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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. Infringement and Validity • 2018
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