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

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.

First 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

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

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 ofall 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.

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.

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.