01-P6 book-pp01-08_8_Layout 1 22/05/2018 09:39 Page 7
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
7