................................................3, 23, 26, 28, 30-32, 35-36 Lubrizol v Esso BL C/110/96 and [1998] RPC 717 (CA) (not on Bailii) ...................................44, 52 Pozzoli SPA v BDMO SA and others [2007] EWCA Civ 588; FSR37 and http://www.bailii.org/ew/cases/EWCA/Civ/2007/588.html.................81, 82, 85, 86, 149, 159, 180 Ranbaxy (UK) Limited v AstraZeneca AB [2011] EWHC 1831 (Pat); www.bailii.org/ew/cases/EWHC/Patents/2011/1831.html........................35 Smith & Nephew plc v ConvaTec Technologies Inc [2013] EWHC 3955 (Pat); www.bailii.org/ew/cases/EWHC/Patents/2013/3955.html .......................44 Smith & Nephew plc v ConvaTec Technologies Inc [2015] EWCA Civ 607; www.bailii.org/ew/cases/EWCA/Civ/2015/607.html.....................................52 Smith International Inc v Specialised Petroleum Services Group [2005] EWHC 686 (Ch); www.bailii.org/ew/cases/EWHC/Ch/2005/686.html ...................................27

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Tate & Lyle Technology Ltd v Roquette Frères [2010] EWCA Civ 1049; www.bailii.org/ew/cases/EWCA/Civ/2010/1049.html.................................35 University of Queensland v Siemens Magnet Technology Ltd [2007] EWCA Civ 588; [2007] F.S.R. 37, http://www.bailii.org/cgi-bin/format.cgi?doc=/ew/cases/EWHC/Patents/2007/2258.html ............28, 68 Virgin Atlantic Airways Ltd v Delta Airlines Inc [2011] EWCA Civ 162; www.bailii.org/ew/cases/EWCA/Civ/2011/162.html .....................................50 Virgin Atlantic Airways Ltd v Premium Aircraft Interiors UK Ltd [2009] EWCA Civ 1062; www.bailii.org/ew/cases/EWCA/Civ/2009/1062.html .........30, 35, 49-50, 52

Please note that all extracts from judgments given in this book have been obtained from the excellent www.bailii.org website. The judgments are subject to Crown Copyright.

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CHAPTER 1

What is FD4 all about?

Coverage The syllabus for FD4 is considered, and the nature of a typical paper is discussed.

After you have read this chapter, you should be aware of: 1. The main features of the syllabus.

2. The format of a typical paper.

3. The overall structure of a typical marking schedule.

4. The main components of a successful answer.

nfringement and Validity is a paper that has been sat by generations of candidates seeking entry on the register of patent attorneys, or, formerly, the register of patent agents. The examination started in the 1930s as ‘Infringement and Criticism of Specifications’, and towards the end of the century had become papers ‘I’ and ‘J’ – both called ‘Infringement and Validity’, and both of which had to be passed in a single year. In the early 1990s a single paper ‘P6’ was introduced, and this became FD4 in 2015.

For many years there was no published syllabus, but this omission was rectified in 2006 with a syllabus that set out 14 different ‘competencies’ that the examination set out to test. Following the establishment of the Patent Examination Board a totally new syllabus was issued for the 2015 examination and has been updated each year since then.

The latest published syllabus at the time of writing may be found at http://www.cipa.org.uk/EasySiteWeb/GatewayLink.aspx?alId=8559. The syllabus can be summarised briefly as requiring candidates to be able to construe patent claims, and to be able to determine the patentability of the claims, with special regard to novelty and inventive step, and to evaluate the possibility of amending the claims so as to ‘improve’ their validity, while maintaining at least an argument that the claims are infringed, with the reasons why the claims are valid and infringed being given. Candidates must also be able to determine questions of infringement, and be able to consider ‘design around’ possibilities, as well as being familiar with the procedures for challenging the validity of a patent. Finally, candidates must be able to advise a lay client covering various points, but especially providing, with reasons, a recommended course of action.

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Infringement and Validity • 2018

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1. What is FD4 all about?

The syllabus lists the various legal provisions in The Patents Act 1977, Patents Rules 2007, and EPC 2000 that should be familiar to the candidate.

As most candidates should hopefully know, the Supreme Court has handed down its judgment in Actavis v Lilly ([2017] UKSC 48). This is a landmark decision and, as such, will form the basis of all infringement analyses henceforth. As the decision was handed down more than six months before the date of the 2018 Final Diploma examinations it is applicable to the 2018 FD4 examination. It will be important that this decision has been read and understood by candidates for the 2018 examination.

It is recommended that you download and read the syllabus, which also includes a reading list, and indicates that the examination paper will include a letter from a client and a set of accompanying documents (and it reasonable to expect those documents to include at least one patent that might be infringed and some prior art) and an instruction to prepare a memorandum of advice prior to a meeting with the client.

All of this sounds very much like a typical day in the office – but FD4 is in many ways a very different experience (mainly because of the time constraints and the subject-matter involved being unfamiliar). Please also bear in mind that the examination is an artificial construct designed to test your skills in relation to infringement and validity analysis rather than your knowledge of the subject-matter involved.

You will be expected to read the documents provided, and determine which patent(s) might be infringed by any of the activities of any of the parties in the scenario, and whether the patent(s) is/are valid, or can be amended to become valid. Then, on the basis of the infringement and validity conclusions that you have reached, you are expected to provide a memorandum of advice.

The situation may be very straightforward, with a client wishing to launch a new product, which is described and illustrated. An infringement clearance search may have revealed one potentially infringed patent, and some documents that are ‘prior art’ against that patent.

However, the situation may be more complicated, with the client holding a patent that is infringed by a competitor, and the competitor holding a patent that is infringed by the client. As in real life, you are presented with a situation, and first of all you have to understand the situation before considering the documents in detail.

Of course, patent attorneys should be able to understand patents relating to the technical area in which they operate. However, the technical areas where innovation is common are now very diverse, and are frequently very complicated or technically challenging. Clients appreciate this and generally do not expect a patent attorney who is, for example, active in the field of biotechnology to advise on a case involving advanced electronics. Because a single paper has to be sat by candidates with very different technical backgrounds, FD4 examiners will choose an area of technology that is relatively simple and straightforward.

In real life, when a client writes a letter to a patent attorney it is almost inevitable that the client will provide some information that the patent attorney will not need, and it is also quite common for the patent attorney to need further specific items of information which are not fully disclosed by the client before a final opinion can be formed. You must be able to identify and concentrate on the information that you need to consider. You must be able to disregard anything that is irrelevant, while concentrating on the relevant information provided to get as close to an opinion as possible. So, in a typical FD4 paper the examiners may well include some 2

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1. What is FD4 all about? information that is absolutely irrelevant to any of the points at issue, and may well omit some critical data. It is also common for there to be issues on which advice may be required, but these are ancillary to the main tasks at hand (assessing infringement and validity) which candidates need to treat cautiously to avoid spending too much time preparing an answer to in order to concentrate on gaining the bulk of the core marks available for the main tasks.

Consequently, you must not be surprised if some critical information is missing, which may be information that would make all the difference to the final opinion. You may need, for example, the precise publication date of a document, or the precise date that the client first produced and sold his product. If information is missing, you must be able to work out what missing information you need, and then remember to ask for it!

In many leading cases the whole question of whether the patent is valid and infringed, or not, has hung on a single word or phrase. In the long-running saga of Kirin-Amgen v Hoechst Marion Roussel [2005] RPC 9, [2004] UKHL 46 (and http://www.bailii.org/uk/cases/UKHL/2004/46.html), which ended in the House of Lords a matter of days before the patent expired, everything hung on what was, and what was not, a ‘host’ cell. (The bio-tech subject-matter of this case will almost certainly be totally unintelligible to all except bio-tech experts – for physicists and engineers it should be mentioned that the main claim included a reference to the host cell, and also contained the words ‘product of eukaryotic expression of an exogenous DNA sequence’ – the word exogenous clearly suggested that a ‘host’ cell was being used to receive the DNA that was finally expressed.) The putative infringement used a different technique to express the DNA, and it was argued that this technique did not use a ‘host’ cell as required in the patent. This must be considered to be a ‘real-life’ example of a ‘finely balanced point’.

It is not unusual in leading patent cases for a lot to depend on a little in this way, with one or two words making all the difference. In Catnic v Hill & Smith Ltd [1982] RPC 183, everything depended on the meaning of the words extending vertically, and in Improver Corp. v Remington [1990] FSR 181 the precise ambit of a helical spring was the point at issue.

So in each of these ‘real-life’ cases, there was only one principal point that was finely balanced, and the whole case would topple one way or the other depending upon the resolution of this single point.

In FD4, however, you can expect the examiners to introduce several points that are ‘finely balanced’ into the paper. This will help you if you miss one of the balanced points, as you can demonstrate your skills when tackling another one. In this respect, a typical FD4 paper, while seeking to emulate real life, can be seen to take things to a bit of an extreme or unreal position – but a position that is at least almost believable. Candidates should try to remain watchful that they have not taken extreme positions on points in the paper that the examiners expect them to discuss, as taking an extreme position may give the satisfaction of a quick and clear answer but this is unlikely to allow them to discuss the point fully and receive all of the available marks available for that point.

You should be able to identify the ‘finely balanced’ points, and especially any ‘finely balanced’ points which, if they fell one way would lead to one conclusion on infringement or validity, and if they fell the other way would lead to a very different conclusion. You should be able to appreciate the two ways that each point could fall, and then be able to choose one as being appropriate, and somehow provide a reasoned justification of that choice.

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1. What is FD4 all about?

You can expect the paper to have a letter from a client that sets the scene, and which may ask for advice on specific points, such as whether a specific act infringes a patent, or whether the patent is valid. To obtain maximum marks you must make sure that you provide advice on all of these points. You will have the patent, of course, and some indication of the nature of the infringing act or acts, which may be in the letter from the client, or in a separate document. There will also be some prior art, some of which may be prior used or prior proposed products or processes acknowledged as prior art in the patent, or which may be prior use identified in the letter from the client. Typically, the prior art includes at least one prior patent specification, and at least one non-patent disclosure, such as a textbook, a publicity leaflet, or an instruction leaflet which makes a possibly relevant technical disclosure. The prior art may be used to generate a ‘novelty’ attack on at least some of the claims of the patent, and also a ‘lack of inventive step’ attack.

The examiners will try and make the scenario as life-like as possible, but inevitably, where a situation is concocted for examination purposes it may seem a bit surreal from the technical point of view, and sometimes also from the commercial point of view. However, you must ‘play the game’ and accept the situation as it is presented to you.

In recent years the FD4 marking schedule has been published, but some information on the breakdown of marks in years prior to this was available in the examiners’ comments. It is clear that the marking schedule each year has the same overall form, with marks being awarded in a consistent set of sections (precisely what has to be done to obtain the marks in each section is the subject-matter of subsequent chapters of this book). However, the actual number of marks in each section of the schedule varies with the details of the paper. To give you an idea as to how the marks are divided between the sections here is a table analysing the marking schedules in a ten-year period.

Year Interpretation Infringement

Novelty

Inventive step

Sufficiency

Amendment Letter

Float

2008

27.5

27

24

11

1

3

6.5

–

2009

26.5

23

24.5

15

1

2

8

–

2010

27

20.5

22

15

0.5

6

9

–

2011

20

22.5

30.5

14

1

4.5

7.5

–

2012

21.25

18.75

34.5

14

0.5

2

9

–

2013

20

27

27.5

12

0.5

5

8

–

2014

24

20

24

18

2

2

10

–

2015

18.5

27

18.5

21

4

1

10

–

2016

20.5

14

26.5

20

5

2

12

–

2017

19

19.5

24.5

19

3

3.5

12

–

The first section of the marking schedule always relates to ‘construction’ or ‘interpretation’, and we will come to what this means and how it is done later on. In a ten-year period the highest mark was 4

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1. What is FD4 all about?

27.5 and the lowest was 18.5. The next section of the schedule relates to ‘infringement’ where the features of each possible infringement have to be compared with the features specified in the claims, and here the marks range between 14 and 27. The ‘novelty’ section relates to a comparison of the teaching of the prior art and the claims, to see if any claim or claims are anticipated, and the marks range between 18.5 and 34.5. The ‘inventive step’ section relates to an analysis as to whether the claims can be considered ‘obvious’, and here the marks range between 11 and 21.

These first four sections of the marking schedule account for a very large proportion of the marks, but each year there have between half a mark and five marks for discussing sufficiency issues, one to six marks for discussing possible amendments to the patent and between 6.5 and 12 marks for the advice to the client. It might be thought that the distribution of the marks between the sections should be predetermined and fixed. However, when a client presents a problem in the office, before you look at the papers you do not know if the problem involves difficulties on infringement, or on novelty, or on inventive step. Sometimes the question of infringement can take seconds, and novelty can take days. The attorney has to be able to see where the problem lies, and direct attention in an appropriate manner. The marking schedule to FD4 reflects real life, in that it cannot be predicted.

The marking schedules for the 2014 examinations onwards have been published by the Patent Examination Board, and can be found online. It is recommended that you download and study the recent marking schedules (perhaps once you have done the relevant papers!), as it will begin to give you an idea as to what the examination is all about.

The first thing to observe when reviewing the marking schedules is that the great majority of the marks were awarded as single marks or half marks. There was no ‘key point’ that attracted a large number of marks. Consequently, even if you missed several of the ‘points’ that the examiner had woven into the question, you could still pass with a good mark.

The second thing to observe is that in each of the first three sections, namely construction, infringement and novelty, the marks are spread fairly evenly, both among the individual claims, and among the features in each claim. Thus, completing as much of the paper will aid candidates in accessing the marks available.

At the beginning of the infringement section there is reference to the fact that to score marks candidates must refer to the relevant part of the disclosure relating to the infringement, and no marks can be awarded for simply saying that a feature is there without indicating precisely where the feature is to be found. From the nature of the comments in the novelty section it is clear that the same rules apply, and candidates must show exactly where each feature is disclosed for the marks to be scored. Therefore, candidates should ensure that they consistently give page and line references (and sometimes Figure references, or both) when completing these sections.

So, what is it that the examiners want to see in a good attempt at a the FD4 paper? Briefly, the examiners find it easiest to deal with an answer having seven separate sections corresponding to the seven sections of the marking schedule. The sections will be summarised briefly now, and will be discussed in detail in subsequent chapters. It is important to appreciate that the examiners really want to see the candidates’ work product in all of the sections of the answer, and previous examiners’ comments have suggested that it may be, at the very least, extremely difficult to pass FD4 if candidates do not actually get as far as writing the memorandum of advice to the client. So, the examiners would like to see all seven sections of Infringement and Validity • 2018

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1. What is FD4 all about? the marking schedule clearly reflected in your written answer, and you must make sure that you write a memorandum of advice, even if you have to skimp on some of the earlier sections to be able to do this.

The examiners have indicated in the past that they would like to see the answer to the question begin with an initial section simply titled ‘Construction’ or ‘Interpretation’ – with no preface outlining what is to be done. Candidates will do well to note that there are no marks for any sort of introduction in any case so some time can be saved by simply diving straight into writing the meat of your answer. In this section candidates are expected to set out the meaning of the claims, especially selecting for discussion any words or phrases in the claims of the patent that have a meaning that is not totally clear, and where the precise meaning can have an effect on the determination of infringement and/or validity. The precise meaning of each selected word or phrase should be deduced from information provided in the paper, and the meaning should be explained in such a way that when the word or phrase is subsequently compared with a feature in the infringement or in the prior art, it is easy to conclude whether the feature is within the ambit of the claim, or is excluded from the claim. However, it is important that the reasoning behind your interpretation should be outlined, and the information that is the basis for the reasoning should be identified.

You should then discuss the questions of infringement and validity, and it has been suggested that things are often simplest if infringement is dealt with before the question of validity is considered.

As you begin the infringement section the examiners simply expect you to compare the (or each) infringing product or method with the wording of the claim, as interpreted in the initial section, to conclude whether all of the features of the claim are, or are not, found in the infringing act(s). At this stage you should be applying the meaning that you have given to the wording of the claim in construction. The examiner expects candidates to be consistent. However, you must show your reasoning, to demonstrate how you have reached your opinion, again identifying the information that is the basis of your reasoning. Usually the marking schedule has marks for considering one or more specific features of every one of the claims, and so all of the claims should be considered (even if a conclusion of non-infringement is reached with regard to a principal claim) if you are to ‘shoot at’ all of the marks.

The next section that the examiners expect to see should relate to the question of novelty, where the wording of each claim, as interpreted, is compared with at least the closest item(s) of prior art to determine whether the features of the claim are, or are not, found in the prior art.

There may be several potential prior art disclosures, including prior art discussed in the preamble of the patent itself, and other items discussed in the preambles of other patents, as well as the main teaching of the prior patents or other documents brought to your attention. All of these items should be identified, and reasons should be given as to why any irrelevant disclosures are not considered in detail. Again you should show your reasoning, clearly showing the passages of the document you rely on and how you deduce that the feature being considered is present or absent.

It is common in FD4 that more than one prior art item is potentially relevant, and needs close consideration. It may also be necessary to ‘interpret’ a prior art document, to see what it really discloses to the skilled person.

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1. What is FD4 all about?

Subsequently, the question of inventive step should be considered, using a structured approach, and again the marking schedule will carry marks for considering the inventive step of the sub-claims as well as the main claim.

Next, you should at least consider if there are any points of ‘sufficiency’ that should be discussed. It is not unknown for the claims to include references to things that have not been mentioned at all in the body of the specification. Even if the invention(s) of all of the claims is sufficiently described, there is probably a mark for just saying this, and concluding that the specification is sufficient.

Subsequently, you must discuss any possibility of an amendment that can be made to improve the position of the patentee. Even if no amendment is possible, you should outline the amendments that you considered and then discarded, explaining why the amendment did not really improve the situation.

Every year a proportion of the candidates simply do not address the question of internal validity or amendment. However, every year there are marks that are available, and at least some of these marks may be obtained simply by addressing the matter. If sufficiency and amendment are not mentioned at all in your answer the examiner cannot award any marks!

As to what should be present in the memorandum of advice, remember to include: – whether there is a ‘saving’ amendment, and advice on how best to implement this amendment; – noting that the patent is granted and in force, with a relevant comment on renewal fees, – a recommended course of action, – a justification for that course of action, – details on options for taking action in the courts or at the patent office – answers to the questions put to you by the client in their letter, – an indication of any further information that might be needed – and here it will be best to explain how that information may shape or alter your advice, and – comments on any relevant practice points and commercial/portfolio advice.

The marking schedules are a useful study aid in preparing a mental checklist of what advice to give in the examination, in that the same categories of advice come up every year.

And what do the examiners not want to see in an answer to a FD4 paper?

The examiners do not want to see anything that is a waste of time. While, when dealing with a lay client, a full explanation of what an attorney is going to do in connection with any specific matter may be of great value, in the context of the FD4 examination it is irrelevant except in the advice letter (but this you must keep brief because of the time limitations). The examiners do not want to see any sort of preamble or introduction to the answer – which sets out what the candidate is going to do – they just want to see you getting on and doing it. Bear in mind that the examiners are all patent attorneys and so shorthand can be used (as long as it is “common parlance” so to speak).

The examiners will not actually take marks away if you put things in your answer that they really do not want to see, but if you do, you will just be wasting time, and in FD4 time is of the essence. Every minute must be used to try to score marks Infringement and Validity • 2018

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1. What is FD4 all about?

The examiners do not want to see illegible handwriting. The examiners want to give you marks, but can only do this when, from the answer presented, the examiner can see that you deserve the marks.

Some candidates complain about the Infringement and Validity paper on the grounds that it is not really clear what you have to do. The paper does not say that you must consider novelty of Document C or inventive step over Documents D and E. The paper does not say that you are expected to consider ways in which the infringer could ‘design around’ the patent. The criticisms are true, but FD4 is trying to emulate real life. A client seldom asks the questions that ought to be asked, and it is not uncommon for a patent attorney to have to consider a pile of documents to work out which, if any, are relevant to novelty, and which, if any, combinations of documents may be of any use at all in an ‘obviousness’ attack. The attorney often has to work out, from incomplete instructions, what advice the client really needs, and must prepare that advice, quite often against a tight timetable, without any further input from the client.

So, in summary, FD4 is an examination that sets out to test many competencies by presenting a ‘situation’ that involves a patent, an alleged infringement, and some prior art, where there are several points that are ‘finely balanced’ as to whether a specific feature of a claim is present in the alleged infringement and/or in the prior art. There is most usually a reasonable argument that the patent has at least some claims lacking in novelty, and that at least some claims lack inventive step. There is sometimes a minor sufficiency issue, and nearly always room to make some sort of amendment. Even if no amendment can be made that gives a valid infringed claim, there are still marks for analysing the possibilities and reaching that conclusion.

You must address the relevant issues to form an opinion regarding infringement and validity, but you must also clearly indicate your reasons for reaching the opinion. Then a memorandum of advice must be prepared, addressed to the client, and written in language that a client can understand. This memorandum must outline sensible advice that is appropriate on the basis of the conclusions that you have reached on infringement and validity, and also appropriate for the client having regard to the commercial situation.

All of this must be achieved in five hours, which can be a real challenge if you are not used to writing extensively by hand. Time control is a major skill requirement, as many unsuccessful candidates simply run out of time. Practice!!!

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CHAPTER 2

How should I prepare to sit FD4?

Coverage The preliminary steps that you need to take before you attempt the examination will be discussed.

After you have read this chapter you should be aware of: 1. The real challenges involved in FD4.

2. The need to have the necessary skills.

3. The need to be able to identify and address relevant issues.

4. The need for time control.

5. The need to practice.

s we have seen above, FD4 is a challenging examination, which historically has a very low pass rate. The list of Pass Rates on the Patent Examination Board website shows that in the ten years up to 2014 the pass rate has been between 36.45% (2012) and 55.69% (2007) of the candidates. So even in the best year more than 40% of the candidates failed. Even when one takes into account the fact that some people sit the examination year after year, with no real prospect of passing, the pass rate is low. This might be considered to be surprising when one understands that all of the candidates are graduates, and many have been educated to PhD level. The candidates for the examination cannot be considered to be inadequate in any way, but it seems that a significant proportion of them are unable to rise to the challenges presented by Infringement and Validity.

Possibly the greatest difficulty is that this examination is very different from any of the previous examinations that you have sat before, in that there is no single right answer to the paper. This may be the first paper that you have ever sat where ‘showing your workings’ is much more important than reaching any specific ‘right’ conclusion or ‘answer’ to the problem set by the examiner.

The low pass rate has been a cause for concern for many years, and the PEB has published ‘Guidelines’ to be of assistance to candidates. There has also been a review performed at the behest of IPReg by Middlesex University that was published on 6 March 2017.

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2. How should I prepare to sit FD4?

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2. How should I prepare to sit FD4?

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2. How should I prepare to sit FD4?

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2. How should I prepare to sit FD4?

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2. How should I prepare to sit FD4?

The PEB ‘Guidelines’ for the FD4 2015 examination are reproduced on pages 14-17 [candidates should check the PEB website for the most up to date guidelines]: FD4 is an examination that requires some knowledge, but is really an examination that tests skills. The paper is always a race against time. The examination does require you to be able to assimilate information quickly, to marshal that information, and then to write a detailed but terse answer. You must be able to read ‘aggressively’. You are not just reading in a kind I-amwilling-to-understand-what-you-are trying-to-say manner, but instead, you should be reading in a what-could-these-words-possibly-mean manner. You are looking for clues, which may be very small clues, just as if you were a detective. All sorts of small oddities have been included in the paper by the examiners, and you have to find them. Maybe this is the ‘meticulous verbal analysis’ that we have been invited to ‘eschew’ in judicial comment in the past, (see Lord Diplock in the Catnic case), but reading in this way may help you readily to identify the points that you will need to discuss to pass FD4.

The examination is designed so that there is enough time to deal with the essential points, but not enough time to waffle, and not enough time to deal at length with irrelevant points.

To achieve a good mark, the answer should include passages designed to meet all of the sections of the marking schedule. When attempting the FD4 paper you may find it easy to gain the first marks available in each section, but somewhat harder to gain the rest of the marks, demonstrating the law of diminishing returns. Consequently, at least attempting all sections would seem to be a sensible plan, even if some sections are incomplete. If you are sweeping a dusty room, and you have to sweep up the maximum amount of dust in a short time you will probably do better if you roughly sweep the whole area, rather than if you sweep only a part of it to perfection. It is the same with FD4 – if you take the time to do one section absolutely perfectly, you will probably not have left enough time to score a pass mark on the remaining sections. All of this requires good time control, and that can only be achieved with practice.

While doing past papers without any time constraint may be beneficial in the beginning, the need for practice under examination conditions cannot be over-emphasised. Doing a past paper in one two-hour and one three-hour session is not the same as doing it under examination conditions, as there will be time to think and analyse between the sessions. It is by doing past papers within the five hours that you may realise that, for example, you need to practise handwriting, which is something that is not done frequently, in these days of computers and digital dictation. Also by practising on past papers you will be able to assess the problems of timing, and learn the importance of being able to deal with a complex point succinctly, while still covering the major features of the argument. Also you will become familiar with the sort of points that the examiners put into the questions, so that you will be able to identify the points that need discussion when you sit the paper for real.

FD4 has many similarities to the day-to-day work of an attorney. However, in FD4 the ultimate ‘client’ or consumer of your work product is the examiner. You must provide what this ‘client’ wants, and to do that you must be able to put yourself mentally in his/her shoes. The examiner is an attorney of some years post-qualifying experience, and almost certainly holds down a good job in industry or private practice, with expectations that a goodly number of chargeable hours are scored each month.

You can help the examiners (and help them to award you marks) by entering into the spirit 14

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2. How should I prepare to sit FD4? of the examination, overlooking any technical inconsistencies or absurdities (you try writing a scenario for FD4, and see how difficult it is!) and by writing as clearly as possible, so that the examiners do not have to struggle to read your script. Most handwriting can be read more easily if it is double spaced. Also, you can help the examiners by setting out your answer as seven sections corresponding to the seven sections of the marking schedule.

Your paper will be marked by two examiners independently. They then compare the marks awarded, and if there is a discrepancy they will discuss the matter and agree a mark. They will be looking closely at candidates who have marks in the high 40s, to see if they can justify a higher mark. Any scripts where the mark remains in the high 40s will be looked at again by a member of the Patent Examination Board. The examiners really do try hard to ensure that any candidate who has written a script that justifies a pass is actually given a pass.

Being a patent attorney is being part of a service industry, and if you are in a service industry you must be able to work out what the client wants and then be able to provide it. In FD4 it is just the same, but you must understand that the examiner is the client!

Remember, however, that when you are construing, or determining infringement or validity you should be dispassionate, and you should reach the same conclusion regardless of whether your client is the patentee or the infringer. Your client needs to know the situation as it really is.

If there are arguments that one side or the other could run, they may be outlined, but you must try to reach a ‘fair’ conclusion, rather than siding with your client while preparing an opinion.

It is in the memorandum of advice that you can put forward arguments that specifically support your client.

Finally, it cannot be over-emphasised that to pass FD4 you will need the appropriate set of skills, and you will only obtain them by practice, and the most valuable practice is practice under examination conditions.

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CHAPTER 3

How do I begin with the FD4 paper?

Coverage This chapter deals with approaches that can be taken to the FD4 paper.

After you have read this chapter you should be aware of: 1. What to look for when initially reading the paper.

2. How to identify ‘points’ that should be selected for discussion.

3. Techniques that can be used to make the drafting of the answer simpler.

4. The need to be aware of time.

typical FD4 paper is between eight and 20 pages long, and will include, as we have seen, a letter from a client that will outline a problem. Somewhere there will a description of at least one product or method of interest that is ‘the infringement’. There will be at least one patent that could be infringed, and one or more prior art documents. You will have to prepare a memorandum of advice in advance of a meeting.

If you go into the examination without having at least studied some prior papers, it will take you some valuable time to get your bearings, and appreciate what is going on. That is one of the reasons why it is essential that you put in some time to practise on past papers.

As you start to read the paper, bear in mind that all of the documents have been ‘engineered’ by the examiner. They are intended to look realistic, but they are not. The whole situation is only a ‘simulation’. Sometimes things just do not seem real, but you must accept the situation as presented in the paper. It is a bit like going to the pantomime. If you spend all of your time criticising the scenery and complaining that leading man is clearly an attractive young lady, you will not enjoy it. You must suspend disbelief, and enter fully into the simulated and sometimes surreal world of FD4.

The examiners do a good job a making a patent that looks as realistic as possible, but which is, in fact, one of the worst patents you will come across in your career. In the 2007 and 2008 P6 papers the examiner went to the trouble of producing perfectly ‘forged’ patent specifications, with complete front sheets that were almost indistinguishable from genuine patent specifications. However, all of the documents were prepared by the examiners, and had nothing to do with the real patents carrying the patent numbers given in the examination. The only real

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3. How do I begin with a FD4 paper? clue was that the firm of attorneys identified as agents on each document was totally fictional – but how can you be expected to remember the names of all the attorney firms when you are in the examination room?

Always read the preamble to the paper – sometimes it changes, but every year it clearly states that marks are awarded for the points selected for discussion and the reasoning displayed rather than any particular conclusion that is reached.

As you read the actual documents that make up the FD4 paper you may find it easiest in the long run if you mark passages in any of the documents that seem to be important in any way. You might mark any words or phrases that relate to the same points in the same way. Four colours of highlighting pen can be used with words being highlighted, or underlined with a thin line, or surrounded by an oval, or a rectangle, giving 16 options. If more options are needed, then underlining, marking with an oval or a rectangle can be done with pencil or pen giving a further six options. How you mark up the paper will be a personal preference, as too much mark-up will make the paper harder to navigate for some people. It may be worth noting that, if you are going to hand in the claims as one of your answer pages, this will be scanned and reprinted in black and white and so using yellow highlighter will not be reproduced in the scanning/reprinting process.

When reading the paper for the first time it is important to avoid making any hard-and-fast decisions as to what anything in the claims of the patent might mean, as an assumption made on a first reading, which is not subsequently mentally challenged, may reduce the number of marks available. That said, as you read the claims and the paper as a whole, you will start to be able to highlight which of the terms in the claims will need to be construed so this can be a useful exercise.

While it is possible to read the paper from the first page to the last, you may find it very beneficial not to do this. If you do begin at the beginning, and read right through, when you eventually reach the claims of the patent you will have read the description of the patent, and you will have a good idea what the claims are intended to mean, and if you have any tendency at all to read with the ‘I-am-willing-to-understand-what-you-are-trying-to-say’ manner, rather than reading ‘aggressively’ or ‘critically’ you will probably not even ‘see’ many of the problems in the claims, and you will ‘fix’ them subconsciously. You must ‘see’ the problems and comment on them to have a chance of scoring the marks.

In FD4 you can be sure that there are problems with the claims, because the claims have been written to have problems in them. So, you may find it very beneficial when you begin to read the FD4 examination paper to go straight to the allegedly infringed claims, trying hard not to see what is on any of the other pages of the question. Usually there is a checklist of pages on Page 1, and it is often possible to identify the document containing the claims from that checklist, as the claims will certainly not be in the letter from the client, a publicity leaflet, a US patent or a textbook.

It must be a UK or EP patent that is the relevant document. The number of pages of each document is given on the checklist, and as the claims usually begin on the last page of the relevant patent you can make a good guess as to the page of the paper that you need to find. If you can riffle through the pages to get immediately to the claims, you can read them with a ‘clean mind’. First impressions are valuable, and in FD4 your first impressions of the claims may be gold dust. One examination technique tip is, during this first ‘clean’ reading of the claims, use a yellow highlighter to highlight terms in the claims that are prima facie unclear on your first reading and ‘patent words’ such as for example “comprising”, “for”, and relative terms and ranges.

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3. How do I begin with a FD4 paper?

At a first quick reading of the claims you may think: ‘What can possibly be the problem with that?’ – but look again. Are there any words where you have a doubt about their meaning? Are there any words where you think you know what they mean, but it seems somehow not to fit in the context? Are there any ‘difficult’ relative terms (such as ‘high’ temperature, or ‘firmly’ grip)?

Are there any claims, or any part of any claim, that you cannot immediately understand? Are there any words that lack a proper precedent? Are there any words that seem strange? (… a moving scale slidable adjacent a fixed scale…does that mean the first scale is moving all of the time?). Are there words which are used twice but in different contexts ( e.g. the end of the arm… the end of the rib…) Are there any incorrect claim dependencies? Are there any of the examiners ‘patent words’… comprising… characterised in that… for… it (often used in a way that is ambiguous)? Are there numbers, ranges, or specific materials (e.g. polyurethane)? (If you do not appreciate the relevance of all of the ‘problems’ now, do not worry as they will be explained in the following Chapters). Can you draw or sketch the product just by reading the claims?

Many of these ‘problems’ with the claims are often more noticeable if you have not read the patent, and thus have no real idea what the preferred embodiment of the invention looks like.

You must, now that you have read the claims and ‘seen’ some of the problems, make notes, or mark the problem areas of the claims in some way, possibly using coloured markers. If you use light colours, these will not obscure the claims when they are scanned, which will be an advantage if you hand in the page of claims as part of your answer. Why you might wish to do this will be made clear in Chapter 11.

Now, still before you have read the patent, it may be best to compare the claims with each of the prior art documents, and the infringement which is disclosed either in the client’s letter or in another document provided by the examiner, looking, in each case, to see how the language of the claims might be understood to describe or define what is to be seen in each of these disclosures.

How many features in the claims can you see in the infringement and in the prior art? If the claims call for something to be connected to an end of an arm, can you see anything looking like an arm, and anything connected to the end of it, or even connected to it anywhere at all? Maybe there is something connected to it three-quarters of the way along it. Could that be connected in ‘an end region’ of the arm? Maybe the word ‘end’ covers ‘end region’?

If you see anything at all in the infringement or in the prior art that is the same as or resembles a feature, or part of a feature, in the claim, the examiner has put it there for a reason. You must, as you write your answer, come to a logical conclusion as to whether the feature is inside or outside the scope of the claim. Pay particular attention to any second embodiment or modified embodiment or any alternative that is described as usually such disclosures are very relevant in FD4.

You may choose to mark, in the disclosures of the infringement and the prior art, any specific passages, or any parts of the drawings, that show (or even possibly show) ‘features’ found in the claims with the same colours as the corresponding features in the claims. Then, as you come to consider each feature in detail you will be able to find the relevant passages of each document quickly.

At this stage you can read the part of the question that sets out what you are asked to do. This may be contained within the letter from the client, or may be a separate instruction. If you are asked to comment on infringement and validity, or on what happens if company A imports product B, or whether the patent can be amended to catch product Y, be sure to do so, but never forget that Infringement and Validity • 2018

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3. How do I begin with a FD4 paper? while you are asked to do specific things, there is usually at least one ‘unasked question’, which may be amendment, or internal validity, or something that the client should do. In the real world clients often do not know what it is that they need to be told. They have a problem and they know that, but they are not sure of all of the ramifications of the problem and have no idea what the solution might possibly be. They present the patent attorney with information which may be incomplete is some areas, and which may include data that is of no relevance whatsoever. They may ask specific questions, but they will almost certainly not ask all of the questions that they should have asked. It is the job of the attorney to sort out the relevant from the irrelevant, and it is the job of the attorney to answer the questions that have been asked, and also the questions that were not asked but which should have been asked. FD4 attempts to emulate this real-world situation, and so there is usually at least one ‘unasked question’.

As you read the letter from the client be on the lookout for more prior art, or a disclosure about something that has been sold, or a further comment about one of the disclosures that you have already read. If this is the case, look very closely. The additional disclosure may have a very substantial effect on your understanding of the situation, or may raise a question that needs to be answered. Always be very alert in FD4 when information about a single product or embodiment is supplied to you in two places, for example in a ‘document’ and in a comment from the client.

Read the comment from the client as you read the relevant ‘document’, as often the combination of information from the two sources will give you a very valuable insight. Bear in mind, the examiner may not actually tell you that the two sources of information are actually related to the same product. For example, the client’s letter may talk about a product that has been on the market, and the relevant US patent may have turned up in your search. In such a situation the examiner would expect candidates at least to ask a question to see if the US patent does indeed relate to the product that has been marketed.

It may be wise to read all of the material that you have read so far again before looking at the specification of the patent.

Now, finally, you can read the text of the patent and consider the drawings. Again, you may choose to mark the text, and the drawings, with the same colours used to identify the ‘features’ in the claims, to highlight the actual disclosure of those ‘features’ in the specification and drawings of the patent.

It will pay to read the patent a number of times, looking for language that is the same as that used in the claims (even if the language is used in connection with a different feature), and also looking for language that addresses features in the claims, but uses wording different to that found in the claims. Also, can you see any features or concepts that are in the claims, but are not to be found in the specification at all? Are there ‘Statements of Invention’, and do they correspond exactly with the claims? In FD4 there are often discrepancies, and it is important that they are observed, and then dealt with. The examiner has included the discrepancies for a reason!

As you read the paper look for features in each document that are the same as any features in the different embodiments that are ‘on the table’. Something that is the same in the infringement and in the prior art must be dealt with consistently when considering novelty and infringement.

A point of identity between the infringement and the prior art may be an indication that a ‘Gillette’ defence should be considered. The logic of this defence is that if the claim is broad enough to catch the alleged infringement, then it is broad enough to be invalid over the prior art, 20

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3. How do I begin with a FD4 paper? but if the claim is narrow enough to be valid over the prior art, it is too narrow to catch the alleged infringement.

It is worth repeating that in FD4 if ever you come across something that is an ‘alternative’ or ‘modified’ embodiment, look at it very closely indeed, regardless of whether it is in the prior art, or in the infringement. Quite frequently, in FD4, such alternative embodiments are very relevant.

Conclusions that have been made in connection with the main embodiment may have to be totally reversed. Also remember to be very wary of a second independent claim. Such a claim may look superficially as if it has the same restrictions as the first independent claim, but in the FD4 examination this is rarely the situation.

Clearly, you must, while reading the paper, concentrate on the technical features of the infringement, the prior art, the embodiments described in the patent, and those defined in the claims. However, you must also bear in mind that there will be a ‘commercial situation’ which might involve many factors, such as the relative sizes of the contesting parties, prior use, contributory infringement, compulsory licences, and so on. It is easy to think that once you have decided that the patent is valid or invalid, and that it is infringed or not infringed, then the job is done. There is more to FD4 than just infringement and validity. You have to provide sensible advice, in the light of your conclusions, with that advice being appropriate to the ‘commercial situation’.

By now you should have a good idea as to which words or phrases in the claims will prove to be less than totally clear when compared with the relevant features of the ‘infringement’ and the prior art, and should also know where ‘evidence’ can be found as to what these words or phrases might or might not mean.

At this stage you may find it valuable, for your own purposes, for you to set out your strategy for answering the paper by producing a simplified ‘feature comparison chart’ which lists the primary features of the claim (e.g. widget, elbow, connecting end), and then indicates, for example with use of ticks, crosses and question marks, whether any feature of each claim of the patent is clearly present or clearly absent from the ‘infringement’ and each item of prior art. Such a chart can show quite clearly the passages of the claim where some doubt exists, and it is these passages that will need to be selected for detailed consideration. Be careful not to make this too elaborate else you may waste precious time. Not all candidates find this approach useful, but for some it gives a direction to their answer at a relatively early stage in the examination.

In preparing the chart it can be of value to identify and think about the differences between the described embodiment(s) of the patent, and the described examples of the infringement and prior art. If this analysis can be done without using the actual words in the claim, it may help clarify your thoughts on the matter. This can help you keep in your head all of the “interlocking puzzle” that is a typical FD4 paper.

The examiners have made it clear in their ‘Comments’, which are published each year after the papers have been marked, that they do not award marks for simple charts. If you are answering the paper using a table, this would be in relation to the infringement and novelty sections and candidates must remember to cite the page and line references for any features that they find that match the claim element being analysed and also candidates must remember, for features that do not exactly match the claim element, to explain why the features found in the infringing article/prior art document fall within your construction of the relevant claim element.

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3. How do I begin with a FD4 paper?

By the time the reading of the paper is finished, you should be aware of the major points that are in some way contentious and need discussion, and where evidence for use in interpreting these points may be found. You should also be aware of points that do not need detailed discussion, but where words will still need to be interpreted or explained, albeit briefly.

It may take over two hours to read the FD4 paper with the degree of thoroughness necessary to observe and appreciate all of the issues. This may leave 180 minutes to score 100 marks, so you must aim at more than a mark every two minutes, knowing that some of your writing will not actually score marks. Some candidates are able to read and process the information faster than this so it is essential to practise as many papers as possible to gauge how much time you need to process the information presented to you in the examination. Certainly, different techniques exist in terms of how to process and read the paper, for example some candidates first read the claims and highlight any unclear terms and “patent words”, then read the description of the patent and re-review the claims and highlight any further terms in need of construction, then write their construction section with space to add further construction, and only then read the alleged infringement document and do their infringement analysis, and then read the prior art and do their novelty and inventive step analysis. Only by practising the past papers and trying different techniques will you find an optimum technique to fit your reading and writing speed and how your brain works. As we have seen there are typically a lot of little points, all having between half a mark and two marks.

Can you now just time yourself as you write for two minutes about anything you like?

You will probably find that you have written between 100 and 200 words. That is the number of words that you can devote to any specific ‘point’ when answering FD4. You must be able to develop a terse style to enable you to concentrate on the relevant points, without descending into waffle.

When working on the FD4 paper you can find yourself ‘hopping’ from one document to another and you may find handling the documents difficult in view of the relatively small desk space available.

In the matter of desk space provided, FD4 does not emulate real life at all, and when practising under examination conditions candidates should bear this in mind. Try to mark off an area about one metre wide by 80 cm deep, and only use that area, and possibly the floor-space adjacent your chair, as you practise.

The FD4 paper is delivered to you as single set of pages, even though those pages comprise several separate documents. Some people find it useful to take some strong paperclips into the examination for holding together the pages of the various documents – this can prevent timewasting page muddling. Others take a hole punch, and a ring-file with coloured pages to act as document separators. If you are working on more than one section of your answer at a time – for example if you find it easiest to deal with the inventive step of each claim immediately after considering novelty – then you may also find strong paper clips useful for holding the various sections of you answer together.

Before we start considering in detail how you should begin to write your answer to the FD4 paper, you should have in your mind an idea as to how you are to refer to the different documents provided by the examiner. If they are already labelled by the examiner A, B, C, etc, then just use those identifier letters. Otherwise you might like to write a sheet, which you will hand in with your answer, giving a letter code to identify each document, just to save you having to write things like USP 4,500,099 or even just ‘099 a multitude of times.

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CHAPTER 4

How do I begin to tackle interpretation?

Coverage The need for ‘interpretation’ or ‘construction’ is discussed, and interpretation techniques for use in ‘the real world’ and in ‘the FD4 world’ are considered.

After you have read this chapter you should be aware of: 1. The need for interpretation and interpretation techniques.

2. The constraints attached to interpretation in FD4.

3. The need to find evidence within the relevant documents to support an interpretation in FD4.

consideration of the paper entitled ‘Claim Construction’ in the book Fundamentals of Patent Drafting by Paul Cole (if you are not familiar with this paper, please read it now, before continuing with the present chapter!) traces the history of interpretation in the UK up to the decision of the House of Lords in the Kirin-Amgen case, and also considers the different approach used in the US. In FD4, as in the real world, it is necessary to ‘interpret’ a claim so as to express or define the real meaning of the claim, in order to determine if another item or process is, or is not, within the scope of the claim. In the real world the patent draftsman attempts to choose claim language that encompasses all reasonable possibilities while setting a clear boundary between what is inside the claim, and what is not inside the claim, but sometimes the attempt falls short of the mark.

In contrast, in FD4 the examiner is often attempting to draft the claim in such a way that it is not at all clear where the boundary of the claim really lies. Generally, when the claims in the FD4 paper are read for the first time they look very plausible, and the initial reaction might very well be ‘So where is the problem?’, but a second and third reading can often reveal areas where the claims are less than totally clear, and, when the prior art and the infringement are considered, further points where the claims can give rise to difficulties can be spotted.

But first of all, what is this ‘interpretation’ and how is it actually done?

The word ‘interpret’ means ‘to explain the meaning of words’ and this cannot really be done by using the words themselves. So, ideally, the words of the claim should be explained using other words or synonyms, but, most importantly, your explanation must be justified on the

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4. How do I begin to tackle interpretation? basis of ‘evidence’ in the specification. It does, in a way, seem strange that a first set of words, carefully chosen by a patent draftsman, and often the result of careful thought, and closely reasoned discussions between the patent draftsman and the inventor, should be explained or amplified with other words, and the claim, as explained in this way should then be applied to the potentially novelty-destroying item, or to the potentially infringing item, to determine the important questions of validity and infringement. However, that is the way it is, and the important thing to note, from the point of view of sitting FD4, is the use of different words or synonyms. If you simply repeat the language of the claim, saying, for example, that “end” clearly means “end”, then there has been no interpreting in the sense of explaining the meaning of words, and no reasoning has been displayed. In the examination, if you do find yourself repeating the same words as used in the claim in order to interpret the claim language, you are not likely to score any marks (even if you repeat the claim wording in a different order, a common mistake)!

The examiner is looking for an explanation as to what the words in the claim mean on the basis of evidence found in the paper. Dictionary definitions of specific words do not score marks, and it seems that they just serve to irritate the examiner. You will do much better to find some evidence as to what the words might mean. The evidence may be ‘thin’ – the way the word is used in context, or ‘this is how it is shown in the drawings’ – but some evidence should be found if at all possible.

You must show exactly where the ‘evidence’ is (e.g. Page 4 line 2) and preferably ‘quote’ it (e.g. “the support stay is connected to the end of the arm”) and explain it (e.g. because the support stay is separated from the utmost end of the arm by the rubber ferrule 12, as can be seen in Fig.1, and so ‘end’ must mean ‘end region’ and not the point of termination). In FD4 the marks

generally go for ‘reasoning’ and, to reason, you need some ‘evidence’ and then some logic. Here you have shown, as evidence, the fact that the support stay is separated from the utmost end by the ferrule, and you have shown that this evidence is found in Fig.1. You have then reached a conclusion. The use of the word ‘because’ may help you to reason, and not just make statements.

Just to clear up a point of confusion, ‘interpretation’ and ‘construction’ are terms that are synonymous. When a claim is ‘construed’ or ‘interpreted’, the intention is to set out the real meaning of the claim, often with specific attention being given to the location of the boundary of the claim in certain regions which are of interest as a consequence of the disclosure of the prior art, or the precise nature of the alleged infringing act.

But this still does not explain exactly how ‘interpretation’ is really approached, either in real life, or in the somewhat artificial world of FD4.

It all begins with section 125 of the Patents Act 1977 (as amended), but it also involves a Protocol which is part of the European Patent Convention, and additionally involves enough case law to fill a library.

Section 125 (correcting the printer’s error) says that an invention… shall be taken to be that specified in a claim of the specification… as interpreted by the description and any drawings contained in that specification… and also indicates that… the Protocol on the interpretation of Article 69 of the European Patent Convention… shall… apply.

So the law states that the claims are to be ‘interpreted by the description… and drawings…’ but this does not really explain what is to be done, and reference has to be made to a ‘protocol’.

The Protocol under Article 69 is, in itself, a most strange definition or yardstick. Effectively, 24

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4. How do I begin to tackle interpretation? it sets out two end points, and says that the desired position is somewhere between the two end points, but does not really say precisely where. Of course, this is because it is, in reality, impossible to pre-define how to ‘interpret’.

Looking more closely at the Protocol it says that a claim is not to be interpreted to mean ‘that defined by the strict literal meaning of the wording used in the claims, (with) the description and drawings being used only for the purpose of resolving any ambiguity found in the claims.’

The Protocol also says that a claim should not ‘serve only as a guideline’.

Finally, the Protocol indicates that when interpreting a claim it is appropriate to take ‘a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties.’ The fact that a large proportion of patent disputes, especially infringement actions, revolve about the precise meaning of one or more claims, and the exact position of the boundary set by the claims, shows that the reasonable degree of legal certainty may be more of a wish than a reality.

With the introduction of EPC 2000 the Protocol was expanded, and now includes the requirement that ‘due account shall be taken of any element which is equivalent to an element specified in the claims’. Well, those words all seem quite clear, but what does this mean in real life? We will probably have to wait several years until there have been some cases in which the significance of these words is decided by the courts before we have any real idea.

Paul Cole, in Fundamentals of Patent Drafting looks at the question of claim interpretation or construction in the light of decisions in the US, the UK, and the EPO. For the purposes of FD4 we are only interested in the UK approach to interpretation.

Most academic discussions on interpretation from the UK point of view discuss items such as the Catnic case where the concept of ‘purposive construction’ made a first appearance, and the Improver case, where a slightly modified version of the ‘questions’ used in the Catnic case was set out. The questions have now become known as the ‘Protocol Questions’ even though the questions were initially posed before the Protocol was written. Added to this, we now have the Actavis case, which will be relevant for the 2018 paper onwards but is very new case law and it will be of great interest to the profession as a whole how this case will change practice and how further case law will clarify the position on equivalents.

The questions pre-suppose that there is a ‘variant’ of the invention that needs to be considered, and this can be recognised as something that differs from the subject-matter of the claim as initially understood, but which somehow can still be considered to utilise the invention.

The questions are: 1) Does the variant have a material effect upon the way the invention works? If yes the variant is outside the claim. If no – 2) Would this (i.e. that the variant had no material effect) have been obvious at the date of publication of the patent to a reader skilled in the art. If no the variant is outside the claim. If yes – 3) Would the reader skilled in the art nevertheless have understood from the language of the claim that the patentee intended that strict compliance with the primary meaning was an essential requirement of the invention. If yes, the variant is outside the claim.

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4. How do I begin to tackle interpretation? supposes that the person skilled in the art is told about ‘the variant’ on the date of publication of the patent and is asked if the variant has a material effect on the way the invention of the patent works, i.e. doe the variant work the same way as the patented invention, and is asked if this (that it works the same way) is immediately apparent.

This precedent was followed for many years, but the situation seems to have undergone a sea-change following the decision in Kirin-Amgen. However, there have been a few subsequent developments, and so we will initially consider the Kirin-Amgen case and then consider the subsequent effect of the decision in Ancon Limited and ACS Stainless Steel Fixings, Limited [2009] EWCA Civ 498 – see www.bailii.org/ew/cases/EWCA/Civ/2009/498.html.

As mentioned in Chapter 1, the Kirin-Amgen case is a relatively complex biotechnology case, but the judgment includes passages which set out the latest approach to interpretation.

The opening paragraphs of the judgment set out the views of Lord Hoffmann, who had extensive experience as a Patents Judge in his younger days.

Initially, the decision summarises historically the approach to interpretation taken by the British courts. The ‘Protocol Questions’ are described as a guideline that does not set out any binding principle. Perhaps the flavour of the new approach as set out in the judgment can be gained by considering the following passages (with emphasis added). Paragraph 32 states: 32. Construction, whether of a patent or any other document, is of course not directly concerned with what the author meant to say. There is no window into the mind of the patentee or the author of any other document. Construction is objective in the sense that it is concerned with what a reasonable person to whom the utterance was addressed would have understood the author to be using the words to mean. Notice, however, that it is not, as is sometimes said, “the meaning of the words the author used”, but rather what the notional addressee would have understood the author to mean by using those words. The meaning of words is a matter of convention, governed by rules, which can be found in dictionaries and grammars. What the author would have been understood to mean by using those words is not simply a matter of rules. It is highly sensitive to the context of and background to the particular utterance. It depends not only upon the words the author has chosen but also upon the identity of the audience he is taken to have been addressing and the knowledge and assumptions which one attributes to that audience.

Paragraph 33 begins…

33. In the case of a patent specification, the notional addressee is the person skilled in the art. He (or, I say once and for all, she) comes to a reading of the specification with common general knowledge of the art. And he reads the specification on the assumption that its purpose is to both to describe and to demarcate an invention – a practical idea which the patentee has had for a new product or process – and not to be a textbook in mathematics or chemistry or a shopping list of chemicals or hardware.

It is this insight which lies at the heart of “purposive construction”.

And paragraph 34 begins…

34. “Purposive construction” does not mean that one is extending or going beyond the definition of 26

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4. How do I begin to tackle interpretation? the technical matter for which the patentee seeks protection in the claims. The question is always what the person skilled in the art would have understood the patentee to be using the language of the claim to mean. And for this purpose, the language he has chosen is usually of critical importance. The conventions of word meaning and syntax enable us to express our meanings with great accuracy and subtlety and the skilled man will ordinarily assume that the patentee has chosen his language accordingly. As a number of judges have pointed out, the specification is a unilateral document in words of the patentee’s own choosing. Furthermore, the words will usually have been chosen upon skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. On the other hand, it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new; which has not existed before and of which there may be no generally accepted definition. There will be occasions upon which it will be obvious to the skilled man that the patentee must in some respect have departed from conventional use of language or included in his description of the invention some element which he did not mean to be essential. But one would not expect that to happen very often.

Paragraph 47 commences...

47. The Protocol, as I have said, is a Protocol for the construction of Article 69 and does not expressly lay down any principle for the construction of claims. It does say what principle should not be followed, namely the old English literalism, but otherwise it says only that one should not go outside the claims.

It does, however, say that the object is to combine a fair protection for the patentee with a reasonable degree of certainty for third parties. How is this to be achieved? The claims must be construed in a way which attempts, so far as is possible in an imperfect world, not to disappoint the reasonable expectations of either side. What principle of interpretation would give fair protection to the patentee?

Surely, a principle which would give him the full extent of the monopoly which the person skilled in the art would think he was intending to claim. And what principle would provide a reasonable degree of protection for third parties? Surely again, a principle which would not give the patentee more than the full extent of the monopoly which the person skilled in the art would think that he was intending to claim. Indeed, any other principle would also be unfair to the patentee, because it would unreasonably expose the patent to claims of invalidity on grounds of anticipation or insufficiency.

You can see that the thread that is running through these passages is that the words of a claim are to be taken to mean what the notional addressee would have understood the author to mean by using those words.

In the context of a patent the notional addressee is the person skilled in the art. It is unusual for a patent attorney ever to meet a real person skilled in the art. Patent attorneys usually deal with inventors, or managers of research departments, or directors of companies. None of these people are considered to be persons skilled in the art, as they have too senior a position, or they have an inventive bent. In Smith International Inc v Specialised Petroleum Services Group [2005] EWHC 686 (Ch) – see www.bailii.org/ew/cases/EWHC/Ch/2005/686.html – the evidence of one witness (to the effect that the invention was obvious) was discounted, as that witness was the head of a team of designers, and so was not a simple person skilled in the art. On the other hand, in BOS GmbH & Co KG v Cobra UK Automotive Products Division Ltd [2012] EWPCC 38 – Infringement and Validity • 2018

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4. How do I begin to tackle interpretation? see http://www.bailii.org/ew/cases/EWPCC/2012/38.html – it was argued that a witness who had several patents to his name was too inventive to be able to assist the court on the question of obviousness. However, it was held that, as a matter of principle, the fact that a witness has been named as an inventor on one or more patents does not disqualify the witness from giving such evidence. The witness was considered to be seeking to assist the court in appreciating what an uninventive skilled person would do and would think.

So, we reach a situation where, in order to interpret the claim we have to deduce what the person skilled in the art, who does not have an inventive bent, and who must be considered to be ‘ordinary’, would think the patentee was intending to claim when using the claim language found in the patent.

Bear in mind that the application of the principles set out in Kirin-Amgen can lead to some rather startling conclusions. In University of Queensland v Siemens [2007] EWHC 2258 (Pat) – see www.bailii.org/ew/cases/EWHC/Patents/2007/2258.html, it was held that the phrase ‘prior to shimming’ that appeared in a claim actually meant ‘after shimming’, as to reach any other conclusion would result in a meaningless claim. So black can now mean white in the appropriate circumstances!

The Kirin-Amgen decision, coming from the House of Lords, is a binding precedent, but the Court of Appeal has ‘illuminated’ this precedent by issuing further decisions that give guidance on interpretation.

The first decision we will look at is Ancon Limited and ACS Stainless Steel Fixings. In this decision Lord Justice Jacob set out a set of principles. He actually said (under the heading of ‘Principles of Claim Construction’): I summarised the applicable principles in Technip France SA’s Patent [2004] RPC 46. They were approved in Kirin-Amgen, subject to a minor qualification (see per Lord Hoffmann at [33]). Pumfrey J adapted my earlier summary to take account of that criticism in Halliburton v Smith [2006] RPC 25 at [68]. What he said there is an accurate summary of the current law. (a) The first, overarching principle, is that contained in Article 69 itself. Sometimes I wonder whether people spend more time on the gloss to Article 69, the Protocol, than to the Article itself, even though it is the Article which is the main governing provision. (b) Article 69 says that the extent of protection is determined by the terms of the claims. It goes on to say that the description and drawings shall be used to interpret the claims. In short, the claims are to be construed in context. (c) It follows that the claims are to be construed purposively — the inventor’s purpose being ascertained from the description and drawings. (d) It further follows that the claims must not be construed as if they stood alone — the drawings and description only being used to resolve any ambiguity. The Protocol expressly eschews such a method of construction but to my mind that would be so without the Protocol. Purpose is vital to the construction of claims.

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4. How do I begin to tackle interpretation? (e) When ascertaining the inventor’s purpose, it must be remembered that he may have several purposes depending on the level of generality of his invention. Typically, for instance, an inventor may have one, generally more than one, specific embodiment as well as a generalised concept. But there is no presumption that the patentee necessarily intended the widest possible meaning consistent with his purpose be given to the words that he used: purpose and meaning are different. (f) Thus purpose is not the be-all and end-all. One is still at the end of the day concerned with the meaning of the language used. Hence the other extreme of the Protocol – a mere guideline – is also ruled out by Article 69 itself. It is the terms of the claims which delineate the patentee’s territory. (g) It follows that if the patentee has included what is obviously a deliberate limitation in his claims, it must have a meaning. One cannot disregard obviously intentional elements. Hoffmann LJ put it this way in STEP v Emson [1993] RPC at 522 : ‘The well-known principle that patent claims are given a purposive construction does not mean that an integer can be treated as struck out if it does not appear to make any difference to the inventive concept. It may have some other purpose buried in the prior art and even if this is not discernible, the patentee may have had some reason of his own for introducing it.’

(h) It also follows that where a patentee has used a word or phrase which, acontextually, might have a particular meaning (narrow or wide) it does not necessarily have that meaning in context. A good example of this is the Catnic case itself — ‘vertical’ in context did not mean ‘geometrically vertical’, it meant ‘vertical enough to do the job’ (of supporting the upper horizontal plate). The so-called ‘Protocol questions’ (those formulated by Hoffmann J in Improver v Remington [1990] FSR 181 at p.189) are of particular value when considering the difference of meaning between a word or phrase out of context and that word or phrase in context. At that point the first two Protocol questions come into play. But once one focuses on the word in context, the Protocol question approach does not resolve the ultimate question — what does the word or phrase actually mean, when construed purposively? That can only be done on the language used, read in context. (i) It further follows that there is no general ‘doctrine of equivalents.’ Any student of patent law knows that various legal systems allow for such a concept, but that none of them can agree what it is or should be. Here is not the place to set forth the myriad versions of such a doctrine. For my part I do not think that Article 69 itself allows for such a concept – it says the extent of protection shall be determined by the terms of the claims. And so far as I can understand, the French and German versions mean the same thing. Nor can I see how the Protocol can create any such doctrine. (j) On the other hand purposive construction can lead to the conclusion that a technically trivial or minor difference between an element of a claim and the corresponding element of the alleged infringement nonetheless falls within the meaning of the element when read purposively. This is not because there is a doctrine of equivalents: it is because that is the fair way to read the claim in context.

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4. How do I begin to tackle interpretation? (k) Finally purposive construction leads one to eschew what Lord Diplock in Catnic called (at p.243): ‘the kind of meticulous verbal analysis which lawyers are too often tempted by their training to indulge.’

Pedantry and patents are incompatible. In Catnic the rejected ‘meticulous verbal analysis’ was the argument that because the word ‘horizontal’ was qualified by ‘substantially’ whereas ‘vertical’ was not, the latter must mean ‘geometrically vertical.’

I would diffidently add three observations of my own. The first is merely the trite principle that the addressee of the specification is the person skilled in the art, who approaches the document with the common general knowledge. Secondly, there may be obscurities and difficulties in a claim that cannot be resolved by an appeal to context. It is very rare that some sensible meaning cannot be attributed to the words used in a patent claim, but where a claim permits alternative interpretations it is possible to be left with no alternative but to take the most straightforward.

Finally, and most importantly, over-meticulousness is not to be equated to carefulness. Care in working out what the patentee was aiming at when he chose the words he used is absolutely necessary.

It is to be understood that these principles are really put forward as an ‘explanation’ of what was implicit in the Kirin-Amgen decision, and so does not depart from that decision in any way.

Further decisions from the Court of Appeal are also of value in trying to understand how to approach claim construction. These decisions illustrate some of the reasoning that the Court has followed to show why a specific construction has been adopted.

The following decisions that we will consider deal with the question of whether the skilled person does, or does not, have any knowledge of patent law.

Virgin Atlantic Airways Limited and Premium Aircraft Interiors UK Limited [2009] EWCA Civ 1062 – see www.bailii.org/ew/cases/EWCA/Civ/2009/1062.html discusses the knowledge of the skilled reader, and in particular whether the skilled reader has any knowledge of patent law.

The decision sets out an abbreviated version of the principles of construction as generally approved in Kirin-Amgen and as set out immediately above in the extract from the Ancon decision. The judgment then continues: 6. So far so good. Those are the general principles. But as stated they do not explicitly cover three matters with which we are concerned. They are related and involve this question: how much of the law and practice of the patent system is the skilled reader supposed to know and thus take into account when he is trying to work out what, by the words of his claim, the patentee was intending to mean?

7. The first matter relates to the use of numerals in a patent claim. Rule 29 (7) of the Implementing Regulations to the EPC provides that if the application contains drawings: “… the technical features mentioned in the claim shall preferably, if the intelligibility of the claim can thereby be increased, be followed by reference signs relating to these features and placed between parentheses. These reference signs shall not be construed as limiting the claim.”

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4. How do I begin to tackle interpretation?

8. So the question is this: does the skilled reader take into account that the patentee, when putting numerals into his claim, knew that they would not be used by the skilled reader to limit his claim?

Must he be taken to know this rule?

9. The next matter follows from the use of a two-part claim, the so-called “pre-characterising” and “characterising” parts. Again the question arises because of a rule of the Implementing Regulations.

Rule 29(1) says: “The claims shall define the matter for which protection is sought in terms of the technical features of the invention. Wherever appropriate, claims shall contain: (a) a statement indicating the designation of the subject-matter of the invention and those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, are part of the prior art; (b) a characterising portion – preceded by the expression “characterised in that” or “characterised by” – stating the technical features which, in combination with the features stated in sub-paragraph (a), it is desired to protect.”

Does the skilled reader, when he sees such a two-part claim, take this rule into account so that he at least expects the pre-characterising portion to describe matter which is part of the prior art?

10. Finally, there is a somewhat more general question (because there is no express rule about drafting or construction involved) of whether the skilled reader will know about the practice of divisional applications. It arises because the Patent is a divisional and says so. If the skilled reader does know about the divisional system (provided for by Article 76 of the EPC, implemented by Article 25 of the Implementing Regulations) that may affect his understanding of a claim because he will know that there are, or may be, aspects of what is described in the patent which are actually claimed in some other patent or patents divided out from the original application.

Here the Court is clearly setting out three questions that need to be answered before the claims can be fairly construed. These questions were not explicitly addressed in Kirin-Amgen, but nevertheless, as we will see, the Court tries its best to show that the decision it reaches is within the precedent of the Kirin-Amgen decision. The judgment continues: 11. We think the answers to these questions follow from Kirin-Amgen itself. The notional skilled reader is to be taken as knowing these matters and bringing them to bear when he considers the scope of the claim. We say that for the following reasons: 12. First, in Kirin-Amgen itself Lord Hoffmann said that the skilled reader: [33] … reads the specification on the assumption that its purpose is to both describe and demarcate an invention – a practical idea which the patentee has had for a new product or process.

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4. How do I begin to tackle interpretation?

And: [34] … it must be recognised that the patentee is trying to describe something which, at any rate in his opinion, is new ..

13. So the skilled reader is taken to suppose that the patentee knew some patent law – that his claim is for the purpose of defining the monopoly and that it should be for something new. Knowledge of that may well affect how the claim is read – for instance one would not expect the patentee to have used language which covered what he expressly acknowledged was old.

This concept that the skilled person does have some appreciation of patent law may be considered to be new. In Improver Corp v Remington, the Judge (Hoffmann J – later to be the Lord Hoffmann who wrote the Kirin-Amgen decision), said ‘I do not think that the hypothetical skilled man is also assumed to be skilled in patent law…’ and drew the conclusion that the reader would think that the patentee had intentionally limited himself to the helical spring, thus excluding the slitted rubber rod from the claim.

It may well be that the skilled person may now be considered to have some general knowledge of patent law, while not being a patent ‘expert’.

Nevertheless, this decision of the Court of Appeal does indicate that the skilled person does have at least some knowledge of patent law. How does the decision develop? It continues: 14. Moreover as Lord Hoffmann said at [34]: [34] … The words will usually have been chosen on skilled advice. The specification is not a document inter rusticos for which broad allowances must be made. [Inter rusticos is ‘legal Latin’ and means between rustics, or between illiterate people. It is usually used with regard to deeds or agreements made without professional help, where a more equitable interpretation approach might be taken.]

15. We think it would unrealistic – indeed perverse – for the law to say that the notional skilled reader, probably with the benefit of skilled advice, would not know and take into account the explicit drafting conventions by which the patent and its claims were framed. Likewise when there is a reference to the patent being a divisional application, it would be perverse to work on the basis that the skilled man would not know what that means. A real skilled man reading a patent which, as in the case of the Patent, refers to “the parent application” would surely say “what’s a parent application?” – and he would go on to ask a man who knows, probably a patent agent.

16. It follows that we need to address what the skilled man would actually make of the two explicit drafting rules. As regards Rule 29(7), Laddie J in Telsonic AG’s Patent [2004] R.P.C. 38, § 26 said that: “Reference numerals… are designed to be, and can be, useful tools to elucidate the inventor’s intention. As such they may, depending on the circumstances, help to illustrate that the inventor intended a wide or narrow scope for his claim. On the other hand, they cannot be used to import into the claim restrictions which are not foreshadowed by the language of the claim itself.”

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4. How do I begin to tackle interpretation?

17. We think that is not quite right. In particular, we do not think that numerals should influence the construction of the claim at all – they do not illustrate whether the inventor intended a wide or narrow meaning. The patentee is told by the rule that if he puts numerals into his claim they will not be used to limit it. If the court subsequently pays attention to the numbers to limit the claim that is simply not fair. And patentees would wisely refrain from inserting numbers in case they were used against them. That is not to say that numbers are pointless. They help a real reader orient himself at the stage when he is trying to get the general notion of what the patent is about.

He can see where in the specific embodiment a particular claim element is, but no more. Once one comes to construe the claim, it must be construed as if the numbers were not part of it. To give an analogy, the numbers help you get the map the right way up, they do not help you to read it to find out exactly where you are.

18. Next, the two-part claim structure. The EPO Boards of Appeal have had a little to say about this.

In Siemens/Electrode Slide (T06/81) the applicant had put into his original pre-characterising clause material which was not in fact part of the prior art. He was allowed to amend so as to put that material into the characterising part. The Board said: 2.2. Under Rule 29(1)(a) of the Implementing Regulations to the EPC, the preamble of a twopart (independent) claim must contain the technical features of the subject-matter of the claim which, in combination, are part of the prior art. In principle, therefore, it may be assumed that the features included by the applicant in the preamble to the claim as filed, in combination with one another, are no longer new. On the other hand, the claim as originally worded must not be regarded as a binding statement as to the novelty of those features, but simply as an attempt to summarise the essential features of the invention. In the view of the Board, the question of which features are known and hence to be included in the preamble in the event of the application being successful must be decided purely in the light of the objective facts of the case.

19. In Boehringer/Diagnostic Agent (T99/85), a feature of the invention which in fact conferred novelty had been put into the pre-characterising clause. The Board held this did not matter and it did not have to be moved into the characterising clause. The official headnote puts it this way: 3. In the opposition proceedings there is no reason officially to insist on a change in the wording of the claim simply because one feature in the preamble to a two-part claim does not belong to the state of the art (Rule 29(1)(a) EPC).

The Board itself said: [4] In establishing the novelty of the subject-matter of the disputed patent it was indeed shown that the feature stated in the opening part of Claim 1… does not, as the appellants claim, belong to the state of the art… in conjunction with the other features in the preamble. Nevertheless, the Board sees no reason for it solely on this account, to insist, that the wording of a patent claim already granted should be amended. The Board takes Rule 29(1) EPC for what it is – an Infringement and Validity • 2018

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4. How do I begin to tackle interpretation? implementing regulation, primarily relevant to the patent grant procedure and therefore no more constituting a ground for opposition than for example Article 84 EPC (reference to T 23/86 of 25 August 1986, OJ EPO 1987, 316). Claim 1 can therefore be maintained in the text as granted.

20. From this Mr Vanhegan invited us to conclude that the skilled reader would have no, or at the very least only a slight presumption, that the pre-characterising portion of a claim was describing what the patentee considered to be old. He particularly emphasised the Board’s statement that it is “primarily relevant to the patent grant procedure.” Mr Meade on the other hand submitted that when the skilled man sees a pre-characterising clause he will strongly incline to the view that the skilled man saw that as being old. And that inclination will be reinforced (perhaps steepened is a better word) where the clause concerned is clearly said by the patentee to be based on prior art which he specifically acknowledges.

21. We accept Mr Meade’s contention. Even without a two-part claim structure, because the skilled reader knows that the patentee is trying to claim something which he, the patentee, considers to be new, he will be strongly averse to ascribe to the claim a meaning which covers that which the patentee acknowledges is old. And if the patentee not only acknowledges that a particular piece of prior art is old but then has a pre-characterising clause which is fairly obviously based on it, the skilled reader will be even more strongly inclined to read that clause as intended to describe that old art.

It is interesting that the Court analyses several decisions, some from the EPO, to explain why the skilled person would construe the claim in a specific way. In other words, the Court is emphasising that skilled person has more than a basic grasp of the principles of patent law.

The decision does include a paragraph that relates to the realisation of the situation in a divisional case which says: Now it is of course true that the only specific embodiment is a flip-over bed/seat. And, because that would strike the notional skilled reader as a good idea, he would expect it to be patented somewhere.

But because he knows (see above) that the patentee has divided out what is in this patent from a parent application he would not necessarily expect that to be done in this patent.

This decision can help you in FD4, as it may provide you with reasons to support any conclusions that we reach. For example, even if the skilled person has only a hazy knowledge of patent law, they will appreciate that the claims seek to differentiate the invention from the prior art, and so the skilled person would tend to construe the claims in such a way that prior art that was known to the patentee was excluded from the monopoly claimed. So it may be appropriate to say that a feature in the claim is narrow, because if it were broad, the claim would be anticipated by the acknowledged art, by the art cited during prosecution, or by the common general knowledge.

Certainly, if the FD4 examiner produces a case with a two-part claim, with a novel feature in the preamble, the case gives a clear guideline. Really, when in the British courts, it seems that 34

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4. How do I begin to tackle interpretation? the two- part form and the reference numerals have no significance at all, and one just reads the claim as if the ‘characterised in that’ phrase was ‘wherein’, and the numerals simply were not there. If you do have to construe a ‘European’ claim with numerals and ‘characterised in that’ there will be marks for saying that the skilled person knows that while the ‘characterised’ may be expected to divide an acknowledgement of the prior art from the new or inventive part of the claim, this is not necessarily so, and while the numerals may help identify the components of the preferred embodiment specified by the phrases of the claim, the numerals must not be used to limit the claim in any way.

However, even though the Virgin Atlantic case indicates that the skilled person does have some knowledge of patent law, it does not mean that in every situation the claim must be read to distinguish the claim from prior art known to the applicant and acknowledged in the patent.

In Tate & Lyle Technology Ltd v Roquette Frères [2010] EWCA Civ 1049 (www.bailii.org/ew/cases/ EWCA/Civ/2010/1049.html) it was concluded that even though the skilled reader knows that the patentee is trying to claim something that is new, and will be averse to ascribe the claim a meaning which covers that which the patentee acknowledges as old, there is no rule that because prior art is referred to in the specification, the prior art cannot be found to have anticipated the invention claimed.

In Ranbaxy (UK) Limited v AstraZeneca AB [2011] EWHC 1831 (Pat) – see www.bailii.org/ew/cases/EWHC/Patents/2011/1831.html – the law set out in Kirin-Amgen and in Virgin Atlantic Airways was confirmed, and the skilled person was said to appreciate that a Swiss-type claim should be construed as being directed to the use as an active ingredient for the manufacture of a medicament that includes that ingredient, as to construe the claim otherwise in the case would render the claim vulnerable to an attack of insufficiency. Thus, the skilled person may be expected to construe the claim in a way that makes the claim valid, if this is possible, and also has a fairly detailed knowledge of patent drafting conventions.

In BOS GmbH & Co KG v Cobra UK Automotive Products Division Limited, it was held that the skilled reader would not disregard a particular feature in the claim, satisfying the principle that a feature cannot be treated as ‘struck-out’ even if this does not appear to make any difference to inventive concept. The feature may have some purpose, and the patentee may have had some reason of his own for introducing it into the claim.

The BOS GmbH case also touches on the question of the ‘common general knowledge’ of the skilled person. It is considered to be all of the knowledge that is generally known and generally regarded as a good basis for further action by the bulk of those engaged in the art. While the skilled person was considered to know of the existence some earlier products similar to the invention, that knowledge did not extend to the inner workings of those products.

The cases discussed above have been selected from many that relate to this point, to give a ‘flavour’ of the judgments. So, the skilled person is non-inventive but has ‘the common general knowledge’ of the relevant art (which will be discussed in more detail below) and also has quite a lot of ‘patent’ knowledge, or would be expected to ask a patent attorney if a point arose that was not immediately understood, like a reference to a ‘parent’ application. The skilled person expects the claims to define something the inventor thought was new, and will know that subclaims are meant to lie within the scope of a claim from which they depend, and are narrower in some respect than the claim or claims from which they depend, giving rise to the ‘repercussive Infringement and Validity • 2018

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4. How do I begin to tackle interpretation? effect’. (The ‘repercussive’ effect can be explained with an example. Claim 1 says there is a ‘fastener’. Claim 2 says no more than the ‘fastener’ is a bolt. The argument is that the word ‘fastener’ in claim 1 must be understood to include ‘a bolt’, and additionally must include something other than ‘a bolt’ such as a screw, or a rivet, because claim 1 must be broader than claim 2, and if ‘fastener’ meant ‘bolt and nothing but a bolt’, then claim 1 and claim 2 would have the same scope). The skilled person knows about divisional applications, Swiss-form claims, ‘European’ claims, and various specific standard drafting/interpretation conventions that will be mentioned below. However, the skilled person also knows that the meaning of each claim must be found in the words of the claim, and words cannot just be ignored, especially if they are words that constitute a restriction in the claim.

Further, in the decision in Actavis UK Limited and others (Appellants) v Eli Lilly and Company (Respondent) [2017] UKSC 48, the Supreme Court effectively ruled that equivalents are mentioned in the Protocol and proper consideration should therefore be taken of this wording – i.e. equivalents are more likely to now fall within the scope of claims following this decision.

Technically, this decision applies to your infringement analysis but in fact it will also impact your construction as a few more things will be caught by the claims.

Now that the legislation and the current case law have been considered, we may begin to see more clearly that in FD4, when we interpret, we have to reach some conclusion as to what a person skilled in the art would have understood the author to mean by the words of the claim, on reading the claim in the light of the specification and the drawings. In a real-life situation, you would, of course, be able to ask people who work in the relevant industry (even if they are at a level above that of the notional skilled addressee) what specific words or phrases might mean, but in FD4 you cannot.

You have to make deductions from the documentation provided, and because of the need to display your reasoning, since it is the display of reasoning that attracts the all-valuable marks, you must explain how you move from some sort of evidence to a conclusion in such a way that the examiner can see how you are thinking. Simply stating the conclusion does not score marks.

While the examiner expects you to state a conclusion, rather than sitting on the fence and saying ‘It could mean this or it could mean that’ it is prudent to remember to ask the client if a skilled person agrees with your analysis.

There is no need to introduce your construction section, so don’t write ‘… what the person skilled in the art thinks he was intending to claim. Kirin-Amgen…’ to show the examiner that you know the latest case law. All you need to do is demonstrate the application of the latest case law, not write about it (there are typically no marks for setting out an introduction or the relevant case law). As a matter of tactics in FD4 you might find it convenient to deduce that the art is a broad art, so that as many as possible of the documents making up the FD4 examination paper can be considered to be within the common general knowledge of the skilled reader. This will make it easier to launch an ‘obviousness’ argument. But what is meant by broad art and narrow art?

This may best be understood by considering an example. The field of the invention, which is really ‘the art’, is often defined by the title and the opening paragraph, regardless of the wording of the claim. If the title of a specification is ‘An airbag’ and if the specification begins ‘…This invention relates to an airbag, and more particularly relates to a driver’s airbag in a motor 36

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4. How do I begin to tackle interpretation? vehicle…’ then the ‘art’ is ‘airbags’. Clearly the art must be broader than just ‘driver’s airbags’, since otherwise the ‘more particularly’ wording would not make sense. The art of airbags must include driver’s airbags, but must include other airbags as well. One would think that the art would include all vehicle-mounted airbags, but even in a straightforward example like this there is some doubt as to the outer boundary of ‘the art’. Would the art be considered to include those large airbags that are used by firemen, or other rescue services, which can be placed under lorries that have encountered problems and ended up on land that is too soft for a jack to be used? These airbags can be inflated to ‘lift’ the lorry as part of a recovery procedure.

However, in the example given, ‘the art’ would seem, on the face of it, to exclude bouncy castles and the like. This would mean that a publication relating to a bouncy castle that disclosed a key feature of the invention would not be available for use in an ‘obviousness’ attack, as the document would not be within the common general knowledge of the person skilled in the art.

Now consider the situation if the patent had the title ‘An inflatable element’ and the specification began ‘This invention relates to an inflatable element, and more particularly relates to an airbag in the form of a driver’s airbag…’. Now the field of the invention, and thus the knowledge of the skilled person, spans the whole area of inflatable elements, and would quite possibly be considered to include the publication about the bouncy castle.

The identity of the person skilled in the art, and the precise boundaries of their knowledge, is probably of most relevance when inventive step is being considered, but it may be appropriate just to include a brief passage identifying the skilled person as the section on interpretation is begun.

Having identified the skilled person, you now have to interpret as through the eyes of that person. Ideally, you will find evidence as to the meaning of phrases or words from the description and drawings, as required by section 125, taking into account the Protocol under Article 69, so you do not interpret too literally, and so that you do not interpret too ‘loosely’.

As we have seen, in a typical FD4 paper many of the words or phrases that need to be construed should really be discussed only in the light of the disclosure of the specification and drawings, and so it is impossible to provide close guidelines as to the meaning to be given to specific words. It is necessary to try and find the sense in which the relevant feature is described in the specification, and to see if any alternatives are given, or implied. Often, in Infringement and Validity, you find that the feature is not specifically described at all, or is described in words that are very different to those used in the claims.

This is the challenge of FD4 – can you make sense of a terribly drafted set of claims, which come with an equally terrible specification? Usually the claims and specification are horrendous, even though, on a quick read, everything can be understood. This is because the reader usually reads the documents trying hard to understand them, and, because the technology is so trivial, common sense enables you to fill in the missing gaps without even thinking about it. It is only when you go back to see what the specification really said that you can see what it did not say.

There are now no real ‘rules’ for interpretation, although some generally accepted approaches to the interpretation of claims may be reflected in the claims of a FD4 paper.

For example, it has been generally understood that the claims should be construed sensibly, with ridiculous constructions being ignored, and at least the broadest claim should be read broadly enough to include all of the described embodiments of the invention within the claim.

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4. How do I begin to tackle interpretation?

This can sometimes force you to give a broad interpretation to phrases in the claims that may at first sight appear to be narrow. This situation can, however, be a bit more complicated if there are two independent claims, and some examples of the invention fall within both of the claims, with some further examples only being within the first independent claim, and other examples being within the other of the independent claims.

It may seem reasonable for the skilled person to try his best to see that all of the described embodiments are somehow within the scope of at least one of the claims, but this may prove to be impossible if, for example the main claim specifically lists alternatives, such as copper or brass, and the described embodiments refer to copper, brass and aluminium. While it may be possible to ‘stretch’ some words when interpreting a claim, (as discussed above – making prior to shimming really mean after shimming) it may be difficult to conclude that the skilled person would understand that a member of a ‘family’ described in the specification should be considered to be present just because some other members of the ‘family’ are present in the claim.

Sometimes it is not necessary to explore the real limits of a term in a claim. If the relevant feature is virtually identical in every document in which it appears, then it may only be necessary to explain that the term in the claim must at least include the structure of the described embodiment. For example, a catch could be almost anything. However, if in the patent it is a resilient finger carrying a protrusion that engages an element once it has moved to a specific position to hold it in that position, and if all the other items that could be considered to be catches are of the same design, it would only be necessary to explain that the term ‘catch’ must at least include a resilient finger and protrusion which operates in the desired way.

As mentioned above, if there is a point of construction that can avoid a claim being found to be invalid over prior art acknowledged in the specification, it would be possible to argue that the skilled person would take the interpretation that made the claim valid, rather than the interpretation that would make the claim invalid, on the basis that this would be the intention of the inventor. Having said that, it is not at all unusual, both in FD4 and in real life, for prior art admitted in the opening paragraphs of the specification to be very damaging to the validity of the claims present in the patent. If the only realistic interpretation is one that makes the claims invalid over the admitted prior art, then so be it.

A similar line of thought can be applied in connection with disclosures that are within the knowledge of the skilled person at the date of filing, or during prosecution. The inventor can be understood to have at least the notional common general knowledge of the skilled person, and so one might conclude that the inventor would not intend words in the claim to have a meaning that would make the claim invalid (possibly on an ‘obviousness’ attack) in the light of a disclosure that forms part of the common general knowledge.

Also, it has been thought that no two claims can have the same scope, and so a sub-claim which apparently narrowed a feature of one or more preceding claims had a so-called repercussive effect on the scope of the preceding claim(s). For example, if the main claim defined a member as being made of ‘metal’, and a sub-claim stated that the ‘metal’ was brass, the repercussive effect is such that the word ‘metal’ in the main claim must be broad enough to embrace an alloy, since brass is an alloy and not a simple metal, and also the main claim must be broad enough to include a metal or alloy other than brass. This can lead to a very interesting situation if, for example, the specification indicates that it is specific properties of brass that 38

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4. How do I begin to tackle interpretation? make the described embodiment actually work. In this situation the very broad claim is not actually supported by the description, and it clearly covers embodiments that will not work. In this case, the broad claim may be invalid for lack of a sufficient enabling description. Thus a claim must include within its scope all of the subject-matter of a sub-claim dependent on it, and must in some way be broader than the sub-claim.

Sometimes the repercussive effect may be triggered by a statement of invention that does not correspond with any of the claims. For example, there might be a statement of invention (usually immediately after the statement of invention corresponding to the main claim) that might simply say... preferably the metal is brass, while this particular snippet of information is not actually present in the claims themselves in any way.

It is sometimes the case that a narrow word or phrase is used in the specific description, and a broader word or phrase in the claim. For example, the description may refer to a battery, and the claim may identify a power source. Should the claim be read broadly, to cover any power source, or narrowly? It is possible to argue that the claim has been drafted with broader language than the description, and so it was the intention of the patentee that the claim would have relatively broad meaning, to embrace embodiments not strictly in compliance with the preferred embodiment. However, it is also possible to argue that if the patentee intended the claim language to be read broadly he would at least have outlined some possible alternatives to the described embodiment. Also, it may be suggested that if the claim is read broadly, the description does not support the claim, as there is no enabling disclosure across the breadth of the claim. So there is no ‘correct’ answer to the question, as it all depends upon which of the arguments looks strongest on the day (and in a good FD4 paper they may well look equally strong and equally weak!)

The Infringement and Validity examiner in previous years has been known to adopt all sorts of linguistic tricks in the claims. In some papers the examiner created ambiguities, for example with the use of ‘or’ or ‘and/or’, or with the use of ‘its’ when there were two or more items that the ‘its’ might refer to, or by using the same word to identify two different components of the invention.

Such ambiguities may feature again in future papers, but have been absent in recent years.

There is always the possibility of the carefully constructed ‘typo’. One year the claim related to an abrasive article, which incorporated abrasive particles to give the abrasive effect.

Everything was straightforward until a sub-claim referred to ‘said articles’. Was this ‘particles’ with a p missing, or article with an s added? And yes, it did make a difference!

The examiner still seems to be fond of ‘for’, ‘comprises/comprising’, incorrect antecedents, and incorrect claim dependencies. These are points that are usually easy to deal with, but comments must be provided if the marks are to be scored. You must explain how you understand the words of the claims, and give reasons, always remembering that the marks go for the reasons, which may be ‘because this is the conventional meaning of the word in a patent claim, and the skilled reader would know that’.

‘For’ is generally understood as meaning ‘suitable for’ rather than ‘specifically intended for’ – but defining a word by using that word may not necessarily show the examiner that you know what the word really means, and so ‘for’ may (if the context allows) be understood to mean capable of performing the function (that follows the ‘for’) without any significant alteration or modification. It may be impossible to find any evidence in the specification that this is what the Infringement and Validity • 2018

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4. How do I begin to tackle interpretation? term means, and so if the term is interpreted in this way, it will not be easy to give a reason – let alone a reason deduced from the specification itself.

The word comprises (or comprising) frequently brings with it the baggage as to whether this term is an ‘open’ term, really meaning at least includes these features, and may possibly include other features as well… or whether it is a closed term, meaning consists solely of these features. An Australian court has held the word to be a ‘closed’ term, but that decision is not binding in any way in this country, and in any event in subsequent Australian decisions the term has been construed to be ‘open’.

However, the fact that an Australian court reached the ‘closed’ construction does show that even words that appear to have an accepted meaning may mean something else (and may make you very careful when you draft claims – especially if there is any chance of the claims being included in an application filed in, or designating, Australia).

If you do have decide on the meaning of the term in a FD4 paper, the ‘repercussive’ effect discussed above may be of use, since if the sub-claims introduce further features, then the comprises of the main claim must be ‘open’, and logically the remaining uses of the term will most probably be ‘open’ as well. On the other hand it may be possible that a narrow or closed construction of the term comprises may be necessary for the claim to be valid over the admitted prior art.

The false antecedent is very common in the claims of patents in Infringement and Validity papers. There are various types of false antecedent.

A completely new feature could be introduced for the first time, typically in a sub-claim, referred to as ‘the’ or ‘said’.

A feature that is possibly implicit can be introduced with a ‘the’… such as ‘the base of the channel…’ when only the channel has been identified previously. References to things such as the axis of the body when the nature of the body has not been defined at all… the upper end when, again, there is no description of form, or of orientation… the polymer when only a plastic has been mentioned previously are further examples of references being made to features that have not, strictly speaking, been introduced, but which may be considered to be implicitly present.

Another way that a false antecedent can be created is for the examiners to write a main claim that would say, for example, that item A was connected to item B. Subsequently, the claims would refer to said connector, or said connection.

In all of these types of false antecedent the intended meaning may not be difficult to fathom, but the inconsistency should be addressed, and possibly the suggestion should also made that the claim should be amended. You might propose (for the last example given) that the claim in which the word ‘connector’ appears for the first time should be amended, by adding in the preamble of the claim a reference to the fact that A is connected to B by a connector….

Another situation that could be engineered into the claims by the examiner would be to have strange claim dependencies which would lead to there being no antecedent for a word in a subclaim when dependent on one of two preceding claims, although the antecedent would be there when the claim was read on the other preceding claim. For example, claim 1 would say there was a connection and claim 2 would specify the connection as a pivotal connection. Claim 3 would be dependant on claim 1 or claim 2 and would indicate that the pivotal connection incorporates a limiter to limit the degree of pivotal movement. This language does not give any problem when claim 3 is read as dependent on claim 2, but when it is read as being directly dependent on claim 1, then there is no antecedent for the pivotal connection. If a situation like 40

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4. How do I begin to tackle interpretation? this arises it is probably best to explain that you will read the claim as only dependent on claim 2, so that the claim makes sense, and then to suggest that an amendment or correction of an obvious error is made to make claim 3 depend solely on claim 2.

Most frequently, points of construction of the types mentioned above do not really alter the overall scope of the claims, but they may make the claims less than totally straightforward to read.

Here it should be mentioned that there are three classes of word/phrase/point of difficulty that appear in the claims of an Infringement and Validity paper.

Firstly, there are terms that are not relevant to the scope of the claim. Many of the ‘linguistic tricks’ outlined above fall into this category. However, many other words in the claims, which should be subject of a passing comment from you, may also be in this category. For example, if the claim calls for ‘a casing’, and all of the disclosures of the infringement(s) and the prior art in the paper each show something that is readily identifiable as a ‘casing’ – even if it is described as ‘a housing’, or ‘a hollow handle’ – then there is no need to go into great depth when construing the term ‘casing’ in the claim. One must define the term, or explain it, preferably giving a synonym or two, but only very, very briefly. For example, one might just comment that the term ‘casing’ is clear, or takes its usual meaning, and includes a housing, or an element that defines an internal chamber. But you must also give a ‘reason’ why this meaning is taken.

Possible reasons would be that it must mean this to include or ‘catch’ the described embodiment, or that this is the only sensible construction that would occur to a person skilled in the art, but ideally you would look for the way that the word is used in the specification, and see if there are any phrases there that can be used as ‘evidence’ from which you can show ‘reasoning’. Then in the infringement and novelty sections you can discuss how what is shown is really ‘a casing’.

Secondly, there are terms which are relevant to the scope of the claim, but which are clear on considering the text and/or drawings of the specification. For example, the claim may say ‘a drive chain within the housing’. One of the prior art documents may show a drive chain that runs through the housing, but which is also exposed, over part of its length, exterior to the housing, leading to the question of whether the prior art chain is, or is not, inside the scope of the claim. If the example in the patent shows the drive chain partly exposed exterior to the casing, then you will be able to argue that the claim must be construed with ‘within’ meaning ‘at least partly within’. On the other hand, if the examples show the chain completely within the housing, and the description says ‘it is essential, for safety reasons, that the chain is completely enclosed within the casing’, then you can logically reach the opposite conclusion. These are terms that should be discussed, and where you should give your reason, identifying precisely where you find evidence in support of your conclusion.

Thirdly, and most importantly in the context of FD4, there are terms which are relevant to the scope of the claims which have more than one potential meaning based on the text of the specification. To continue with the example of the drive chain, while the claim says ‘a drive chain within the housing’ the description may identify the housing, and identify the drive chain and its drive sprockets, but fail totally to mention anything at all about the drive chain being ‘within’ the housing. The figure may show the chain completely within the housing, but should this part of the claim be construed narrowly or broadly? It can be seen that the result of the construction of this point may be the difference between the claim being novel, or being anticipated, and it is how you handle a point like this that will impress or not impress the examiner. You must look to see if there is any evidence that you can find anywhere in the patent Infringement and Validity • 2018

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4. How do I begin to tackle interpretation? that might lead you, standing in the shoes of the skilled person, one way or the other – even if the evidence or clue is very subtle. You must be able to reach a conclusion, and give your reason, with the reason being based on information given in the question.

A point like this is a ‘balance-point’. If it is decided one way, then the patent is valid and infringed, but if it decided the other way, then either the patent is not infringed, or the patent is not valid. The examiner may build several ‘balance-points’ into a set of claims. Here it is important for you to understand that the examiner has designed the question so that most of the balance points can each logically be decided in either direction. So, there may well be some evidence to support the view (using the drive chain example) that the chain must be totally within the housing, and some evidence that it may be partly exposed. So the examiner may have put a reference to ‘drive chain completely within the casing’ which can be used to support an argument that ‘within means completely within’ – but there may be a reference to the fact that ‘in an alternative embodiment the forward drive sprocket can be at the end of the support arm’ which might be used by showing that if the sprocket is moved to this position the chain will inevitably, for part of its length, be outside the casing, which could be used to support the argument that ‘within means at least partly within’.

The examiner does not mind which way you decide a ‘balance-point’ – but you must give your reasons for reaching a conclusion, identifying the evidence that you rely on.

It is impossible to provide an exhaustive discussion of everything that could come up in the claims of a FD4 paper, but some words and phrase-formats (in addition to those discussed above) tend to make repeat appearances. We will now briefly look at examples of these words, to see how they can cause problems.

Means for is a phrase that has been seen in the claims in a FD4 paper. This phrase has all of the resonances of for with the added frisson of the vague word means. It is probably reasonable for the author to intend the word to include the described mechanism or arrangement, but it is not unknown for the specification in a FD4 paper to be very woolly at a point like this. You must just make a decision as to whether the phrase is broad or narrow, and try and justify your decision somehow.

Even a word like the word to can be problematical. If the claim specifies that something is heated to a specific temperature, what is the situation where the prior art or infringement heat to a higher temperature? Does the word to mean just up to or does it mean at least up to? You will have to look to see where the specification will help you divine what was intended by the word as used in the claim.

In another sense the word to can be intended to define the function of an element. So one element may be said to prevent movement of a second member. In the described embodiment, the first element will no doubt be described as operating to prevent the movement of the second member, but is the word to broad enough to catch an arrangement in which the first element could possibly be used to prevent movement of the second, even if it is not described in those terms? A ‘balancepoint’ like this can be very hard to resolve – and that is the whole point… can you deal with a difficult point in a clear way, reaching a definite conclusion based on logic, and showing the reasons for your conclusion? When you see a difficult point like this in the examination you should not shy away from it or ignore it, but grasp it firmly – because if you have found a difficult point, you have found an area on the marking schedule where there are marks to be found!

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4. How do I begin to tackle interpretation?

The examiner can sometimes use a made-up phrase, such as a one-hand coupling or an automatically engaging coupling…, or may include a restriction as to the area of use, such as a garden saw… or a caravan light fitting. If you are used to drafting, you give an internal shudder as your eye catches phrases such as this, because instinctively you know that you would never write a phrase like that yourself. However, if you see wording of this type, you will know that it has been planted in the claim for you to consider. Remember that you must look for some sort of evidence as to whether any real restriction is intended by the words one-hand, automatically engaging, garden or caravan. Again, points of this type are most likely to be ‘balance’ points, and consequently it does not matter (in the surreal world of FD4) what conclusion you reach, provided that you justify your conclusion in some tangible way.

Relative terms can be a nightmare in the real world, and this is reflected in FD4. Relative terms are words or phrases such as strong, weak, relatively strong, relatively weak, very strong, very weak, high absorptivity, low absorptivity, to some extent translucent. The list is really endless and the examiners are good at finding new examples each year. Look out for these terms when reading the claims. They will need to be construed, and some sort of tangible limit that is appropriate for the remaining documents in the case must be put forward and justified. Again, the term may reasonably be construed to include all of the described examples, and to exclude the described prior art and common general knowledge, which might help to define a useful border as to what is in and what is out. A consideration of the underlying purpose of the strength / weakness / absorptivity / translucence (or whatever parameter it may happen to be) may lead to a possible determination as to what is the limit of effectiveness. All evidence for the definition of a boundary of this type must come from the patent or the acknowledged prior art or the common general knowledge of the skilled person. You may not have to find an absolutely definitive boundary between, for example, the translucence in the claim and the opaqueness outside the claim – you only have to find a definition that will let you decide if the disclosure of each document is inside or outside the claim.

Here the underlying purpose of the translucence may be of great importance.

So we can appreciate that the purpose of a feature in the described embodiments, or the way that the feature works, can be used to help determine the scope of the feature in the claim.

It is possible for the examiner to include in the invention of the patent, and also in one or more of the infringement and prior art disclosures, a feature that is identical or virtually identical, while being described in very different words. In a situation like this, it is possible to give the relevant wording of the claim a ‘purposive’ construction, pointing out the underlying purpose of the feature, and interpreting the words to mean, essentially, anything that can perform the function, or anything that can perform the function in the same way as described in the patent.

If the actual structure of the invention and the prior art/infringement is essentially the same, then there should be no need for an extensive construction of the relevant wording.

Sometimes the examiner is lucky, or clever, enough to come across a word that can have two meanings, each of which would be a possibility. One example used in a past paper is the word ‘normally’. Was this used to mean ‘in its usual condition’ or ‘in a typical situation’… or since the word was used almost immediately after the use of the word ‘axially’, did it mean ‘perpendicular to the axis’. Yes, it was a very weak ‘pun’ put in by the examiner, but no doubt there was a mark, or part of a mark, for spotting it. In the event, it really did not matter which interpretation was put forward.

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4. How do I begin to tackle interpretation?

The examiner can have tremendous ’fun’ with numbers and ranges. The word number itself has been used to good effect…a number of levers and a number of drive rods… does the word number include the number 1, or even the number zero? The presence of the plural form (levers, drive rods) might indicate that two or more was intended, but that might not be the only evidence of intended meaning present in the patent. The double use of the word ‘number’ may mean that there are equal numbers of levers and drive rods, but that might not necessarily be the case.

Usually, if whole numbers are used to indicate the number of discrete articles present, the only debate can be as to whether a number greater than the specified number is within the claim. If the claim refers to a chair having three legs it would certainly seem that a two-legged chair would not be within the claim. A three-legged milkmaids stool might be (and is a stool a chair?), but a fourlegged chair might also be, as it certainly has three legs, and then an extra one as well. Here again one would be looking for evidence of intended meaning within the patent itself.

Ranges come in several forms. There is the integral element sort of range… between three and seven light-emitting diodes… where the nature of the items being considered makes it impossible to have a fraction or a decimal value, and ranges of this type are usually very specific and cannot easily be construed to mean anything other than what they say. The situation may be different if the numbers are large. For example, a reference to ‘between 100 and 400 bricks....’ might, in some circumstances, be ‘stretched’ to include 98 bricks, or 405 bricks on the basis that by using a round number of hundreds the draftsman was not setting a precise end to the range. Then there is the continuous sort of range… 3 to 7 degrees Celsius. Ranges of this type could logically be considered to extend half-way to the next significant figure. So a range of 3 to 7 might be described as running from 2.50 to 7.49. However, if the range was stated as being from 3.0 to 7.0, then the range could logically be considered to run from 2.95 to 7.05. This approach was adopted in Lubrizol v Esso BL C/110/96 and [1998] RPC 717 (CA). In Goldschmidt v EOC Belgium BL/83/99, a reference to ‘a pH value of 5 to 8’ was construed broadly because it was found that pH was usually recorded with an uncertainty of 0.2 to 0.5 units.

Smith & Nephew PLC v Convatec Technologies Inc [2013] EWHC 3955 (Pat) is a judgment that is well worth downloading and reading, to show the care and thoroughness given to a simple, but crucial, point by the judiciary.

A major part of the decision discussed a range stated in the claim to be ‘between 1% and 25%’, and where a potentially infringing process used a value of 0.77%. The judgment is worth reading to see the care with which the decision was made, and the reliance on expert evidence.

In this case it was decided that the lower limit should be 0.95%, and the upper limit 25.5%. Part of the rationale was that the ‘accuracy’ at the lower end of the range would then be 5% (as compared with 50% if the lower end was deemed to ‘stretch to 0.5%) which was about the same order of magnitude as the ‘accuracy’ of 2% at the top of the range. This decision has, however, been reversed on appeal [2015] EWCF Civ 607.

The ranges shown above are double-ended ranges, that is to say ranges which have a beginning and an end. Sometimes there are single-ended ranges such as…up to 5%, less than 5%, or more than 5%. Should you need to try and determine the ‘other’ end of such a single-ended range, again you will have to look in the patent for some sort of evidence. If the range is up to or less than, then is it essential that there is at least some of whatever is being referred to, or will everything be all right if there is none at all? If the range is a more than range, how high up could 44

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4. How do I begin to tackle interpretation? you realistically go with the invention still working and still providing some sort of advantage.

Numbers or numerals appearing in claims may also need to be understood to be ‘rounded’ in the same way as the ends of ranges as discussed above. With all numerical values there may be the further problem of a ‘fudge’ word such as ‘about’, ‘approximately’ or ‘substantially’. If any of these turn up, look closely at the examples to see how far the specific examples are removed from the language of the claim. This may give you an idea of the degree of ‘stretch’ provided by the fudge word.

Again, if there are two independent claims, remember to look at them very closely, to see where the language used is the same and where it differs. Often words that were critical to your interpretation of the first independent claim have been changed or omitted, so that the effective scope of the second independent claim is very different from that of the first.

Many years ago, before ‘purposive construction’ had been invented, the claims of a patent were read in the same way as a Deed and each word had to have a consistent meaning.

Sometimes the FD4 examiner will ‘give a nod’ to this old convention and may use a word to identify two different things. For example, the claim may refer to… the end of the arm… and also to… the end of a rib. So the word ‘end’ is used in two contexts. Maybe it is clear from the examples given in the patent that the ‘end of the arm’ is not restricted to the very terminal point on the arm but really means ‘the end region’ of the arm or even ‘up to a quarter of the way along the arm from the terminal point’. The puzzle that this raises is this: does the word ‘end’ have the same degree of flexibility in the context of ‘the end of the rib’. The must be an argument that the word ‘end’ will have been used in the same way at each appearance, but there may be a contra-argument that the word has different meanings in the different contexts. This situation needs to be analysed, the two arguments sketched out, with reference being made to any ‘evidence’ that can be found, and a conclusion must be reached.

A similar dilemma can be created by the examiner by using a ‘fudge’ word, such as the word ‘about’ or ‘approximately’ in connection with two figures or ranges. Does the ‘fudge’ word imply the same degree of elasticity to each of the figures, or each of the ranges? Is the ‘elasticity’ ‘plus or minus two’… or is the elasticity ‘plus or minus five per cent’? These are the questions that may well have to be answered.

Often in a FD4 paper there is no statement of invention at all, or the statement of invention differs from the language of the claim. Sometimes words that are of crucial importance in the claim do not appear in the text of the patent at all. This can often make the task of interpreting the claims more difficult, but also gives an opportunity to suggest that the invention(s) of the claims are not sufficiently described in the specification.

The description in the specification should be sufficient for the skilled person to perform the invention(s) of the claims. If the claims are broad, a description of a single embodiment may be sufficient if it would be in the ambit of the skilled person to develop the described embodiment to become other embodiments across the scope of the claims without providing any inventive input. However, there may be an an argument, in such a situation, that a description of a single embodiment is not an 'enabling' description of the broad invention claimed. However, in FD4, where the subject-matter is usually simple, this may be unlikely.

You may find that some specific words or phrases in the claims are used in one or more of the prior art documents. It may just be possible to suggest that this use of language in the prior art Infringement and Validity • 2018

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4. How do I begin to tackle interpretation? shows that the words are a ‘term of art’ with an accepted meaning, and that the meaning must be applied to the claims of the patent. This, however, is an interpreting tactic that you must use with extreme care, as it is evidence in the patent itself that is most persuasive in a FD4 paper. You cannot really use this technique for general words such as ‘incorporate’, ‘housing’, ‘flange’, etc.

As and when you come across ‘difficult’ points of construction, it may be wise to jot down any amendments that the patentee could make to overcome the problem, to make the task of understanding the claims easier. Can the patentee amend to clarify any passages that are possibly ambiguous, or to correct any lack of antecedents, or to correct claim dependencies when these are inappropriate? If you at least write notes concerning amendments as you go along, you may find it much easier and quicker to write a succinct section on amendment later on. Perhaps you should write the word ‘Amend’ (and underline it) at the bottom right hand corner of a paragraph discussing a point that could readily be improved (from the patentee’s point of view) by an amendment. This will show the examiner that you are aware of the possibility of amending, and when you come to the amendment section you will be able to skim your answer to find quite quickly the points where amendment may be of value.

But how should you actually ‘do’ the interpretation section? You know what sort of thing you are looking for, but what do you do when you have found it?

You need to identify words and phrases in the claims for construction. Here you can adopt a style that will help you save time in the later sections of your answer.

As we start on interpretation, you can divide up each claim into sections which may each be a phrase or a word. You can indicate the word or phrase that you will consider initially, and give it reference such as 1a or 1.1. Subsequent words or phrases can be 1b, 1c, etc, or 1.2, 1.3, etc. You need not write the whole of the phrase if it is long… just the first couple of words and the last couple of words to show the examiner what you are looking at.

To save time, many candidates use the claims page from the question paper and indicate on this how they have broken down the claims, usually by indicating the start and end point of each segment of each claim and the reference (e.g. 1.1, 1.2, 1.3) for each segment – this is then submitted as part of your answer, usually as page 1.

So you might put…

1.1 A safety belt buckle comprising (or just “1.1 =” if you’ve handed in the claims as page 1) (or “1.1 A….comprising” - the examiner will realise that you are indicating the

opening words of the claim) You can then give a ‘translation’ of this portion of the claim. Perhaps the ‘translation’ should use words which are not the same as the words in the claim. This will help you to demonstrate to the examiner that you have really understood the words.

You might identify the key parts of this portion of the claim are “safety belt buckle” and “comprising”, and so you next set out what each key part means: “safety belt buckle” = a device to receive the tongue on a motor vehicle safety belt “comprising” = which has at least the following features

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4. How do I begin to tackle interpretation?

As you will see, sometimes it is impossible to use ‘different’ words. There is no easy synonym for ‘safety belt’. If you are struggling to define something in a portion of the claim, i.e. you only seem to be able to define it using the same wording in a different order, then this is a likely indication that there simply isn’t a mark for this analysis and perhaps the wording is clear!!!

Move on…

Sometimes you need to give your reason for reaching your conclusions, especially if you think that any of the key phrases might be a balance point or have alternative valid constructions that you have dismissed. If the reason is very straightforward… this is the only reasonable construction… this is what is clearly shown in the drawings, and is described using the same phraseology… then you are unlikely to score many marks and should consider omitting writing

anything and simply moving on, but if your reason could be more detailed then this might be because there is something to discuss that will be awarded marks by the examiners… p3 line 4 says ‘buckle 15 is designed to receive tongue 22 on the motor vehicle safety belt 12’ ‘Comprising’ is usually understood to be an ‘open’ term meaning ‘including at least’, and claim 4 introduces a further feature so ‘comprising’ cannot be a ‘closed’ term.

If you can find evidence in the description to support a particular interpretation, you should give the page and line numbers and at least mention the key words of the passage so that the examiner can see how you have got from this passage to your conclusion.

You will not spot every single point for discussion in the construction section, but (a) you should aim to spot all of the “patent word” such as “comprising”, “for”, ranges, optional features, lack of antecedence, incorrect dependencies, etc that are discussed earlier in this chapter and which occur in almost every FD4 paper; and (b) you should aim to spot and discuss the major points of debate in the claims – so any significantly unclear terms and any tipping points.

You need to continue this process, until you have worked through all of the claims. It is key to this paper to spend the time working through the claims and analysing the key phrases and words, or else it will be impossible to do justice to your answer for the rest of the paper.

You will see that the structure for this part of the answer comprises three parts. The first part identifies the passage or word of interest, the second part sets out the meaning of the identified passage or word (i.e. your construction), and do not forget the third part where you set out your reasoning if necessary. If you practise making sure that you have covered these three components to your answer, in whatever format you think works for you, and you use it in the examination, you will be forced to give your reasons. Another approach is to adopt a rigid style in the form of ‘Identify, means… because…’ So initially you identify the word or words being considered, then after the word ‘means’ you put the meaning, and then the word ‘because’ and the reasoning followed to deduce the meaning.

The reason can be the most important part of the answer in construction, and it is the part that most candidates tend to leave out. This may be because, in FD4, the reasons are often simple, easily understood, and may be considered to be ‘trivial’ and ‘not worth mentioning’. However, in FD4 the examiner is forced to use very straightforward technology, and any ‘invention’ is going to be very simple. However, the FD4 examiner wants to give you marks for selecting points and displaying reasoning where these is something to discuss. If your reason is “takes its normal dictionary definition” or “common drafting practice” then there are unlikely to be any marks, Infringement and Validity • 2018

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4. How do I begin to tackle interpretation? but if there is more to why you chose your construction then please mention it to the examiner as they would love to be able to give you the marks for explaining yourself.

As you will see, if you use a logical numbering system for all of your sections of the claims, you can re-use the numbering system when considering infringement and novelty, which will save the repeated re-writing of the words of the claims. Any time that can be saved when answering a FD4 paper should be saved, as it is simply running out of time that seems to cause most of the unsuccessful candidates to fail.

Leave plenty of space on the page between the various numbered sections, by starting 1.2 several lines beneath the end of 1.1 or preferably on a new page. In this way if, when you do infringement or novelty you find that your interpretation did not deal with the difficulty adequately, you have room to amplify and clarify your interpretation and your reasons. There is no rationing of paper in the examination, and this approach would facilitate a very substantial revision and clarification of your interpretation, should that be necessary. The FD4 examination is not kind to trees!

Do not be afraid to use a drawing or sketch if will help you get your point across to the examiner.

As you approach the sub-claims, remember to interpret the claim dependency portion of each claim, and point out any inconsistencies with the dependencies (… if there are any). If anything, these are the “easy” marks, or at least the “low-hanging fruit” that all candidates must remember to deal with – a lot of candidates in the examination score awfully close to a pass and ensuring that you score all of the “easy” marks should hopefully get you across the line to a pass mark.

Looking at the published marking schedule for the 2014 P6 examination, in the construction section you will see that there were marks for explaining what ‘A panel according to claim 1’ and ‘A panel according to claim 2’ etc. meant. The examiner wants you to indicate the possible combinations of claims, and so for claim 4 expected candidates to say something like ‘A panel according to claim 1, 2 or 3 ‘ means a panel having the all of the features of any one of claims 1, 2 or 3 and the following features, and so the following features may be combined with claim 1, claim 1+2, or claim 1+2+3, (but not claim 1+3) because this is conventional drafting practice’. The claim dependency combinations are of importance when considering

novelty and inventive step.

Try and give some meaning to the omnibus claim. The examiner does not want you to say ‘This has its usual meaning’. He has often put in a nonsense omnibus claim that relates to what is described or what is shown in the drawings. It may be sufficient to say that the omnibus claim is restricted to an item that has all of the features described and shown, but some attempt to explain should be made.

If you find that reading the claims first, before you read anything else, is a good approach, then you might also find it beneficial to write out the claims in ‘bite-sized-chunks’, with a new sheet for each new chunk, as you do your initial reading of the claims (or break up the claim on the question paper and write that it is page 1 at the top of the page). This will force your brain to think about the claims even more than by just reading them, and you will have written out part of your construction in a very time-efficient way. Another tip is to use a yellow highlighter (as these do not photocopy) and highlight any words or phrases that immediately strike you as 48

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4. How do I begin to tackle interpretation? worth construing) – thus you can do a first pass before you become too comfortable with the wording of the claims which will hopefully allow you to identify all of the “patent words” as well as the most unclear terminology in the claim.

While the reason is the most important part of the answer, you do not have the time to write reams and reams of reasoning about a single point nor for every point. In the real world, if there was a crucial point, and the matter was going to litigation, then there would be reams written about it, but you must try to develop a style that covers the ground succinctly. Also you should, wherever appropriate, give the location of the ‘evidence’ (support) in the patent that you rely on to make your conclusion. Sometimes you will not have anything useful to write and need to develop a skill for moving on without writing much or anything, or else you will waste time, as part of the skill set for FD4 is the ability to focus on the important points and providing reasoning and argument for these important points.

So, your answer (you will just have to imagine the questions) might include passages similar to the following: The phrase ‘foam bodies’ must be expected to include (not necessarily be limited to) ‘a closed cell polystyrene foam’, because that is what is shown in the examples, (see example 1) and on a reasonable construction the claim must embrace the examples.

This language is very ‘positive’ and really relies on the understanding from Virgin Atlantic that the skilled person knows something about patent law, and expects the claims to embrace the examples. However, this sort of reason is only appropriate if there is no counterargument that the actual wording of the claim forces a different interpretation.

The phrase ‘foam’ must be expected to include foam which has additional particles in it because of the effect of dependent claim 3 which specifies the presence of particles (the repercussive effect).

Again, this sort of reasoning is only appropriate if there is no counter-argument that the words of the claim force a different interpretation.

Although only a hinged connection is described, the word ‘connection’ would be expected to include more than a hinge (as the skilled person, who knows a bit about patents, would be expected to know that no two claims should have the same scope) and dependent claim 4 simply says that the connection is a hinge. The claim may lack support, although there is an argument that the skilled person would readily recognize that connections other than a hinged connection could be used.

This reason again relies on the assumption that the skilled person knows some patent law and practice. Again, the reason is only appropriate if there is no counter-argument.

Also, in this last reason, the answer touches on the problem of ‘sufficiency’ as well as dealing with interpretation as such. Often problems like this are spotted at the interpretation stage. If a comment is made at this stage, you may score marks in the ‘sufficiency’ or ‘internal validity’ part Infringement and Validity • 2018

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4. How do I begin to tackle interpretation? of the answer, even if you forget to discuss the point again later in your answer. Some candidates write their Sufficiency and Amendment answer sections in parallel with their Construction answer section to ensure they capture each of the points they spot in the correct part of their answer.

The word metal must be expected to be limited to copper because that is the only example given and there is no support for a wider interpretation, since page 4 line 2 says ‘it is essential that pure copper is used…'

Of course, there may be a strong counter-argument that if the description refers to copper, and the claim refers to metal, then the patentee must have intended the word ‘metal’ to include more than just ‘copper’… and you may have to discuss both possibilities before reaching a conclusion.

There are two possible interpretations of ‘an air gap between the panels’. It could mean that there is an air gap somewhere between the panels, but there may be further layers between the panels and the air gap, or it may mean that the panels themselves form the boundary of the air gap. The first interpretation is preferred as page 3 line 2 says ‘in other embodiments one or both sides of each panel may have a thin coating of heat resistant material.

Here we have clearly indicated two reasonable interpretations, and have selected one, giving a reason, and saying where the evidence can be found. Again, always look closely at anything, anywhere in a FD4, which is ‘in a modified embodiment’ or ‘in another example’ (or anything of that sort) since this is often where the examiner hides very relevant information.

The word ‘soldered’ can be understood to mean ‘welded’ since this is what is actually disclosed in the description, with no mention of solder or soldering in the specification at all.

Here it may be that there are strong arguments in other directions. Is there anything at all in the specification that can be used to show what the skilled person would think that the word ‘soldered’ might actually mean? There would be room to discuss whether a word that has a readily understood meaning (such as soldered) should be given a very different meaning (such as welded) just because no soldering is described… or should the word be given its usual meaning and the claim be found invalid for want of support.

‘For’ = ‘suitable for’ and includes anything that could perform the purpose, even if not in a totally ideal way, without any major modification.

The word ‘for’ was considered by the Court of Appeal in 2011 in Virgin Atlantic Airways Ltd v Delta Air Lines Inc [2011] EWCA Civ 162 (www.bailii.org/ew/cases/EWCA/Civ/2011/162.html). ‘about 8 to 10 widgets’ = would most probably be understood by the skilled person to include the embodiment of example 3, where only 6 widgets are present. The range

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4. How do I begin to tackle interpretation? must be considered to be a guideline with some flexibility at each end and might be considered extend, at least, from 6 to 12. ‘elastic’ = capable of stretching up to 125% of its original length in claim 1 and so it must be expected to mean the same here in claim 4.

The fact that ‘elastic’ meant capable of stretching up to 125% of its length in claim 1 is of interest, but in this claim the word ‘elastic’ is used in a different sense and means ‘capable of returning to its original shape’ because in claim 1 the word ‘elastic’ was used in connection with the drive belt, and in this claim the word is used in relation to the carriage stop.

The two suggestions given above are intended to show that it is possible to reach different conclusions, both reasoned and reasonable, from the same starting point.

The word ‘anchor’ has no antecedent. Claim 1 called for the bracket to be anchored to the support plate. The skilled person would assume that ‘’the anchor’ is the item that performs this ‘anchored’ function, because this is what is described Page 3 ll1718 ‘… the anchor 6 anchors the bracket 1 to the support plate 4’ ‘Comprises’… = ‘includes at least’ because claim 4 adds another component (repercussive effect), and conventional drafting practice.

‘Comprises’… is an ‘open’ word, meaning ‘includes at least’ because the described embodiment includes other components and the described embodiment would be expected to be inside the claim.

Claim 4 is dependent on claim 2 or 3 and says that the support arm is horizontal.

The support arm is only introduced in claim 3. The skilled person will immediately see there is an error, and will see that if the claim is dependent on claim 2 it is a nonsense and so will read the claim as being dependent only on claim 3.

Here we have spotted a problem, and ‘fixed’ it in a logical way. However, the situation could be improved by making an amendment. If you are not writing your amendment section in parallel, you must somehow remember to deal with this at the amendment stage. Perhaps it would be best to write the word ‘amend’ and underline it near the left-hand margin. Like this: AMEND

and then when we come to the amendment stage we can look back to find references to amendment (and even if we fail to do this the examiner may be kind and give a mark, or a part mark, for us noting that an amendment might help).

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4. How do I begin to tackle interpretation?

In the phrase... ‘the trailing arm is secured to the guide arm, which arm is horizontal’… may mean the trailing arm is horizontal or may mean the guide arm is horizontal, but the skilled person would understand it to mean the guide arm is horizontal because… (shown in drawings… only sensible…)

‘Within’ means totally contained inside because page 3 paragraph 2 stresses that all moving parts must be concealed and the drawings only show embodiments where the mechanism completely inside housing 3.

‘Within’ means at least partly inside, because if the key was totally inside, then there would be no part of the key that could be grasped to turn it. So part of the key must be accessible for it to perform the described function.

Finally, remember again that what you are doing in the interpretation section is to double-guess what the skilled person would think that the claim was intended to mean, and it may be prudent to say that you would run your reasoning past a skilled person to ensure that they agreed with your logic, your reasoning, and your conclusions. Also note that if you use a construction technique that you have seen used by the courts (for example, construing a number as in Lubrizol or Goldschmidt, or the more recent Smith & Nephew or construing ‘for’ as in Virgin Atlantic) you may score an extra mark (or part of a mark) if you can identify the relevant case.

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4. How do I begin to tackle interpretation?

EXERCISE 1 Please read the following claims to get an understanding of the invention. One or two read-throughs should be quite enough. All we are looking for is a general understanding of what the claims are all about.

Claims 1. A sequestering tile for a solar energy collector having a metal carbide collector surface, the tile comprising a water inlet and outlet, and a plurality of parallel small diameter water flow passages extending through the tile.

2. A tile according to claim 1 wherein the inlet and outlet are positioned to sealingly engage as the tile is set.

3. A tile according to claim 1 wherein there is a single sinuous passage between the water inlet and the water outlet.

4. A tile according to any one of the preceding claims wherein the channel in the tile has an inner coating of plastic and it has metal particles embedded in it.

5. A tile according to claim 4 wherein the metal is zinc.

6. A solar collector according to any one of the preceding claims wherein the particles have a diameter of from 0.5mm to about 1mm.

When you know what the invention is about, turn over the page

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4. How do I begin to tackle interpretation?

EXERCISE 1 – notes No doubt you spotted that the invention involved solar collector tiles which can be interconnected for water flow as the tiles are set. There is a water flow passage through each tile which has a plastic inner coating which incorporates zinc particles.

But what did you think about the claims as claims? Were they a good set of claims? Did you see any potential problems?

Go back and read the claims again, very carefully this time. Can you see any problems this time? Do the claims raise any questions in your mind? Note down any ‘points’ that you see.

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4. How do I begin to tackle interpretation?

When you have done this, turn over the page.

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4. How do I begin to tackle interpretation?

EXERCISE 1 – notes For a set of claims that gave us an understanding of the invention on a quick reading, there really are quite a lot of ‘problems’.

Here are some thoughts that might have passed your mind.

Claim 1.

What is a sequestering tile? The word may seem familiar to those who have studied chemistry, where sequestration is the removal of ions from a solution, but what could the word mean in the claim?

It is ‘for’ a solar energy collector. Does that include a tile intended for a very different purpose, such a tile for an underfloor heating system, which might have the necessary features and properties?

Does the ‘having a metal carbide collector surface’ apply to the tile itself, or to the solar collector in which the tile is to be used?

The tile has a ‘water inlet and outlet’. Could that be just one pipe, through which the water goes in and out, or must it be two separate things, an identifiable inlet and an identifiable outlet?

How many passages make a plurality?

How small is a small diameter?

The water flow passages extend through the tile…we might think they are in the plane of the tile, but could they go another way? Could these passages go from the top surface of the tile, through to the bottom surface of the tile, to prevent rainwater accumulating on the tile?

Claim 2.

How can the inlet and outlet of a tile engage each other? Or else what is it that the inlet and outlet engage? On a quick reading the impression might be obtained that the claim says that the outlet of one tile sealingly engages the inlet of the next tile… but there is only one tile in the claim.

Claim 3.

This is dependent on claim 1 where there is a plurality of parallel passages, but now we have a single passage. How could that work? What does ‘sinuous’ mean? Is there a repercussive effect on claim 1? Could the word ‘passages’ in claim1 be broad enough to mean ‘sections of a single passage’?

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4. How do I begin to tackle interpretation?

Claim 4.

The claim refers to ‘the channel’. What channel? There has been no reference to a channel before.

The inner coating of plastic seems reasonable. It has metal particles embedded in it. But what is the ‘it’? One might think it is the plastic, but could it be the tile? The grammar is very ambiguous. If the final words of the claim had been… and it has a metal edge to engage the metal edge of an identical adjacent tile… you would have taken the last phrase as relating to the tile as a whole.

Claim 5.

What could be more straightforward? This is claim depending on a single preceding claim, which had introduced the concept of metal particles, with the claim specifying the metal as zinc. But look again at claim 1 which refers to a metal carbide. Maybe the ‘metal’ of claim 5 is a reference to the metal of the metal carbide.

Claim 6.

This claim is dependent on any one of the preceding claims, but the concept of the particles was only introduced in claim 4.

The range is interesting. It goes from 0.5 mm to about 1 mm. So one end of the range is ‘made fuzzy’ or loosely defined by virtue of the word ‘about’ while the other end is precise. What can we make of that? Should the other end be equally ‘fuzzy’, or should it be precise as different language has been used? We will probably have to look at the examples in the patent for an answer to that one.

Otherwise we will just have to jump one way or the other, and try hard to justify why the skilled person would reach that understanding. Also bear in mind that the courts may well take into account the technical possibility of accurate measurement. How do you measure diameter when there are a number of particles all of which can have slightly different sizes? Are the particles necessarily spherical? What is the diameter of a non-spherical particle? There are lots of considerations that may have to be taken into account. And we must do all of that in about 50 words! And even at this stage you can almost guess that somewhere in the infringement or the prior art there will be zinc particles having a diameter of 0.45 mm.

So, a set of claims which, at a quick reading, seem to be generally ‘all-right’ can be seen to be riddled with problems and points that need to be construed that we can identify before we see the specification at all! That is often the case of claims in the FD4 examination. It will be necessary for you to develop an appropriate style of reading, mentally questioning every word and phrase, if you are to see all of the points that have been incorporated in the claims in the FD4 examination paper.

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4. How do I begin to tackle interpretation?

EXERCISE 2 Here is a second set of claims. This time you are just to read the claims, see if there are any obvious problems, jot down notes on anything that you spot, and possibly draw a sketch of what you think the preferred embodiment will look like: Claims 1. A blade for a bowsaw formed of a steel strip, the blade having teeth along one edge, the teeth having cutting edges and being arranged in groups of four.

2. A blade according to claim 1 wherein the teeth are offset alternately to one side of the blade or the other.

3. A blade according to claim 1 or 2 wherein the ends of the blade are configured to engage a peg on the bowsaw.

4. A blade according to any one of claim 1 to 3 wherein the groups are separated by clear spaces.

Just keep your notes to one side, as you will be seeing these claims again later on.

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CHAPTER 5

Now I have done ‘interpretation’, what comes next? Infringement.

Coverage The steps that should be taken when discussing Infringement will be outlined.

After you have read this chapter you should be aware of: 1. The need to look for all of the possible infringing acts.

2. The importance of considering each claim in connection with the infringing act(s).

3. The importance of providing reasons why each feature of the claim is / is not present in the infringing act(s).

t is recommended that after providing the ‘interpretation’ section, in which the meaning of the claims is set out, you should consider the question of infringement of all of the claims before moving on to dealing with validity.

The infringement may be a ‘direct’ infringement, in which case the features of one product or method may have to be compared with the wording of the claims of the patent, but it is quite common for there to be a more complicated situation, with one party making a major component of a potentially infringing product, or supplying a specific material for use in a method, or carrying out some steps of the method, with other method steps being performed by another party. This may make it necessary to deal with ‘contributory infringement’. You may also consider whether a purchaser and user of the product – especially if the product is used in any sort of ‘commercial’ environment, might also infringe.

You must be able to recall the acts specifically excluded from protection by section 60(5) of the Patents Act 1977 (as amended), since some of these acts may appear in FD4.

The examiner may have devised a quite complicated commercial scenario, which is provided to find out if candidates can ‘see the big picture’. Such a scenario can quite accurately represent the problems that face a senior patent attorney in day-to-day life.

Having identified what act(s) might infringe, the details of the act(s) must be considered in the light of the claims. If there is more than one infringing act, then you must either deal with the two (or more) separate acts separately, or else you must deal with the question of the

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5. Now I have done ‘interpretation’, what comes next? differences between the acts in a very clear and logical way. To be sure of the marks it may be better to consider the acts separately. If there is a contributory infringement situation, then it may be easiest for the complete product, or the steps of the complete process, to be compared with the claims initially, before considering in detail whether any specific party is a contributory infringer.

The infringement section usually carries a significant proportion of the marks, and the marks are spread over all of the claims. There may be a high proportion of the marks available for the independent claim(s), but this is not necessarily so. You can realistically expect there to be at least one mark for each claim, (including the omnibus claim if there is one) and so good answers will deal with all of the claims. It has been known for candidates to reach a conclusion that the main claim is not infringed, and then to state that because this claim is not infringed, then none of the dependant claims can be infringed. While this may be true in the real world, in the context of FD4 the result, if you follow this course, a potentially significant proportion of the available marks will be put out of reach. Aside from this, if you do not analyse the novelty of the dependent claim features then you will find it harder to perform a decent inventive step analysis of all of the claims.

So, regardless of the conclusions reached, you must keep going to the end of the claims.

Each phrase or feature of each of the claims must be compared with the infringement, and a reason must be given as to why the feature is present or not. Recall that marks are given for the reasoning displayed. When displaying reasoning remember the importance of ‘because’. Item C is not a knife because it is not a knife – is the sort of phrase you may be tempted to write, because any fool can see that item C is not a knife. However, in the context of FD4 you must give reason why it is not a knife, and in particular you must give a reason why it is not a knife as you interpreted the term ‘a knife’ in the construction section. So… Item C is not a knife because it has a serrated blade as found on a saw… does give a reason why it is not a knife. To give another example, if you say, ‘Item B is clearly a knife and thus falls within the scope of the claim…’ you may well get fewer marks than if you said ‘Item B is a knife because it has handle 1 and a non-serrated blade 2, and is used for ‘cutting’ (see page 2 line 4)…’ {assuming you construed a knife to be an item with a handle and a non-serrated blade used for cutting in the construction section}. Here the word ‘cutting’ is in quote marks because the word has been quoted from the identified passage. The reason may seem ‘flimsy’ but that is often inevitable in the world of FD4 where the examiner has to generate a technical situation that can be understood by all, and so where, of necessity, the underlying technology is ridiculously simple.

By stating what, to you, may appear to be simple, straightforward, and blindingly obvious, you are showing your reasoning, and enabling the examiner to give you marks.

When you are referring to ‘evidence’ to support your conclusions, give page and line numbers, and quote relevant words.

All of this may seem very ‘forced’ – but to score the marks you have to demonstrate to the examiner that you have a reason for reaching your conclusion – simply reaching a conclusion does not score the marks that you need.

You may reach a situation where you are stating and explaining in some detail what is, to you, the trivial, but this is what the examiner wants. However, you must do it succinctly, and without rambling.

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5. Now I have done ‘interpretation’, what comes next?

You may well benefit from practising with a style that somehow forces you to give reasons.

The style may be the repeated use of the word ‘because’, or the repeated use of ‘therefore’ or by using a set of three columns, with the first column identifying the feature, the second column indicating presence or absence of that feature, and the third column giving the reason.

This ‘tabular’ form can be simplified, by using a style in which the part of the claim under consideration is identified with its reference number, and then the word present or absent appears (or, for the sake of speed a √ or a Χ), followed by the word because and your reason. So, you might write: 1.1 √ because A relates to vehicle safety belts (see page 1 line 2 “..motor car safety belt 1..”) and item 4 is a buckle because Figure 2 shows it receiving a tongue 25….

You will see that this style means you do not have to write the words of the claim again, and as you have automatically written the word ‘because’ after your decision as to whether the feature is present or not, you are forced to give a reason.

By now you must have appreciated that most marks are ‘missed’ in FD4 because candidates do not give any reasons. It is easy to go through the whole of the infringement section, thinking that everything is trivial, and making sweeping statements such as ‘Item A clearly has a spring…’ ‘Item B clearly has a handle…’ and secure only a few of the available marks. It is not very difficult to give some ‘evidence’ or reason. If the word ‘spring’ was interpreted broadly as an element that provides a biasing force, then you could say Item A clearly has a spring – see ‘resilient arm’ 6 which acts to bias ( line 5 page 2) the latch to the closed position.

This helps demonstrate the importance of construing the language of the claims in the construction section with a good eye on what is going to turn up in the infringement (and novelty) sections.

Do not be easily led to a conclusion that there is not infringement simply because the infringement is far superior to the embodiment(s) described in the patent. The fact that the infringer may well have made further improvements to the original invention that may make the alleged infringement patentably different from the disclosure of the patent does not mean that there is no infringement.

In the infringement section all of the words of all of the claims need to be considered, not just those that you have specifically concentrated on in the construction section. Do not fall into the trap of sweepingly dismissing a claim by stating that one specific ‘chunk’ of the claim is ‘missing’.

Look at all of the words of the chunk to see which are there and which are not there. When you find one or more words missing you can make your conclusion. By doing this you may well have picked up marks attached to the consideration of the other features.

It is important to appreciate that in the infringement section you are comparing the or each infringement with each claim as construed by you. So you must compare the infringement with your meaning of each ‘chunk’ of the claim. Thus the words that formed your meaning of the claim should be used again, consistently, in the infringement section as the ‘yardstick’ for infringement.

Look again at the 2014 marking scheme for P6 and observe that in the infringement section a mark was given for reaching a conclusion at the end of each claim as to whether the claim Infringement and Validity • 2018

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5. Now I have done ‘interpretation’, what comes next? was infringed, and also observe that a mark was given at the beginning of each sub-claim for indicating whether the dependency had been met. In this marking scheme a candidate could miss out on 4.5 marks for failing to state conclusions and failing to deal with claim dependencies.

When the ‘complete’ product or method of the alleged infringement has been analysed, then consideration can be given to the acts committed by anyone who is a potential contributory infringer, to see if what they are doing is supplying means relating to an essential element of the invention within the terms of section 60 (2).

As and when you reach any conclusion regarding contributory infringement, you must remember to explain your reasoning, showing how the various commercial activities of the players in the plot outlined by the examiner fall within the net of section 60(2).

You should expect there to be a reasonable argument that at least the main claim (or at least one of the independent claims) is infringed, so that you can give sensible advice as to what might be done. If there is no infringement at all the options for action are usually very limited.

Consequently, if you reach the view that none of the claims is infringed, go back and have another look, trying to find an argument that there is infringement.

If you find that a claim is not infringed, you might very logically conclude that all the claims dependent on that claim are also not infringed. In FD4 resist that temptation, and analyse the sub-claims. Certainly say that the feature ‘A panel according to claim 1’ has not been met, but discuss the features recited in the claim. Are those features present or not? Then you might logically conclude that the features introduced in the claim have been taken, but the claim is not infringed because of dependency.

If there is a claim that is multi-dependent, and some of the claims it depends from are infringed, and some are not infringed, the consequences of that should be outlined.

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5. Now I have done ‘interpretation’, what comes next?

EXERCISE 3 In this exercise there is a patent and an infringement.

Read the patent (the claims will be familiar to you) and observe any differences between the described preferred embodiment and the sketch that you drew when you saw the claims for the first time at the end of the previous chapter. Can you see how the description and drawings of the patent may make you understand the language of the claims to have a different meaning?

Look at the infringement. See if you can understand the claims in such a way that the infringement is inside the scope of the claims. Also see if you can understand the claims in such a way that the infringement is outside the scope of the claims. Remember, you do not know if you are acting for the patentee or the infringer at this stage. Now you may appreciate which parts of the claim will need to be construed to determine if there is, or is not, infringement.

The patent is a UK patent granted four years ago and in force.

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5. Now I have done ‘interpretation’, what comes next?

Saw Blade

This invention relates to a saw blade, and more particularly relates to a bow saw blade.

A known bowsaw has a broad U-shaped frame. One arm of the U carries a fixed peg to engage the blade, and the other arm 5 has another peg on an over-dead-centre lever. The pegs are inserted through holes provided at opposite ends of a steel strip with teeth along one edge as shown in Figure 1, and the lever is actuated to retain the blade under tension. The teeth, which have leading and trailing cutting edges, and which are offset 10 alternately, cut the wood as the saw is drawn backwards and forwards in the cut.

The invention seeks to provide an improved blade in which the teeth are in separate groups.

Figure 2 illustrates a preferred blade.

15 Strip 1 has an aperture at one end to engage a peg on a

bowsaw, and a converging throat hook at the other. The triangular teeth 2 have cutting edges 3. As the saw of the invention is drawn through the wood sawdust accumulates in the gaps 4 between the teeth, and is drawn out of the cut. In 20 this embodiment the teeth of each successive group of four teeth are offset as indicated by the arrows.

The arrangement of the teeth makes the saw more efficient.

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5. Now I have done ‘interpretation’, what comes next?

Claims 1. A blade for a bowsaw formed of a steel strip, the blade having teeth along one edge, the teeth having cutting edges and being arranged in groups of four.

2. A blade according to claim 1 wherein the teeth are offset alternately to one side of the blade or the other.

3. A blade according to claim 1 or 2 wherein the ends of the blade are configured to engage a peg on a bowsaw.

4. A blade according to any one of claims 1 to 3 wherein the groups are separated by clear spaces.

Fig 1 4 3 3

2

1

2 Fig 2

The infringement is best appreciated from the description of Figure 4 of a European Patent Application published last month.

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5. Now I have done ‘interpretation’, what comes next?

155 Figure 4 shows a modified blade having a steel strip 33 with an

aperture 34 at one end and a diverging throat hook at the other.

This type of hook has the advantage that it can be used very effectively with pegs of different diameters. If the peg on the over-dead-centre handle has a small diameter it may slip out of 160 a round aperture as the handle is operated, but this effect is not seen with a converging throat hook.

In this embodiment the teeth 35 have cutting edges 36. There are raker teeth 37 in the gaps 38. Sawdust accumulating in the gaps 38 is efficiently removed from the cut by the rakers 37, 165 leaving the cut clean and enhancing the cutting ability of the saw on the next stroke.

38

37 36

36 35

35

34 33

Fig 4

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5. Now I have done ‘interpretation’, what comes next?

Now list the points you would concentrate on in your Construction, and identify the ‘clues’ that you might use in determining the real meaning of the word or phrase as it appears in the claim.

Some words or phrases will be non-contentious, such as words or phrases that relate to features that are precisely the same in the prior art and in the infringement. Other words or phrases may be more important, as the decision as to whether the infringement is inside or outside the claim will depend on the specific meaning of these words.

Look out for ambiguities, repeated use of a word, and the repercussive effect – they may not be there, but you will not find them if you do not look for them!

You may want to make some rough notes before you turn the page.

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5. Now I have done ‘interpretation’, what comes next?

If you looked first at just the language of the claims you may have seen the ambiguity in the opening words of claim 1 – is the bowsaw or the blade made of the steel strip? Even before you read the description you may well appreciate the answer to this, but in the FD4 examination you should put a few words explaining the position, and giving a reason. The reason might be just that the described blade is a steel strip… but there is a problem with this as the blade is actually just described as ‘strip 1’ at the very beginning of the specific description, with no mention of ‘steel’. So the description does not actually describe the invention. So the ‘reason’ has to be expanded to refer to the ‘steel strip’ mentioned with reference to Figure 1, and the fact that the skilled person would expect the ‘strip’ of Figure 2 to be of the same material as there is no indication to the contrary. You might write the word ‘Amend’ on your answer to remind you to look again at this point when you deal with the amendment section.

The teeth of the infringement are in exactly the same place as the teeth of the preferred embodiment, and the arrangement of cutting edges identified by reference numerals 3 in Figure 1 is the same as the arrangement shown by the reference numerals 36 in Figure 4, and so the parts of the claim relating to these features are non-contentious. However, a meaning must be given, with reasons, although it should be very brief.

The final phrase ‘arranged in groups of four’ also does not seem contentious.

The offset of the teeth mentioned in Figure 2 may be a problem. The language ‘offset alternately’ is only used with reference to the embodiment of Figure 1. The description of the preferred embodiment only directs the reader to Figure 2. This is a dilemma, but somehow you must make a ‘sensible’ construction. You could very reasonably explain that the skilled reader would think the words of the claim have the same meaning that they do in the description of Figure 1, with a consequence that the described embodiment is not inside the claim. Alternatively you could explain that the skilled person would at least expect the described embodiment to be within the claim, and thus would understand the words to be restricted to the arrangement shown, where all the teeth of the first group are offset the left, and all the teeth of the second group are offset to the right, and so on. It is also possible to reach a conclusion that the words are broad enough to cover both the arrangement of Figure 1, with strict alternation of the offset of the individual teeth, and also the arrangement of Figure 2, where the teeth of each group have the same offset, successive groups being offset in different directions. The general rule is that the words should be understood to cover the preferred embodiments as described, while possibly additionaly covering other possibilities, unless the language positively excludes this (but recall University of Queensland where ‘before’ was understood to mean ‘after’ so that the claim covered the described embodiment).

Can you appreciate that explaining these ‘delicate’ differences of meaning can pose quite a challenge, as you have to find words which explain the situation, without confusing the reader? Of course, a patent attorney must be able to use words in an accurate way, and FD4 is testing this skill.

Before we leave claim 2, could this claim have a repercussive effect on claim 1? We may come back to this point.

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5. Now I have done ‘interpretation’, what comes next?

Claim 3 seems non-contentious as the ends of the blade of Figure 2 look just like the ends of the blade of Figure 4.

In claim 4 the ‘clear spaces’ may be a problem. However, in the patent there is no description at all of the spaces 4 in the blade of Figure 2. They are identified as ‘gaps 4’, but then only in an indirect way in a description of the operation of the saw. What must a space have (or not have) to be clear?

Will any space that performs the function of the the gap 4 be a ‘clear space’? These are questions you will have to answer to determine whether the gaps 38 with raker teeth 37 are ‘clear spaces’. You might suggest that they are very definite spaces which are clearly visible, and so they are ‘clear’. You might equally suggest that they are ‘obstructed’ by the raker teeth, and so are not ‘clear’. The conclusion you reach will have an effect on whether the claim is infringed or not.

So, the points that really need discussion relate to where the infringement differs from the described embodiment of the invention, and where the claims are poorly drafted.

Are you surprised at how much there is to find and discuss in a short patent and a short set of claims?

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CHAPTER 6

How do I deal with novelty?

Coverage The steps that should be taken when discussing novelty will be outlined.

After you have read this chapter, you should be aware of: 1. The importance of considering each claim in connection with the potentially novelty-destroying disclosure.

2. The importance of providing reasons why each feature of the claim is / is not present in the potentially novelty destroying disclosure.

n a typical FD4 paper there is at least one prior art disclosure that is clearly potentially relevant as a novelty-destroying disclosure, but sometimes there is more than one such disclosure. You must be able to decide which of the documents that have been provided are serious contenders as novelty-destroying disclosures. You should ideally briefly consider and dismiss any irrelevant disclosures, or those where there is just not enough information to reach a conclusion. However, remember to give reasons why you are dismissing disclosures as irrelevant. For example the disclosure may not be sufficiently detailed to be an ‘enabling’ disclosure. Then each relevant document or disclosure must be considered in detail in turn.

Do not overlook any prior art specifically identified in the patent, or prior art which is acknowledged in any other patent document included in the question – such disclosures can be novelty-destroying. However, you may have taken this into account in the interpretation section, perhaps showing in that section that you have interpreted the claims in such a way that they are distinguished from the admitted prior art because that is the only sensible construction available. Even if this has been done, it may be appropriate to comment specifically on the difference between the claim, as construed, and the disclosure of the prior art acknowledged in the patent.

Dates are important. Check carefully that any document that looks as if it may be relevant to novelty was actually published before the priority date of the relevant claim(s), or is available as a ‘whole contents’ document, under section 2(3) of the Patents Act 1977, as amended. Show the examiner you have done this when you start to discuss a prior art document, by indicating the publication (or filing) date and comparing it with the priority date of the patent.

In some FD4 papers the exact dates of some documents or disclosures are not given. In the surreal world of Infringement and Validity it has been known for supposed patent specifications

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6. How do I deal with novelty? to be provided that do not carry any date at all. Of course, in reality this would never happen, but in FD4 the world takes on a strange perspective. Do not be afraid to assume that a disclosure that does not have a date was available before the priority date of the patent, but clearly explain in your answer that you have made this assumption, and remember to say that you would check the date. In the letter to the client, remember to ask for the date of publication, and indicate briefly the consequence of your assumed date being incorrect.

You must be very ‘aware’ when reading the letter from the client. It has been known for the letter to say that ‘a competitor has been marketing…’ a particular product. No date for the commencement of the marketing is given, but the product falls with the scope of the claims.

Now it should be clear to you that if the marketing commenced before the priority date there might be anticipation, but if it commenced after the priority date there might be infringement.

The analysis of whether the product is inside or outside the scope of the claims can be discussed, but the client must be presented clearly with the dilemma, and must be asked for the date of first marketing so that the dilemma can be resolved.

The skills required to assess novelty are really the same as those required to assess infringement. Are all of the features of the claims, as construed, present? So, the advice in this chapter is very similar to the advice in the preceding chapter.

When approaching the novelty section, you must again bear in mind that this section usually carries a significant proportion of the marks, and the marks are spread over all of the claims.

There may be more marks available in the independent claim(s), but this is not necessarily so.

It is safe to assume that there will be at least one mark for each claim, and so good answers will deal with all of the claims. It has been known for candidates to reach a conclusion that claim 1 is novel, and then to state that because the first claim is novel, then none of the dependant claims can be anticipated. While this may be true in the real world, if you do this in the context of FD4 the result is that a proportion of the available marks are put completely out of reach.

Firstly, you might very briefly identify all of the disclosures in the question that could possibly be considered to be disclosures of prior art. These disclosures may include the prior art disclosed in the patent, the prior art acknowledged in any cited patent specifications, and all of the described embodiments (including any modified embodiments that may be mentioned) and possibly a prior use outlined in the letter from the client, or some other technical publication.

You can then give reasons why you are discarding any documents or disclosures that are of no relevance. It may be that the description is too brief to understand precisely how the item works – and merely stating that is providing a reason why you are not considering the document, and so again you are displaying your reasoning, which is what attracts the marks. However, if it seems that more information may be available, for example, if the poorly described embodiment is an item that has been made or sold by the client, remember to ask for more information. You might write ‘Ask for more information’ at the bottom right hand corner of the paragraph dismissing the disclosure, and underline it. This will show the examiner you intended to ask the client should you fail to do this in your letter. But by writing this, you will be able to ‘skim’ your answer as you write your letter to the client to find any questions that you need to ask.

You should now have two or three disclosures that warrant considering in detail – and you have to compare each of the disclosures in turn with the language of the claims to see if there is any single document that satisfies all of the requirements of any of the claims.

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6. How do I deal with novelty?

A technique sometimes used by the examiner is to have a prior art document where the preferred embodiment that is described in detail is not relevant, but somewhere (often in the middle of a bit of detailed description), there is a passage which mentions that in an alternative embodiment, which is not illustrated… If you see this, take great care. Often it is the alternative embodiment that is really relevant.

Again, it is to be expected that there will be marks for each of the claims on the marking schedule. So, regardless of the conclusions reached, you must keep going to the end of the claims.

The procedure that is used is the same as that adopted when considering infringement. Each phrase or feature of each of the claims must be compared with the prior art disclosure being considered, and a reason must be given as to why the feature is present or not. None of the wording of the claim should be omitted. Recall that marks are given for the reasoning displayed.

This may seem very ‘forced’ – but to score the marks you have to demonstrate to the examiner that you have a reason for reaching your conclusion.

As with infringement, you may reach a situation where you are stating what is, to you, the blindingly obvious, but this is what the examiner wants.

As in the infringement section you will probably find it beneficial to practise a style that somehow forces you to give reasons. The style may be the repeated use of the word ‘because’, or the repeated use of ‘therefore’.

Again, you might find it simplest to adopt a style in which you give the reference number of the passage of the claim being considered, followed by ‘present’ (if the feature can be seen in the prior art), or ‘absent’ (if it cannot), with the next word being ‘because’. Alternatively, you can use the √ and Χ notation. Of course, you will then need a reason why the feature of the claim is, or is not, found in the disclosure being considered. So once again the three-column approach may be good, namely the feature, present or not, and because…

All of the words of the claim need to be considered, not just those that you have specifically interpreted. Each and every one of the claims needs to be considered, regardless of the conclusion reached for any specific claim. Do not just immediately conclude that a claim is novel because one feature is not shown in the prior art. Discuss all of the features to confirm which features are really there and which are not. This will help greatly when you come to inventive step, as you will know for sure which features are missing. Also, you will not be just throwing marks away.

In the novelty section you are (in a way that is identical to the infringement section) comparing the or each novelty destroying disclosure with each claim as construed by you. So you must compare the prior art embodiments with your meaning of each ‘chunk’ of the claim. Thus the words that formed your meaning of the claim should be used again, consistently, in the novelty section as the ‘yardstick’ for anticipation. The meaning of the claim should not change in any way between your consideration of infringement and your consideration of novelty.

Look again at the 2014 marking scheme for P6 and observe that in the novelty section a mark was given for reaching a conclusion at the end of each claim as to whether the claim was infringed, and up to 5 marks could be gained by just expressing a conclusion. In this marking scheme there were not any marks in novelty for indicating, at the beginning of each sub-claim, whether the dependency had been met, which might be considered to be inconsistent with the approach taken in infringement. However, it is safest, in FD4, to be thorough and deal with Infringement and Validity • 2018

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6. How do I deal with novelty? dependencies in novelty, and even in inventive step, as well as in infringement as they can be equally relevant.

You might logically conclude that if a main claim is novel, all claims dependent on it are novel, but in FD4 you are expected to analyse the claims to see which features of the sub-claims are novel in their own right. You can then logically conclude that the features of the sub-claim are not novel themselves, but the claim is novel because of dependency. Again look out for a multi-dependent claim where some of the claims it depends from may be novel, and some not.

As a matter of examination tactics it might be thought prudent to try and reach a conclusion that at least one claim is novel. The main reason for adopting this strategy, if possible, is that you know that there will be a section in the examiner’s marking schedule for your discussion on ‘inventive step’. If you have concluded that a claim is novel, then a discussion of inventive step can begin, as you will have a difference between the invention and the prior art.

It may sometimes be necessary to interpret or construe words or phrases that appear in the potentially novelty-destroying document. If there is a need to interpret, then this may be done at the beginning of the section, or at the point where the meaning of the words or disclosure become relevant. As always, reasons must be given for the interpretation, with those reasons being primarily based in the document itself, or being based on the common general knowledge of the person skilled in the art. Remember that a document should be construed as at its date of publication, and the meaning of some words can change with time.

It is to be understood that specific words can have very different meanings in different contexts, and if a prior art document has words that are the same as words in the claims, it is not necessarily the case that words have the same meanings. This may especially be the case if the prior art document is not in the same field as the patent, or if the prior art document is very old.

One point that can easily slip through the net is whether the prior art disclosure is actually an ‘enabling disclosure’ or not. In other words, could a skilled person take the disclosure of the prior art document at its date of publication, and using no more than his or her common general knowledge and the teaching of the document make at least one working embodiment of the invention within the scope of the claims of the patent as construed? If there is not sufficient teaching in the prior art document to ‘enable’ the creation of an embodiment of the invention, then it cannot destroy the novelty of the claims.

As you finish the novelty section it may again be appropriate to at least write notes about possible amendments, and again put the word ‘Amendment’, underlined, at the bottom right hand corner of the relevant paragraph, to show the examiner you realise that amendment might help, and to help you find the point again when you are doing the amendment section (or as mentioned above, maintain an amendment section in parallel with preparing your answers to earlier sections). Your notes might outline how the claims might be amended to add in features that will make the claims novel. Remember that the amended claims cannot be broader in any way than the granted claims, but it is not necessary to combine whole claims when making an amendment. Individual features taken from the sub-claims, or from the description can be added to the main claim to give it novelty. If the notes are written neatly, they could just be used as (part) of your amendment section.

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6. How do I deal with novelty?

EXERCISE 4 Considering again the patent for the bowsaw blade, and the infringement, investigations reveal a woodcutting bandsaw blade imported from China, several of which were sold in the UK by a shop in Hull during a three-week period six months before the priority date of the patent. A bandsaw blade is supplied as a long strip which is cut to length and welded into a loop on the bandsaw machine. It is a steel strip having teeth set as shown. It moves in the direction of the long arrow, and only the leading edge of each tooth is sharpened.

Fortunately, you have a sample of the blade as sold. The packaging on the blade says that the ‘quadriset’ teeth provide an improved cut. Multiple cuts on one side of the cutting grove in quick succession generate a very aggressive cut, as the wood does not have time to relax between the time the first tooth cuts and the time the second, third and fourth teeth cut.

Now consider if you need to re-visit the interpretation of the claims of the patent to determine whether this prior art anticipates the claims. You could, at this stage, actually write a construction of the claims, giving reasons for the choices that you make when construing the claims. Explain the meaning of all of the words of the claims, even words such as ‘A blade according to claim 1’. Where possible give your reasons, giving references to the parts of the text where you have found ‘evidence’.

You may prefer to defer doing this until you have read the comments that begin on the next page concerning the relevance of the bandsaw – or you may be brave enough to do it now, and then see if your analysis of the bandsaw was appropriate.

Now turn the page.

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6. How do I deal with novelty?

EXERCISE 4 – notes Could the bandsaw blade be ‘for’ a bowsaw? Does a blade ‘for’ a bowsaw have to have something at the ends of the blade to engage with the pegs on the bowsaw? But if a blade ‘for’ a bowsaw must have something to engage with the pegs, what is the effect of claim 3? Is there an argument that the repercussive effect of claim 3 is such that claim 1 must cover a blade where there is no specific configuration at the ends of the blade to engage the pegs?

There are arguments in each direction. The FD4 examiner would be looking for you to follow one argument, giving your reasons. You might also outline the other argument, giving reasons why it is not persuasive. In many cases the two arguments are very closely balanced and it is difficult to choose one argument over the other, but you must make a decision.

Do the teeth of the bandsaw have ‘cutting edges’ in the sense of claim 1? Does this phrase (which has not given us any problem until now) mean that each tooth has two cutting edges, as described, or is the phrase broad enough to cover a blade which has teeth which only have one cutting edge each?

Could the teeth of the bandsaw be considered to be ‘arranged in groups of four’ as required in claim 1? This phrase, which seemed to be non-contentious when we were just looking at the infringement, now seems to be a problem. Maybe the original assumption that the meaning of this phrase was straightforward was wrong.

The teeth of the bandsaw are set in a way that is called ‘quadriset’. As in the described embodiment of the invention, there are four teeth offset to the left followed by four teeth offset to the right, and so on, but there are no gaps or spaces between the teeth. This arrangement of teeth, with four offset one way followed by four offset the other way is described as providing a specific advantage. Can we safely presume that this advantage is also found in the blades of Figure 1 and Figure 4?

Are spaces or gaps between teeth essential to make the teeth ‘arranged in groups of four’? Does claim 4 have a repercussive effect on claim 1? It would be possible to conclude that, if claim 4 has a repercussive effect, it is limited to the word ‘clear’. So claim 1 could mean that the teeth are ‘arranged’ in groups, and so must be in groups that are somehow physically separated, and claim 4 adds the fact that they are separated by ‘clear’ spaces. Thus claim 1 could include groups separated by ‘unclear’ (or ‘obstructed’) spaces.

Alternatively one could conclude that no spaces are necessary. Consider, for example, a row of evenly spaced plants in the garden. The first four plants have red flowers, and the next four plants have blue flowers. Then there are another four with red flowers, and so on. Could you say that the plants are ‘arranged in groups of four’? So maybe we could say that the teeth of claim 1 are in groups of four because they are offset in the groups – so the first group is offset to the left and the second set offset to the right. But if we do this, and effectively limit claim 1 to the nature of the offset shown in Figure 2, what is the effect of claim 2? So, does claim 2 have a repercussive effect on claim 1?

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6. How do I deal with novelty?

But then again, the object of the invention, in the third paragraph of the patent, says that the invention seeks to provide a blade in which the teeth are in separate groups….and surely that must mean there is a space? Or could it mean something else?

What a nightmare!

But if you find a nightmare situation like this in a FD4 examination, you know you have found a pot of marks. You have to walk round the possibilities, explaining why some seem more attractive than others, and as you will appreciate, once you have given a definite meaning or construction to the words of the claim, the question of whether an infringement or an item of prior art is inside or outside the claim is much easier to decide.

So a decision must be made as to whether a gap or space between the groups of teeth is, or is not, essential.

Looking at claim 2 whether the teeth of the bandsaw are, or are not, offset in the manner claimed depends on the meaning that has been placed on those words as discussed above.

Claim 3 does not seem to be anticipated in any way, and the same comment applies to claim 4.

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CHAPTER 7

And what about inventive step?

Coverage Two approaches to the discussion of inventive step will be outlined.

After you have read this chapter you should be aware of: 1. The need to take a structured approach to any discussion of inventive step.

2. The ‘Pozzoli’ approach.

3. The ‘problem-and-solution’ approach.

n the real world the issue of ‘inventive step’ is often of crucial importance in contested patent matters. Unless there are delicate matters of interpretation most parties can soon agree on the questions of whether a claim is infringed or not, and whether a claim is anticipated or not.

It is the question of ‘inventive step’ that tends to divide opinion, as there is no ‘black-and-white’ test. The FD4 examiner is trying to see if candidates have sufficient experience in inventive step matters to be able to advise their clients, and to be able to generate appropriate attacks and defences.

Look again at the marking schemes for the P6 paper of 2014 and the FD4 papers from 2015 onwards. From the table given at the end of the inventive step section it is clear that there were marks in the marking scheme for considering the inventive step of each of the claims. So, it will be prudent for you to try and devise an inventive step argument for the subject-matter of each claim, even if you have found any particular claim to be novel. You will hopefully have been involved in European Patent Office opposition proceedings, where it is common to have several different ‘attacks’ that are considered in order, and a similar approach can be adopted in FD4.

As with novelty, because one claim is found to have inventive step, it is not appropriate simply to say that all of the claims dependent on that claim must have inventive step. This can, of course, be said, because in a way it is true, but the examiner is expecting you to analyse the inventiveness of the subject-matter of each claim.

It is inevitable that the marks set out in the ‘inventive step’ section of the marking schedule must be at least partly discretionary. The examiner has tried very hard to set a lot of points ‘in balance’, and when you reach this stage of the answer you have made various decisions regarding the ‘balance points’, supporting your decisions with evidence and reasoning. However, other candidates will have made very different decisions, and so as you enter the inventive step

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7. And what about inventive step? part of the paper you may have decided on a feature or combination of features that give the claims novelty and another candidate may have concluded that a very different feature gives the claims novelty. The examiners have to be fair to all candidates, and so at this stage the examiners are judging your technique, and trying to assess if you have done a good job. They look to see if the conclusions that you have reached are logical, with the logic being explained. Can you show that you understand, and can use, the various ‘tools’ that are needed to construct an inventive step attack? Can you see the ‘clues’ that can be used as evidence to support or contest the suggestion that a claim is ‘obvious’?

So you can see that here, even more than in the novelty section, there is no set conclusion for you to reach, as so much depends upon your construction, and also the decisions that you have made concerning which features of the claims are shown by which prior art documents. The only thing that you have to do is to discuss inventive step in a sensible structured way.

Even if you cannot begin to see an inventive step attack, please do not just write ‘I cannot see any inventive step attack that will succeed’. That will get you no marks. You must show the examiner your thoughts, and so you must show that you have considered the problem, tried to generate arguments, and that you have only been able to generate a case that is extremely weak.

If you have found a specific claim to lack novelty, but to be ‘only just’ anticipated, because one feature was present in view of a possible broad interpretation of that feature, you could at this stage consider the effect of a narrower interpretation of that feature. So you can explain that if the feature is construed narrowly the claim would be novel, and then you can consider the inventive step of the now-novel claim. Alternatively, you can simply attack the claim as being obvious as well as lacking novelty as would a patent office examiner.

Even if you have concluded that a claim is anticipated by one or more prior art documents, you can still consider the possibility of an inventive step attack based on the remaining documents. So, for each claim, you should at least consider the possibility of an attack on the subject-matter of the claim on the basis of each prior art document taken alone, and each possible available combination of documents, and somehow show the examiner that you have done this. Sometimes the examiner is looking for arguments based on the combination of two patents. The approach taken by the courts is typically that it is not permissible to combine the teaching of two disclosures, such as patents or other documents unless one of the disclosures is common general knowledge, or there are some strong reasons for combining these two specific disclosures, such as a reference in one to the other. However, if you see an attack that could be raised by combining two disclosures, you could outline the attack, but explain that it would not really be available because it is two disclosures that are being combined, neither of which is common general knowledge and there is no motive to do this.

Before you start the detailed consideration of the inventive step attack just check the publication dates of the disclosures. Some disclosures may be available for novelty, but not for inventive step!

The examiners have made it clear that they prefer to see candidates adopt the approach used by the British courts, but they will not penalise candidates who make a good attempt at the problemand-solution approach favoured by the European Patent Office. That said, it will probably be harder to gain marks efficiently using the problem- and-solution approach as this approach will take longer to present in your answer. Most of the marks will be awarded on the basis of the quality of the arguments that you can generate. However, in using problem-and-solution there is a tendency to 80

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7. And what about inventive step? pick just one document as the starting point and move on from there, and so you may miss some of the arguments that the examiner is hoping that candidates will raise.

The British courts now use the approach set out in Pozzoli SpA v BDMO SA and others [2007] EWCA Civ 588; F.S.R. 37 and www.bailii.org/EWCA/Civ/2009/498.html. The case sets a four-step test for determining inventive step, with the first step being in two parts. The steps are: 1.

2.

3.

4.

a) Identify the notional person ‘skilled in the art’. b) Identify the common general knowledge of that person.

Identify the inventive concept of the claim, or of that cannot be done, construe it.

Identify what, if any, difference exists between the material forming part of the ‘state of the art’ and the inventive concept of the claim or the claim as construed.

Viewed without any knowledge of the alleged invention as claimed, do those differences represent steps which would be obvious to the person skilled in the art, or do they require any degree of invention?

All of this may, at first sight, seem to be a bit circular, but this approach does help thoughts to be marshalled in a logical order.

Some candidates write out the Pozzoli questions, but there are no marks for doing this, especially if the candidate then goes into ‘waffle-mode’. The examiner expects you to follow the Pozzoli precedent, and you can show the examiner that you are doing this by using the unique numbering system as you answer the four-step test.

You will typically get recognition if you start the obviousness section setting out that you know the relevant case law and can deal with the initial steps of the test. So you might just write something like ‘Applying Pozzoli...’ before you move onto the four steps.

For all of the claims together, you can deal with step 1a)… who is the person ‘skilled in the art’? This always depends on the facts of the case. In the Catnic case, where the invention was a steel lintel to go over a doorway, to replace the then-conventional wooden or cast concrete lintels that were made on-site, the notional addressee was a person skilled in the building trade and the use of lintels. In other cases, the skilled person has been found to be a designer of the relevant products (rather than a user of the products), or even a team of people, each bringing a particular expertise or knowledge-set. It is possible to envisage scenarios involving groundbreaking inventions where it may be very difficult to identify the skilled person, but in FD4 it is usually quite straightforward.

Typically, the title of the specification, and the first paragraph, or preamble, indicate the technological area of interest, although the title and the first paragraph may not be consistent.

From a tactical point of view in FD4 you will probably want the skilled person to have a broad, rather than specific, common general knowledge. The challenge is for you to define the skilled person quickly, while giving a reason. If the situation that faces you is such that there are arguments that the skilled person should have a broad knowledge, and arguments that skilled person only has a narrow field of interest, then both arguments should be outlined in your answer, and a conclusion should be reached.

If you preface the answer to the first part of the first question with ‘ 1a) ’ and then preface the answer to the second part of the question with ‘1b)’ the examiner will get the idea that you are Infringement and Validity • 2018

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7. And what about inventive step? following the Pozzoli approach, and this will be reinforced by prefacing the answers to the three remaining questions with the appropriate numbers.

In answering question 1b) in real life there can often be a long discussion as to what information is within the common general knowledge. In FD4, however, you can only rely on the information provided in the question, and so the only real decision that you have to make is what information in the documents provided is known to the skilled person. There will not be any marks for waffle about the skilled person knowing about this general area, but not that general area. You must move straight to a decision as to which documents or disclosures will be in the common general knowledge, and which documents or disclosures will not. This, again, can be dealt with together for all of the claims at the start of the Inventive Step section.

In setting the question, the examiner could identify some documents as being within the common general knowledge, but the examiner is trying to test your powers of deduction, and so provides a selection of disclosures to see if you can come up with reasons why any disclosure is, or is not, common general knowledge to the skilled person. There have been many cases in which the scope of the common general knowledge has been discussed, and the conclusion has been reached that it includes standard texts or material accepted without question by those in that line of work, and so includes text books, regulations, and methods and products which have been widely used in the relevant field. The common general knowledge does not automatically include all patents in the field, or all sales of products, especially if the total number of products sold was very low in comparison with the size of the market. However, if a document is quite old, or an ‘isolated’ document, then it may be possible argue that the document is not in the common general knowledge. Also the common general knowledge does not necessarily include specific design details of prior-sold products.

In FD4, you must look closely at the documents and disclosures provided to see if you can come up with any reason why each disclosure might be well known to the skilled person. It is usually easy to decide if a textbook is in the right field. It may be more difficult to decide about a publication which is in a similar field. Would the skilled person be expected to consider that similar field? Is there any motive for the skilled person to look in the other field? Do the same problems face designers in the two fields? Or are the fields very separate commercially? The examiner will expect you to explore the possibilities and reach a conclusion.

In one P6 paper, the same piece of prior art was briefly described in the patent, and also in a prior patent that was on the table. Why did the examiner do that? So that a candidate could suggest that if two different inventors mentioned this piece of art independently, then it was probably within the common general knowledge? You must look hard to find the clues that the examiner has put into the question. Look out for things like ‘It is well known’……regardless of where those words appear. The clue could be in the letter from the client, or a preamble in a specification.

A patent specification may, in some circumstances, be within the common general knowledge, but this is very much the exception and there must be some evidence that you can point to if you are going to suggest that a patent specification, or the embodiment described in the specification, would be known to the skilled person.

Now you have identified the skilled person and which of the disclosures (or which parts of the disclosures) can be considered to be common general knowledge you can move on to the second question.

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7. And what about inventive step?

For each claim, you must now try to distil the inventive concept of each claim. This can be the feature or features of the claim that really solves the problem that the inventor is seeking to solve. For example, recalling the example used in Chapter 5 of a case involving an airbag, you might put a few words that serve to identify the inventive concept and give a reason. So, you might put something like: The inventive concept of claim 1 is the provision of the vent hole in the airbag, because it is the provision of this vent hole than enables the airbag to deflate slightly when the driver’s head hits it, thus gently decelerating the driver’s head, rather than letting the head bounce back, which is what would happen if there was no vent and the airbag was inflated to be ‘hard’.

The third question should be easy to answer as you have already decided on the novelty of each claim. Using your novelty analysis, at this point simply set out what features were not present in the prior art document(s).

Your answer will look something like: Document D shows all of the features of the claim except the feature of ‘the airbag having a vent hole to permit gas to escape from the airbag’.

It is your answer to the fourth question that will really bring in the marks. The answer must be logical, and set out clearly, and not just waffle. Remember that just because an invention is easily understood, or just because it seems simple, or just because it is not technically difficult, does not mean that it was ‘obvious’. Generally, the British courts have been reluctant to find an invention to be lacking in inventive step, but sometimes a claim that is more than one step away from the prior art can be found to be obvious (see the Bos GmbH decision for example) if it can be shown that there would be some motivation to improve an old design.

You should address inventive step on a claim-by-claim basis, considering all of the possible attacks on claim 1, and then considering all of the attacks on claim 2, and so on.

Starting with the first claim you should initially consider the difference between the claim and each individual piece of prior art. During this thinking stage you will be looking to see if the ‘difference’ can be observed in any of the other documents or disclosures. Also, you will be thinking if the difference is something that the skilled person would be led to almost automatically when seeking to solve the problem, bearing in mind that the skilled person is usually expected to seek to improve things. Is the ‘problem’ that the difference solves a ‘problem’ that was immediately apparent? Was it even mentioned as a problem before the date of the patent? Is it possible that the really clever thing was actually ‘spotting’ the problem? Is it technically easy to make the necessary change? If the change is made, are there further parts of the product that will need to be altered or redesigned? Will the change be expensive to implement? All of these are questions that should be floating in your mind as you begin to think about your analysis of the inventive step of the main claim.

Bear in mind that the skilled person not only has their specialised common general knowledge, they can also be assumed to know about things that are commonplace in the dayto-day world. While you should not bring any specialised knowledge that you may have to the examination room, things that are really just common sense should be used. For example, candidates have been expected to at least query whether the use of polyurethane as preferred material for a ‘foam body’ was just an obvious selection of a known material. The skilled person appreciates that sometimes things can be improved by selecting a different size or shape or material, and will be expected to at least consider such options, trying to determine if it would Infringement and Validity • 2018

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7. And what about inventive step? be a good idea or a bad idea. Something might be ‘obvious to try’, even if there is some doubt that it would really work. As long as there is some motive to make the attempt, then it may be possible to conclude there is no inventive step.

There are things that can indicate that there really is an invention, even if the claimed subjectmatter looks very ‘thin’. For example, is the problem that has been solved one that has been around for a very long time? If the ‘starting point’ disclosure is, say, more than 20 years old, is it really reasonable to say that any skilled person looking at it would make the step to bridge the gap between the disclosure and the invention? It may be even more unreasonable to see an inventive step if the attack is based on one or two documents that are in ‘the common general knowledge’. If the starting point is common general knowledge the step to get to the invention cannot be obvious or someone would have done it sooner. Sometimes financial success on the part of the patentee can be an indicator that an invention may be present, but this indicator is certainly not infallible, as many people and organisations have had great financial success with products and processes that have been far from inventive, with that success being driven by other factors, such as good marketing and advertising. Also, with a product with any degree of complexity, it may be impossible to prove that the success was the consequence of just one inventive feature in the product.

Sometimes the client’s letter may describe its commercial aims or a ‘non-patent’ reason for the commercial success of the product in question. These should be treated respectfully but often do not bear on obviousness issues or on what line of amendment to take. But in any event in the report to the client how you chose to treat such an indication should be explained, at the very least to show that you did not just ignore it.

If the invention has been marketed, is it very different from everything previously available in the relevant field? And did designs that resemble the invention become available after the invention was launched? Evidence of this type of situation can help demonstrate that a real invention has been made.

The important thing in FD4 is to show the examiner what you are thinking, demonstrating that you are trying to generate an argument, and then concluding that the resultant argument is flawed if you cannot find an argument of real merit.

When you have thought about each piece of prior art individually, then you must look again at the non-common-general-knowledge items, and see if the difference between the main claim and each of these documents is shown in a common-general-knowledge disclosure. If it is shown, is there anything that might lead the skilled person to combine the teachings, or anything, such as a pre-existing prejudice in the art, that would discourage the skilled person from effecting a combination? For example, (referring again to the airbag example Chapter 5) the examiner might put a passage in the letter from the client reading: For years we have been trying to make airbags really gas-tight, so that we can get them inflated in less than a quarter of a second, and having a large hole in the airbag would just make it much more difficult to inflate the bag in the short period of time available…Any prejudice like this leading away from the invention may show there is an inventive step.

Always check to see if you client showed any ‘surprise’ or ‘amazement’. Sometimes the surprise is that a patent existed, and this may be because the client was of the view that the product in question could not possibly be inventive. There is another reason why your client might be ‘surprised’ that will be mentioned in Chapter 10!

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7. And what about inventive step?

Consider if the invention is a simple combination of the teaching of the disclosures that you are seeking to combine, or are further changes or modifications needed? The more necessary it is to modify or change, the more likely that there is an inventive step. Although it may be clear that two disclosures could be combined, the real question is would the skilled person be motivated in any way to effect the combination?

Of course, you may find that two items in the common general knowledge could be combined to reach the desired result, but in such a situation be wary, since if the skilled person was already aware of the two pieces of the solution to the problem this must raise the question as to why the solution was not reached before.

Often timing can be an important part of an inventive step argument. For example, was the invention made very shortly after a key document was published? This might show that the development of the disclosure of that document into the invention was carried out quickly and might well be ‘obvious’. On the other hand, if all of the necessary information had been in the public domain for a long time, then that may be an indicator of inventive step.

The examiner does not want comments that indicate merely that the point is trivial, or ‘easily invented’, and also will want more than a simple statement that some of the features of the claim are in one disclosure, and the remainder are in another. The examiner will want an outline of the motivation that existed to combine the teachings.

Beware of ex post facto analysis. It is always easy to explain how you could have started with a particular document, and then you could have changed this and could have changed that to reach the invention. But this analysis is based on the knowledge of the final destination i.e. the invention. The real question is always not could the skilled person make the journey, but would the skilled person make the journey. Can you find anything that would be a motive for the skilled person to combine the two teachings? Many things which look simple and obvious after the event were certainly not obvious before the event.

Having dealt with the main claim, you will now need to progress to the subject-matter of the remaining claims. If the subject-matter of a dependent claim is to be found unambiguously disclosed in the ‘starting point’ document used in a successful inventive step argument set out against the main claim, then this fact can simply be highlighted, as the dependent claim cannot be valid. Do be careful to set out the inventive concept of each dependent claim as this will change with the further features added be each dependent claim. Otherwise it will be necessary to see if it is possible to attack the subject-matter of the sub-claim on the basis that the subject-matter of the claim is obvious. The mental ‘tools’ that you used in connection with the main claim will have to be re-employed with each of the sub-claims (and any further independent claims!).

The inventive step section of the answer typically has around 20 marks. The marks are usually spread across all of the claims, usually with most marks for the independent claim, but with still valuable marks in the sub-claims. Recalling how many words you can write in a minute, you will appreciate that you cannot really afford a very exhaustive analysis of inventive step, but you must be able to write enough to show the examiner that you can use the necessary ‘mental tools’, and you can notice observe evidence, or deduce reasons, to support, or resist, an obviousness attack.

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7. And what about inventive step? that they will have reached in interpretation and novelty. The examiner will, however, assess how well you have done, taking into account your own starting point.

Firstly, it is necessary to determine the problem that is solved by the invention. In the world of FD4 it will help greatly if you can identify a problem that is actually solved by the feature or features of the claim that distinguish the claim from the prior art. This need not necessarily be the problem that the inventor originally set out to solve as described in the preamble of the patent, but may be a very different problem.

Initially, you should consider a starting document that shows ‘most’ of the invention and try to determine if it would be ‘obvious’ to make the modification, initially without referring to any other document. The mental tools that are described above in the Pozzoli approach are of equal value here. One is looking for motivation to make the change, rather than mere opportunity. Then you can see if there is a second document that actually discloses the modification. Here again you are looking for motivation that would make the skilled person at least try the modification.

Does the combination of the documents get us all the way to the invention? – or are further changes or modifications needed? Is there any pre-existing prejudice that might deter the skilled person from making the combination? Would a simple combination of the features give rise to other problems?

Once again the point to be considered is would (NOT could) the skilled person have tried the combination of features in the claim to solve the problem?

Remember to consider the subject-matter of all of the claims.

Whichever method you use to consider ‘obviousness’ it may be prudent to consider whether any amendments would be available to the patentee to improve the position, and make the claims less ‘obvious’. You may be able to ‘see’ a potential area for amendment much more clearly while the ‘obviousness’ attack is fresh in your mind. If you think that there is an appropriate amendment you might write ‘Amend’ at the bottom of the relevant paragraph, and underline it, so your eye will be drawn to it as you skim through the early part of your answer while preparing the amendment section.

As in previous sections of the answer the word ‘because’ may be a very useful friend. It is very easy, in the obviousness section, to make sweeping assertions. You might put ‘It is clear that the skilled person would combine documents A and C….’ Indeed, this might be the case, but you must explain WHY. So, set yourself a challenge. Can you get at least ten appearances of ‘because’ in the inventive step section of your answer, as well as setting out coherent arguments based on the disclosure of the prior art documents and a bit of common sense?

Because the real test of ‘obviousness’ involves the skilled person, the only thing you can hope to achieve in the examination room is an educated guess as to what the skilled person might think, and arguments that might be put forward. So your answer will, almost inevitably, merely set out some possibilities. While the examiner will expect you to come to a definite conclusion concerning the validity of each claim it would be prudent to end this section of your answer with a reference to the fact that you would get a real person of skill in the art to review your logic and your conclusions. You can do this by asking the client for confirmation from a skilled person.

Those candidates who are over-full of self-confidence (which may come across as pomposity), and who indicate that because they think the claims are obvious they must be invalid, may not really impress the examiners.

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7. And what about inventive step?

EXERCISE 5 Still having in mind all of the papers about the bowsaw blade of Exercises 4 and 5, consider how you would approach inventive step in the light of the fact that the investigation also shows a chapter in the textbook ‘Saw Blade Design’, published three years before the priority date, relating to circular saws for cutting marble. One blade illustrated in the chapter is shown. The blade is described as providing a superior cut with minimum dust retention in the cut. Another part of the book describes how a circular saw blade is usually made by being stamped from a long sheet of steel, a row of ten blades each having a diameter slightly less than the width of the sheet being stamped from a single sheet. Circular saw blades only rotate in one direction, which is shown by an arrow printed on them.

Only the leading edges of the teeth (in the sense of rotation of the blade) are sharpened.

Consider how you would approach dealing with the question of ‘inventive step’. Maybe you would like, now, to write an analysis of ‘inventive step’ before turning over the page.

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7. And what about inventive step?

EXERCISE 5 – notes Who is the skilled person? What is the common general knowledge of the skilled person?

Surely the title and pre-amble help with defining the skilled person. The title is ‘saw blade’ and the preamble begins with a reference to ‘saw blade’, followed by ‘more particularly… bowsaw blade’.

There seems to be a strong argument that the skilled person knows about saw blades in general.

Is the blade of Figure 1 common general knowledge? It is described as if it is the only type of bowsaw blade that has been used before. Is the bandsaw blade common general knowledge? This would seem most unlikely if it was only sold in one location during a three-week period. However, maybe the investigations only revealed one use, and in truth the blade was very popular and in widespread use. Maybe we should ask the client, who may have knowledge of the saw blade market, if there is any further information.

Is the circular saw common general knowledge? It is in a textbook, but it relates to a very special type of blade, used for cutting marble rather than wood.

So there is quite a lot to deal with in deciding which documents are available for use in an ‘inventive step’ attack, and there are a lot of arguments that lead to opposite conclusions.

What is the inventive concept of the claim? The answer to this question depends on your construction. It might be that the teeth are divided into groups of four which are separated by gaps.

It might be that the teeth are in groups of four, with the teeth of each groupbeing offset in the same direction, successive groups having different directions of offset. It might be simplest just to refer to the construction of the claim.

The closest prior art would seem to be the admitted blade of Figure 1. If your construction of claim 1 permitted, then the bandsaw would also be close prior art. You have already considered the differences between these items and the claims. You may have concluded that some claims are anticipated, but some claims may remain unanticipated by this prior art.

Can we now find ‘the difference’ in any of the common general knowledge documents available to us? And if we can find ‘the difference’ is there anything that would lead us at least to try to use that ‘difference’, or is there anything that would make us think that trying the ‘difference’ would just be a waste of time?

The answers to these questions depend very much on your initial interpretation of the claims, and your analysis of the prior art, and your thinking about the circular saw blade. While it does have a tooth pattern which is identical to that of the preferred embodiment, it is a circular saw, and so only has the leading edge of each tooth sharpened, and it is intended for use in cutting marble, whereas you could conclude ( from the closing words of the second paragraph of the patent) that bowsaws are only used for cutting wood.

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7. And what about inventive step?

Did you see that the circular saw could have been ‘formed of a steel strip’? Could the sheet used to make the circular blades, which is one blade wide and ten blades long be a strip? If it is a strip, is the blade ‘formed of a steel strip’? You can see there is some room to argue here, but is it relevant?

Even if the circular blade is formed of a steel strip, is the circular saw blade a blade ‘for a bowsaw’?

Of course, in a real FD4 examination you would have the circular saw to consider when doing novelty, and the point of ‘formed of a steel strip’ would have to be discussed at that time.

So, there are various possible ‘obviousness’ attacks. The blade of Fig 1 can be the prior art, and that can be combined with the tooth layout of the circular saw. The bandsaw can be combined with the circular saw (depending on your construction of ‘for’ in claim 1). The bandsaw can be combined with Figure 1.

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CHAPTER 8

Surely that’s the end of validity?

Coverage The grounds of invalidity other than novelty and inventive step will be considered.

After you have read this chapter, you should be aware of: 1. The grounds of invalidity other than novelty and inventive step.

2. The grounds that are likely to appear in FD4.

ection 72 of the Patents Act 1977, as amended, sets out the grounds for revocation of a patent.

The first specific ground of revocation is that the invention is not a patentable invention, and thus indicates that revocation may be available if the invention does not meet the criteria of section 1(1), which are that the invention must be new and inventive, the invention must be capable of industrial application, and must not be specifically excluded subject-matter. You have considered novelty and inventive step above. It is not impossible to conceive of a question for FD4 where the patent related to something incapable of industrial application, or which was excluded subject-matter, and so these possibilities should not be overlooked.

The second specific ground of revocation is that the patent was granted to a person who was not entitled to be granted that patent. It is possible to conceive that a FD4 question could be based on a scenario where such a situation exists, but it does seem to very unlikely, as quite a large proportion of the letter from the client would have to be devoted to this topic, and there could only be a few marks available for dealing with the difficulty. However, this is a point that could be ‘hinted at’ in the letter from the client, giving you an opportunity to gain a mark by remembering to ask the client for more information, and explaining how that information might totally alter your conclusions and advice. Maybe the patent was granted to an ex-employee of the client, and there might be a suspicion that the invention was made while the patentee was still employed by the client.

The third specific ground of revocation is that the specification does not disclose the invention clearly enough and completely enough for it to be performed by a person skilled in the art. Here the examiner does have the opportunity of creating a specification that does not actually disclose the invention. It will be recalled that section 125 (when the obvious printing error has been taken into account and the words ‘for a patent’ in the first line have been notionally deleted) indicates that the invention is that specified in a claim. Now you may or may not find it

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8. Surely that’s the end of validity? surprising that many of the specifications in FD4 do not have a statement of invention, and so may not describe the invention in the same words as used in the claim. Sometimes there is a statement of invention which is very slightly different from the main claim. It is very easy for the eye to slide over small points like this, but often in the real world a small point can make all the difference.

Often, on looking at specific words in the claim it is impossible to find the same words anywhere in the specification. A range specified in the claim may not appear as such in the specification. There may be one or two examples within the range, or even at the ends of the range, but no real disclosure of the range itself. There may be a reference in the claim to a range of materials, such as ‘metals’, while the specification may only disclose specific metals such as iron, lead and copper.

As the subject-matter of the FD4 patent is usually straightforward, the examiner often uses a very deficient description, and candidates often do not observe that things that should have been described have not been described because, once you have the general idea, the rest is obvious. The examiner plays on this by claiming features that have not been described at all. For example, the claim may recite the steps of replacing a blade on a knife, i.e. taking out the old blade and putting in a new one. The description may only show how the knife is taken apart and the old blade taken out. There is no description of putting in a new blade and re-building the knife. It is as plain as a pikestaff as to how this is done, but there is no description. So there may well not be an enabling description of sufficient detail for the skilled person to put the complete invention into effect, although there may be a counter argument that the missing information is so trivial that the skilled person would immediately fully understand the situation.

All of the oddities of this type that you may observe have probably been planted by the examiner to enable you to spot them and raise questions on the internal validity of the patent.

A bit like an Easter egg-hunt. The clues have been hidden, but in such a way that they can be found relatively easily if you just look.

Look out for anything that the letter from the client says is ‘difficult’. For example, the client may say ‘it was difficult to assess the average molecular weight…’ and there may be no real teaching in the specification as to how this is to be done, even though this parameter appeared in the claims. There would be a mark for questioning the sufficiency of the specification on this point.

Also look for anything that is “essential” in the description but not in the claims, or anything that looks like the skilled person would need to conduct experimentation to figure out what to use to implement the invention across the whole scope of protection that is claimed. There would be a few marks for questioning the sufficiency of the specification on any of these points.

Marks can be easily gained for observing these shortcomings in the specification, and then a few marks more may be available in the amendment section for at least beginning to improve the situation by incorporating into the specification statements of invention corresponding to the wording of the claims. Then the specification does at least in itself disclose the underlying concepts as defined in the claims, as well as giving the originally present specific examples.

Here, again, beginning to address the amendment section before you actually get to it may pay dividends, as you can provide the solution to the problem while the problem itself is fresh in your mind.

The remaining two specific grounds of revocation relate one way or another to amendments.

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8. Surely that’s the end of validity? extends beyond that in the application for the patent, as filed. Note that any information in the whole application as originally filed, including the claims, can be present in the specification of the granted patent without any problems arising, so material can be copied from the claims into the description.

Section 72(e) relates to the situation where the protection conferred by the patent has been extended by an amendment that should not have been allowed. Such an amendment is usually considered to be a post-grant amendment.

If the FD4 examiner is to set up a situation where either of the last two grounds is relevant, then copies of the documents before and after amendment will have to be available, or the precise nature of the amendment would have to be spelled out in some other way, making the papers of the question more voluminous, and so it would seem most unlikely that either of these two grounds will appear in FD4.

So, after looking for novelty and inventive step, you should at least consider if there is any possibility of the invention being incapable of industrial application or being excluded subjectmatter, and then really look for any areas where the description may be thought to be insufficient to enable to skilled person to put the invention, as defined in any of the claims, into practice.

If you find there to be any reason why there is internal invalidity, then you should explain the whole position quite clearly in your answer. This section does not lend itself to the threecolumn approach as used in Interpretation, infringement and novelty, and so you will have to remember to include your reasons for any conclusion that you reach.

If you cannot find any grounds for internal invalidity, it is probably worth just saying that, to show that you have considered it. You might say that the description and drawings mention all of the features in the claim, and so the disclosure is enabling. Even if the examiners disagree with you, they will have to give you some credit for addressing the issue and for giving a reason.

If you say nothing at all about sufficiency and internal validity the examiners have no option – they can give you no marks.

One final thing to look out for is that the patent may be a recently granted European Patent, and so you may have to consider the grounds for opposition.

EXERCISE 6 Consider the bowsaw blade patent, and write notes on internal validity. Then turn the page.

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8. Surely that’s the end of validity?

EXERCISE 6 – notes Is the invention patentable? The subject-matter does not seem to be excluded, and it seems apparent that the invention is capable of industrial application.

We have no information on ownership, and so there is no point in discussing this.

Is the invention disclosed clearly and completely? In other words is there an 'enabling' disclosure?

The language of the claims does not appear as such in the specification, and the description does not mention steel, teeth along one edge, teeth 'arranged' in groups of four or the 'clear spaces', but the description is to be read by one familiar with saw blades, and would the skilled person need to be told all of this to be able to put it into practice, especially with the drawings to hand?

The situation would be better, or course, if the description was more detailed, as then there would be no question regarding 'sufficiency'. As with any FD4 the subject-matter is simple (and quite possibly already familiar to you), and so it is easy to assume that the skilled person will be able to perform the invention, but it always worthwhile rigorously considering exactly what the description does not tell you.

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CHAPTER 9

Amendment

Coverage The need to consider amendment will be discussed After you have read this chapter you should be aware of: 1. The need to discuss possible amendments.

2. The nature of amendments that can be considered.

3. The fact that the amendments need only improve the patentee’s position and not necessarily make it perfect.

n the FD4 paper, the examiner may make no direct reference to the question of amendment, but there will be some marks available for addressing this issue. Even if you have reached the conclusion that all of the claims are valid and infringed (which would be a bit surprising in itself) you should have discussed a few ‘balance’ points along the road which might have fallen another way with the result that you would have reached a rather different conclusion. The position of the patentee may well be improved if the situation regarding one or more of these ‘balance’ points could be crystallised in such a way that the desired interpretation or conclusion (desirable from the point of view of the patentee) could be made inevitable.

However, if any of the claims are invalid for want of novelty or inventive step, then, if at all possible, the claims should be amended to make the claims valid, with the claims still being broad enough to catch the alleged infringer. Are there any features that are in the sub-claims, or (as is often the case in this examination) in the specific description, that are present in the alleged infringement? Could these features be incorporated into the main claim to provide a claim narrower than the original, but still infringed by the alleged infringement?

If the claims are not supported by a 'sufficient' description there may not be many options open to you. The description as such cannot be amplified without adding subject-matter.

However, if the specification does not include statements of invention corresponding to the claims, then the description could be amplified by adding such statements of invention. This should be permissible as the claims form part of the specification. With the description bolstered in this way it may be easier to argue that the description, as amended, is sufficient.

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9. Amendment If the claims were difficult to construe it might be possible to review the language of the claims by 'correction of error' and this may help ensure that the claims are then construed in the way that the patentee would prefer. Were there any ‘linguistic tricks’ that need to be addressed to solve problems of false antecedents, or ambiguities, or possible ambiguities? Are there incorrect claim dependencies that need sorting out? It may be that there is a claim that is invalid which cannot be made valid. Such a claim may well usefully just be deleted (especially if the subject-matter of the claim is not infringed) so that the patent is valid and enforceable, rather than being only a partially valid patent.

Are there any obvious clerical errors in the specification, or the drawings? Often the examiner puts a slight error in the drawings, such as incorrect shading, or an additional line, and even minor matters like this can be amended to improve the position of the patentee (provided that the amendment is really a ‘correction’, and it is apparent that nothing else could really have been intended).

It can help greatly if you propose the actual amendment that should be made. It is easy to say that the claim should be amended to make it novel and non-obvious over the prior art, but the examiner will appreciate seeing the actual wording that you would use, and possibly some explanation as to why this wording has been selected, showing how the wording makes the claim valid, or more likely to be valid, and showing how the amended claim is still infringed.

While you can always consider simply combining the main claim with a sub-claim, or even combining the main claim with one or more features selected from the sub-claims, it is often more rewarding (specially in FD4) to look for a feature or features that can be found in the description of the preferred embodiment(s) and also in the infringement. It is often features of this type that can form the basis of a very satisfactory amendment.

It is always possible when amending a granted patent to end up with two independent claims of differing scope. Post grant there is no ground for objection on the basis of non-unity of invention. Provided each of the independent claims is based on and narrower than the original main claim, and is patentably distinguished from the prior art, then the amendment should be allowable.

If you cannot see any amendment that even begins to improve the position of the patentee, you should show the examiner that you have considered some options before deciding that there is no satisfactory amendment available. You might say that there is no available helpful amendment because… the only claim that is novel and inventive is claim 5, and if that is incorporated into claim 1 the claim may be valid, but would not be infringed…

A passage such as this does show the examiner that you tried to be creative on behalf of the patentee rather than just saying to yourself ‘that looks difficult… I cannot think of anything to write about that’.

In the real world, if you had an infringement that took many of the features described in the patent, but not necessarily defined in the claims, you might be tempted to add a final independent claim that included everything common to the invention as described, and the infringement. Such a claim may well be very narrow, but with a lot of features the validity of the claim could hardly be called into question, and with all the features being present in the infringement, the infringer would be unlikely to escape. Now would an amendment of that type ‘improve the patentee’s position’?

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9. Amendment Do not fall into the trap of suggesting that if the main claim of a patent were to be amended by deleting one or more words that do not seem to be ‘essential’ then there would be infringement. Any amendment that makes a non-infringed claim into an infringed claim must be ‘claim broadening’, which is not allowed after the patent has been granted. On the other hand, if the question relates to the possible future infringement of a pending application that is proceeding towards grant, then a very different situation may obtain.

Of course, if you say nothing about amendment, the examiner can give you no marks for amendment, and as we have seen, every year there is at least one mark for this topic.

EXERCISE 7 Can you think of any amendments that might be made to the patent? Note them down before you turn the page.

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9. Amendment

EXERCISE 7 – notes The amendments need to make the claims valid, while still leaving them infringed, if possible.

Depending on your conclusions on novelty and inventive step, you might be able to combine the concepts of some of the original claims to give a claim that is valid and infringed. But if you concluded that all of the claims were of at least questionable validity, is there anything you can do?

Did you spot the similarity between the ends of the blade in Figure 1 and the ends of the blade in Figure 4, even if Figure 1 has a “converging” throat hook and Figure 4 has a “diverging” throat hook?

Do these two throat hooks look the same to you? If the patent had a claim specifying that one end of the blade had a converging throat hook, would the infringement be inside the claim? Would the claim be novel? Is there any prior art of any type that might show the claim to lack inventive step?

So if we propose amended claims that are novel, and inventive, and infringed, and based on the original disclosure, is that all we need to do? No, the patent is still invalid because of the internal invalidity. How can we ‘fix’ that?

We can introduce statements of invention corresponding to the claims, as this will not add any matter to the patent. We can possibly introduce phrases from the claims into the description, to make the description more supportive of the claims. For example, the sentence which says that the triangular teeth have cutting edges could be extended by adding ‘and are arranged in groups of four’. Similar amendments may be used to bring the subject-matter of the sub-claims more clearly into the description of the preferred embodiment.

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CHAPTER 10

Is there anything else?

Coverage The need to prepare a memorandum of advice before a meeting with the client will be discussed.

After you have read this chapter you should be aware of: 1. The need to prepare a coherent memorandum of advice.

2. What should be in the memorandum.

3. Options you may wish to bear in mind.

The final part of the paper is a memorandum of advice, and the syllabus says that in the memorandum you should: a. b. c. d. e.

Summarise your conclusions from your analysis.

Based on your conclusions, recommend the most appropriate course(s) of action.

Justify the recommended course(s) of action.

Indicate where further information is needed.

Indicate other practice points that may be raised by the situation.

However, there may be some merit in also looking at the marking scheme for the P6 paper sat in 2014 and the FD4 papers from 2015 onwards, where typically there are either few or no marks for summarising what your analysis has been in the infringement, novelty and inventive step sections – so keep any summary brief. There are usually marks for summarising your answer at the end of each respective section (i.e. your infringement conclusions at the end of the infringement section), but the examiners will award these in the Advice section if you haven’t concluded at the end of the respective sections earlier in your answer. The majority of the marks available are for dealing with a typical set of issues that arise in infringement situations and giving a recommended course of action once the facts of the situation have been considered alongside your analysis in respect of infringement and validity.

You should ‘plan’ your memorandum with both the syllabus, and the published marking scheme in mind, as a pretty standard set of issues will arise in each paper depending on the Infringement and Validity • 2018

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10. Is there anything else? exact situation and so you can almost have a checklist (in your head!) of what issues that you need to raise and discuss in your advice section.

Before you start the memorandum it you should look again at the client’s letter, and any instructions given by the examiner to see if you were asked to comment specifically on any particular point. The examiner may have asked you to consider the situation if the infringer starts importing a certain product, or the patentee may have said that he proposes to telephone the infringers ‘ to tell them to stop infringing or else’ ( and when you see phraseology like that the word ‘threats’ should be in your mind immediately). You need to ensure that in the memorandum you cover all of the points that the examiner or client have raised or hinted at in this way.

It will be best to follow the general ‘shape’ of the memorandum dictated by the syllabus.

Start with a very brief summary of your conclusions regarding infringement, novelty and inventive step, just listing the claims that are infringed, the claims that are novel and the claims that are inventive. If you managed to devise a good saving amendment, just mention that fact.

At this point also state if the patent is in force (it usually is) but consider whether any renewal fees should have been paid and state either (a) that these do not need to have been paid yet; or (b) that they are due and it needs to be verified that these have been paid; or (c) the letter may state that the renewal fees have been paid so this can be repeated at this point.

You might now list any relevant facts, such as the fact that the infringer is infringing, whether an interim injunction might be possible (briefly indicating your reasons), and the fact that the patent is valid, or can be made valid, or seems hopelessly invalid. There will be marks for setting out a reasonable amount of detail on whether an interim injunction might be possible or not, but do not go mad.

If you need more information, (especially if you suspect or know that the information is available but is just not in the papers provided as the question) now is the time to ask, but ensure that the data you request is relevant to the advice you will give. Preferably explain how the answer to each question you ask will change or confirm your assessment of the situation.

If there was one ‘balance’ point that was very difficult to decide, and which, had you decided the other way would have led to a very different result, mention it, and explain the consequence of a different conclusion.

If you have time you might now list courses of action that passed your mind but were rejected, giving your reasons. You might explain that ‘An interim injunction is not recommended because, although the infringer is new in the market-place they are not selling in competition with you, because you make safes, and they are providing fireproof doors for ships, and so they are not damaging your business’.

Finally, you can set out your preferred actual course of action, giving your reasons why, not forgetting to indicate the possible responses or reactions that might be made by the other party.

As you do all of this, remember to mention any ‘practice points’ such as critical times, or things such as cross-undertakings in damages.

All of this seems quite straightforward, but there are a lot of factors to bear in mind.

Remember that the proposed course of action should reflect the client’s needs and priorities (which may be expressed, or which may be an inevitable consequence of the information provided), and should take into account risks and costs. Do not be frightened to outline an 100

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10. Is there anything else? expensive course of action to a small client, such as applying for an interim injunction in appropriate circumstances but do explain the expense, and the risk of ‘costs’ if you lose in any litigation. Remember also that the course of action must be practical and achievable.

Dates are of importance and should not be overlooked. Always look to see how long the patent has to run, or how long since it was granted. Sometimes the patent only has a short period of time to run, which means that you can suggest to a client who is approaching you before marketing a product that the launch date should be deferred until the patent has lapsed.

If the patent was granted three or more years ago, is there a possibility of a compulsory licence being granted? Clues for this situation are references such as ‘I have never seen anything like this before…’ Or ‘I was surprised to find that a patent existed…’

Are there any possible prior art items that are described but which do not have a date? Here the question may make it clear that there is no known date. For example the client might say something like ‘I have no idea how long M… has been offering these items’ and the patent may be relatively new. Of course, if the item had been marketed by M… for a long time it would be available as an anticipation of the patent, but on the other hand, if it was only marketed at a later date, then it would be a potential infringement. This would be a real ‘balance’ question which could not be decided on the information provided, and it would really be essential for further investigations to be made to establish the truth of the situation.

Is it possible to design around the patent? This is something that is often overlooked, but which may prove to be a very simple solution to the problem.

While it is not really advisable to go into the examination with draft paragraphs for the letter firmly in your mind, nevertheless, you should have some idea of the sort of advice that you might be giving.

If you are advising the patentee, if an amendment is necessary or desirable, then it may be prudent to make the amendment first, in the hope that the alleged infringer does not become aware of the amendment being made and does not oppose the amendment. However, if for some reason speed is of the essence, then the amendment may have to be made during the relevant proceedings.

Also, if acting for the patentee, consider whether the infringer is really damaging the patentee in any way. Possibly the infringer is operating in a parallel art, and the activities of the infringer will not actually damage the profitability of the patentee in any way.

In such a situation a commercial arrangement would be much more lucrative than litigating.

So, for example, a licence on even a modest royalty would probably bring in more overall than would be gained by going to court and getting an injunction, costs and an account of profits.

There would, of course, be no mileage in going for damages if the patentee had suffered no actual damage, and even if costs were awarded at the end of the day they would not cover all of the trial costs. The amount to be gained in an account of profits would be uncertain to predict and may be desperately small. A licence could be put in place quite quickly, at a low cost, and would bring in some royalties.

Perhaps a more adventurous commercial solution would involve the client actually supplying components or sub-assemblies to the infringer.

It is very often the case, in real life as well as in FD4, that the best way forward does not actually involve litigation. So, always try and see if there can be any sort of negotiated Infringement and Validity • 2018

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10. Is there anything else? settlement. Litigation is not cheap. There have been reports of High Court infringement cases where the solicitors’ costs on just one side have been in excess of £3m. In 2006, The Gowers Report included a statement that a firm challenging a patent (in the High Court) could expect to pay £750,000 for a simple case – with a risk of paying the costs of the other side if they were not successful (see page 68 of The Gowers report, November 2006 – www.hmtreasury.gov.uk/d/pbr06_gowers_report_755.pdf). This general level of expenditure was confirmed in 2010 in the Review of Civil Litigation Costs by Lord Justice Jackson (www.judiciary.gov.uk/about_judiciary/cost-review/jan2010/final-report-140110.pdf – see especially page 50 and Appendix 3) which indicated that in 15 intellectual property cases the costs incurred by one party up to settlement or decision at first instance ranged from £196,000 to £1.54m, with the average being just under £700,000. There must be some commercial justification for incurring expense of this scale, especially as there is always a risk that the Court might not agree with your conclusions on the matter, and then the client faces the prospect of paying their own costs, and a proportion of the costs of the other party, with no benefit at all, if the case is lost.

Do not forget the Intellectual Property Enterprise Court. This Court has a multi-track and a small claims track. This means that there are two alternative procedures for making a claim in the IPEC. The IPEC multi-track has a limit on damages of up to £500,000. Costs orders will be made which are proportionate to the nature of the dispute and subject to a cap of no more than £50,000. The small claims track is for suitable claims in the IPEC with a value of up to £10,000.

Costs orders on the small claims track are highly restricted.

Also do not forget that if both parties agree, infringement proceedings can be held before the Intellectual Property Office, but the available remedies are limited and do not include an injunction.

Typically, your initial thoughts would turn to trying to resolve matters by negotiation. Can your client do anything to help ‘the enemy’ that will not cost your client a lot? Could he supply or buy components? Promote the sale of the enemy’s product somehow? Give a cross-licence?

If there is no prospect of a negotiated settlement, then other avenues involving some sort of ‘pressure’ may have to be discussed, even if substantial costs may be incurred.

If you are beginning to move in this direction, then you may well need to consider whether the patentee is being damaged in an irreparable way, or whether damages and costs at the end of the day would be sufficient reparation. Here you will need to be able to understand the commercial situation facing the client.

Only if an ordinary trial will not be at all suitable should you suggest applying for an interim injunction. They seem to be granted only rarely now, as compared with the practice of former years, and you are most likely just to have a speedy trial appointed. Nevertheless, if the infringer is, for example, proposing a major marketing campaign, or if a lot of the patentees profits come from ‘consumables’ used with the patented invention, or if there are other circumstances that make an interim injunction desirable, then you should recommend it, briefly outlining the disadvantages, including the need for speed, and the cost consequences of that speed, and the need to provide a cross-undertaking in damages.

If, at the end of the day, an ordinary trial will prove to be sufficient, would there be any possibility of using the Intellectual Property Office opinion system? If both parties agree to this course of action, then a substantial cost saving can be made.

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10. Is there anything else?

It may be worth advising the client not to communicate directly with the infringer to prevent the client from doing anything that could be considered to be a ‘threat’ actionable under section 70 of the Patents Act 1977.

If you are advising the infringer, if an amendment might be made that will put your client in a worse position, then, as a first step, you will need to watch the file, or file a caveat. You will then be told if an application to amend has been made, which would give you the option of opposing the amendment. This tactic will at least delay things, and may result in the amendment being refused.

You might briefly mention the possibilities of checking to see if there were any impermissible amendments, by conducting a file inspection or by comparing A and B publications. The validity of priority claims may also be checked if maintaining the claimed priority date is important to the validity of the claims. Of course, you may suggest carrying out additional prior art searches.

Again, you should initially explore any possibilities that do not involve litigation. You might have a mental check list of possibilities, including re-designing the product to avoid infringement, applying for a compulsory licence, deferring launching the product until the patent has expired, taking a licence from the patentee, offering to buy some of the major components of the infringing item from the patentee, or acting as importer or marketing agent for the patentee.

The memorandum of advice should be no more than a couple of pages long, and so you do not have time to ramble, and you do not have time to cover every possible course of action, so you need to select one or two possibilities, and explain to the client (and thus to the examiner) why you made that selection.

EXERCISE 8 Bearing in mind the papers of Exercises 4 to 7, consider this scenario: Your client who was a sawblade designer in a bowsaw factory has been made redundant and is proposing to use his redundancy money to establish a business importing the sawblades of Figure 4. He thinks these blades are superior to any others on the market. His idea is to advertise on the internet, and when he has on-line orders for 50 blades he will order them at the wholesale price from the manufacturer (the proprietor of the European patent Application) in Iceland, who will send them directly to the customers. Your client is extremely surprised to get a letter from the proprietor of the patent only one day after he has launched his website saying that unless the website is taken down he can expect to be sued and there will be a claim for punitive damages.

What points would you mention in your memorandum of advice?

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10. Is there anything else?

EXERCISE 8 – notes Several ‘clues’ might have been seen and assessed before the client is given any advice.

The client seems to be short of cash, and has only just dipped a toe in the water, and so may wish to just abandon his business plan. If so, a letter explaining this to the patentee will suffice, especially if it is possible to point out why the patent is invalid or not infringed.

If the client wishes to continue with his business, what are the options? To show that the patent is invalid and/or not infringed it would be necessary to apply to the Court for a certificate of noninfringement. Costs? If the case is defended, the costs may well be measured in hundreds thousand pounds. One could apply for a declaration of non-infringement from the Intellectual Property Office, which would be less expensive, or apply for an Intellectual Property Office Opinion, at very much less cost, but that is not binding. Mediation might be a possibility, but only if the other side agrees to this procedure.

Is the ‘threat’ of the letter ‘groundless’? Can the patentee really apply for punitive damages?

But then again, how old is the patent? Does the fact that the client thinks that the blades of Figure 4 are superior to anything else on the market have any relevance? The client used to design blades, so must have an eye on what is on the market? Could it be that the blade of Figure 2 is not on the market? Have you realised yet that we are possibly in a compulsory licence scenario?

The fact that the infringer is an ex-employee does not seem relevant in this question. The employee does not seem to be using any confidential information, although it would be wise to check the contract of employment to see if there are any restrictive terms.

Although the ex-employee is not actually manufacturing, he is ‘offering to dispose of’ the product, and so is committing a potentially infringing act. It may well be that the Icelandic Company is also a direct infringer, as they are the ones who are ‘importing’, although the ex-employee and the Icelandic company may be joint tortfeasors.

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10. Is there anything else?

EXERCISE 9 You are approached by your client who manufactures bowsaw blades. He filed his own application and obtained the British patent four years ago. He explains that in recent weeks a new blade (as shown in Figure 4) has appeared on the market, which is being imported from China at a rock bottom price. He believes that his ex-marketing manager, who left his company a month ago, took a copy of his client list, and has been contacting them to supply them with the Chinese blades. This has totally destroyed your client’s turnover, as his only product is the blade of Figure 2. He is concerned that if the sales of the Chinese product continue he will have to close his business.

What points should be covered in the advice to the client? Write some notes before you turn the page.

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10. Is there anything else?

EXERCISE 9 – notes Here we are advising the patentee, rather than the infringer, and although our comments concerning infringement, validity and amendment are the same, the advice will be different.

Ideally, one would wish to amend the patent before starting any action, so that the amendment can be completed before the infringer is aware of the situation, so that the infringer will not oppose the amendment. But the situation here is more complex, as there is no time. It takes several months to complete the formal procedures for post-grant amendment, and if we follow that route the business will be closed.

One could apply to the court for an interim injunction. If this is done, the application to amend should be filed at the court at the same time, and a full explanation should be given as to why the amendment is requested, how the amendment will overcome the problems, and why the amended claim is infringed. It will cost in the order of many thousands of pounds, and if the injunction is not issued swiftly, or if the injunction is contested and there is a full hearing, then some hundreds of thousands of pounds should be the budget figure.

But whom should we sue? Here we do not know the answer, as we do not have enough information.

Are the blades being sent straight from China to the customers? If so, it may be that the only person to sue is the ex-sales manager, who seems to be ‘offering to dispose of’ within the jurisdiction. Any injunction would be personal to him, or to his company, and so might be side-stepped by the Chinese. The situation would be different if the Chinese import to England by the container-ful, and then have a distribution network here.

Is there anything we can do about the use of the client list? This is not immediately in the remit of a patent attorney, but you should be able to see that there might be something that could be done, especially if this is mis-use of confidential information, or breach of contract. The client should be alerted to the situation.

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CHAPTER 11

How do I achieve all of this in the examination room?

Coverage The importance of planning and time control will be discussed.

After you have read this chapter you should be aware of: 1 The importance of knowing what to expect.

2 The importance of attempting all sections of the paper.

3 The importance of time control.

irst of all, it is very difficult indeed to provide a full and complete answer to the FD4 paper in the five hours allotted. A very significant part of the challenge of the paper is time control, and the paper is really trying to see how the candidates can perform when under pressure. This may not be specified in the syllabus, but it has always been the case that Infringement and Validity has proved to be a race against time.

It may be that in some respects candidates today are handicapped as compared with the candidates of yester-year, in that most people now dictate or use a keyboard when at work in the office, and it is no longer common for documents to be prepared initially in manuscript.

Many modern-day candidates are not really used to writing with a pen for prolonged periods of time, and may find it difficult to write clearly and rapidly. It is worth practising writing where possible to get used to this in time for the examinations.

You must write clearly, even if you cannot write as quickly as you would like. If the examiner cannot read it, then no marks can be awarded. It is better for the examiner to be able to read 3,000 words and give you some marks, rather than just look at a 5,000-word scrawl and give you none.

It is to be understood that the examiner will not see the actual script that you write. All of the scripts are scanned, and the examiners only see prints taken from the scans. When the scanning is done it is presumed that there is only writing on one side of each page, so never put a PTO and write on the back. Also, always use black ink. Blue ink will scan and print, but it will look ‘weak’. As in the real world, first impressions may carry some weight. If the writing looks faint

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11. How do I achieve all of this in the examination room? and weak the examiners may not be as convinced as they would be if the writing is dark and strong. Similarly, try and set out your answer neatly and logically on the page. An untidy page does not impress the examiner. Initially, spread your answer out, there is no penalty for handing in a lot of pages. Maybe you should write in double or even triple spacing so that there is always room to squeeze in some afterthoughts in the middle of the page. Ensure that you only write on the central part of the page. Anything written in the margin as an afterthought, or written at the bottom of the page has a habit of just disappearing in the scanning process. Try and avoid any needless writing whatsoever. Refer to the documents only by their code letters where possible. Often the patent is A, and the prior art is B, C and so on. Just writing C shows… takes much less time than writing European Patent Application No 9577777.1 shows… and also the examiners have said that it helps them if you use the code letters to identify the documents.

Use the page numbers of the examination paper rather than saying “Page 2 of Doc A” for example, as this makes it easier for the examiners.

There is no room for ‘flowery’ language, even in the memorandum of advice. So you are not sorry to have to inform your client that the patent is, in your opinion, valid and infringed – as you might be in the real world, but instead… in my opinion the patent is valid and infringed.

It is important that you have time to attempt each of the sections of the paper, even if the question itself does not spell out what the sections are. You know that the marking schedule will start with interpretation and then move on to infringement, novelty, inventive step, and then deal with the possibly relatively minor sections of internal validity and amendment, before concluding with the memorandum of advice. You will not know how many marks there are for each section, but you can make a reasonable guess that the first four sections will have 20 or so marks each, and the memorandum will carry eight marks or so. You will gain most marks on each of these sections as you begin the section, and the rate of scoring marks will fall off with increasing time. You are never going to score all of the available marks on the longer sections, and it will pay to move on when the rate of mark-scoring falls. So you must aim to at least start each section, and you must leave yourself enough time to write the all important memorandum of advice.

It may well be that spending a considerable time reading the documents, so that you become familiar with the specification of the patent, the claims, and the prior art, will bear fruit.

There are various ways of initially reading the documents of a FD4 question, as discussed in Chapter 3, and you may wish to try different alternatives to see which suits you best.

When you have read the paper for the first time remind yourself, this is the surreal world of FD4, and everything is not what it may seem. The documents have all been engineered by the examiner, and there will be problems with the claim wording in the patent. Anything that looks like careless or sloppy drafting has actually been very carefully crafted to look like careless or sloppy drafting.

There will be arguments that the patent is invalid, and there may well also be arguments that the alleged infringement does not infringe – but you can be pretty sure that there are arguments the other way as well, and, as we have seen, a lot will depend on the scope of certain words or phrases in the claims.

You can also be sure that there are a lot of little points that will attract marks, and there is no 108

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11. How do I achieve all of this in the examination room? real chance of there being a single major point that you must spot if you are to stand any chance of passing the examination.

All of the reading and highlighting of the papers may take up to two hours, but for some candidates this time will be well spent, as your thoughts will be quite ordered before you begin to write. For others, perhaps those who write slowly or read quickly, maybe only an hour is needed to read the paper. This is only something you will determine by practise.

All of the reading and highlighting of the papers may take up to two hours, but the time will be well spent, as your thoughts will be quite ordered before you begin to write.

If you have 180 minutes of writing time you must score marks at the rate of more than one every two minutes, and you must achieve a mark rate of one every three and half minutes if you are to pass the examination. As we have seen, there are rarely more than two marks for any specific ‘point’, and so you must always be able to deal with a point adequately, and then be able to move on. Some of the points may, quite possibly, be philosophically interesting, and you could easily devote 30 minutes to a detailed discussion of the options and your conclusion.

Unfortunately, time does not permit, and if you are writing more than 50 words or so about any one thing, then you are writing too much, unless it is a point of real relevance and importance.

Starting with the interpretation section you can work logically through the claims, readily identifying the phrases where you know you will encounter real problems when considering infringement or validity, and the phrases that may be ambiguous, or where precedents are lacking. If you used highlighting during your preliminary reading of the paper, you may now find that the highlighting will lead you, for any difficult word or phrase in the claims, to the passages in the patent, and possibly also in the prior art, and in the description of the infringement, which relate to the word or phrase. You will easily be able to find evidence in the patent for your construction, while also being able to see what your construction will be held up against in the following sections of your answer.

When actually interpreting you must try and deduce what the skilled person thinks the draftsman was using the words to mean, and you will be looking for evidence primarily within the patent itself, although you can in some circumstances refer to other documents if they show what a skilled person would think at the relevant time.

You should hope to be able to complete the interpretation section within, say, 40 to 50 minutes of starting to write.

Next, you must move on to infringement. This should be straightforward, simply comparing all of the wording of all of the claims with the alleged infringing act, reaching a conclusion as to whether each feature is present or absent, and giving a reason for the conclusion reached.

The marks here should be scored quickly, so 30 minutes should be ample time Now you must address novelty, and again you must just compare the wording of each of the claims with the disclosure of the prior art. Again you must reach a conclusion on each feature and give your reasons for reaching the conclusion. Thirty minutes or so should be allowed for this stage.

Then you must move on to inventive step. You must approach this logically, from the position that you reached when considering novelty (unless the main novelty-destroying document was only available as a ‘whole contents’ reference under section 2(3)). Again this should be done in 30 minutes or so. This probably leaves about 40 minutes.

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11. How do I achieve all of this in the examination room?

Next, you must at least consider internal validity. Spend a second or two carefully considering whether there is anything to be said under this heading. Usually it is possible to raise some criticism of the patent in this area – even if it is just to say that the description does not use some of the actual words found in the claims and so it can be suggested that ‘the invention’ is not disclosed as such in the specification. Are there ambiguities that make the teaching less than perfectly clear? If you address internal validity, and there is a mark or two on the marking schedule under this heading you may get one or both marks, but if you do not address this section you will get no marks. In 2014, there were marks for commenting that reference numbers had been used inaccurately in the text.

You must address the question of possible amendment. Even if you just propose a claim that is narrower than the present one, but still infringed, you will get a proportion of the available marks.

Finally, you must do a memorandum which summarises the situation and outlines one or two reasonable courses of action (that is, reasonable in the light of your conclusions as to the position that the client finds himself in).

You must keep an eye on your watch during the examination. If you seem to be taking too long on one section it may be appropriate to move on to the next section. If time permits, you can always go back.

It can be seen that there just is not the time available to discuss any point at length. The comments that are given must be brief and to the point, but must show the reasoning. The examiners stress this every year in their comments. They need the reasons, not just the conclusion.

So, time is short. It may pay to be generous with the time given to interpretation, since if this section is done thoroughly, the infringement and novelty sections may well prove to be relatively easy to complete. However, there is no time to waffle, and no time to change your mind. Once you have made a decision on a specific point you must stick with it (unless you realise the situation very early in your answer) and continue with your answer in a logical manner, even if you become increasingly convinced that you have made a ‘wrong’ interpretation. This does not mean to say that you cannot, when you reach a point in infringement or novelty where you understand that your interpretation is not clear enough, or is still ambiguous, go back and expand or clarify your interpretation. If you do this you must ensure that the clarified interpretation is used consistently throughout your answer. Remember that the examiner tries to set points ‘in balance’, and even if you have gone for an interpretation that is (in the mind of the examiners) the ‘weaker’ of two interpretations, you will still get a good mark if you have given your reasons. You can cover any doubts on the final conclusion that you have reached in your letter to the client.

You may think it unfair that FD4 is such a race against time, but that has always been the nature of the examination. It is an examination that can be passed. Every year some candidates pass at their first attempt. But it is an examination of your skills as a patent attorney, and you will need to practise those skills before you attempt the examination. Sitting the examination before you are ready – and only the most able of candidates are ready after two years in the profession – will waste your time, and the examiner’s time, and will not improve your confidence levels. Sitting the examination before you have attempted a good number of past papers, with at least three attempts being under simulated examination conditions, is also most likely to lead to a fail.

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11. How do I achieve all of this in the examination room?

The examiners try, every year, to pass as many candidates as possible, but when some candidates presenting themselves for the examination who can only achieve 20% of the marks, or less, it not surprising that the overall pas rate is low.

But, now you know what is required of you, if you can find time for some serious practice you have every prospect of being a successful candidate.

Remember that it is in the interest of your employer that you qualify as quickly as practicable.

As a qualified attorney you will be of more value to your employer than as a trainee. Ask your employer for time to practise, and, if possible, a room other than your office, where you will not be troubled by telephone calls or e-mails. If you were out of the office seeing a client any urgent situations would be dealt with by others within your organisation, so the office can continue to function even if you are locked away in the library or a conference room for five hours on a Thursday morning. If you, as a candidate for FD4 still need a single word of advice as to how the examination is to be passed… that word is PRACTICE.

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CHAPTER 12

So much for the theory…

Coverage In this Chapter two past papers will be discussed in detail, showing how the paper may be approached.

After reading this chapter you should be aware of: 1. How to read a paper to look for clues.

2. How to select ‘important’ points for discussion.

3. The sort of ‘reasoning’ that can be used to support an interpretation or a conclusion on infringement or novelty.

n this chapter two past papers will be discussed in some detail. This chapter should be read when you have time to devote some hours to the task, as we will be trying to follow the thought-patterns of a candidate actually sitting the examination.

We will initially consider paper P6 of 1998, which is provided as an appendix to this book.

You may find it easier to have a copy of the paper on your desk, rather than turning to the appendix, so either take a copy of the appendix or download the paper by going to the Patent Examination Board website at www.cipa.org.uk/patent-examination-board/support/examinationinformation/past-examination-materials-qualifying-examinations/ .

Try reading the selected past examination paper in the manner suggested. Specifically, read the initial instructions first, then the letter from the client. Please do not read the whole paper in one go, and please do not look at the Examiners’ Comments for the paper. You will see that, where you have to read a new part of the paper, there will be a line like this: ++++++++++++

I

Remember that you must read the paper ‘aggressively’. You are not just reading an article in a magazine, or a novel. You are not reading with your eyes just skimming over the words. You are reading with a forensic eye, looking for small details of language, inconsistencies, things that are the same, even though they are described in different terms, and things that may be very different, even though described in similar terms. You are reading with your eyes wide open, so that nothing can get past you.

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12. So much for the theory…  Initially, please just read the first page of the 1998 P6 paper. ++++++++++++ The instructions are much the same as every year, with requests to write on only one side of the paper, and to use dark ink, to enable the papers to be scanned in a satisfactory manner. The need for legible handwriting is stressed (it is not unknown for an illegible script to score zero marks) and as in every year, reference is made to the fact that marks are awarded more for the points selected for discussion and the reasoning displayed than the conclusion reached.

There is a document checklist, and you should, of course, check that you have all of the documents and the correct number of pages. In all there are 14 sheets, 4 ½ of which are drawings.

The suggestion earlier in this book is that the claims of the patent should be read before anything else. However, in this paper there is no technical teaching in the letter from the client, so it is suggested that you read the letter first, just to set yourself in the ‘scenario’ of this paper.

The claims will be read next, before you have read any technical disclosures. How you wish to approach the order in which you read other papers is something you should determine your preference for and then practise.  Please now read just the next two pages of the paper, which are headed “client’s letter” (even though the letter itself is only on the first of these two pages), and try and identify in your own mind any clues in the letter as to the overall situation, and any specific words or phrases that are in the letter that seem at all unusual or which could have been ‘planted’ by the examiner. Also, look out for what you are specifically asked to do. ++++++++++++ You have, as your client, a fairly large concern, because it is a ‘chain’ of shops, not just a single shop. The client apparently has no previous experience of patents or patent attorneys, as he needed a recommendation from the local Chamber of Commerce.

Your client’s shops have just started running an ‘Autumn’ promotion, giving away disposable knives. That could be understood to mean that the promotion will be over by Christmas although the patentee may not know this. However, what the patentee can see is the knives of the promotion in the same market place as his knives, since your client actually sells the knives made by the patentee, as well as giving away the infringing knives of the promotion.

The patentee does not know that there is a limited number of knives in the promotion, which will be of a short duration, and so may see the actions of your client as a much larger threat than they really are. The patentee may be advised to take urgent action to address a problem that might be perceived, by him, to be very serious.

The promotion is based on 100,000 ‘cheap’ knives that are ‘almost disposable’ items. So the total financial investment that has been made is not desperately large, and would not warrant the cost of litigation. However, since the patentee does not know the numbers involved, the patentee may be very anxious to get some sort of injunction.

All of this means that your client should address the issue quickly, to stop the patentee making a pre-emptive strike and launching proceedings, if at all possible.

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12. So much for the theory… both things that are of commercial relevance to your client. A dilemma has been identified that will have to be faced in that the client does want to finish his promotion, but equally does not want to upset his supplier, the patentee. It does seem, even at this stage, that it may be impossible to meet both of these wishes of the client.

The client knows very little about patents, but has received a ‘draw to your attention’ letter.

So there is probably no point in considering an action for ‘threats’, but the relevance of the letter will have to be explained to the client.

Are there any other words or phrases that look as if they may be ‘planted’? Why did the client specifically mention scissors? Could this be because scissors may be relevant, for example in an obviousness attack?

The letter from the client is positioned at the beginning of the paper, but is usually answered at the end. Maybe you should mark on the letter, or highlight in some ways, the ‘clues’ as to what should be in your advice. You may prefer to write brief notes on a separate sheet of paper, identifying the ‘clues’ and briefly listing your potential responses to these clues, or even write on the examination paper itself if there is room.

The next page of the ‘Client’s Letter’ indicates that a ‘computer-based search has been carried out by your assistant’. Is this mentioned so that in the letter to the client you can outline the shortcomings of such a search and at least suggest the possibility of a more thorough search?

You are asked to advise the client on the possible effects of the patent on the promotion, the response your client should make, and the options open to the supplier.

When this paper was set the candidates were expected to write a letter of advice, but now that the syllabus clearly refers to a memorandum of advice we will treat the paper as if it said: ‘Prepare a memorandum of advice for a meeting with your client commenting on the possible effects of the patent on the promotion, the response your client should make and what options are open to the supplier’. However, the examiner seems to expect candidates to discuss the significance of the ‘draw to your attention’ letter, the possible effects of the patent on the promotion, and the options open to the patentee and the client, and some suggestions as to what the patentee should do, with the comments and advice supported by reasons wherever practicable.

The ‘unasked’ question is the detailed consideration of construction, validity and amendment. In this case there will be no real merit in considering a ‘design-around’ as your client only has a finite number of the offending products and will not be able to obtain any more as Cracker Creations are in liquidation.

The final part of the second page asks you to assume that that the promotion is a ‘sale’ of a knife, and so the examiner does not want any discussion as to whether the giving of a present would or would not constitute an infringing act.  Just as an experiment, to see if the style might suit you, now read just the claims of the patent that are said to be infringed, without looking at any of the other documents at all.

This is page 3 of the supplier’s patent. If you just turn over the two pages of description of the supplier’s patent without reading them, and if you then look at the claims you will see that they are 14 lines long, and contain only 186 words. You might think that you will be able to read the claims within a few seconds, but please read through the claims several times, looking out for any of the specific word-formations discussed in Chapter 4.

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12. So much for the theory… ++++++++++++ Well, where can the problems be? Did you see any ‘points’ to discuss?

At this stage you are looking for anything that could be a ‘point’, and so you should be asking yourself mental questions which maybe you cannot answer immediately.

What should one make of the first two words of the main claim? Do you know what a safety cutter is? Have you come across this term before? If you have not seen the phrase before, and you cannot immediately say what it is, then this term will need to be construed.

Comprising… an open term, or a closed term? (i.e. does it include at least the following features, or only the following features).

How about the grammar of the first two lines? Line 1 says there is a cutter comprising a casing within which is mounted a blade carrier. You can see from a subsequent passage in the claim that the blade (and presumably the blade carrier) moves to a retracted position within the casing, and so the casing must be hollow, like a box. The second line commences with the phrase ‘incorporating an operating button’. Now does the language itself mean that the button is incorporated in the blade carrier, or incorporated in the casing, or just generally in the whole cutter? What might incorporated mean? Could it be just ‘provided with’ or does the word have a flavour of ‘formed integrally with’?

A spring mounted… and biased at one end… and at the other… Some springs might be held in place simply by virtue of the fact that the spring is forced into position between two elements that have to be urged apart, but does the use of mounted and biased mean that there must be some form of mounting in addition to any simple forcing into position between the two items to be biased apart. Here the use of the word mounted is the second usage within the claim… a few lines above it was indicated that the blade carrier is mounted within the casing. Does the word mean the same thing in each case, or can there be a difference in meaning?

Why is the word within so popular? It appears three times in claim 1 (and is echoed by the single in claim 3). The blade carrier and spring are mounted within the casing, and the retracted position of the blade is also within the casing? Could there be an issue in which one or more of these items are only partially within the casing?

To retain… a functional statement. This will not directly define the structure, but the structure must be able to perform this function.

From just the reading of the claim so far you can get a picture of a casing into which the blade retracts. A spring biases the blade carrier so that the blade is in a retracted position, and here you can assume that with the blade in the retracted position the sharp edge of the blade is inaccessibly located inside the casing, so that the sharp edge cannot contact anything to cut it, thus making the knife ‘safe’. At the end of the claim it is explained that the blade is exposed to its operating position only when pressure is exerted on the button. ‘Exposed’ is a strange word – is it an active verb, meaning that it is actually moved to the operating position only when pressure is exerted on the operating button, or is it just the participle, in which case it will have the meaning that it is only for the period of time that pressure is applied to the button that the blade is exposed and in its operating position?

Its operating position… often the word ‘its’ can lead to an ambiguity, but that does not seem to be the case here.

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12. So much for the theory…

Generally, the claim introduces all of the real features of the claim in the first three lines, and the rest of the claim is functional language.

Claim 2 is brief. Is the pivotally mounted an amplification of the ‘mounted’ of claim 1, or could the spring be pivotally mounted to something in addition to being mounted in the casing.

Claim 3 introduces a second reference to ‘pivotally mounted’, but this time it is the blade carrier that is pivotally mounted to the casing. The blade carrier is operably biased against the spring, but this is in contrast to the language of claim 1 where the blade carrier is operably biased by the spring. Why the different use of language?

Claim 3 does have the ‘its’ ambiguity, and a false antecedent. The blade carrier is biased against the spring about its pivot. Now both the spring and the blade carrier are pivotally mounted.

There has been no reference to a pivot as such, but one can deduce that if something is pivotally mounted then it may reasonably have a pivot. So the blade carrier can have a pivot, and the spring can have a pivot, and the ‘biasing’ mentioned in the claim could be about either of these pivots, on the basis of the claim language.

In claim 4, how can a blade ‘face’ in any direction, and what on earth is ‘backwards’, and when does the blade face this way? In claim 3 we have seen that the blade carrier is pivotally mounted, and from this one can gain an impression that the blade carrier may move so that the blade itself moves in a manner similar to that of a pen-knife between a retracted position and an operative position. So the orientation of the blade may change totally as it moves between these positions.

Claim 5, read in isolation, gives a very strange mental picture. The casing, into which the blade retracts, can at this stage be equated to the casing of a pen-knife. At one end the casing is extended to form a handle. That seems to be understandable. You can hold the handle, and the casing with the blade in it is then not in your hand, so when the blade moves in and out your hand is not in the way. But then the claim says that the operating button extends at the opposite end of the cutter. Note that it says cutter and not casing. So we have the handle at one end of the casing and the button at the other end of the cutter, giving us effectively a false antecedent situation for the words ‘the other end’, but the mental picture seems to be all wrong, as you would expect the button to be near the handle. Maybe the word ‘end’ is used in two different senses?

So, having read just the claims, you will have spotted several areas of potential difficulty.

You will not (yet) know whether any of these difficulties will be relevant to the issues to be decided, but already some of the claim language can be seen possibly to be capable of improvement by amendment.

Again, you can mark these points on the claims with highlighters, or write notes which just raise the questions that you may have to ask yourself in such a way that you can hand in the notes with the rest of the script at the end of the examination. If you do write notes, really space them out on the page, as you can guarantee that you will find further ‘problems’ as you look at the infringement and the prior art, and you may even find more problems when you look at the description of the patent itself.

At this stage you will have not written any of the ‘answer’ to the question. You have simply been looking for potential problems. By reading the claims of the patent without first of all reading the description, you come fresh to the words of the claims, and it may be that you can see more clearly where the language of the claims is possibly ambiguous or lacking in clarity. If Infringement and Validity • 2018

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12. So much for the theory… you came to the claims, having just read the description of the preferred embodiment, you would be much more likely to jump to a conclusion as to the meaning of the claim.

Consequently, you might not see so clearly the linguistic deficiencies in the claims, and you would not see the possibility of the claim language having a different meaning.

Now you could at this point read the patent, but there may be more mileage in moving immediately to read the description of the infringement. The reason for this is that if you now read the patent you will ‘fit’ the words of the claim to the described embodiment/s, and then may be unwilling or unable to ‘fit’ the words to the infringement or to the prior art. So, please turn to the Cracker Creation leaflet and drawing. You may find it easier to look at the drawing closely first, but read the description as well, again reading ‘aggressively’ and looking for anything that might be a clue. Have the words of the claims of the patent in your mind – can you find the same words in the description of the infringement, or can you find anything that might possibly, even at a stretch of the imagination, be an equivalent to any of the features in the claim? Have the claims on the desk as you read the leaflet. ++++++++++++ Well, it didn’t take long for the word ‘safety’ to appear, but this time it is a safety knife rather than a safety cutter. Will this make a difference? – probably not, but different words have been used.

The leaflet describes a ‘holder housing a chamber’ in which the blade is mounted. Here ‘housing’ seems to be used as a verb, and looking at the drawings on the leaflet it would seem that the holder ‘defines’ a chamber, or ‘has’ a chamber, and so at first sight the holder looks to be equivalent to the hollow casing of the claim.

The described ‘slider’ is the only thing that touches and moves the blade and so this performs the function of the claimed ‘blade carrier’ and it would seem to ‘incorporate an operating button’ in the form of the disc 30 that is engaged by the thumb when the knife is used. However, can this be within the casing, as required by the claim, since it is described as being ‘positioned externally’, with the largest part of it, i.e. disc 30, on the outside of the housing, and only the relatively small stem extending into the housing? It would seem to depend upon whether the word ‘within’ means ‘totally and completely inside’ or means ‘at least partly inside’ as this word is used in relation to the blade carrier or slider.

There is a blade 36 which moves linearly or with a straight movement in a guide-way in the housing. A stem 28 on the slider passes through a hole in the blade to engage the blade, but does this make the blade attached to the blade carrier? The word ‘attached’ taken in isolation may have a sense of ‘fastening’ or ‘rigidly and tightly connected to’, rather than the relationship created by a stem, as stem 28, passing through an aperture in the blade. However, the stem and aperture features do serve to connect the blade to the stem, and would this be sufficient to meet the ‘attached’ requirement? Further can the slider actually be a blade carrier in view of the nature of the connection between the stem 28 and the blade?

There is clearly a spring 34 that is within the casing, and it does seem to have a spiral portion wrapped round a support pin 35 which will mount it in position. Can the peripheral sidewall of the casing be a detent? It seems that the very end of one arm of the spring is biased against this wall. Is the other end of the spring biased against the blade carrier? A terminal portion passes through a hole in the stem, and so part of the spring near the end does touch part of the stem 118

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12. So much for the theory… of the slider? But is this ‘the end’? Does the phrase ‘biased against’ mean ‘urged into contact with one side’ or ‘pushed firmly to touch the outer surface’? In other words does ‘biased against’ include the spring passing through the aperture 32 and pressing against the wall of that aperture?

The described knife would seem to operate overall in a manner equivalent to that of the cutter of claim 1, and so at this stage a lot of mental questions have arisen. Some seem relatively trivial, but will have to be addressed briefly as you construe the claims. Whether the holder 10 is or is not a casing seems pretty open and shut, and not worthy of much discussion, but no doubt there is a mark or a fraction of a mark for touching on the point. The questions that seem more important are….

1. Is the slider a blade ‘carrier’? As the connection between the blade and the slider seems weak.

2. Is the slider ‘within’ the casing? As most of it seems to be outside the casing.

3. Is the blade ‘attached’ to the blade carrier? This is closely related to the first question 4. Is the wall of the casing a detent?

5. Is the ‘other end’ of the spring biased ‘against’ the slider? Or is it a region spaced from the end (and thus not ‘an end’ at all) that touches the slider? And is the nature of the engagement between the spring and the slider a ‘biased against’ engagement?

So, at this stage you have identified various phrases which, if they have one meaning, will put the infringement inside the scope of the claim, and if they have another meaning, will put the infringement outside the claim. All of the points are relatively ‘minor’, but that is the nature of the infringement and validity examination, mainly as a consequence of the ‘low tech’ nature of the subject-matter, and also as a consequence of the need to have several ‘balance’ points to be the basis of a selection.

If you move on to claim 2 the only restriction is that the spring is pivotally mounted. Now the spring is mounted by a number of turns of the spring that form a coil surrounding a mounting post. In use the cutter spring arm 34b will barely move, merely becoming stressed as it is pushed more firmly against the peripheral wall. The arm 34 will move as the blade is moved, but is that movement a pivotal movement? And even if it is, does that make the mounting a pivotal mounting?

As you compare the disclosure of the leaflet with claim 3, you can immediately see that the blade carrier is not pivotally mounted within the casing, but could the blade carrier be operably biased against the spring about its pivot (i.e. the pivot of the spring) when pressure is applied to the operating button 26.

Now looking at claim 4, can the blade 36, on any understanding of the words, be considered to ‘face backwards’? How would the described knife be used? Holding the holder 10 in the right hand in an upright position with the thumb on the disc 30. If the knife is to be used in cutting card, how would that be done? The card would be put on the table and the knife would be put at the far end of the desired cut and drawn back towards the person using the knife. Hold on… did you just use the word ‘back’? Can you use that to define the direction of ‘backwards’? What does ‘facing’ mean, in connection with a blade?

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12. So much for the theory…

Claim 5 identifies the concept of the casing being elongated to form a handle, and there does not seem to be anything like that in the safety knife of the leaflet. Also the button, as constituted by the disc 30, does not seem to be at any ‘end’ of the cutter, as it seems to be centrally located.

You will appreciate that at this stage you are just becoming familiar with the documents, but you are looking for features of the infringement that can, in any way, be tied up with, or associated with, the wording in the claim. In a way you are trying to stand in the shoes of a person who will be trying to argue that the Cracker Creations cutter does fall within the scope of the claim. You are looking for arguments that such a person could use, but also you are looking for the counter arguments. When the whole situation has been considered you can make up your mind. Subsequently, you will effectively repeat the process when you consider the prior art.

Many of the features that you are discussing are difficult to put into words, and difficult to explain clearly, and that is a feature of FD4. Don’t you just hate it when someone says something that you do not understand, and when you ask for clarification, they just use exactly the same words, but say them a bit more slowly? If the FD4 examiner does not understand what you have said, all he or she can do is re-read your answer. If there is a point that you think is important, and where you really want the examiner to know where you are coming from, express your views twice, but using different words. Do not be afraid to use sketches if that helps. A drawing may be worth a thousand words, and in FD4 you do only have time to write 100 or so words about any one thing!

While you have been reading the leaflet you have been marking any ‘problem’ areas that you have identified on the claims, so that you know where the problems are as you come to interpret or construe the claims, or you have been adding to your notes about the claims.

A lot of the problems that you have now identified were totally unseen when you first read the claims. One hopes that when you started writing your notes about the problems with the claims you left lots of space, especially as more problems may arise as you consider the prior art.

Now you should consider the prior documents revealed by the search. There are two documents, and you do not know if either of them is really relevant. So, it is probably best, in this particular paper, to read both of the documents quickly, to see which is more relevant, and then consider that document in detail first, again comparing the disclosures of the document with the wording of the claims to find points of similarity, and points of difference. These documents may not be the whole of the prior art, as there may be more prior art acknowledged in the supplier’s patent when you get there.

So, can you now briefly read both of the US specifications revealed by the search? Maybe you should just peek at the dates on the infringed patent, and check the dates on the prior art documents, just to be sure that they are both available for novelty (and obviousness) purposes.

At this stage you are trying to get an overall impression of the disclosure of each document, trying to see if you can identify any of the features of the claims in the disclosures. ++++++++++++ Well, both of the US patents were granted, and thus published before the filing date of the supplier’s patent, and can be considered for both novelty and inventive step.

But what do you think of the disclosures? At first glance, you can see some points of similarity with what you think the claims cover… you can see blades that each slide in and out 120

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12. So much for the theory… of a housing, and you can see springs inside the housings, but it is not clear how these features ‘tie up’ with the claims.

If one starts with the ‘001 patent, while you bear in mind the words of the claim, you can see that this patent is incomplete. There are no claims at all. Also the specification is not at all in the US ‘style’. However, you have been told that this is a US patent, and in the world of FD4 you must accept it as such.

The document begins with a description of some prior art, and outlines a prior proposed safety knife, and explains how in this knife a button is rigidly attached to a blade. The knife apparently works on a ‘push-push’ principle – rather like a retractable ball-point pen. A first push moves the blade to an operative cutting position. The blade is latched in this position. A second push enables the blade to be pulled back into the handle. The description says, for this second movement if the push button is released again… but this must be a mis-use of language as the button has not been released before… it has been pushed before. So you must be able to interpret (and make sense of) not only the patent under consideration, but also the prior art documents to understand what they really mean, or what a skilled person would think they were intended to mean, as at their date of publication.

However, this ‘push-push’ knife is a discrete piece of prior art, and you should mention it in your answer.

The specification continues to describe a specific knife, the preferred embodiment of the invention. It apparently has a handle 26 which seems to define a chamber at one end, and that would appear, at this stage, to be a casing. There is clearly a blade 43, and a carriage 20 which seems to hold one edge of the blade 43, and which could be a blade carrier. There is nothing that immediately looks like an operating button, but there is a hook which is used to perform the function of moving the blade out from the handle to an operative position. There is a spring 30, and one end is hooked onto a pin 32 that seems to be formed integrally with the casing, but the spring is a helical spring, and seems to be held in a ‘tunnel’.

So, there are lots of features of the knife which resonate in some way with the features recited in the claims, and there are some features which seem very different, but which perform similar functions.

You might think that the knife as described would not actually work. While the hook might grab the edge of a box to pull the blade out to start the cutting process, what happens when the knife is half-way across the box? The hook must have become disengaged from the edge of the box somehow… how could the knife still work? If the hook is disengaged, surely the spring will pull the blade back into the housing? But maybe there is a frictional effect on the sides of the blade 43 as it cuts through the cardboard which serves to keep the blade extended. Possibly the hook is caught in the cut and is subjected to ‘drag’ which applies a force which keeps the blade in the extended or operative position.

You must expect, in the fantasy world of FD4, that things might be a bit fanciful. In this particular paper you must pretend to believe what you are told, or you must prepare an argument that the document does not actually provide an enabling disclosure of the described knife, and so you are going to disregard it. In FD4 this is a dangerous thing to do. If you do choose positively to disregard any item of prior art which seems to include a relevant disclosure, you are almost certainly throwing marks away. Even if you think the knife will not actually work as described, it would be very hard to argue that the document does not disclose the knife Infringement and Validity • 2018

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12. So much for the theory… in sufficient detail for the skilled person to make it. Then, in use, the hook will pull the blade out to begin a cut, and if the knife is disengaged from a box the spring will pull the blade back from the operative position. The knife may not work in satisfactory manner to cut right across a box, but it will at least work to a limited extent. If there is a mark for arguing that ‘001 is not ‘enabling’ it is only one or two marks at most, and the point does not warrant an extensive discussion in your answer. You might choose to show your doubt by asking the skilled person if it really would work as described, perhaps suggesting the possibility that the knife does not work in a satisfactory manner. But it may well be best to enter into the FD4 fantasy and believe what, in reality, is scarcely credible!

Turning now briefly to the ‘000 document, you can see another facet of the FD4 fantasy. Here you have only the abstract page of a document that might be very relevant, with a particularly terse (by US standards) abstract. In the real world you would have the full specification on your desk within seconds, but FD4 is not the real world. You have to struggle a bit to deduce what this document shows, and how the illustrated knife really works.

You can see quite clearly that the document shows a knife with a handle 12, with a chamber at the left hand end that could be ‘a casing’. There is a blade 30, and a blade carrier 45, which cannot really be seen or understood, as the reference 45 just points to a peg that extends through a slot in the casing. The peg would seem to limit a lateral movement of the rest of the carrier which is inside the casing. The carrier would seem to hold the right-hand end of the blade. There is a button which is screwed into the blade carrier, (Did you recall that word ‘incorporates’ from claim 1?) and which can be pushed to move the blade backwards and forwards. There is a spring 64. This has a ‘W’ shape, and seems to press on the blade carrier to provide some friction to resist movement of the blade carrier. It stops the blade carrier ‘sliding freely’ in the slot, but must still allow movement when the button is pushed. The button can apparently be screwed tight to lock the blade in position.

Why is there a rib on the bottom of the button 60 that seems to be sized to engage with the slot in the casing… would this stop the button being screwed tight? If the knife is shown with the blade in the retracted position, with just the blade being shown in dotted in the extended position, and if 45 is a peg in the slot 56 to limit movement, it will be impossible to get the blade to the position shown in phantom. Again, welcome to the fantasy of FD4! Just go with it, and pretend that this knife will work – but you may of course ask the skilled person if it really will work, expressing your own doubts.

But at this stage you should look for what is there, and what might correspond to the features of the claims. You have what might be casing, a blade and a blade carrier, a spring that engages the casing and the blade carrier, and an operating button. So a lot of the ‘ingredients’ of the claim are present…

Neither document seems at first sight to be a document that anticipates the main claim of the supplier's patent. '001 seems to concentrate on a knife that has a hook which pulls the blade out against tension from a coiled spring, and so does not seem to have an operating 'button'. '000 seems to have a movable blade, and a button, but the blade is not automatically retracted, as in the Cracker Creations cutter. Nevertheless, you must look and try to find anything in either document that can be equated with any feature of any of the claims. It may be that some features are in one document, and some in the other, and so there may be an 'obviousness' attack.

Maybe you should again start with the '001 patent. Can you now read just that patent again, 122

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12. So much for the theory… with the claim of the supplier's patent in your mind, to see if you can find anything in the '001 patent that may be of interest. Is there any way that the words of the claims could possibly be applied to the disclosure of ‘001, perhaps with the words being ‘stretched’ a bit? ++++++++++++ As you saw in your initial read-through, '001 discloses two totally different 'safety knives'.

The first one is described as prior art, between lines 7 and 11 on the first page. This may be important in that it shows the use of the term 'safety knife'. On the one hand, it is possible that 'safety knife' is an accepted term of the art, and the skilled person would immediately understand a 'safety cutter' to be the same as a 'safety knife'. But, on the other hand, the phrases are different, and so it may be that they must have different meanings. Again FD4 throws up two contradictory lines of thought, either of which could be right. But always bear in mind that the examiner is looking for you to see a dilemma, to pick one option, and to give your reasons why you have picked that option. If you do this you must be awarded the mark.

In this patent the term 'safety knife' is initially used for a prior art knife where the blade may be latched in a forward or cutting position by pushing a button which is rigidly attached to a blade, and which can be released and withdrawn by a spring by actuating the button for a second time.

There is no explicit disclosure of a 'casing', but the handle must perform the function of a casing as the 'spring immediately retracts the blade into a safe position within the handle'. If the button is rigidly attached to the blade, then the part of the button that engages the blade must perform the function of a blade carrier, and this blade carrier would seem, on the face of it, to have the button as an integral part. There is a blade. There is a spring. Part of the spring must engage the blade carrier, and as it is a tension spring (i.e. the sort of spring that has helical turns, and a hook at each end, as exemplified by spring 30 in Figure 1 – see page 89) another part of the spring must engage the handle somewhere. The spring does act to pull the blade into a 'retracted position' within the handle, and the blade is moved to the operative or extended position by pushing on the button. This push on the button must be against the tension of the spring, and the actual movement to the operative position only occurs when the button is pushed. So if the words ‘exposed to its operating position’ could mean ‘moved to its operating position’, with the movement only occurring when pressure is applied to the operating button, then this phraseology of the claim would be satisfied.

So, this little bit of 'throw-away' admission of prior art looks, on a more detailed consideration, as if it could be very relevant to the novelty of claim 1 of the supplier's patent, depending upon the precise meaning of the words of the claim. On the other hand, the disclosure is very scanty, and there must be doubt that this would really be an enabling disclosure.

There is no disclosure of the details of this knife, so you cannot know if the spring and/or the blade carrier are pivotally mounted, or the orientation of the blade, and you cannot know the position of the operating button; so this disclosure does not seem relevant to the sub-claims.

The main embodiment of ‘001 is described with reference to the figures, and you have already seen that this knife has integers that may easily be equated with the terms casing, blade carrier, and a spring. You have appreciated that the spring tends to pull the blade into a retracted Infringement and Validity • 2018

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12. So much for the theory… position within the handle, and the blade is moved to its operating position only when tension is applied to the hook 50.

But the hook 50 is joined to the blade carrier by an 'anchor 46'. Could this anchor, or even the hook, be considered to be a 'button'? How about the engagement of the spring with the blade carrier and the housing? Could the pin 32, which engages the hook at one end of the spring be a 'detent'? Could the end of the spring possibly be considered to be biased against the detent, as the tension in the spring will pull the hook at the end of the spring firmly into contact with part of the pin 32? The pin 32 seems to be formed integrally with the casing and seems to be 'within the casing'. Could the other end of the spring be considered to be biased 'against the blade carrier', since the hook at the end of the spring seems to engage a small hole in the blade carrier, and so that hook must be pulled into engagement with part of the blade carrier by the tension in the spring?

All of the questions are, at this stage, tantalising, as you do not really know what the words of the claim were intended to mean, but you can see that the words can be read broadly enough, possibly, to bring the preferred embodiment of '001 into (or almost into) the scope of the main claim of the supplier's patent.

Again, the preferred embodiment does not seem to show a pivotally mounted spring, or a pivotally mounted blade carrier, and so does immediately seem to be relevant to claims 2 or 3.

Whether the blade faces 'backwards' or not does depend very much on what that phrase might really mean.

The handle does have a hollow front part which might be considered to be the casing (but if the pin 32 is 'within the casing' then the casing goes quite a long way to the right in Figure 1) and the handle does seem to extend further to the right, and so the knife may have the feature of the opening words of claim 5. Could the anchor 46 be considered to be 'at the other end' of the cutter? Again, it all depends on the meaning of the words!

So you can see that a document that, at a first reading, seems to be quite irrelevant may be relevant after all!

Now have a look at '000 in detail. Remember, you are looking for anything that can be equated with any feature in any of the claims. ++++++++++++ The features that you saw on the quick read-through included the casing, the blade carrier, the blade, the spring, the button, and also the fact that the blade is moved to the operating position, and back to a retracted position by the button. The button is only screwed to the blade carrier, so is it 'incorporated' in the blade carrier?

How is the blade moved to the operative position? By applying a force to the button? So is the blade 'exposed to the operating position only when pressure is exerted on the operating button'? – Certainly the only apparent way of moving the blade to the operative position is by applying force to the button, but once the force has been applied the blade will stay in the operative position until a contrary force is applied to retract the blade.

How about the spring? It seems to have a W shape but what does it do? Is it 'wedged' in position between the blade carrier and the bottom of a slot? One cannot see this clearly, but could it be in such a position? Maybe you do need to see the full document, but how about an 124

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12. So much for the theory… 'educated guess'? Does it bias the blade carrier downwards in its guide-way so there is friction between the blade carrier and the casing?

Now, is the spring 'mounted'? Is it within the casing? Is part of it biased against a 'detent' in the casing? Is the part that is biased 'an end' of the spring? Is part of the spring biased against the blade carrier? Is the part that is biased an end? Does the spring act to retain the blade in the retracted position? In other words, does the spring help to hold the blade in the retracted position? When the button is pushed, the blade moves to the exposed position, but does the spring resist this movement? Is the movement 'against the spring' – or is against friction provided by the spring?

Again, a whole list of questions, where the answers depend on the precise meaning of the words!

As before, the spring does not seem to be pivotally mounted, and neither does the blade carrier, and so this document is not relevant to claims 2 and 3. Whether the blade 'faces backwards' again depends very much on the meaning of the phrase, The hollow 'casing' part of the knife does seem to be at one end of a handle part 12, but the operating button seems at this stage to be in the middle of the cutter, and so the document seems probably not to be of relevance to claim 5.

Now you have considered the infringement and the prior art, and you can understand a bit more clearly how everything really depends on the precise meaning of the words in the claims.

You have, up until now, been thinking ‘fuzzy’ thoughts…looking for anything that might somehow ‘fit’ any of the claim language of the patent. You have not been weighing the precise meaning of words in the scales, but that is what you will have to do to decide whether any of the prior art disclosures (or the ‘infringement’) fall within the scope of the claims.

At this stage you need to read the description of the supplier's patent. This may outline more prior art that you will have to take into account. The patent will describe at least one embodiment of the invention. Words may be used in the description in such a way that the real meaning of the words of the claims, as intended by the patentee, can be deduced logically. The preferred embodiment(s) of the invention must fall within the claims (if at all possible), and this fact may help you understand the claim language with greater clarity. You are looking for all uses of the words in the claims that have given you any difficulty so far, and you must really understand how the described embodiment(s) work. You are also looking for words that describe the features identified in the claims, but which are not the same as the words actually used in the claims. ++++++++++++ The invention relates to a safety cutter, and more particularly to a safety knife… so the term cutter is broader than knife, but must include knife. You do not get any real guidance as to what a 'safety' knife might be. The second paragraph of the description does say that the knife of the invention (but the invention is a cutter – so there cannot be much difference in meaning between knife and cutter!) has a blade which automatically retracts when not in the hands of the operator, and this passage may support an interpretation that the claim can only embrace an automatically retracting knife.

The statement of invention corresponds word-for-word with the main claim. In FD4 this is a bit unusual, as often there is a discrepancy that can help (or sometimes hinder) in the interpretation of the claim.

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12. So much for the theory…

The preferred embodiment has a casing formed in two complementary (presumably mirrorimage) parts. These two parts seem to include the handle as well, and there is no verbal description of how the casing is 'elongated' as mentioned in claim 5.

The blade carrier 7 has a mounting lug 6 and is described as 'extending' into an operating button. So the word 'incorporating', which is used in claim 1, is not used in the description of the preferred embodiment. Of course, you know by now that the scope of this term is important, since if it means 'formed integrally’, or 'all in one piece', then the button of '000 may be excluded, as this is a separate element that is screwed into place on the blade carrier.

The blade carrier is pivotally mounted to the casing. So the mounting is a 'positive' mounting.

It looks from the drawing that the lug 6 has a hole in it that receives a pin formed with one of the casing-halves. However, the description says that the pivotal lug 6 is received within a pivotal mount 10, and it could be that the enlarged rounded head of the lug 6 is received within a corresponding cavity formed when the two casing-halves are put together, with a limited pivotal movement still being possible. However, if this were to be the case, then Figure 3 is incorrect as the upper sidewall of the recess should be visible in Figure 3. Regardless of whether there is a pin in a hole in the lug, or whether the lug is retained in a recess the lug is not just slid into position, or merely 'located', but it is retained.

In the initial position of Figure 1 a large proportion of the blade carrier sticks out of the top of the casing. So maybe in claim 1 it is just the 'mounting' that is within the casing, or maybe the 'within' means that just part of the blade carrier is within the casing. Remember that in Cracker Creations the blade carrier is not directly attached to the casing, but is effectively connected to the casing by the action of the spring and the blade acting in concert, and also in Cracker Creations a large part of the 'blade carrier' is outside the casing, and so the meaning of ‘within which is mounted’ will be important.

The blade is 'attached' to the blade carrier in a way that enables the blade to be replaced easily. Could the word 'attached' in claim 1 have this 'replaceable' as part of its meaning?

The spring is a hair spring. It is 'mounted within the casing about a pivot point 13'. The pivot point is not described but seems possible for it to be a small cylindrical projection or pin formed on one half of the casing. The spring seems to have at least one 'turn' around the pin.

Alternatively, the pivot could be a cylindrical chamber of slightly greater diameter that the width of the slot or channel 14, with this chamber receiving and holding the cylindrical turn/s that form the part of the hair spring that separates the two arms. One arm – shown on the right does not move at all, and the other arm, arm 8 on the left, moves about the pivot point 13. There is no description of the spring being 'pivotally mounted' as mentioned in claim 2, but the language of the claim must at least embrace the described arrangement, which (in one of the two understandings outlined above) is almost exactly the same as that used in Cracker Creations.

One end of the spring is said to engage a detent 14. The detent 14 is shown as the side wall of a groove or channel. The part of the spring that touches it is one whole 'arm' of the spring that extends away from the pivot point 13. So the word 'end' could still mean 'the very end - the absolute terminal point' since that part of the spring would seem to touch the side wall, but could equally mean 'and end region - somewhere towards the very end, but not necessarily at the very end'.

The other 'arm' of the spring touches the exterior surface of the blade carrier. See how the end of this arm is curved. In Figure 3 the absolute end of the arm is curved away from the blade 126

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12. So much for the theory… holder, and so the very end, or the absolute terminal point, does not actually touch the blade holder. So here, at least the phrase ‘other end’ in claim 1 must mean 'an end region… somewhere towards the end', since if the phrase were to mean ‘the very end’ the described embodiment would not be within the claim.

Figure 2 shows that when the blade is in the retracted position the blade itself is totally inside the casing, with no part of the blade extending out of the casing in any way. So maybe the phrase 'within the casing' has a different meaning when applied to the blade, as opposed to its meaning when applied to the blade carrier…

The description says that 'the blade can only be exposed for use by pressure on the operating button 7'. Now, this might mean that the only possible way to move the blade from the retracted position to the operating position is by pushing the button, or it might mean that it is only while pressure is applied to the button that the blade is held in the operative position. This will still give you a dilemma when you come to look at the word 'only' in the penultimate line of claim 1.

The description does say that the blade 'faces backwards' but does not really help you to define what this phrase might really mean. Clearly the phrase must include the described arrangement, but it could also include other arrangements as well. And you will have to make some sort of a decision, as this phrase may be critical when considering '000 and '001.

It is interesting that the description itself does not use the term ‘operably biased'. The phrase appears in claims 1 and 3, and also in the statement of invention, but the description will not immediately help you to assign a meaning to the word. Remember the W-shaped spring of '000…was that 'biased' against the blade carrier so that the blade is exposed (moved) to the operating position only when the button was pushed…was the bias an 'operable' bias?

It is to be noted that that although anyone (especially the skilled person) would understand that the handle is to be grasped in the palm of one hand with the thumb located over the button 7, with a downward force applied by the thumb to the button moving the blade to the operative position, this is not actually described. It is so blindingly obvious that this is how the knife is to be used that you quite possibly did not notice that it was not described. So nowhere is there any reference to exactly what applies a force to the button. This may be important, as it will let you apply a broad construction to the term ‘button’. However, one could equally generate a narrow meaning for button, with it being manually operated, but if this is done one cannot just say ‘because button 7 is operated by a thumb’ because the supplier’s patent does not explicitly disclose this. One would have to show what the skilled person would get from the drawing, combining it with common sense.

Now you have read all of the documents, and you have in your minds a lot of questions that will need to be answered as to what the claims really mean.

It is true that there is a lot of information to analyse and retain, and that the appropriate information must be recalled and applied at the appropriate time. In this way FD4 does mimic real life where, in an infringement and validity situation there may be a significant number of complex documents that need to be mastered.

Having read and understood the documents, and having seen where the problems may lie, and where the ammunition necessary to deal with those problems can be found, you can begin to write your answer to this question. But maybe before you start on that, because you have spent quite some time reading and thoroughly penetrating the documents, you might like a Infringement and Validity • 2018

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12. So much for the theory… short mental break before you start to prepare the actual answer. A few moments spent thinking about something completely different, or even thinking about absolutely nothing at all, may help calm you and resist any rising sense of panic that you might have. If you feel that you need to leave the room at some point during a five-hour examination, maybe now is the moment.

As you begin to write, you will remember that the answer will have to have seven sections: •

Interpretation,

•

Infringement,

•

Novelty,

•

Inventive Step,

•

Internal Validity,

•

Amendment, and

•

Advice.

So, now you can start to prepare the actual answer to the question. Bear in mind that there are many many different answers to the question, and the examiner is not looking for an answer that reflects his or her own judgement of the matter. The examiner is looking for an answer where the relevant points are discussed, and a conclusion is reached on the basis of logic and argument, with the logic and argument being shown as the reasons for the conclusions reached. The examiner wants to see that when a specific conclusion has been reached, then that conclusion is applied logically throughout the rest of the question. You may disagree with some of the argument and logic on the following pages, and you may disagree with the conclusions reached.

That is only to be expected. But on the following pages one answer to the question is developed, so that you can see what might actually be done when answering a FD4 question.

As you begin, you have in mind not only the preferred embodiment of the invention, which will be the most useful tool in actually interpreting the claims, but also the infringing article, and the various items of prior art, which include the prior art acknowledged (very briefly) in the supplier’s patent, the prior art acknowledged in ‘001, the embodiment fully described in ‘001, and the embodiment described in the abstract of ‘000. In this paper there were no alternative embodiments slipped into the description, as sometimes happens.

The first word that the examiner wants to see is ‘Construction’, or ‘Interpretation’ so do not waste time telling the examiner exactly what we are going to do, get on and do it.

Construction.

1a A safety cutter comprising “safety cutter” = a device that can be used to cut in which there is a retractable blade because p1 l9 refers to a ‘retracted or safety position’ which tends to equate ‘safety’ with ‘retractable blade’ and because ‘Cutter’ must mean an item that can cut because this is the only sensible construction “comprising” = includes at least the following features.

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12. So much for the theory…

You will see that the word ‘because’ is used a lot, and every time the word is used a reason is given.

There are arguments that ‘safety’ might be narrower than this, with the word meaning ‘automatically retracting’, and on the other hand there are arguments that ‘safety’ need not be as narrow as this, and could include a knife having any feature at all that leads to increased safety, but since all of the knives you have to look at have a retractable blade, this seems to be a pragmatic construction.

It does help if you show page and line numbers for the parts of the text where you are finding the ‘evidence’ needed as a basis for the logic you are displaying. Figure numbers can be used if appropriate.

1b a casing “casing” = a housing defining a chamber to receive the following components, because this is in the described embodiment.

Sometimes you do not need to explore the outer boundary of the meaning of a term…it is sufficient to explain the central part of the meaning, especially if this can be done quite quickly, and will be adequate for your needs in infringement and novelty. In this paper all of the knives have a structure that is very similar to that of the supplier’s patent, and you cannot see any argument that any of the knives does not have a casing, so you do not have time to discuss any differences between a casing and a housing, and a handle having a chamber at one end…

1c within which there is mounted a blade carrier “within which there is mounted” = inside the casing there is an arrangement that holds the blade carrier, while permitting movement of the blade carrier because the ‘within’ cannot refer to the blade carrier itself, since in the described embodiment most of blade carrier 7 is outside the housing (see Fig 2) while the pivotal connection 6 is inside the casing. The skilled person will see that a ‘housing’ and a ‘casing’ are functionally equivalent. The function of the connection 6 is to connect the blade carrier to the casing while permitting movement relative to the casing so the cutter can operate as described on page 2 l 22/23. The blade 5 is releasably attached to the holder 7 by nuts and bolts (p2 l 7) and acts to move the blade when pressure is applied to the operating button 7 (p2 l 22). “blade carrier” = an element that holds the blade so that the blade will move with the blade carrier The description of the pivotal connection is not clear. Is there a pin on the casing engaging a hole in the lug, or is a rounded lug received in a rounded recess as the two parts of the casing are assembled? In either event Figures 2 and 3 are not consistent.

SUFFICIENCY

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12. So much for the theory…

Sketch 1

It could be like this:

[like a loose jig-saw connection] recess to receive lug

lug

or:

pin in middle of recess hole in lug

In any event Fig 3 is wrong and should be:

gap

130

There must be a gap as 7 has moved from Fig 2 position

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12. So much for the theory…

You will observe the word ‘sufficiency’ to the bottom and the left of your construction. This will remind you to look at this point when you consider sufficiency, and if you do not get time do that properly, at least the examiner may observe that you ‘spotted the point’, and may give you a mark. Points of this type may easily be illustrated with a sketch, or even a reproduction of Figs.

2 and 3 to show the problem. See Sketch 1 [on the facing page]. (We will refer to sketches below; but rest assured that any sketches you draw need not be ‘works of art’ or be of engineering draughtsmanship standard. Just a simple sketch will suffice, provided it makes the point clearly.)

At this stage you can appreciate the overall ‘shape’ of the construction section. The claim is being divided into phrases, labelled 1a, 1b, 1c, etc, and these phrases include all of the words of the claim.

This will save valuable writing time when you get to infringement and novelty. While all of the words of each phrase of the claim have been written out, it is possible to write just the phrase labels if you have marked up the claims page and handed that in as part of your answer, or alternatively you can write just the first couple of words, and the last couple of words (e.g. within which…blade carrier) and in this way the amount of writing needed can be reduced, thus saving time.

For each of the three phrases construed so far, a meaning has been given, using words that are not the same as those being construed, as really you are ‘translating’ the claim. Certainly, for the first and third term construed, it would have been very possible to reach an alternative conclusion, and for a good reason. One might say that in a ‘safety cutter’ there must be some sort of safety feature, or you could say that the blade must be retractable, or you might say that in a safety cutter the blade must retract automatically when not in actual use, and if you gave some sort of reason to support any of those views the relevant mark would be awarded. The word ‘ mounted’ could be given a broader meaning, more in line with ‘positioned’ or ‘located’’, and such a meaning would be quite acceptable with the appropriate reasoning being shown.

You just do not have time, however, for a very lengthy debate on any one ‘point’. There are in the broad region of 20 marks for interpretation, spread across the claims. There may be ten or so of those marks for claim 1. It is very unlikely that there are more than 25 marks in this section. If you have spent two hours reading the paper, you now have 180 minutes to write the answer, and you must aim to score at the rate of more than one mark every two minutes, so you only have 40 to 50 minutes to deal with all of the claims. It will be worth spending a bit longer than this, if the end result is an interpretation that can be easily applied to the infringement and the prior art, making the infringement and novelty sections easier to deal with, so that they can be completed in a relatively short period of time.

But on with the construction of claim 1…

1d incorporating an operating button “incorporating” = the blade carrier must be associated with an item “operating button” = and item on which pressure can be exerted to ‘operate’ or move the blade carrier because the described button can be seen by the skilled person to be positioned to be pressed by the thumb of a person holding the handle. There is, however, no description of the button being manually operated, and so the button can take almost any form that fulfils the function. The illustrated button is shown as being

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12. So much for the theory… integral with the blade carrier, but the word ‘integral’ is not used in the description (see p2, l 4 ‘extending into an operating button’) There is no reason why the blade carrier and button cannot be a two-part construction if it performs the same function.

This interpretation has been worded so that when you get to the two-part blade carrier of the ’000 reference it will be easy to say whether it is ‘in’ or ‘out’. It would have been easy to ‘fudge’ the issue of whether this phrase is, or is not, limited to ‘integral’ or ‘one piece’, by saying that the blade carrier must ‘have’ or ‘be provided with’ a button. Then, when you got to consider ‘000, you would not know what conclusion to reach, and would waste time waffling while reaching no logical conclusion. Observe how the non-description of something may help give a broad interpretation.

Sometimes the format of putting a meaning and then giving a reason does not quite fit, and things have to be a bit intertwined. This is fine, as long as intertwined does not mean muddled, and provided that the end result is a meaning supported by reasoning.

1e a blade attached to the blade carrier “blade” = a cutting element having a cutting edge because this is the usual meaning of ‘blade’ and such a blade is illustrated in the described embodiment “attached to the blade carrier” = the blade is connected to the blade carrier. The connection need not be permanent, but there must be sufficient engagement for movement of the blade carrier to effect movement of the blade because the blade is ‘attached… by any convenient means… nuts and bolts… blade 5 may be easily removed and replaced’ ( p2, l 6-8). The word connection must include this ‘releasably’ attached, but because there is no ‘releasable’ in the claim the PSA would expect the word ‘attached’ to also include a permanent attachment.

Note how the evidence is ‘quoted’ and shown by quotation marks, and how the page and line number are given. Also note how the fact that a word is omitted from a claim (in this case any word giving the flavour of ‘releasably’) can be used to suggest that the claim is broader than the described embodiment. Note also the use of the word ‘because’.

1f a spring mounted within the casing “spring” = any form of spring because the description uses the term hair spring (p2 , l 17), and if the claim was intended to be restricted to a hair spring this term would have been used. “mounted within the casing” = somehow secured to the casing at a point within the casing because this phrase should mean the same as before.

If the description uses narrow and specific language, and the claim uses broader or less specific language for the same feature, then one may be able to deduce that the claim was intended to 132

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12. So much for the theory… be broader than the description. You may think that this is ‘meticulous verbal analysis’ but it does seem that points like this, and logic of the type described, attract marks in FD4.

1g and biased at one end against a detent in the casing “biased” = urged into contact “at one end” = a part of the spring at or near one end “against a detent in the casing” = with an abutment or stop inside the casing.

How tempting to say that the spring ‘pushes’ against a detent… because that is what the preferred embodiment does, but saying that would (probably) exclude the spring of ‘001…

Because it is not the absolute end of the spring that is urged into contact with the detent formed by the channel sidewall 14 (Fig 2 and 3) but rather an end region and the claim must be expected to include this embodiment the arrangement would work with any type of stop.

It is possible to use the underlying logic of the Protocol Questions to give a claim a broad interpretation that covers ‘variants’, and this may be necessary when you know that the ‘variants’ are going to turn up. You cannot use the variant itself to help in the interpretation, but you can try and ‘broaden’ a feature to include other features that would (obviously) work in exactly the same way.

1h and at the other end against the blade carrier to retain the blade in a retracted position within the housing “at the other end” = a point on the spring at or near the other end because as can be seen in Fig 3, the very end of the spring does not touch the blade carrier – only a region near the end does. “against the blade carrier” = is urged into contact with the blade carrier “to retain the blade in a retracted position within the housing” = so that the blade carrier is held or kept in a position in which the blade is kept in the casing with the cutting edge inaccessible because, the function of the spring being biased against the blade carrier is to transmit force to the blade carrier to ‘retain the blade in the retracted position’ (p2, l 19-20) The skilled person would appreciate that for the knife to be ‘safe’ the blade must be inaccessible, as in Figure 2.

It is not at all unusual for the basis of some of the interpretation to come from the drawing rather than just the description.

1i the blade carrier being operably biased by the spring

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12. So much for the theory…

Sketch 2

It could be

recess

Coil to fit in recess

or it could be

recess with upstanding pin Coil to fit in recess and surround pin

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12. So much for the theory… “operably biased by the spring” = the spring acts (or operates) to try and move the blade carrier towards a specific position because, although the word ‘operably’ is not used in the description, the description shows (p2 l19-20) that the lower end of the spring is biased against – pushed into contact with – the blade carrier to retain – keep - the blade in the retracted position.

Here you are using several different but synonymous words to really get the message across as to what is meant.

1j so that the blade is exposed to its operating position only when pressure is exerted on the operating button against the spring “only when pressure is exerted on the operating button” = the cutter must be such that the blade is always in the retracted position unless some force is actually applied to the operating button which will move and hold the button against the bias of the spring, i.e. in a direction opposite to the biasing direction of the spring – it does not mean that the blade is only physically moved to the operating position when force is applied to the button to effect the movement and may stay there until positively withdrawn because p1 l 13-14 stresses that the blade remains in the operating position only in use, and reverts to the retracted or safety position when not in the hands of the operator, i.e. when the operator cannot apply any pressure.

Here both of the meanings of ‘exposed… only’ have been outlined, and a reason has been given as to why one has been selected.

2 a A cutter according to claim 1 “according to claim 1” = the cutter must have features of claim 1.

This is set out so that in infringement and validity you can quickly determine if this clause of the claim is satisfied or not.

2b in which the spring is pivotally mounted “pivotally mounted” = the spring is connected to the housing in such a way that at least part of the spring can effect a swinging movement about a pivot – it must include (but is not necessarily limited to) at least a hair spring with at least one turn between the two arms with that turn held in position in the casing because in the preferred embodiment the turn is mounted on a pin or held in a recess (drawing not totally clear and description does not clarify).

SUFFICIENCY

Again, you might provide a sketch such as Sketch 2 [see facing page].

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12. So much for the theory…

3a A cutter according to claim 2 “according to claim 2” = must have features of claim 2.

3b in which the blade carrier is pivotally mounted in the casing “pivotally mounted in the casing” = the blade carrier is secured to the casing at a point inside the casing so that it can effect a swinging movement about a pivot axis, because the described embodiment has a carrier mounted in this way and the phrase ‘mounted in’ must be equated with the phrase ‘mounted inside’.

3c such that the blade carrier is operably biased against the spring about its pivot “operably biased against the spring about its pivot” = when force is applied to the button the blade carrier is pressed against the spring, and moves about the pivot that connects the blade carrier to the casing because claim 1 says the carrier is operably biased by the spring… (to the retracted position) and if the carrier is now biased against the spring it must be going the other way. The ‘its’ pivot is ambiguous and could refer to the spring, but that construction would be nonsense as the blade carrier is the subject of the verb and the most likely contender for ‘it’ .

AMEND

You will see that the word AMEND appears at the end of this bit… just to remind you that this phrase at least should be amended, and also to show the examiner (if you do not get time to do amendment thoroughly) that you did at least see the problem, and see that it could be clarified by amendment.

4a A cutter according to any one of the preceding claims wherein “any onr of the preceding claims” = having the features of claim 1, or 1+2 or 1+2+3.

The published marking scheme of the P6 paper of 2014 showed that the examiner prefers to have all the specific combinations of claims set out in full. One could have added a comment that a combination of 1+3 is not contemplated as claim 3 is only dependent on claim 2 and is not dependent on claim 1 directly. This seems long winded, but in infringement and novelty a subclaim may be infringed/valid with one claim dependency combination in mind, and not-infringed/invalid with another combination.

4b the blade faces backwards “blade faces backwards” = when the cutter is held in the normal position (if there is an elongate handle this would be inclined at about 45 degrees to the horizontal) the sharp edge of the blade is substantially vertical and a line perpendicular to the cutting

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12. So much for the theory… edge of the blade extending away from the blade would pass under to handle towards the user of the cutter because, although the term is not used at all in the description, it would seem that ‘backward’ is used with reference to the user, and the skilled person can see that when the described cutter is used it is held in such a position and can be drawn towards the user to effect cutting. This is consistent with the use of ‘backward’ in describing the position of lug 11 ( page 2 l 13).

Here another sketch may be useful, such as Sketch 3 [see below].

It is not unusual in FD4 for a word used to define one feature in a claim to have been used in a totally different context in the description. In the absence of evidence to the contrary, it is reasonable to assume that the word would be used to have the same meaning in both contexts.

5a A cutter according to any of the preceding claims “any of the preceding claims” = having features of claim 1 or 1+2 or 1+3 or 1+4, or 1+2+4, or 1+2+3+4.

5b in which the casing is elongated at one end to form a handle

Sketch 3

45° 45° FORWARD

BACKWARD

GOES UNDER HANDLE AND UNDER HAND

VIRTUALLY VERTICAL

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12. So much for the theory… “elongated” = there there is a part of the cutter that extends beyond the hollow casing, and which can be grasped by hand. It is not necessary for the cutter to be manually graspable only by the handle – it may be graspable by a combination of the casing and the handle because fig. 3 shows the casing extending at least to the detent 14 which is described (p2, l18) as being within the casing, and is claimed as such (claim 1). This part of the casing is within the described handle 1. However, the handle itself does extend further to the right (Figs. 2 and 3).The handle is clearly designed to be grasped by hand.

5c and the operating button extends at the opposite end of the cutter “opposite end” = the operating button is located at the end of the cutter remote from the handle because, although the language is confusing (one end of the casing… opposite end of the cutter), the intended meaning is clear. In the described embodiment the handle is to the right and the button to the left. Although not described, one can envisage grasping the handle in such a way that the thumb is aligned with the button ready to press it down. The skilled person would see this and understand the claim accordingly.

AMEND

This construction has approximately 1,500 words, but some words could be saved by not writing out the claims in full.

For example, claim 1 could be divided up in the same way, but written as 1a A… comprising 1b a casing 1c within… blade carrier 1d incorporating… button 1e a blade… carrier 1f and biased… casing 1g and at… the housing 1 h the blade… by the spring 1i so that… against the spring.

If all of the claims were presented using this style over 100 words could be saved, bringing the 138

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12. So much for the theory… total down to approximately 1,400 words. By simply marking up the claims page given as part of the question and using it as page 1, even more time can be saved. By not writing the claim in full one can save over 5% of the writing time.

To save time going back to see exactly how you divided up the claim when you are in the infringement and validity sections, it may help if you mark the claims, on the examination paper, to show the reference letters at the beginning of the successive sections of the claim.

If you can write at approaching 50 words a minute, construction would take about half an hour. This would just be the writing time, but even if you have read the paper well, you will still have to think and cross check as you write, so this section may well take 40 minutes or even up to an hour, which is a bit longer than you might plan for if you just allocate time in direct proportion to likely marks. However, a well thought-out and well-written construction may save lots of time in Infringement and Validity.

Now move straight on to Infringement, and so: Infringement by ‘sale’ of Cracker Creations cutter.

You must identify exactly what product or act you going to consider when analysing infringement. Always try and choose the product or act that you think is most likely to be infringement. If you find that there is infringement, then you can consider other possibilities that exist within the question, such as contributory infringement. In this paper we have been told that the promotion of the Cracker knife is a sale, which is why the word ‘sale’ was in quotes.

1a √ because the cutter used in ‘paper cutting’, etc., p1 l4 and blade is retractable as p2 l 14-15… ‘slider 30 in retracted position… blade concealed’.

Here again, giving page and line references for the ‘evidence’ you rely on helps greatly and show what words are ‘quoted’. One would be tempted to say that 1a is satisfied ‘because clearly this is the case’… but it is always best to give some reasoning, however trite, and however unnecessary that seems.

1b √ because there is a housing defining a chamber… p1 l 13 – part of the blade and part of the slider are in the chamber, ‘chamber… in which… guideway… for blade’ just as in the embodiment of ‘202.

If features are essentially identical with features of the described embodiment of the invention, this tends to confirm that they are inside the claim.

The reasoning should be based on the interpreted meaning of the phrases of the claim.

Wherever possible the language used in the interpreted meaning should be applied to the features of the infringement, so that the logic of the conclusion that there is infringement becomes transparent.

1c √ because the blade 36 at a point in the casing (see Fig) engages the stem 28 of the slider to secure the slider to the casing while permitting movement of the slider.

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12. So much for the theory…

The slider engages the blade, and serves to secure the blade to the casing. The slider and the blade can still move. The slider acts to move the blade when pressure is applied to the operating button 30.

If you had defined ‘mounting’ to be some sort of fixed point, or some mounting structure, such as a pin, or cavity, defined by the casing then this phrase of the claim would not be satisfied by the Cracker Cutter. But would you think it right to tell the client that there is no infringement purely because there is no fixed mounting point for the blade carrier? If you would be comfortable telling the client this, then you could easily adopt that other construction. But if you did, you really ought to tell the client that he is ‘off the hook’ purely because you think the claim is limited, and that there is quite a possibility that other people may take a different view.

1d √ because 30 is clearly a ‘button’… page 2 l 16… the thumb exerts a pushing force onto the slider 30.

As well as giving the page and line reference, you are indicating the words we rely on, so your logic can be seen to be water-tight.

1e √ because knife blade 36 is connected to the blade carrier the stem 28… extends through aperture 38 (p1 l33 – p2 l2) and this connection enables the blade carrier to move the blade.

1f √ because 34 is a wire spring p2 l7, and has turns around a pin – just like the spring described in ‘202.

Again, you are emphasising the similarities between the item being considered and the described embodiment of the invention.

1g√ because the very end of arm 34 b engages a stop constituted by the interior face of the wall of the casing (Fig 3) and so the stop (detent) is inside the casing.

1h √ because a part of the spring very close to the other end is pressed into contact with the blade carrier (it passes through aperture 32 in stem 28 of slider 30) (p2 l2)and performs the same function as the corresponding part of the spring in the described embodiment.

1i √ because the spring acts to try and move the blade carrier to the retracted position p2 l14. ‘When not in use slider… held in retracted position… by spring’.

1j √ because in use the button is pushed to move the blade carrier to the operative position, and released to retract the blade p 2 l14-19.

All features of the claim present – the claim is infringed.

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12. So much for the theory…

Even though you have ticked all of the features of the claim, you must make a positive conclusion regarding infringement or non-infringement, so that the examiner can see that you know that you have actually reached a conclusion. In 2014, 0.5 marks were given at the end of each claim for stating a conclusion.

2a √ because claim 1 is infringed.

In 2014, 0.5 marks were given for dealing with claim dependency for each claim.

2b √ because part 34 can swing about pivot 35 – exactly as in ‘202.

Thus claim 2 infringed.

3a √ because claim 2 is infringed.

3b X because blade carrier cannot pivot but only move straight or linearly as stem 28 is oval (see fig 3) and moves in slot 20.

Claim 3 not infringed.

4a √ when claim is dependent on 1 or 2 only… because only 1 and 2 infringed.

4b X because when the cutter is held ready for use the cutting edge of the blade will probably make an angle of about 45 degrees to a horizontal surface. The sharp edge of the blade will not be vertical, or anything like vertical.

Claim 4 not infringed.

5a √ when dependant on claims 1 and 2 only… because only 1 and 2 infringed.

5b X because the casing shows no sign of elongation to form a handle that can be grasped by hand. The entire cutter seems to be intended to be gripped between fingers and thumb. The casing as a whole will be in the palm of a hand.

5c X because the operating button 26 can be seen (Fig 1) to be almost in the centre of the cutter, on one side, and so cannot be said to be at an ‘end’ of the cutter.

Claim 5 not infringed.

And that is the end of infringement, in approximately 500 words, with a reason given for every conclusion.

Now, move on to Novelty.

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12. So much for the theory…

Novelty.

You will deal with every possible prior art disclosure – briefly considering and then promptly dismissing the irrelevant, but showing why you are dismissing it.

1. Prior at acknowledged in ‘202.

Merely discloses knife having retractable blade but without automatic retraction.

Cannot anticipate as will not fulfil 1j at least and no details given. Not enabling disclosure.

Does not anticipate.

You have shown that it cannot anticipate, and also that it is non-enabling – thus giving two reasons why you will not consider it in detail.

2. ‘001 published 30 Jan 1986 – before filing date of 2nd July 1987 of ‘202 – available for novelty and inventive step.

A Prior art admitted in’ ‘001 (p1 l 7-11) The button has to be positively acted on to retract the blade (or ‘released again’ as at end of line 9) and so no automatic retraction and cannot fulfil 1j. Discloses blade, button and spring, but does not disclose casing, blade carrier or the mounting of the spring in the casing. Only sparse details are given – not enabling disclosure.

Does not anticipate.

Again, you have given two reasons why you are not going to consider this in great detail.

B. Preferred embodiment of ‘001 1a √ because the device is intended to cut (p 1l1… ‘safety knives for cutting cardboard’) and the blade is retractable p1 l 27-28… ‘the carriage (and the blade) is drawn safely backward into the handle’… see fig 1.

Here you are using the same general approach that you used in the infringement section. You are simply looking at each section of the claim to see if the relevant item does, or does not, fall within the wording of that section of the claim, as interpreted in the interpretation section. You are identifying where the evidence is to be found, and you are ‘quoting’ it.

1b √ because the left hand end of the knife defines a chamber which receives the blade, the carriage and the spring, see Fig 1.

1c √ because the carriage 20 which holds blade 43, p2 l10-11 ‘carriage… cavity… for receiving… balde’, is retained by stud 24 which acts as a mounting to engage elongate aperture 28 at a point inside the casing. This lets the carriage move to the left, but connects the carriage to the casing.

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12. So much for the theory…

The features of the prior art are being fairly described in the terms used for the interpretation of the claims. This makes it easy to conclude that there is or is not anticipation.

1d √ because the carriage is provided with an anchor 46 which is ‘rigidly secured to the carriage’, p2 l13, and a hook 50 can exert pressure on the anchor to move the carriage.

1e √ because a blade which clearly has a cutting edge is received in ‘a thin cavity in the carriage’, p2 l11, and is thus attached to the carriage, and movement of the carriage effects movement of the blade.

You must show how all of the words of the claim are satisfied… not just some of them.

1f √ because there is a spring 34 within the chamber in the handle and thus within the casing see fig 1. The spring is secured to the casing by the engagement between the spring and the pin 32.

1g √ because the hook-like formation at the right-hand end of the spring is pulled into contact with the pin 32.

1h √ the hook at the other end of the spring is pressed into contact with the edge of the hole in the carriage that the hook passes through – see fig 1 – and the spring tends to hold the carriage in the position shown within the casing, P2 l 3-6, in order to bias the carriage towards its retracted position… a tension spring…

Ii √ because the function of the spring is to try and “draw the carriage back into the handle”, p1 l 26 -28.

1j √ (maybe) because it would seem that the blade, once pulled out of the handle by engagement of the hook with the side of a box, will remain exposed until the handle is ‘pulled away from the box’… p2 l 26. Does the hook still engage the box, sliding through the slit cut by the blade, but still providing a resistive drag that keeps the blade exposed? Or is the drag exerted by the cardboard on blade as the blade makes the cut sufficient to keep the blade out, the hook serving no function after the initial movement of the blade to the exposed position? If the former situation, then it is only when a force is applied to the anchor 46 by the hook 50 that the blade is exposed.

This seems likely and so we conclude that the claim is anticipated.

Check with skilled person

Here again you can see the subtlety of FD4. The relevance of this knife does depend on whether it works, and how it works, and why it works, and this is just not described. However, you have shown the examiner that you appreciate the point, and realise the questions that really need to be answered, although you have made your ‘best guess’ and then proceeded appropriately.

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12. So much for the theory…

2a √ because claim 1 anticipated 2b X because the spring does not have any part that can effect a swinging movement about a pivot. There is no pivot at all. Pin 32 cannot be a pivot, because the spring cannot swing as it is retained in a tunnel.

Claim 2 not anticipated

Here you are pre-empting an argument that your conclusion is wrong, and knocking it down. This shows the examiner that you at least spotted the fact that one might say that the pin 32 is a pivot.

3a X because subject-matter of claim 2 not present.

3b X because the blade carrier moves linearly and is not pivotally mounted.

Claim 3 not anticipated.

4a √ but only because subject-matter of claim 1 present.

4b X because the blade ‘faces’ downwards as can be seen from Fig 2.

Claim 4 not anticipated.

Here a sketch may be useful. So you might put Sketch 4 [see below].

5a √ but only because subject-matter of claim 1 present.

5b √ because the chamber goes as far as the pin 32, which is the detent at the first

Sketch 4

This is downwards

This would be backwards

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12. So much for the theory… end of the spring but the graspable handle extends to the left of that point. The finger grips can be seen in fig. 1 showing that hand grasps part of the handle to the right of the chamber.

Claim 5 anticipated.

There is one more prior art disclosure to consider…

4. The knife of ‘000 published 3 March 1987 – before filing date of 3 July 1987available for novelty and inventive step.

As you introduce the prior art, remember to confirm its date and availability.

1a √ because it is clearly a knife that can cut and the blade is “retractable” (see title).

1b √ because the left hand part of the knife must contain a chamber to receive the blade and blade carrier.

1c √ because the blade carrier 45 must be able to move, as it is a ‘retractable blade utility knife’ (page 1 l80, and must be held somehow, apparently by a pin-in-slot arrangement (see figure) or else it would become separated from the rest of the knife, and the pin-in-slot is inside the casing as it does not appear to extend beyond the casing, and the blade carrier 45 must carry the blade.

1d √ because button 60 is ‘screwed into the blade carrier’ (l10 ) and can be ‘slid backwards and forwards’… ‘to extend and retract the blade’ (l11) by the application of pressure.

1e √ because there is a blade 30, which is clearly a cutting element with a cutting edge. It must be connected to the blade carrier or the blade could not be moved between extended and retracted positions.

1f X because, although there is a spring member 64, it is not secured to the casing in any real way – it seems to be just jammed between the blade carrier and a sidewall of the casing.

1g √ because the right hand end region (and also the left hand end region) as shown is pressed against the sidewall of the casing that acts as an abutment or stop.

Here again a sketch may help. See Sketch 5 [overleaf].

1h X because while two other parts of the spring are pressed against the blade carrier these parts are approximately ¼ and ¾ of the way along the spring, and cannot really be considered to be ‘end’ parts of the spring.

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12. So much for the theory…

Sketch 5 sidewall = abutment or stop

one end

another end

1i √ because the spring does act to tend to push the blade carrier downwardly to a position in which there is friction between the blade carrier and the casing.

1j x because while the blade is only moved to the operating position only in response to pressure on the operating button which moves the blade carrier against the resistive forces generated by the action of the spring, the action is not that defined in this phrase of the claim as interpreted above, as the blade remains in the exposed position until it is dragged back by a ‘reverse’ force on the button, and does not automatically retract.

So: not anticipation of claim 1.

2a X as features of claim 1 missing.

2b X there is no pivotal mounting of the spring, as it is not mounted at all, and does not move with any sort of pivotal action.

Claim 2 is not anticipated.

3a X as claim 2 not anticipated.

3b X the blade carrier can only move linearly, and not with any sort of pivotal motion, even though 45 would appear to be a pin in slot 56 which would act to mount the blade carrier to the casing with the blade carrier still being able to move.

Claim 3 is not anticipated.

4a X as none of 1, 2 or 3 is anticipated.

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12. So much for the theory…

Sketch 6

45°

BACKWARDS 4b √ because the main part of the casing is cranked relative to the handle 12, and if the handle 12 is held in a typical position, inclined at about 45 degrees to the horizontal, the cutting edge of the blade will be vertical, and the normal to the blade will pass under the handle.

Although the subject-matter of the claim is taken, due to dependency Claim 4 is not anticipated.

Here again a sketch may be useful, such as Sketch 6 [above].

5a X because none of the preceding claims is anticipated.

5b √ because the handle 12 is formed as an extension or elongation of the casing, albeit at an angle to the ‘axis’ of the casing, which can be grasped.

5c X the operating button is in the centre of the cutter.

Claim 5 is not anticipated.

The analysis of the four pieces of prior art has used approximately a thousand words, and so you have addressed about two-thirds of the total marks in about three thousand words.

Before you actually start on inventive step you should really appreciate what you have concluded… it is possible to lose sight of this when going through the structured analysis as to Infringement and Validity • 2018

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12. So much for the theory… whether specific features of the claims are or are not present in the infringing article(s)/method(s) and in the various prior art article(s)/method(s).

The analysis above shows that claims 1 and 2 are infringed, but claims 1 and 5 are anticipated by ’001, and none of the claims is anticipated by ‘000. However, ‘000 does show the ‘subjectmatter’ of claim 4, i.e. the blade that faces backwards. This means that the only sub-claim that you can really consider attacking successfully on the ground of ‘inventive step’ is claim 4. You cannot invalidate claims 2 or 3 as none of the prior art begins to show a pivotally mounted spring, or a pivotally mounted blade carrier, unless you contend that features like this are inherently obvious, or obvious to try.

Possibly you should consider what is the ‘weakest link’ in the chain of interpretation and novelty that has got you in this position. So far you have tried, as is appropriate, to take a dispassionate view, and generate an opinion that is your true opinion of the situation. You must do this if you are to give your client ‘fair’ advice. You must not try to interpret everything in a way that will give your client the answer that he wants – but equally, you must be able to test the strength of your logic, and see what would happen if a point that was very close to ‘balance’ was decided the other way. So now you have to think again, but in a more ‘partisan’ way – seeing if there is a possible interpretation of the claims that would lead logically to a conclusion that claim 1 valid but still infringed.

In the present case you gave the words ‘operating button’ a very ‘functional’ meaning, mainly because there was no description of force being applied to the ‘button’ of the described embodiment in the supplier’s patent by a finger or thumb – indeed, the description merely mentioned the application of pressure to the button.

However, it would have been clear to the skilled person that anyone holding the handle in the expected way would have their thumb over the button 7, and also the description does say that the blade automatically retracts when the knife is put down or slips. So it may be possible to deduce that if the knife becomes separated from the hand, the blade retracts, and so one can conclude that it must be part of the hand, specifically the thumb, that operates the button.

It may have been possible for you to deduce logically that the term ‘button’ was narrower than the definition you have given it. But what would be the conclusion if the term ‘button’ has a narrow meaning?

The infringement would still infringe, as the component equated with the ‘button’ of the claim, the slider 30, is described as being actuated by a thumb. Of the prior art that is described sufficiently to be applied, the admitted prior art in ’001 is described as having a button, and so would be just as relevant as before. The preferred embodiment would not have a ‘button’, as neither the hook wire 48/50 nor the anchor 46 receives direct pressure from a finger or thumb.

If the narrower definition of ‘button’ were to be adopted, then the claim would be valid (from the point of view of novelty) and infringed.

Now you face a dilemma. You have seen that a different interpretation would put you in a better position to deal with inventive step in such a way that you can demonstrate your skills in this area to the examiner. Should you go back and ‘re-visit’ your interpretation of ‘button’, or should you ignore the alternative interpretation, and just proceed to consider inventive step from your present position, i.e. that claim 1 and 5 are anticipated? (Of course, if a claim is anticipated there can be no obviousness attack, as there is no point of difference between the 148

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12. So much for the theory… claim and the prior art, unless you prepare an attack using other prior art disclosures).

Going back and changing the original construction at this stage would be time-consuming, and possibly dangerous, as you would have to check very carefully that all the passages in the consideration of infringement and novelty were consistent with the ‘new’ interpretation.

If one is not to ignore the position, the best approach is to indicate to the examiner that you appreciate the relevance of the interpretation of ‘button’ to the conclusion that has been reached, and acknowledge the alternative construction. You can do this, provided that you give reasons.

You might put Although we have concluded that claims 1 and 5 are anticipated by ‘001, this conclusion does rely on the relatively broad construction of ‘operating button’. It is possible that this phrase could be given a narrower interpretation. Although not specifically described, the skilled person may well understand that a person holding the handle 2 of the described knife would have their thumb over the button, and appreciate that the button is a thumb-operated button. The skilled person may then conclude that by ‘operating button’ the patentee intended a ‘manually operable button’ or even a ‘finger/thumb-operated button’ – which would be a more normal use of the word.

If this construction of ‘operating button’ is used, the ‘001 does not anticipate any of the claims, as the neither the anchor 46 nor the wire 48 or hook 50 is directly manually operated in any way.

This shows the examiner that you appreciate the ‘weak point’ in your logic, and that you understand that if this word was construed another way, you get a very different result. Also, it lets you consider the inventive step of claim 1 in a logical and credible manner.

So now you can look at inventive step.

Inventive step Applying Pozzoli

Just saying that you are applying the Pozzoli precedent will help score a mark, especially if you then complete the four steps of the Pozzoli approach.

1a) The skilled person is a designer or manufacturer of safety cutters, which includes safety knives because the preamble of the patent (page 1 l 9/10) describes this field.

1b) The skilled person will know about knives. The acknowledged prior art of ‘202 may be common general knowledge, because this is a whole class of knives, and the acknowledged prior art of ‘001 seems to be a member of this class. Because both patents acknowledge equivalent prior art knives at least this class of knife may be known to the skilled person.

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12. So much for the theory…

(CHECK WITH CLIENT) The skilled person would not be expected to be familiar with the preferred embodiments described in the US patents.

Here we have applied the first step of Pozzoli, and by using the 1a) and 1b) headings we have shown the examiner that we know what we are doing. (We will use the numbers 2 to 4 to identify the following Pozzoli steps.) An attempt has been made to show which disclosures are going to be treated as common general knowledge, and which are not, and a reason has been given. It seems only common sense that anyone who knows anything about knives will know about retractable knives, but we must give reasons for our conclusions. The reason may seem ‘thin’, but it is a reason, and we will check the reasoning with the client.

2. The claims have been construed above.

The term ‘button’ was given a very wide interpretation, which covered the hook 50 and anchor 46 of ‘001. It is possible to envisage an alternative interpretation in which ‘button’ means a part to be actuated by a finger or thumb of a person using the knife because this is the only arrangement described and illustrated. If this interpretation is used claim 1 is still infringed, but is novel over ‘001.

Here we are showing that there is an alternative interpretation, and showing the reason why this interpretation may be adopted. We are also explaining the consequence of the different interpretation. The fact that the claim can be considered to be novel makes it a bit easier to present an inventive step argument with a straight face.

The inventive step of claim 1 is a safety cutter where ‘the blade is exposed to the operating position only when pressure is applied to a button’, (closing words of claim 1), so that ‘if the knife is put down or slips the blade automatically retracts’ (page 2 l 26/27).

The inventive step of claim 2 is a pivoted spring, and that of claim 3 is a pivoted blade carrier.

The inventive step of claim 4 is the orientation of the blade, and that of claim 5 is the position of the operating button.

Here we have completed the second step of the Pozzoli test. It may well be sufficient just to say that the claims have been construed, as most of the marks in the inventive step section go for the quality of the arguments that you generate.

3. The differences between the subject-matter of the claims and the prior art has been discussed in the Novelty section

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12. So much for the theory…

Strictly speaking the difference between the prior art and the ‘inventive concept’ may not have been discussed as such in the Novelty section, but it seems unlikely that there will be marks for any extensive discussion of so fine a point at this stage.

Now a decision has to be made as to the approach to be taken in the final section, where most of the marks are to be found. We have four items of prior art…two of which are in a single document… and five claims. So we could proceed on a claim-by-claim basis… or on the basis of one document, or combination, and then another… There seems little to choose between the approaches in this case.

One interesting point in this paper is that US ’001 discloses two embodiments, one of which is the acknowledged prior art. Now if the skilled person was handed just this document it would not be necessary to show that either embodiment was common general knowledge, because the skilled person has both embodiments on the table at the same time in a single document, and so might be motivated to combine them. Consequently, this may be the best place to start.

4. If the skilled person considers ‘001, two sorts of knife will be ‘on the table’. In one a push-button is rigidly attached to the blade of the knife and the button is pushed to move the blade into an extended cutting position. Somehow the blade is latched in this position, and if the button is pushed again a spring can retract the blade to its concealed position. This is acknowledged prior art, but may be common general knowledge. The second knife also has a blade movable between a retracted position and an extended position against a spring, but the blade is extended only when a hook engages a cardboard carton which is being cut. This provides the advantage that if the handle is moved away from the box the spring pulls a carriage and the blade ‘safely’ (page 1 line 28) into the handle.

The skilled person would see the added safety provided by this ‘automatic retraction’ and would be motivated to provide the same advantage on the described knife with the operating button. This is achieved simply by removing the latch.

A counter-argument is that the knife with the hook is very different from the knife with the button, and the inventor of the knife with the hook did not appreciate that the safety advantage of this knife could be incorporated in the knife with a button.

Realising that the automatic retraction feature of the knife with a hook could be used in the knife with a button might have the necessary scintilla of invention for the claim to be inventive.

On balance I consider the claim would be held to be obvious.

As you can see, we have set out for, and an argument against, based on solely the ‘001, and we have reached a conclusion. We could add a further attack on the basis that ‘001 will be read with the admitted prior art of ‘202 in mind. However, ‘202 does not provide a detailed description of the retractable blade knife. So…

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12. So much for the theory…

If the skilled person reads the description of the preferred embodiment of ‘001 with the admitted prior art retractable-blade knife of page 1 l 16-17 of ‘202 in mind, then the skilled person might appreciate that the admitted prior art knife might be modified to have automatic retraction. However, such a combination of teaching does not immediately suggest an operating button because neither disclosure mentions a button as such, and so this is only a weak attack.

The skilled person would not be led to combine the described embodiments of ‘000 and ‘001 because neither of these embodiments are common general knowledge, and because nothing provides a motive to combine them. However, if the hook 50 of ‘001 was replaced with the button 61 of ‘000 then all the features of claim 1 would be present.

We have outlined various possible attacks, giving reasons why they might be strong attacks, or reasons why they are weak or even really non-existent. In each case reasons have been given, so the examiner can see what were are really thinking.

Now we move on to claim 2. This relates to the spring being pivotally mounted. There is no spring shown in the prior art that is pivotally mounted. The described spring in ‘001 is a standard helical tension spring, and the spring in ‘000 is a strange ‘W’ shaped spring that really exerts a frictional effect on the blade carrier to resist any movement of the blade carrier.

While it might be ‘obvious’ to replace a helical tension spring with a pivotally mounted spring, if we just say the two are somehow ‘equivalent’ then we are ignoring the effect of the word ‘pivotally’. Maybe we might think that springs are pretty commonplace, and how many ways are there of mounting a spring? The prior art shows a tension spring and a ‘W’ spring, and a pivotal mounting would seem to be the only possible alternative. On the basis of the information provided in the question we cannot reach a conclusion, but maybe we are expected to at least ask the client the question.

Claim 2 relates to the spring being pivotally mounted. Because there is no disclosure of a pivotally mounted spring in the prior art being considered, there is no immediately apparent obviousness attack. But is the pivotal mounting of a spring a commonplace thing? Maybe searches would show that many pivotally mounted springs have been used before, and so it might be possible to show that such a spring is within the common general knowledge of the skilled person, and then the claim might well be ‘obvious’.

Unless there is more evidence I consider the claim inventive.

In the real world more information might be needed before a conclusion can be reached. Part of the skill of the patent attorney is recognising that more information might be helpful, and identifying the nature of the information that is needed. It does not help the client if an attack, which can be seen to be quite strong with common sense and few moments thought, is not pursued simply because there is no evidence for it in the papers initially provided.

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In FD4 you must not rely on any specific knowledge that you have of the art in question, but you are expected to show common sense and at least ask the question if something seems so trivial that it is hard to contemplate that it is really inventive.

In claim 3 the prior art does not show a pivotally mounted blade carrier. It may be that pivotally mounted blade carriers are commonplace, and all we need is evidence, in the same way that pivotally mounted springs might be commonplace, but this does seem to be a less likely proposition.

Claim 3 relates to a pivotally mounted blade carrier which is operably biased by a spring. The only operably biased blade carrier is in ‘001. There is no suggestion anywhere in the prior art that a blade carrier should be pivotally mounted. Even if further searches were to show some prior proposed pivotally mounted blade carriers, it would be necessary to show that the skilled person would envisage making two changes to ‘001, namely replacing the hook 50 with a manually operable button, and making the blade carrier pivotally mounted (also, due to claim dependency, making the spring pivotally mounted). It seems most unlikely that this complicated set of changes would be ‘obvious’.

I consider the claim to have an inventive step.

Claim 4 says the blade faces backwards. This feature is intrinsic in ‘000, but not in ‘001 (on our previous analysis). However, we did not have a successful obvious attack that involved ‘000.

Claim 4 relates to the ‘backward’ facing blade. Because ‘001, which was used to show claim 1 to be ‘obvious’, does not have this feature there is no immediate attack. The feature was in ‘000 – but because this was not used in a successful attack it does not immediately make the claim obvious. It is unlikely that the skilled person would use the feature (as it is not in the common general knowledge). On the other hand, it might be suggested that this is a common design feature if further searches show this to be the case.

Unless there is more evidence I consider the claim to have an inventive step.

Claim 5 relates to the elongate handle and the position of the button. Both of the US patents show the elongate handle, and indeed almost all handles on anything have this general form.

‘000 shows a button at the position usually occupied by the thumb of as hand holding the handle, but this disclosure was not used in the initial attack on claim 1. Would the skilled person look at yet another document to reach the desired destination – with that being a document that is not common general knowledge? If ‘001 shows ‘a button’ in the form of hook 50, then that hook is at ‘the opposite end’, but for a very different reason. It is not there to be pressed by a thumb, but rather to engage with a box that is to be cut.

Claim 5 relates to the elongate handle and the position of the button. Elongate handles seem to be commonplace and are present in the described embodiments of ‘000 and

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‘001. The button 60 on ‘000 is in the centre of the cutter. If the hook 50 of ‘001 were to be considered ‘a button’ then that hook/button would be ‘at the opposite end of the cutter’. But our conclusion was that the hook was not a button, but rather that the anchor 46 was ‘the button’ – which is also almost in the middle of the cutter. So, while the choice of an elongate handle may be obvious, the positioning of the button may be inventive. On the other hand, a knife designer will (one would expect) envisage a hand grasping a handle and then position the operating button to be readily accessible, that is to say immediately adjacent a thumb or finger of the hand, which would inevitably put the button at a position towards the end of the cutter where the blade is rather than at the end of the handle remote from the blade.

On balance I feel that claim 5 has an inventive step.

So, while claim 1 is ‘obvious’, the cited prior art does not support a conclusive attack against claims 2 to 5, although strong attacks may exist.

(All of the logic needs to be checked with a skilled person) CHECK WITH CLIENT/FURTHER SEARCHES

If you think that inventive step has 15 marks or so, you have given the examiner an opportunity to give you most of those, and so you must move on to internal validity.

It is some time since you thought about this, but you did put in those ‘markers’ when you were construing the claims, so you can look back at them and quickly write: Internal validity The description of the pivotal connection between the lug 6 and mount 12 is not clear (see construction 1c)

You did not note any other problems as you went along. You could scour the document at this stage to see if you can find anything else, but this would almost certainly be an inefficient use of time, and so move on to Amendment.

In this section you will be looking for two sorts of amendment… the first sort will be amendments that overcome clarity issues revealed during your interpretation of the claims, and amendments that will force the reader to an interpretation that the patentee would wish the reader to reach. The second sort of amendment is a claim-restricting amendment that will make the claim valid over the prior art, and still keep the infringement inside the claim.

As you begin, you must look at all the points marked with the word ‘amend’ and you must think strategically. Although in the context of the paper you are acting for the infringer, you must try your best to see any amendments that the patentee could effect that would improve its position, either by making the claims more clearly distinguished from the prior art, or by improving the language of the claim so one would be forced to interpret the claim in a way that is to the benefit of the patentee, with no possible ambiguity.

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You have concluded that claim 1 is invalid over ‘001, either for lack of novelty, or for lack of inventive step, and so you need to look for a restrictive feature present in the preferred embodiment, and in the infringement, but not in the prior art. Looking initially at the sub-claims, you can see that the pivotal mounting of the spring of claim 2 may well help you, but the pivotal blade carrier of claim 3, and the backward facing blade of claim 4 will not help at all. The elongate handle of claim 5 also will not assist you.

The spring of the preferred embodiment of the supplier’s patent and the spring of the infringement are very similar. Each is a ‘hair spring’ with two ‘arms’ separated by a section with one or more ‘turns’ which forms the pivotal mount, and one arm is kept relatively still pressing against a detent within the casing, and the other arm engages the blade carrier. Both the invention and the infringement have an automatically retracting blade, and if a reference to this could be added to the claim, it would further distance the claim from some of the prior art, even though the automatic retraction is shown in ‘001.

There would seem to be room to make the claim quite specific to the spring, and to automatic retraction, while still ensuring that the infringement is within the claim.

So you might say Amendment It is only claim 2 that includes subject-matter that is novel and inventive and infringed. The subject-matter of the remaining claims should not be incorporated in claim 1. Details of the spring and the automatic retraction feature are common to the invention and the infringement.

This passage explains your general thinking concerning ‘scope’ amendments. You do need to show specific amendments and their basis.

Claim 1 could be amended by replacing the words of 1f with; ‘a hair spring which is pivotally mounted within the casing about a pivot point’ The amendment is based on p2, l 17.

This will distinguish the claim from ‘001 which does not show a hair spring which is pivotally mounted, while still embracing the ‘cracker’ product, which clearly has such a hair spring (see figs – spring 34).

Claim 1 can be further amended by adding a reference, for example at the end of the claim, to ‘the cutter being such that the blade automatically retracts if the knife is put down or slips’.

This based on p2, ll26-27. The claim will be distinguished by this feature from all of the prior art (except ‘001) and will still be infringed.

To avoid lack of clarity the end of line 1 beginning of line 2 should read… a blade carrier, said blade carrier incorporating…

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12. So much for the theory…

Now you have dealt with the ‘scope’ amendment, and the ‘sufficiency’ or ‘lack of clarity’ point as well.

Claim 2 will be deleted and remaining claims renumbered Claim 3 can be renumbered and amended to say that the blade carrier is pivotally mounted in the casing about a pivot such that… about said pivot. This will clarify the ambiguity. However, while valid, the claim will not be infringed.

Claim 4 remains renumbered but unamended and still not infringed.

Claim 5 can be renumbered and amended by changing the words ‘the casing’ in line 1 to be ‘the cutter’. This overcomes the ambiguity. The claim is still not infringed.

The amendment does give a valid infringed claim, and you have explained why this is so. Also, a couple of areas where there was some difficulty with interpretation have been clarified.

Finally, you might say Statements of invention corresponding to all of the claims could be included to ensure that all claims are fairly based on the disclosure…

So now you can move on to the memorandum of advice. This is where you really must go back to the beginning, and see what it was that the client, or the examiner, really wanted you to do.

When you first read the client’s letter pages which included the instruction from the examiner, you saw that you had to comment on the significance of the ‘non-threatening’ letter, the possible effects of the patent on the promotion, the response the client should make clear the options open to the supplier, and, of course, the options open to the client.

Now you have concluded that the patent is invalid, but can easily be made valid, and that the patent will then be infringed. There is no point in considering design-around in view of the real life situation where there is a finite number of knives, and no immediate possibility of any more being made. Commercially, the supplier can see its patent being infringed by a new development in the market, and cannot see any end to this problem.

So your memorandum might say.

Analysis shows: Claims 1 and 2 are infringed Claims 1 and 5 are anticipated, but only with a broad construction of ‘button’. If this word is given a narrower construction no claims are anticipated.

Claim 1 lacks inventive step.

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The patentee can amend to have a narrow, valid but still infringed claim.

The letter from the patentee shows that he has seen the Cracker knives of the promotion and feels that the patent is infringed, and is minded to enforce the patent.

‘Threats’ provisions mean that a patentee would not be advised to send a letter that could be seen as a ‘threat’ to institute proceedings, and so the letter merely ‘draws your attention’…but such a letter does indicate that the patentee means business.

As the Cracker knives are new to the marketplace, the patentee may feel that these knives will change the ‘status quo’ and may be a major threat, and may feel justified in applying for an interim injunction which, if granted, will mean the infringer will have to stop immediately.

Alternatively the patentee could just apply to the Intellectual Property Enterprise Court, or the High Court, for an injunction and damages, or an account of profits. This takes some time and will involve expense. The patentee could apply, if the client agrees, to the Intellectual Property Office, with formal proceedings for infringement and the Comptroller may decide the matter and can award damages but not an injunction.

Patentee does not know that there is limited stock, with no chance of it being replaced, and so does not know that threat is really insignificant. The patentee could be adequately compensated by damages. If the court knew this they would not grant an interim injunction There is no point in designing around the patent.

Client/attorney must immediately communicate with patentee’s attorney explaining the nature and scale of the promotion, saying there will be no more once the stock has gone, and explaining the low value. If they are cheap enough to give away as a promotion, and there are 10,000 knives it cannot be worth the patentee litigating.

The letter can suggest that the level of ‘damage’ suffered by the patentee is low, in view of the ‘cheap’ nature of the knives, but the patentee may counter with a suggestion that for each knife given away he has lost a sale of his more expensive knives, and so the damages would be the profit he makes on each knife multiplied by the number of knives given away in the promotion. The letter can also explain why the validity of the patent is questionable, drawing attention to the prior art.

If there is a validity issue before the court, then an interim injunction may be delayed, unless the patentee immediately seeks to amend, and by the time these procedures are finished the promotion would be over, and the patentee would only be chasing ‘damages’.

If, nevertheless the patentee applies for an interim injunction the contents of the letter, especially regarding the validity of the patent, must be disclosed to the court.

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Only a brief search has been done. A full search may reveal more relevant prior art.

Client may also be aware of more relevant art.

The client could apply for revocation before the Intellectual Property Office, the Intellectual Property Enterprise Court or the High Court, but the sums involved do not warrant the expenditure. Also the patentee could amend during such proceedings and still have a valid infringed patent.

Either party could apply for an Intellectual Property Office Opinion, which would not be binding. Again the costs involved do not seem to be warranted.

It may be prudent to file a ‘Caveat’ to be advised if the patentee does try to amend, so that the client can at least consider opposing the amendment The client wishes to maintain a good relationship with the patentee. This could be done by admitting defeat immediately and paying agreed damages/compensation.

However, the client does operate ‘a chain of shops’ and so could offer to ‘promote’ the patentee’s entire range of goods, possibly with a discounted price, but certainly with high profile in-store displays, and maybe with national advertising. If the client can enhance the patentee’s sales across the range, the patentee may forgive this small incursion of his rights. If this is done the patentee may even consent to the last knives of the ‘promotion’ being given away. The client might agree to take a licence that can be recorded at the Intellectual Property Office so that any third party conducting a file inspection will be aware of the existence of the licence and thus be drawn to the conclusion that the patent is valid.

This memorandum has dealt with the three issues raised in the question, and has tried to come up with a very practical ‘fix’. Always try and look for something that your client can give away for free, or virtually for free, that will please the other side. The give-away knives may actually create a demand for the longer lasting ‘proper’ knives as manufactured by the supplier. The supplier might be pleased to see his products featured in a whole range of stores, and this is something that will cost your client nothing at all. Disputes need not be settled with a clear winner and a clear loser, it may be very possible for a win-win situation to be engineered. In any event, in a dispute of this size there is no merit in seeking to litigate.

Remember that you must resist the temptation to sign the memorandum with your name, or with the name of your firm/company.

You can add to the answer that you hand in any sheets of ‘rough working’, but otherwise the answer is complete.

So that is the end of the matter. Some of you may be surprised at the sheer number of points that the examiner has ‘concealed’ in a relatively short paper. However, this paper is very typical.

The examiners are very clever, and astute in finding technology and wording that can be used to produce a remarkably complicated scenario, where a lot of decisions have to be made to reach any sort of conclusion, and also where many different conclusions can all be reached logically.

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This is the essence of FD4. The conclusion that you reach is really irrelevant. What is relevant is the reasoning underlying your conclusion, and the logical and consistent approach that a good patent attorney should display.

Now may be the time to look at the Examiners’ Comments for this year. Go back to the Patent Examination Board website and then find P6 from 2010. and going through the ‘past papers’ link download the Examiners’ Comments for 1998 P6.

As you read these comments bear in mind that the answer set out above is just one person’s answer. There are many ‘balance points’ and many points of view, and you will see that the examiner has comments on many points that are not in strict alignment with the answer set above. But, the answer above does give reasons for each conclusion. There are more than 60 ‘becauses’ in the answer, so each conclusion is justified. Please note that since inventive step, internal validity, amendment and the letter do not really suit the ‘because’ format, the average mark for each ‘because’ is less than 1.5. However, the fact that many points can be decided in different ways goes to show that there are many, many excellent answers that can be prepared, reaching very different overall conclusions, and giving the client very different advice.

There are no candidates’ papers available for the P6 paper discussed in this chapter but look at some of the scripts for P6 papers in other years, and see what you think about them! You may feel that some of them are very difficult to understand, and others show very little, if any, reasoning, but still these candidates have passed. This should encourage you, and show that FD4 can be passed.

Having now completed the 1998 paper we will look at a second paper, which will be paper P6 of 2010. As before this paper is provided as an appendix to this book, and the paper will also be found on the PEB website. You will find that this paper is very different from the 1998 paper discussed above. However, this only reflects real life, where one ‘Infringement’ situation that arrives on the desk of an attorney for consideration may be very different from the previous one, and different again from the next one.

Please, again, read the paper in the manner suggested, and read aggressively. As before, the first things to be read will be the initial instructions, and then the letter from the client. Please do not read the whole paper in one go, and again, do not look at the Examiners’ Comments for the paper.

To begin with, please just read the first page of the paper, the examiner’s instructions. ++++++++++++ It is hoped that you will have spotted that the instructions are not quite the same as in the 1998 paper, but they carry the same essential message.

Initially, the examiners set out the task to be completed… you must respond to the instructions set out at the end of the client’s letter.

Then there are instructions very similar to those of 1998. Candidates are instructed to enter the examination number and their personal examination number in the appropriate boxes of each sheet, and you may think it prudent also to number the sheets sequentially. You are asked to use a dark-inked pen and to write only between the margins, and to refrain from using highlighters. Some words emboldened with a highlighter become totally unreadable after scanning. Writing present outside the margins can get ‘lost’ in the scanning process. Writing Infringement and Validity • 2018

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12. So much for the theory… not in black ink can be reproduced very faintly on the scanner and can give a bad ‘first impression’. Again, you must not state your name (and you should not identify your employer) and you must write clearly.

The order of the criteria for awarding marks has been reversed. Now ‘reasoning displayed’ comes before ‘points selected for discussion’, which reflects the relative importance of these two concepts.

The following instructions set out various reasons that can be the basis for disqualification from the examination, all of which are very clear and straightforward.

Then there is the document checklist, showing that there are only another seven pages to look at, and two pages of those are sketches, and probably one page of the patent is a drawing, meaning that there are only four written pages to be considered.

This time we will take a different approach and read the claims last, so that you can see which approach you prefer. So can you now please look initially at just the letter from the client, the next two pages of the paper. Remember to read aggressively, and to look out for anything that may be of use to us in assessing the situation. ++++++++++++ What did you see?

Your client is a medium-sized UK manufacturer of hand tools. Why did the examiner say ‘medium-sized’? To show that the client can afford to take action, and is not just a ‘garden-shed’ client?

The client has ‘acquired’ a patent, and at the same time the patentee ‘sold us his business’ in the device and the ‘know-how’ for its manufacture. We can see (later) that this original patentee is now the alleged infringer. Surely, in real life we would find this strange. Most transfers of a business have clauses preventing the vendors from setting up in competition for a specific period of time, and the patent was only put on your books last year. Did this set an alarm bell ringing?

The client is not aware of anything similar on the market, but does mention four ‘commonplace’ tools that can be used to lift floorboards. Has the word ‘commonplace’ been used to suggest that each of these four tools is within the ‘common general knowledge’ of the skilled person? This might suggest that the examiner is expecting candidates to discuss inventive step at some stage in their answer.

Our searches do not reveal anything else of relevance, and so we have on the table all of the material that we can rely on to reach our opinion – a very unusual situation in real life, but a necessity in an Infringement and Validity examination. So we can conclude that there will not be any marks for comments regarding further searches, searches for equivalents to see what other Patent Offices have cited, or anything like that.

Most readers will probably not have to look at the sketches to understand exactly what the letter from the client is saying about the prior art. However, are there any phrases that are repetitious?

The verb ‘lever’ is used three times, in connection with the crowbar, the claw hammer, and the pincers. The verb ‘roll’ (sometimes in the form ‘roll/rotate’) is used in connection with the hammer, the pincers, and the new tool of Mr. Z. So even at this stage we can see there may be some similarities between the way the prior art tools work, and the way the infringement works.

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Your client is ‘dismayed’ to find that Mr. Z is now selling a competing tool through the internet. It is having a serious impact on your client’s UK sales of his nail-puller. Do the words ‘serious impact’ make you think that the client may have grounds to apply for an interim injunction? But then, the impact is only on the sales of the nail-puller, and as your client is a ‘medium-sized UK manufacturer of hand tools’ (note the plural) is it likely that a dip in the sales of one tool would be a major threat to the business? If the business as a whole can keep going in spite of this problem, would damages at the end of the day (if the patent is valid and infringed) be a satisfactory conclusion to the matter?

The description given of the device of Mr. Z, taken alone, is virtually incomprehensible. It has a handle, jaws and a support pad, but how these items co-operate is hard to understand. No doubt things will become clearer when we see the sketches.

The client asks what can be done to stop Mr. Z, and the examiner sets out a fairly comprehensive list of items where an opinion is required. Is the patent infringed? Is the patent valid? Is an amendment required or advisable? Clearly the examiner has some marks on the marking schedule which relate to amendment, but it may be that a consideration of the possibilities may lead to the conclusion that there is no amendment that actually helps. Maybe the examiner wants a discussion of all of the possibilities, with a sensible conclusion once the options have been considered and the pros and cons have been weighed.

The examiner asks for an indication of further information that might be needed. Although this is tempered by a parenthetical ‘if any’, it is a sensible guess that there is more information required. Indeed, we already suspect that the sale of the business may have included some sort of restriction on the activities of Mr. Z, and it must be prudent to ask for clarification of that point at least. Mr. Z, even if he is not infringing a valid patent, may be in breach of covenants given as part of the sale of the business, and the client may best be satisfied by enforcing the covenants.

The sales are internet sales, but does this have any relevance? If Mr. Z is operating from the UK, then probably not. However, is it possible to guess the nationality of Mr. Z – or at least make a reasonable conclusion? Does the name sound to be possibly ‘foreign’? Can we make an educated guess as to the identity of a country where the name may be common? Maybe Mr. Z is selling by internet from Germany or Austria, with the goods being delivered to the UK by mail or by courier. If this is the case, what action can be taken, should the patent be infringed? In any event, we will need more information about the manner in which the goods are offered on the internet.

Finally, the examiners ask us to indicate any ‘practice points’ that have been raised by the situation. It would seem that, so far, we have identified the possible point of how to sue Mr. Z if indeed he is based abroad but is targeting the UK through the internet.

So we can see that, once again, the examiners are expecting us to deal with the questions of infringement, novelty, inventive step, amendment and what the client should do. Of course, we will have to begin with interpretation, and it would be prudent to consider internal validity, even if just to say that no real point arises in that area. However, we have been given a broad hint that there are some marks worth looking for in the inventive step part of the answer, and we must also remember to ask the client specifically for the additional information that we need regarding the details of the sale agreement and the details of the internet sales of the infringing items.

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12. So much for the theory…

At this stage you are probably comfortable that you understand the nature of the prior art without having to study the sketches, as you have no doubt at least seen crowbars, hammers and pincers before, although the infringement is still a mystery.

So, let us now look at the sketches on pages 4 and 5. ++++++++++++ The crowbar and hammer look much as one would expect. The notched end of the crowbar does have a passing resemblance to the claws of the hammer.

The crowbar is primarily used to wrench up the floorboards rather than to just remove a nail, and often makes the floorboards un-reusable. The hammer, too, has its problems, as in a typical case the claw hammer has to be hit with a club hammer as shown in B4, which does to some extent damage the floorboards.

The pincers of C1 – C3 also look as one might expect, but as described they have disadvantages in use.

As for the infringement of D… well, that looks very different from the prior art. Now that we have the sketch, the description makes a lot more sense and we can see how it works to remove a nail. The only point that is not immediately clear is whether the left-hand end of the linkage is pivotally connected to the finger grip or not. The connection is illustrated in exactly the same way as the three pivots shown at the right-hand side of the drawing, but the connection is not marked as being a pivot, and it is not described as such. Indeed, the description given by the client does not mention pivots at all.

Something may or may not hang on this… but it may pay to remember to ask the client what the situation really is.

Now is the time to read the patent right through, starting at the beginning. Initially we will read the preamble and description, and we will look at the claims later. In the 1998 paper we read the claims early in the analysis of the paper, and in contrast, this time we will read the claims last. This may help you decide how you will read the paper when you come to sit FD4 for real.

Remember that you are reading aggressively. What could be wrong with the patent? Can we immediately spot anything that is unusual or irregular about the specification and claims? Is there basis for the claims? Is there support for the claims? Is anything that is said surprising? Is there anything that you would do differently if you were drafting the specification?

So, starting at the beginning, please read the patent, referring to the drawings as you read the description, but do not read the claims yet. ++++++++++++ So, what is the field of the invention? In other words, what does the skilled person know? The title is Nail Puller, but the first sentence indicates that the invention is ‘a tool for pulling nails from timber’. Usually the term ‘for’ is understood to mean ‘suitable for’ or something that could perform the task without substantial modification. So it would seem that there is a good argument that at least the hammer and the pincers are within the knowledge of the skilled person.

Is there something missing after the first paragraph, or would you (if you were drafting the specification) jump directly from some comments about the advantages of the invention as 162

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12. So much for the theory… compared with the prior art directly to the introduction to the drawings? Would you have put statements about the benefits of the invention in the first paragraph at all?

How about the description? Do any words look at all like clues?

How about the word ‘importantly’ at the beginning of the last paragraph on page 6? Could this word flag the description of the crux of the invention? If this is right, then the casting 26 will be an important feature specified in the claims.

Do the words ‘rolls and rotates’ in line 6 on page 7 strike your eye? Yes, this language is the same as that used in the description of the prior art.

Otherwise the description, at this stage, seems to be quite comprehensible, when read in conjunction with the drawings.

It is now possible to see a ‘family likeness’ between the tool of the patent and the infringement. Both of the tools have two small jaws to grip a nail, with one jaw being movable towards the other when a long vertical handle is pulled. The other jaw is connected to an element that extends to one side, and that element has an undersurface that touches the wood in which the nail is found. As the vertical handle is pulled in both tools the nail is gripped, and the tool ‘pivots’ about the undersurface of the sideways extending element. The differences seem to be in the nature of the pivotal connection between the jaws, and the provision, in the embodiment of the invention, of a slideable weight used to drive the jaws into the wood before the nail is gripped.

Now is the time to look at the claims. You will already have seen that they are less than half a page. In fact there are only 159 words. As we read the claims we must be on the lookout for passages or words in the claims that will need to be construed. So, reading aggressively, with your eyes wide open, just read the claims once, straight through. ++++++++++++ That should not have taken long.

There does not seem to be a lot there to write about for three hours (assuming it takes two hours to read the main part of the paper and organise your thoughts), but there must be something there that is the basis for marks in the marking schedule!

So, let’s read the claims several times, and see what we can observe. ++++++++++++ So, claim 1 is directed to a nail pulling tool. Are those words to be found anywhere in the description? Anyone with any intelligence can see what is meant… but in FD4 you have to explain what, to many, would be immediately apparent, to let the examiners know that it is apparent to you.

The claim continues with our old friend ‘comprising’. There must be a mark for addressing that one! – and it comes again in claim 5.

A pair of jaws… can the hammer (and the crowbar) be considered to have a pair of jaws? Can the two claws be considered to be jaws?

Engageable…does this mean ‘grip’ or just touch? Pivoted jaws will move towards one another to grip, but the claws of the hammer are fixed, and while the sides of the ‘V’-shaped notch between the two claws touch the shank of the nail, is this ‘engageable’ in the sense of the claim?

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12. So much for the theory…

The shank of a nail… is this a false antecedent? But is it part of the ‘invention’? No, because the shank of the nail does not form any part of the tool.

Having a support foot…anything in ‘having’ instead of ‘comprising’? What is a support foot… cannot be a separate leg…

Engageable…here is that word for a second time! What does it mean now? Must it mean the same as last time?

With a surface in which the nail is situated… surely a surface is just the topmost part, with no real thickness, so how can a nail be situated in it? Also, the surface is not part of the tool itself…it is something that the tool co-operates with when in use.

And on which… so the on which rhymes with the in which…but does the on which relate to the foot or the surface…and will that matter anyway??

The tool is rollable and rotatable… is this two actions or just one?

To pull the nail from the surface… will an explanation that pulling means extracting be appropriate?

So, looking at claim 1 in a bit of detail, and with a challenging frame of mind, it does seem that there is quite a bit to discuss. What will make it a challenge is that several of the words used in the claim do not appear in the description, especially nail pulling tool… engageable with the shank… support (foot)… engageable (with a surface)… in which the nail is situated.

At this stage we can see that although there are only four pages of text, there is still plenty to discuss in claim 1 at least!

Moving on to claim 2, a nail-pulling tool as defined in claim 1 in which seems straightforward.

Each jaw is attached to a handle is interesting as this is not described in such terms, the descriptive term formed at the end of a handle is used, and the handles and jaws are shown as integral elements. Can the words of the phrase be understood to mean that each jaw is attached to its own respective handle, or can the words be understood to mean that there is a single handle and the jaws are connected to it? Sometimes, when the description of the preferred embodiment has been read before the claim it can be difficult to see the lack of precision of the language used, as your mind ‘knows’ what the words have to mean to fit the embodiment. The conclusion of the dilemma may be simple to find, but the examiner will need to see your logic, and see that you have appreciated the problem.

The preamble of claim 3 echoes that of claim 2. Again the description does not contain the words of the claim. The meaning of the jaws are connected by a pivot passing through them will have to be explained.

The preamble of claim 4 has a form that is becoming familiar. Also the fact that the language of the claim is not found in the description is not a surprise. Exactly how the ‘so that the nail is tightly gripped… functional clause is a consequence of the jaws being attached to their respective handles… is not at all clear, even with the nature of the preferred embodiment in mind. However, the strange dependencies, which seem to have no rational explanation, lead to a situation where if claim 4 is read as dependent on claim 3, with claim 3 being dependent on claim 1, then the subject-matter of claim 2 is not present and the reference to their respective handles becomes incomprehensible.

Yes, you really do have to read the words very closely, with your eyes very wide open, to see the difficulties that exist. Frequently, the difficulties are ‘trivial’… but if you do not see them 164

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12. So much for the theory… and comment on them you miss the marks. Here there must be marks for spotting the problem and (eventually) for suggesting a correcting amendment.

Claim 5 starts in a familiar way. We have comprising…Could the hammer used to hit the anvil of the infringement be a weight by which the jaws can be driven… ? If so, the word sliding will be important. This time the description does include a relevant word (slidably) on the last line of page 6.

So now we have looked at everything. There seem to be lots of points in the claims to talk about in any event. If the support foot is just a curved surface on the tool, then a first impression is that the claim is anticipated by the pliers, and if the claws of the hammer are jaws, then also by the hammer, and possibly the crowbar also. An initial impression is also that the subjectmatter of each of claims 2 to 4 may be found in the prior art. Claim 5 may well be valid, but with no sliding weight forming part of the infringing tool this will not help…

So, as in every Infringement and Validity paper we have a situation which, at an initial brief reading seems to be straightforward, but where, on closer inspection, a lot of potential problems have been revealed.

The examiners do not want us just to ‘chat’ about the problems…they want a reasoned, structured answer showing clear, logical, thought. We have to do the initial thinking in an unstructured way, since as we begin we do not really know exactly what it is that we have to think about. However, now we are familiar with the situation, and we know what problems and difficulties will have to be faced, and which points will have to be decided. Also, we know the basic structure of the approach that we must use.

Initially we must interpret or construe the claims, explaining exactly what the claims will be held to mean, and giving reasons why that explanation is correct.

Then we must see which claims could be considered to be infringed.

Next, we must test the novelty of the claims, and then the inventive step.

The internal validity of the claims should be discussed before potential amendments are considered.

Finally, we must provide the memorandum of advice… summarising briefly our conclusions, asking for further information, and letting the client know what he could or should do next, possibly mentioning any steps that the infringer could take that may influence the client’s future actions.

We will need to divide the claims into ‘bite-sized’ chunks to facilitate our discussion, and while this can be done in the ‘Interpretation’ section, you may find it easier to have the claims, as divided, on a separate sheet that you can refer to as the claims are worked through. One way of doing this is to write on page 7 of the question paper where the claim is divided up. You can keep this page to one side as you write your answer, so you can always see how the claims were divided. You might even hand in this page of the question as part of your answer (putting the examination number and your candidate number in the appropriate positions) with an indication that the page shows how the claims have been divided for analysis.

So, in writing our answer we might start: Construction

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12. So much for the theory…

Remember at this stage that a good construction section will help to make the infringement and novelty sections quick to complete, but with a good tally of marks, so you may have to give a lot of attention to the construction section, but always with an eye to the infringing item and the prior art, so that we only give minute attention to those parts of the claim where the way we construe will make a difference.

We must initially divide the claims into relatively small ‘chunks’, with each chunk containing a word or phrase, or at the most a single concept. If the claim is divided into larger ‘chunks’ there is a risk that a point that needs to be discussed will be overlooked. Then we must explain what each ‘chunk’ means, and give our reasons, backed up with ‘evidence’ from the paper if at all possible.

We will start by considering the words ‘a nail pulling tool’. What are the options here? Should we mention that ‘nail pulling’ is the same as nail extracting, or nail withdrawal? Is a nail pulling tool a tool that solely pulls nails, or a tool that can perform a nail-pulling function even if primarily intended for another purpose? (In other words, is a hammer a nail-pulling tool or not?). Is there anything that we have been told which helps us here? The patent refers to ‘other tools and methods for undoing a nailed connection’… so there must be at least two prior proposed nail-pulling tools. All of the prior art that possibly exists is shown in sketches A to C… i.e. the crowbar, claw hammer and pincers. Of these tools the hammer performs another function, and the crowbar also lifts floorboards complete -but does this action pull a nail from the underlying joist? Page 2 line 16 says ‘lever them (the floorboards) up, nails and all’, so the nail is pulled from the joist… but may remain fast with the floorboard.

As in any Infringement and Validity paper, there is information that can be used as ‘evidence’, but arguments could be developed to support the contention that ‘A nail pulling tool’ is a tool that can only be used to pull nails, and also to support the contention that ‘A nail pulling tool’ is any tool that can possibly be used to pull a nail.

You have to pick a meaning, and then justify it, giving your reasons. So maybe 1a A nail pulling tool “nail pulling tool” = the claim relates to a device that can be used when extracting nails that have been hammered into position because the first sentence says ‘my invention is a tool for pulling nails from timber’ and line 17 says ‘my nail extraction tool’. ‘For’ means ‘suitable for or capable of performing the task’. CDP A tool is understood to be a device or mechanism that is used to perform a task. The tool may also perform another function.

The identified part of the claim has been paraphrased as far as possible, but there does not seem to be an appropriate synonym for nail, and in any event nothing seems to turn on the meaning of ‘nail’. It would be possible to continue: Even though the described embodiment can only be used to pull nails the prior art admitted (page 6 ll4-5 ‘other tools for undoing a nailed connection… ’) must be the items of sketches a to C as this is the only prior art, and these tools perform further functions.

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12. So much for the theory…

However, this degree of detail, while showing a thorough approach, may just take too much time if maintained through the whole paper.

So we can continue: 1b) comprising “comprising” = ‘at least including’ 1c) a pair of jaws “pair of jaws” = two elements that can co-operate to perform the required function because in the description two jaws 12, 14 are shown. and there is no suggestion of a greater or lesser number. While the jaws are described as being articulated at a pivot there seems to be no need for the jaws to be relatively movable as long as they can perform the function of gripping the nail. Claim 3 effectively introduces the concept of pivotably interconnected jaws, and this has a repercussive effect on claim 1. This claim must include jaws that are not pivotably connected.

The word ‘pair’ is not a problem. Every item to be considered has two elements that grip the nail. In some situations (for example, if a tool had three prongs that gripped the nail) it might be necessary to discuss the limits of ‘pair’… but today we do not. So a simple paraphrase to ‘two’ with an explanation is all that is needed.

The real point of difficulty with this phrase is whether the reference to ‘jaws’ brings with it an implicit understanding that the jaws are movable towards and away from each other. Jaws on an animal work in this way. The described jaws work in this way. It would be possible to support a construction that ‘jaws’ must be movable towards and away with this ‘evidence’. If it was felt that this point warranted further discussion, the ‘protocol’ questions could be used to explore the situation if the word ‘jaws’ is equated with movement, and the ‘variant’ is jaws that do not move.

1d) engageable with the shank of a nail to be extracted “engageable” = comes into contact with because the word ‘engageable’ is repeated in the claim and must at the second occurrence just mean ‘touch’ or ‘rest on’ and for consistency the same meaning should apply “shank” = the part of a nail () beneath the head of the nail because the shank of the nail would be understood to be the part beneath the head (page 6 ll18-18 the jaws… designed to reach around the nail head to grip the shank). “to be extracted” = the part of the nail that has been hammered in, and which is to be withdrawn because the specification seems to equate ‘extracted’ with ‘pulled’… page 6 line 3 ‘My invention is tool for pulling nails… ’

Here it has been argued that the meaning of ‘engageable’ must be consistent throughout the claim. However, it would be equally possible to argue that the word has two different meanings Infringement and Validity • 2018

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12. So much for the theory… in its different contexts, and here ‘engageable’ must mean ‘grip’ because that is what is described at page 6 line 19. If the construction of ‘jaw’ had included the concept of movement, then the construction of ‘engageable’ to mean ‘capable of gripping’ (with gripping meaning ‘caught between two elements that are physically moving towards each other rather than just being caught in a V-groove’) would make more sense. On the other hand, a V-groove can grip. The passage relating to the crowbar, at page 2 lines 31 to 34 explain how the crowbar cannot be hit with a hammer ‘…to help the notch (the V-groove in the crowbar) bite into and tightly grip the nail shank’. So this description of what the crowbar does not do helps us to understand what the hammer does do…and links in one place the concept of a notch or V-groove providing a ‘bite’ (which is what a human or animal jaw does) and grip on a nail shank.

Can you see how the examiner seeks to hide the real clues, so your eye slides over them?

It is to be seen that the language of the claim, although beguilingly simple, is packed full of problems. All of the problems can be considered, at first sight, to be minor, but really, in construing the claim so far, we have in a way been deciding if the claw hammer is, or is not, inside the scope of the claim.

1e) the tool having a support foot “support foot” = the tool has a surface that can perform the function of resting on a surface because the described embodiment does not have a separate foot, but merely has a curved surface 24 to be rested against the timber into which the nail had been hammered (page 6 ll30) and this must be expected to be ‘inside’ the claim.

Since the described support foot is just a part of another element (i.e. part 24 of handle 20) which has a convex curved under-surface or sole (page 6 line 19) and since all of the other items to be considered have a similar structure (the support pad of the infringement, and the curved surfaces that engage the wood when a nail is extracted with the claw hammer and the pincers, and even with the bi-furcated or notched end of the crowbar) this seems a non-contentious point.

1 f) engageable with a surface in which the nail is situated “engageable” = the foot must be able to touch or rest on something because the foot 24 is ‘rested against the timber’ (clearly the timber into which the nail has been driven) page 6 line 29. There is no suggestion of gripping or any form of positive engagement… The word must be broad enough to embrace the described embodiment… “a surface in which the nail is situated” = the outermost face of an element into which the nail has been driven because the nail cannot be just in ‘a surface’ which is just the outer face and has no thickness, and so it must be understood to mean the surface of an element into which the nail has been driven as no other interpretation makes sense.

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12. So much for the theory…

Once again, the selected phrase has been paraphrased, using words as different as possible from those originally given to show the examiners that you understand what the claim really means, and the paraphrase has been justified with reference to the specification, and with reference to the common sense of the addressee.

1g) and on which the tool is rollable and rotatable “rollable and rotatable” = the tool can move with a movement like part of a wheel as a consequence of the form of the foot because, while the ‘and on which’ phrase could be applied equally to the foot or the surface in which the nail is situated, the skilled addressee understands that the claim is defining the tool and not necessarily the surface, which is not part of the tool… however, even if the 'and on which' relates to the surface there is no change to end result… and while the words ‘rollable’ and ‘rotatable’ are used, the description shows the handle pulled simply in the direction of arrow A, and so only a single motion is created in which the sole of the shoe 24 acts in the same manner as part of a wheel and the tool effects a simple rotation/roll.

1h) to pull the nail from the surface “pull the nail from the surface” = to extract or withdraw the nail from the element into which it had been hammered because surface has the same meaning as before, and the withdrawal of the nail is what the tool does (see page 7 ll 6 -7 ‘and draws the nail out of the timber’).

Yes, it is stating the obvious and giving a reason, but that is what has to be done in FD4 to ensure you get the marks. There may not be a mark for this particular phrase, but if there was you would have got it, and if there wasn’t, you are showing the examiners that you can do a thorough job.

2a) A nail pulling tool as defined in claim 1 “as defined in claim 1” = a device which has all of the features of claim 1.

Don’t forget to construe each dependency as there are typically marks for it as evidenced in the marking schedules.

2b) in which each jaw is attached to a handle “each jaw” = could mean that each respective jaw is connected to or formed integrally with a respective handle or could mean that the tool has at least one handle, and each jaw is connected to or formed with a handle. Since in the described embodiment each jaw is formed integrally with a respective handle ‘attached’ must include ‘formed integrally’ but since the word ‘attached’ is not used in the description this word must

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12. So much for the theory… have a different meaning from what has been described, and so must also include the concept of being secured to or being connected to, otherwise the draftsman would have used the term ‘formed’ as in the description. As the preferred embodiment has each jaw on its respective handle, this must be within the scope of the claim, but the language of the claim seems to include a tool with a single handle, and so this phrase means each jaw is secured to or formed integrally with a single handle, or the jaws are secured to or formed with two respective handles.

Sometimes the ‘evidence’ is slight, and the reasoning is speculative, but it is the reasoning that gets the marks… Also sometimes the strict format of ‘means… paraphrase…because…reason’ does not quite work in the best way.

3a) A nail pulling tool as defined in claim 1 or claim 2 “as defined in claim 1 or 2” = a device which has all of the features of claim 1, or all of the features of claim 2 (which of course will include all of the features of claim 1).

3b) in which the jaws are connected together by a pivot passing through them “connected together by a pivot passing through them” = there is a single pivot pin that extends through a hole in each of the jaws to pivotally connect the jaws together because this is what is shown and described (Page 6 ll 17 18 ‘jaws 12 14 articulated at a pivot 16’) There is no suggestion of a more complicated arrangement.

Again, we have construed both the opening words, and then the ‘meat’ of the claim.

4a) A nail pulling tool as defined in claim 2 or 3 “as defined in claim 2 or 3” = a device which has the features of claim 2 or claim 3 (i.e. 1+2, or 1+2+3, or 1+3). However, when dependent on claim 3, if claim 3 is read as being dependent just on claim 1, then there is no antecedent for ‘handles’ in the next clause. Could amend to ‘…claim 2 or claim 3 as dependent on claim 2…

AMEND The claim will be applied as if this amendment has been made, since to read the claim onto claim 3 as dependent directly on claim 1 cannot lead to a sensible conclusion.

The problem with the dependency has been spotted, and a correcting amendment has been put forward, and what we are going to do has been explained. The word ‘AMEND’ has been put in the margin to remind us to address the issue in the amendment section, but the examiner will probably give a mark for the amendment at this stage.

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12. So much for the theory…

4b) in which the jaws are attached to their respective handles “respective handles” = there are two handles, which are elements that can be gripped by a hand, and each handle has one jaw connected to or formed with it because attached must have the meaning of claim 2 and the use of the word ‘respective’.

Although the description does not contain the word ‘respective’ the word seems to be applied to the described tool in which (Page 6 l23) ‘jaw 12 is formed at the end of handle 20 and jaw 14 is formed at the end of handle 18’. (The use of ‘their respective handles’ implies the concept has been mentioned before but it has not, so there is a lack of antecedent problem here as well.)

The language is immediately comprehensible… but we have to explain, and give a reason.

4c) so that the nail is tightly gripped during rolling and rotation of the tool. “tightly gripped” = could be intended to be a logical consequence of the fact that the jaws are attached to two respective handles, but this does not seem to be the case in the described embodiment so the addressee will find the only sensible construction to be that this phrase relates to the functioning of the tool as a whole so the phrase means in operation of the tool the nail is somehow grasped with a sufficient grip to ensure that the nail is extracted . There is no description of ‘tightly’ but it must be sufficiently tight to do the job. “during rolling and rotation” = the tool executes the wheel-like rolling action discussed in claim 1 because ‘rolling and rotation’ must be a reference to the ‘rollable and rotatable’ of claim 1, and the phrase describes the tool in use.

The format of providing the meaning of the selected phrase, and then giving an explanation is merely a ‘tool’ to try and ensure that some sort of reason is given for every statement made, but sometimes that has to be some flexibility, and some discussion before the meaning is given may be appropriate.

5a) A nail pulling tool as defined in any preceding claim “as defined in any preceding claim” = a device having the features of any one of claims 1 to 4 (i.e. 1,1+2, 1+2+3, 1+3, 1+2+4, 1+2+3+4, 1+3+4) but 1+2+4 would not be possible after the amendment.

In 2014 and typically it seems, there were marks for listing all possible claim combinations.

5b) comprising a sliding weight “comprising” = further including

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12. So much for the theory… “a sliding weight” = some body with substantial mass that is somehow mounted on the tool to effect a movement relative to the rest of the tool with a sliding action because for a weight to ‘slide’ it must be in contact with something to slide along: it must at least include the ‘heavy casting’ 26 P6 L33.

AMEND And because although the description does not refer to weight, the claim is clearly intended to include the heavy casting 26 (last line page 6).

Some words are difficult to explain…such as ‘sliding’ in this context. It would be possible to try, but any explanation would be very wordy, and the time taken would probably not justify any mark that might be available. In a situation where time is short it is necessary to try and maintain a high scoring rate at all times.

5c) by which the jaws can be driven into the surface in which the nail is situated. “driven” = the weight can be used somehow to force the jaws partly into the element in which the nail has been hammered, the wording of claim 1 being repeated and having the same meaning because this is the only sensible construction.

And so we reach the end of Construction.

Next, we move straight on to Infringement, but here we will need to see whether the infringing tool is actually within the scope of the claims, and also we will have to see exactly who is infringing the patent, and could be the target of an infringement action.

We will start with the infringing tool, comparing the tool with the requirements of the claims.

Infringement Considering the tool of sketch D

Always explain precisely what you are considering as the possible infringement.

1a) √ because the tool acts to extract a nail (page 3 line 14… to grip and then extract the nail…)

1b) √ because the tool has several features 1c) √ because there are two jaws shown and marked on the drawing 1d) √because the tool has a design not very dissimilar from the preferred embodiment of the patent and it can be seen that as the handle B is pulled to the left the jaws will move towards one another. The client’s letter explains that the jaws are driven into

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12. So much for the theory… the wood around the nail head, page 3 line 13, and so the jaws will engage that part of the nail which is beneath the head…the shank. The nail is to be pulled out of the wood.

1e) and f) √ because the support pad is a surface that can rest on the surface of the element that the nail is in. It seems the pad will not engage or touch the surface until the tool has been tilted by pulling the handle B in the direction shown in the sketch, but it will still touch the surface before the nail is fully extracted.

1g) and h) √ because the support pad is curved, and will act as part of the periphery of a wheel to guide the tool as it rolls/rotates. See client letter page 3 line 14-15… “the tool rolls on the support pad as the nail is pulled out”.

Claim 1 is infringed.

Every part of the claim has been considered, and a reason has been given why each feature of the claim is in the infringing article. Sometimes we are explaining what seems to be obvious, but if we have explained it and if we have given a reason we should be sure to get the mark.

Remember to state a conclusion.

2a) √ because claim 1 is infringed

You should give a reason why each part of the claim is infringed – even just the dependency… there were marks for this in 2014.

2b) √ because the left hand jaw is formed integrally with the finger grip plate. The finger grip plate can be grasped by a hand and so is a handle. ‘attached’ included formed integrally with, and so the left jaw is attached to a handle. The right jaw is connected to the long handle shown in the drawing by a pivot. As ‘attached’ was construed broadly the language of the claim is satisfied.

Claim 2 is infringed 3a) √ because claim 1 and 2 infringed 3b) X because no single pivot passes through both of the jaws. (assuming that the lefthand end of the link is pivotally connected to the finger plate) If, however, the left-hand connection of the linkage is rigid, then the linkage could be considered to be an integral part of the jaw, and the pivot at the right-hand end of the linkage will fulfil the claim ASK CLIENT Claim 3 not infringed

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12. So much for the theory…

An assumption has been made, which looks like a reasonable assumption, and a conclusion has been reached. However, as there is some doubt, the situation that would exist if the assumption is wrong has been outlined, and a note has been made to ask the client.

In the analysis used, the jaws are the lowermost parts of the tool as shown. However, could the ‘jaws’ extend further up? Could the right-hand jaw extend as far up as the pivot that pivotally connects the upright handle with the small arm that extends horizontally from the anvil of the finger grip? Can the left-hand jaw also extend this far up? If so, there is a pivot that passes through both of the handles.

4a) √ because claim 2 is infringed.

4b) √ because the left jaw is formed integrally with the fingerplate handle, and the right jaw is connected by a pivot to the long handle.

4c) √ because client’s letter p3 ll 13-15 says that in use of the tool the “nail is gripped and extracted with the tool rolling on the support pad.”

Claim 4 is infringed 5a) √ because claims 1, 2 and 4 are infringed.

5b) X because there is no item that is a weight, and certainly no sliding weight. Even if the tool is considered in combination with a hammer used to hit the anvil (Client’s letter page 3 l 13) while the hammer may be the weight, it does not slide, as it does not make contact until the instant of impact.

5c) X because as there is no sliding weight, there can be no ‘by which’. If the hammer is considered to be the weight (even though the hammer is not part of the tool) then the phrase might be satisfied as (client’s letter page 3 line 13)… “the hammer is used to drive the jaws into the wood”.

Claim 5 not infringed.

Only Claims 1, 2 and 4 infringed.

But who is infringing the claims? If Mr. Z is running his internet business from the UK, and is making the product in the UK, then he will be making, offering to dispose of, disposing of, and probably also keeping for disposal…but if the making is done overseas, and if Mr. Z is running his whole business from Germany, then he is doing none of those things actually in the United Kingdom. If he sends products from Germany by courier, is he importing? If so, then he will be infringing, but in any event in this scenario Mr. Z is outside the jurisdiction. Maybe a lot will depend on the nature of the website itself. Is it in English with the prices shown in £, and with UK delivery options being outlined? If so, then this could be considered to be a UK offer for sale 174

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12. So much for the theory… and potentially actionable, but there may still be difficulties in getting Mr. Z to appear, and to pay any costs or damages. On the other hand, if Mr. Z is based overseas, and the website does not specifically target the UK, then there may be no ‘offer for sale’ infringement.

Maybe the customers infringe. However, if they are just DIY handymen, then they will fall under the private non-commercial use exclusion of sub-section 5 of section 60. Maybe if a professional carpenter buys and uses the tool there would be infringement, but how is such an infringer found, and would there be any benefit in suing?

This difficulty could be subject of quite a long explanation, but as we know that in FD4 it is unlikely that the point will carry more than a couple of marks we should be brief.

Who actually infringes? If Mr. Z manufactures in the UK, or does his business in the UK (UK-based website, UK distribution centre) then he will infringe. If all of Mr. Z’s activities are overseas then he will not infringe unless it is possible to show he ‘imports’or his website is targeted at the UK by being in English and with prices in £ and delivery options to the UK being mentioned, in which case the website may be an offer to sell in the UK. If the website is not targeted at the UK, e.g. is in German with prices in euros, then that may well not constitute an offer to sell in the UK. If any customers use the tool professionally they may infringe, but they would be difficult to identify.

Now we move on to Novelty. We have the prior art of sketches A to C, and some brief comments about the tools shown provided by the client, and that is all…

Novelty Sketch A crowbar 1a) √ because the crowbar is used for removing nails (page 2 line 32… “gouge out wood from around a nail head and then pull it from a floorboard” 1b)√ 1c) √ because the lower end of the crowbar is split with a V groove, and this defines two jaws.

1d) √ because if wood has been “gouged out from around the nail” (page 2 l 32) then the v groove or notch will be placed under the head of the nail, and the shank of the nail will be touched by both of the jaws 1e) and f) √ because the curved part of the lower end can be positioned to touch the wood that the nail is in, with the two jaws engaging or touching the shank of the nail.

We did take a broad interpretation of ‘engageable’ in the phrase ‘engageable with the shank…’

If a narrower interpretation had been adopted for the word ‘engageable’ at this point in the Infringement and Validity • 2018

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12. So much for the theory… claim, to include some sense of ‘gripping’ the shank of the nail, then we might reach a very different conclusion at this point. If we did this, then the second ‘engageable’ in the claim would not have the same meaning as the first one. This only goes to show how, in FD4, there are various possible interpretations of the claims, which can all be supported by ‘evidence’ found in the patent, with these different interpretations leading to very different conclusions regarding novelty and infringement, 1g) and h) √ because if a downward force is now applied to the other end of the crowbar the crowbar will roll on the curved surface with that surface acting as part of a wheel and the nail will be extracted or pulled out.

Every feature of the claim has been compared with the item shown in the sketch. Note that the examiners ‘split’ the disclosure about A into two parts, and it was the second part that was relevant! An indication of why each feature is present has been given. Just saying that a feature is there is not enough – it is necessary to explain why it is there to get the mark.

2a) √ because all features of claim 1 are present 2b) √ because the long part of the crowbar can be grasped by hand and is a handle.

The whole item is integrally formed, and so each of the two jaws are formed integrally with (within the scope of ‘attached to’) the handle.

The reason given echoes the wording of the Construction… and that is why one has to look forward when preparing the Construction to bear in mind exactly what the Construction will be compared with in Infringement and Novelty.

When dealing with the next three claims we already know that there will not be anticipation.

It would be possible to dismiss the claims by immediately pointing out the ‘missing’ features, but if this is done we may not know the precise degree of difference between the crowbar and the claims, and we may need to know what the difference is when considering obviousness. So it pays to do the job thoroughly.

3a) √ because all of the features of claims 1 and 2 are present 3b) X because the jaws are formed integrally. There is no pivot at all.

It would have been tempting just to stop the analysis of 3b) with the X. But an explanation has to be given to get the mark!

4a) √ because the features of claim 2 are present 4b) x because the jaws are attached to a single common handle 4c) X because the jaws do not actually grasp the shank of the nail as the jaws do not

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12. So much for the theory… move towards each other. The nail will slide up the V slot and will be tightly held, but not actually ‘gripped’.

FD4 deals with the small things in life. The nail will be firmly held by the crowbar, as the nail moves down the V-groove, but it will not be gripped on the construction given above. This analysis does rely on ‘gripped’ meaning ‘grasped’ with the implication that two parts move towards each other to do the ‘gripping’. If a slightly looser construction had been used it would be possible to conclude that as the nail slides up the V-slot it is actually ‘gripped’.

5a) √because the features of claim 1 and 2 are present (so only when dependant on 1 or 1+2).

5b) √ 5c) x because there is no separate weight… and nothing that slides.

5d) x because there is no weight to drive the jaws into the surface. If they are driven into the surface it is done by hand (page 2 lines 32-34) Claims 1 and 2 lack novelty.

Sketch B Claw Hammer.

1a) √ because the hammer can be used to extract a nail sketch B4, and page 2 line 24… “lever a nail out” 1b) √ 1c) √ because there are two jaws (as in the crowbar) separated by a V groove 1d) √ because the inner faces of the jaw can touch the shank of a nail. The jaws are on either side of the shank (page 2 line 22). As the hammer is hit with the club hammer – B4 – the hammer moves to the right until the nail shank is touched firmly by the inner faces of the jaws.

1 e) and f) √ because the curved outer face of the jaws touches the wood as shown in B4. The curved surface is the foot.

1 g) and h) √ because if the handle of the hammer in B4 is pulled up, the hammer will ‘roll’ on the curved surface of the foot, which acts like part of a wheel, and the jaws engage the shank under the head of the nail, and apply a force to the undersurface of the head of the nail to extract it (page 2 ll 23-24 ‘pull on the hammer handle… roll/rotate… to lever out the nail’).

Once again, all of the features of the claim have been compared with the prior art item, and a reason has been given as to why the feature is present.

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12. So much for the theory…

2a) √ because all features of claim 1 are present.

2b) √ because the two jaws are integrally formed with the head of the hammer and the head is mounted securely on the shaft or handle, as otherwise the hammer would fall apart in use.

Claim anticipated.

Again, an explanation is given, with a reason. Remember to give conclusions as you go along.

As with the crowbar, we could take a ‘short-cut’ to dismiss the following claims, but maybe it is best to say: 3a) √ because the features of claims 1 and 2 are present 3b) X because the jaws are formed integrally…there is no pivot.

Claim not anticipated.

4a) √ because the features of claim 2 are present 4b) X because the jaws are connected to a single common handle 4c) X because the jaws do not actually grasp the shank of the nail as the jaws do not move towards each other. The nail will slide up the V-slot and will be tightly held, but not actually ‘gripped’.

Claim not anticipated.

The comments are the same as for the crowbar, because the effective structure is the same. If we had used a broader construction for ‘gripped’. then the analysis at this point might be different.

The description of the crowbar on page 2 lines 31 to 34 leads to the conclusion that in realistic terms the crowbar will not ‘bite into and tightly grip’ the nail shank, while implying that the hammer does just this. So if we had a broad definition of ‘grip’ then we might conclude that 4c) is satisfied.

5a) √ because the features of claim 1 and 2 are present 5b) √ 5c) x because there is no separate weight…and nothing that slides.

5d) x because there is no weight that is part of the tool to drive the jaws into the surface. If the club hammer of 4b is considered to be the weight then the weight does act to drive the jaws into the surface, but this cannot be the case as the hammer does not slide.

Claim not anticipated.

Only claims 1 and 2 are anticipated.

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12. So much for the theory…

Sketch C Pincers.

1a) √ because the pincers are described as a nail extraction tool page 2 line 36 1b) √ because there are further features.

1c) √ because the sketch clearly shows two jaws, and page 2 line 37… the curved jaws…

1d) √ because the nail will be gripped between the jaws in use of the tool (page 2 line 37), and the skilled person would realise that it is the shank of the nail that is gripped.

1 e) and ) and f) and g) and h) √ because the outer surface of each jaw is curved and the description page 2 line 37 et seq. says the tool can be rolled on an underlying surface to lever out the nail.

Claim anticipated.

2a) √ because the features of claim 1 are present 2b) √ because each jaw is formed integrally with its own handle, in a manner equivalent to that of the preferred embodiment.

Claim anticipated.

3a) √ because features of claims 1 and 2 are present 3b) √ because the jaws are shown as interconnected by a pivot point about which the jaws can pivot. Moving from the open position of C1 to the closed position of C3.

Claim anticipated.

4a) √ because the features of claims 2 and 3 are present (i.e. 1+2, 1+2+3 and 1+3).

4b) √ because each jaw is shown formed integrally with its own handle, in the manner of the preferred embodiment.

4c) √ because, in use of the tool, the handles are squeezed together (page 2 line 37) thus firmly grasping the shank of the nail, and the tool is then rolled/rotated (page 3 line 1).

Claim anticipated.

5a) √ because the features of claims 1 to 4 are present (i.e. all of the possible combinations as in construction).

5b) √

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12. So much for the theory…

5c) X because there is no weight. It is not even possible to use a hammer (page 3 line 3-4) 5d) X because there is no suggestion that the jaws of the pincers can get into the wood as “nails fully sunk in the wood cannot be extracted” (page 3 line 1-2) Claim not anticipated.

Only claims 1 to 4 anticipated.

So, possibly surprisingly, the claims to the complicated tool of the preferred embodiment are nearly totally demolished by the prior art which, at first sight, seemed to be so simple. However, that is the conclusion that is reached as a consequence of the construction of the claims.

If we had concluded, for example, in the Construction section that ‘jaws’ must be capable of moving towards each other, then the result would be different. Claims 1 to 4 would still be anticipated by the pincers, but would not be anticipated by either the crowbar or the hammer.

There are other decisions that were made during the construction of the claims which, if they had been made differently, would have substantially altered the conclusions reached.

The next part of the answer will be inventive step. If we use the Pozzoli approach merely concentrating on the difference between the closest prior art and the subject-matter of the claims, on our present conclusion that the pincers anticipate claims 1 to 4, we will only be able to discuss claim 5 in the inventive step part of our answer. Even if we reconsider our conclusions, we may only find that possibly clause 4c) of the claims could be understood in a different way, since the actual use of the tool of the invention produces the grip, whereas in the case of the pincers the tightness of the grip on the nail depends on the tightness of the grip on the handles by the user of the pincers.

In such a situation one might consider whether the ‘inventive concept’ of the claims can somehow be distilled, and that inventive concept should then be subject to analysis.

Begin with the Pozzoli approach. Do not forget to use the right numbers for the questions…

1a) , 1b), 2, 3 and 4.

Inventive Step “driven” = the weight can be used somehow to force the jaws partly into the element in which the nail has been hammered, the wording of claim 1 being repeated and having the same meaning because this is the only sensible construction.

1a) The skilled person knows about nail-pulling devices for pulling nails from timber because this is the field of the invention (title and line 1), and may be a designer or manufacturer of such devices.

1b) The skilled person will know the crowbar, hammer and pincers of sketches A to C and know they are used because all of these are commonplace tools (client’s letter page 2 line 12).

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12. So much for the theory…

By using the numbers 1 a) and 1 b) and by answering the questions, the examiner will appreciate that we are following the steps of the test correctly. Even in this part of the answer try to use the word ‘because’ as frequently as possible, to ensure that you are showing your reasoning. It’s very easy to make sweeping statements confirming that such-and-such a feature is ‘clearly obvious’, and so-and-so a feature is ‘clearly inventive’, but while your conclusions may well be right, the marks are awarded for showing how the conclusion was reached.

2) The claims of the patent have been construed above. However, the inventive concept of claim 1 seems to be the provision of a support foot to engage the surface in which the nail is situated, as it is this feature of the claim that appears to give the advantage of not damaging the floorboards or packing case (page 6 line 8). Claim 2 has each jaw connected to a handle, and claim 3 has the concept of the jaws being pivoted. Claim 4 provides the concept that the nail is tightly gripped during rotation of the tool, and claim 5 has the concept of a sliding weight to drive the jaws into the surface in which the nail is situated.

Yes, we are labouring the point a bit, but sometimes this just has to be done!

3) the differences between the invention and the prior art have been discussed above.

4) Looking at claim 1, the described embodiment shows the foot as formed as part of a protruding handle. The foot has a ‘convex sole’. The claim is not restricted to this detail. The foot merely has to engage a surface and enables the tool to be rolled or rotated. The foot acts as a fulcrum. Each of the hammer, the crow bar and the pincers has a convex surface that can engage the surface in which the nail is situated, and enable the tool to be rolled or rotated as a nail is extracted, with the surface acting as a fulcrum. There does not seem to be an inventive step in claim 1.

It might be possible to expand the argument, suggesting that the pivot provides a ‘mechanical lever’ which gives a ‘mechanical advantage’ when extracting a nail, and this would be known to a designer of a tool. So, seeing the mechanical advantage of a crowbar, the skilled person would at least want to try to use a corresponding mechanical advantage.

Turning to claim 2 in each of the crowbar, hammer and pincers there are 2 jaws and each jaw is formed integrally with or attached to a handle… so the skilled person would be led to try these design features. Even if the jaws have to be movable relative to each other, the pincers have this feature, so there is no inventive step in claim 2.

Here we are trying to deal with the claims sequentially, outlining the attacks available, and giving reasons.

In claim 3 the pincers show two jaws interconnected by a pivot in a manner identical to that shown in the preferred embodiment of the patent. The pincers alone show all

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12. So much for the theory… of the features of claims 1 and 2 as well, and so the skilled person, just starting from the pincers, would be led to try the combination of features in claim 3, as dependent on claims 1 and 2. There is no inventive step in claim 3.

In claim 4 there must be two handles, and so the skilled person would not be led to the claim just from the hammer or the crowbar. If claim 4 is interpreted as set out above, the nail will be tightly gripped by the pincers to extract the nail, as the handles will be firmly pressed together by the user of the tool. But if the claim is understood to mean that the grip is effected as a result of rotation of the tool, then this is not shown and is not obvious. It might be suggested that in both the hammer and the crowbar, as the tool is rotated the shank of the nail is forced into the ‘V’ between the two jaws increasingly forcibly, thus increasing the effective grip of the jaws, but in these two tools the jaws are ‘fixed’ and the skilled person would not immediately see how the feature of ‘increasing grip’ could be applied to pivoted jaws. While there are arguments to the contrary, conclude that claim 4 lacks inventive step.

Claim 5 introduces a sliding weight. While the prior tools can be hammered with a club hammer to provide the same effect, there is nothing to lead the skilled person to using a sliding weight. Claim 5 has inventive step.

So one can conclude that claims 1 to 3, and possibly also claim 4 lack inventive step over the prior art. There is, however, a counter-argument, in that the skilled person has known of all of this prior art for a long time, and the invention was not actually made until Mr Z. actually made it. If it was that obvious, surely someone would have made the invention at an earlier date?

So, we have tried our best to find some sort of inventive concept in each claim, and we have tried to find the features of the claims that provide the inventive concept in the prior art, and obviousness arguments have been developed. A conclusion has been reached, and the counterargument has been outlined. So now we need to show that we have has not just pontificated about inventive step, which is in the domain of the skilled person: All of the ‘logic’ in the inventive step comments set out above needs to be checked by a skilled person. If the arguments are presented to a court they will have to be supported by expert evidence.

As in many FD4 papers, it was difficult to score marks in this Inventive Step section. If you find yourself floundering in a section it may be time just to move on, as there will be more marks to be found in the subsequent sections.

Internal Validity Incorrect claim dependency of claim 4 has been noted.

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12. So much for the theory…

The opening paragraph sets out what might be promises as to the effectiveness of the invention (page 6 line 3-4 ‘effective in extracting nails and tops of heads… below timber surface’). It is not at all clear that the subject of the claims fulfills these promises. The specification thus lacks sufficency.

AMENDMENT

The examiner asked us to deal with amendment, and we have already suggested some amendments to overcome problems. However, we have four claims that are invalid, and a fifth claim that is valid but not infringed. But surely that does not seem right, as the prior art just looks so different to the invention, but the infringement looks like a very close relative.

In this situation we must try and find an amended claim that we can put forward that is based on the disclosure, that avoids the prior art, but which is infringed. We can take restrictions from the description, and we can even try to take restrictions from the drawings, but this may prove to be very difficult, if not impossible, in view of the requirement not to add any subjectmatter.

Correcting amendments have been suggested above to the claims, and for the introduction of statements of invention for all claims.

However, the claims will probably need to be rewritten.

Perhaps the main claim should be amended to read: 1 A nail pulling tool comprising a pair of jaws, engageable with the shank of a nail to be extracted each jaw being attached to a respective handle, the handles being of different lengths the shorter handle extending substantially horizontally in use and having a support foot with a convexly curved sole engageable with a surface in which the nail is situated, the tool being rollable and rotatable on the support foot to pull the nail from the surface, the tool being such that the nail is tightly gripped during rolling and rotation of the tool.

Claim 3 can be renumbered as claim 2 dependent on claim 1 Claim 5 can be renumbered as claim 3.

All of these claims are based on the disclosure. The claims will be novel with regard to the prior art. The claims will have inventive step, as none of the art teaches a horizontal handle with a support foot. The claim will be infringed as all of the features of the claim are in the infringement. The claim is not totally ideal, but the claim is within the scope of original claim 1.

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12. So much for the theory…

So, the amendment section sets out a claim that is an attempt to produce a form of words taken from the description and put together with the infringement in mind. This may encourage you to write a decent description whenever you write an application in the future!

While one possible amendment has been outlined above, there were other possibilities. An amendment could be based on page 6 lines 32 and 33, with a reference being introduced to the claim to ‘hingedly connected jaws and a percussion arrangement’… but then it would be necessary to decide if the anvil of the Mr. Z’s tool is a percussion arrangement. A functional limitation based on page 7 lines 9 et seq. could be considered, indicating that there is a separation between the jaws and the foot, the jaws are hingedly connected, and in use the jaws grip (meaning move towards each other) the shank of the nail tightly.

Now we move on to the ‘memorandum of advice’ which can still be in note form, but which should cover the points identified by the examiners… infringement, validity, amendment, further information that might be needed, and indication of practice points. Also recall that the client asked what he could do to stop the internet sales.

Advice Information needed from client.

1. Where is Mr. Z based…UK or on the Continent? Do we know where he makes or stores the product, or from where the product is dispatched? Is the website targeted at the UK, with prices in £s and with UK delivery options?

2. Is left-hand end of linkage riveted to the finger plate or pivotally connected?

3. Is this tool a very major part of your business? Will the business be in difficulty if we cannot stop the infringement immediately?

4. Did Mr. Z provide any ‘no competition’ undertakings when he sold you the business?

Did the documents relating to the sale indicate what might happen if any ‘improvements’ in the invention were made? Were there any ‘warranties’ of validity?

These warranties might be written, or might be oral representations made during pre-contract negotiating. If any of these concepts were part of the terms of the sale of the business, then maybe Mr. Z is in breach of contract, and action should be taken to enforce the contract.

Comments 0n the patent situation.

Claims 1, 2 and 4 are infringed, claims 1 to 4 are anticipated, but no claims are ‘obvious’.

The patent can be amended to provide a (more) valid claim which is infringed. This should be done before we do anything else. The application to amend will be advertised

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12. So much for the theory… in the Official Journal, and on the IPO website, but unless Mr. Z is maintaining a watch it is unlikely he will learn of the application to amend. However, any party can oppose the amendment when it has been advertised. If no opposition is filed, and if the amendment is allowed, (or even if the amendment is allowed after an opposition has been filed) it will be too late for Mr. Z to protest about the amendment.

So, unless the tool is a crucial part of your business then amend first. If it is crucial we can possibly commence an action (very expensive –typically measured in hundreds of thousands of pounds if it is defended – although costs may be lower at the Intellectual Property Enterprise Court) and even if we do this we are very unlikely to get any sort of injunction soon, as most probably the matter would be put down for a speedy hearing.

Assuming we amend first we will have a problem enforcing the patent against Mr. Z if he is operating outside the jurisdiction of the UK Courts. While, theoretically, any people who have bought infringing tools for them to use in their work would be infringers, it will be difficult to track them down, and they would have to be sued individually. The result would be a disgruntled potential customer, and minimal damages. You would not get an injunction against Mr. Z. The publicity might discourage others from buying the tool, but I cannot really recommend this route.

The expense would just not be justified.

After the patent has been amended it would be appropriate to open a dialogue with Mr. Z to encourage him to stop his activities, but if he is based overseas, and is simply offering for sale on the internet, without targeting the UK, and supplying from an overseas warehouse, it may be very difficult, if not impossible, to sue Mr. Z. If Mr. Z asserts that he is not infringing, then it would be possible to seek an IPO opinion or sue in the court. The opinion is much cheaper, but both parties would be involved in the proceedings, and the opinion would not be binding.

Mr. Z is well aware of the patent and cannot be an ‘innocent infringer’, and so there is no motive to put him ‘on notice’ by drawing his attention to the patent. If Mr. Z was not aware of the patent there would be merit in doing this as otherwise he might be able to argue that he should not pay damages for acts committed before he was made aware of the patent.

It would be possible to consider approaching the court immediately, amending before the court during proceedings, instead of amending first. This has the advantage that you might seek an interim injunction, on the basis that Mr Z’s activity (presumably Mr. Z has just set up a new company and so is new in the marketplace) is altering the ‘status quo’ and cannot be remedied by damages. As the client appears to be large enough to buy a complete business from Mr Z, and is ‘an established-medium-sized

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12. So much for the theory… business’ it seems unlikely that a problem with one product line will do irreparable damage to the company, and so an interim injunction seems very unlikely.

On the

other hand, if you seek to amend during litigation the other side will be able to raise objections to the amendments. If there is any consideration of an interim injunction there will be cross-undertakings on damages.

If Mr. Z is supplying retailers in the UK, certainly they should be put on notice, with a non-threatening ‘draw to your attention’ letter. This will put them on notice that the patent exists. It would probably not be wise to sue such retailers, but every attempt should be made to persuade them to stock the client’s tool, and not Mr. Z’s.

Maybe undertake investigations in this regard.

If Mr. Z is supplying individuals who use the tool on a personal basis then they will not infringe, but if they use the tool in a business, then they will infringe. However, locating individual infringers of this nature would be a problem, and issuing proceedings for infringement by way of a single tool, or even a dozen tools, would not make financial sense – unless a ‘test case’ is widely publicised, which might discourage others.

An advertisement in the relevant trade journals, pointing out the existence of the patent may be of some value.

There may be some merit in negotiating a licence with Mr z. The royalty need not be large, and Mr Z may be prepared to pay just to avoid the cost and inconvenience of litigation. If a licence is granted the patent need not be amended, but care needs to be taken if ever the patent needs amending at a later date as it may prove impossible to amend after a ‘delay’. The presence of a licence on the Register of Patents may give ‘an aura of validity’.

The end result, then, is not black and white, even in terms of the advice. If Mr. Z is indeed foreign-based, your client may not be able to enforce the patent at all. This seems an unsatisfactory finish, but if it is the real situation, then the advice given to the client must reflect the real situation.

Look on the PEB website for the examiners’ comments, and also some sample scripts. Read the sample scripts, and see what you think of them. Look at the different styles that the candidates use, to see what sort of style you might prefer, but always remember the marks go for the reasons, and some of the scripts that are published are just bare passes, and they are there to show that you can pass the examination even if you miss, or do not deal with, a large proportion of the ‘points’ that the examiner seeded in the paper.

The examination does require you to hold information in your mind, and be able to appreciate how a decision made at one point in the examination may influence your answer at another point in the examination. It is, and always has been, a race against time, and you must be able to cope with the stress of providing a solution to the problem within five hours. You do not have time to waffle. You certainly do not have time to panic.

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12. So much for the theory…

In the time available you will be unable to produce a ‘perfect’ answer. It will look a bit ‘ragged’. The logic may well not be watertight. But remember that this is not the real world.

This is the surreal world of FD4. Your objective in the examination room is to get as many marks as possible, and to write a half decent letter to the client. If you have done that, you must be content with your work.

However, if you know what you have to do, and you have practised it, under examination conditions, several times, then you stand a very good chance of passing FD4.

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APPENDIX

Paper P6 1998 The following paper is available from the PEB website at Examination support, and past examination materials, and then follow the link beneath the examination materials to Dropbox®, where you can find the paper. http://www.cipa.org.uk/pages/PEB-Past-Exam-Materials We have reproduced the paper here to accompany Chapter 12 of this book.

However, when working through Chapter 12 you may find it easier to print off a separate copy from the PEB website.

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APPENDIX

Paper P6 2010 The following paper is available from the PEB website at: http://www.cipa.org.uk/pages/PEB-Past-Exam-Materials and clicking on Examination support, and past examination materials, where you can find the paper.

We have reproduced the paper here to accompany Chapter 12 of this book (pages 155-181).

However, when working through Chapter 12 you may find it easier to print off a separate copy from the PEB website.

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