12.So much for the theory

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.

In 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: ++++++++++++

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.

 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.

The patentee is a supplier to your client, and gives ‘excellent terms’ and also ‘extended credit’,

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.

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.

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 operablybiased 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

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

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?

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

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

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,

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 bypushing 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

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 toengage 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

'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.

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

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 youto 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

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.

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.

1ba 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 Figures2 and 3 are not consistent. SUFFICIENCY

It could be like this:

recess to receive lug

or:

pin in middle of recess lug

hole in lug

Sketch 1

[like a loose jig-saw connection]

In any event Fig 3 is wrong and should be:

gap There must be a gap as 7 has moved from Fig 2 position

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…

1dincorporating 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

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’.

1fa 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

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

It could be recess

Sketch 2

Coil to fit in recess

or it could be

recess with upstanding pin

Coil to fit in recess and surround pin

“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].

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

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

FORWARD 45° 45°

BACKWARD

GOES UNDER HANDLE

AND UNDER HAND

VIRTUALLY VERTICAL

“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

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.

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.

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.

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.

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.

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 32cannot 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.

3aX 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

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.

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.

3bX 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.

45°

Sketch 6

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

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

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.

(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

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…

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.

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

‘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.

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 thesub-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…

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.

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.

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.

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

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.

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.

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

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?

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 1in 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

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

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.

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

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.

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

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.

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 ofproviding 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

“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

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

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

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

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

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.

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.

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) √

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).

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

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.

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.

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

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

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.

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.