3.How do I begin with a FD4 paper?

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.

Atypical 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

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.

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

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,

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.

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.