REPRESENTATION
European qualifying examination
Instructions to candidates for preparing their answers
Having regard to Articles 10 and 11(1), (2) of the Regulation on the European Qualifying Examination for professional representatives before the European Patent Office (REE) as worded in the text dated 7 December 1990 (OJ EPO 1991, 15) and Article 15 REE as worded in the text dated 9 December 1993 (OJ EPO 1994, 7-18), the Examination Board amends its instructions (OJ EPO 1991, 92) as follows with effect from 2 February 1994:
I. General provisions
1. Candidates are to accept the facts given in the paper and to base their answers upon such facts. Whether and to what extent these facts are used is the responsibility of the candidate.
2. Candidates are not to use any special knowledge they may have of the subject-matter of the invention, but are to assume that the prior art given is in fact exhaustive.
3. In addition to his answer, a candidate may - but this is not mandatory - give, on a separate sheet of paper, the reasons for his choice of answer, for example why he selected a particular form of claim, a particular feature for an independent claim, a particular piece of prior art as starting point or why he rejected or preferred some prior art or possible opposition argument. Any such statement should however be brief.
Where expressly required, the candidate must give reasons.
4. Candidates are expected to be sufficiently familiar with
- the Guidelines for examination in the EPO and
- the content of the Official Journal of the EPO
as published up to the end of the year preceding their examination.
II. Provisions applicable to paper A
Duration: 4 hours; second day, morning
5. The candidate is expected to draft an independent claim or independent claims giving the applicant the maximum valid protection to which he is entitled and having a reasonable chance of acceptance as valid by the EPO, bearing in mind the need for inventive step vis-à-vis the prior art as stated, the requirements of the Convention as to the form of the claim(s), other requirements of the Convention, and the recommendations in the Guidelines for examination in the EPO. Dependent claims should not exceed a reasonable number and be such as the candidate would wish to fall back on in the case of failure of the independent claim/claims.
6. The candidate is expected to draft an introduction, i.e. that part of the description which precedes the examples or the explanation of the drawings. The introduction should be sufficient to provide support for all claims. In particular, the candidate should consider the advisability of mentioning advantages of the invention.
7. Those sheets of the examination paper which the candidate might wish to cut up and partially include in his answer will only be printed on one side. Scissors, glue and transparent gummed tape may be used, but no staplers. Equally, those sheets containing drawings will only be printed on one side.
8. The prior art documents shall be in the same language as the paper itself.
III. Provisions applicable to paper B
Duration: 3 1/2 hours; second day, afternoon
9. The technical subject of paper B will be the same as for paper A and the candidate will be expected, on the basis of a description and claims provided, to draft a reply to an official letter provided in the form of a communication of the Examining Division. The official letter may necessitate amendment of the claims. Candidates are not required to make amendments to the description. The reply should be presented as a letter to the EPO and contain arguments e.g. as to the relevance of the prior art. No particular form is mandatory. Any amendments should be clearly indicated as deletions and additions in the reply or set out in a separate document. In any case, the amendments proposed should be sufficient to meet the requirements of the Convention as to the claims.
10. The prior art documents shall be in the same language as the paper itself.
IV. Provisions applicable to paper C
Duration: 5 hours; third day, morning
11. The paper will be presented in the form of a letter from a client to a professional representative. The candidate is expected to draw up a notice of opposition which satisfies the requirements regarding filing, other than those relating to typing and the keeping of certain margins. He may use the EPO Form 2300 provided (Notice of opposition against a European patent).
The notice of opposition prepared by the candidate should comply with Article 100 and Rule 55 of the European Patent Convention (EPC), bearing in mind the relevant recommendations in the Guidelines for examination in the EPO, Part D. However, in order to maintain the candidate's anonymity he is not to use his real name inthe papers but, instead, the candidate should use the name of the representative to whom the client's letter is addressed. The grounds of Article 100(b) EPC will not be used.
The candidate must also briefly set out on a separate sheet reasons why he adopted or did not adopt the suggestions of the client. In addition any questions the client may have posed should be answered.
Detailed analysis of documents done in rough on separate sheets is not regarded as part of the answer and should not be included or attached; nor should the test paper itself or any rough notes. Candidates should therefore concentrate more on the contested patent claims and less on analysis of the documents of the - prior art.
12. The notice of opposition should contain all (and only those) grounds - as far as possible against all the claims - which the candidate in that particular case considers prejudicial to the maintenance of the patent.
Omission of a good ground for opposition will lead to loss of marks, commensurate with the importance of the ground in the particular case.
13. The prior art will include at least three documents, including one in English and German only, one in English and French only and one in German and French only.
14. The paper will contain a glossary of the specialist terminology in the documents in the three official languages of the EPO and in any official language of a Contracting State requested for that particular examination under Article 15(3),second sentence, REE.
15. The European patent to be opposed will be furnished in all three official languages. The candidate must indicate which of the three versions he chose to oppose.
V. Provisions applicable to paper D
Duration: 4 1/2 hours; first day, morning
16. Paper D will comprise:
(a) questions directed to the different fields of the candidate's legal knowledge (all requiring answers - no choice for the candidate);
(b) an enquiry from a client requiring an answer in the form of a legal opinion.
17. The answers to the questions under point 16(a) should be brief and to the point.
In the opinion under point 16(b) the candidate must explain any legal consequences of the situation postulated; he should demonstrate his professional ability to master a complex industrial property law situation involving basic problems of patentability, rights of inventors, inventions as property, third party rights, as defined particularly but not solely in Articles 52 to 89 EPC, in corresponding Articles of the PCT, Community Patent Convention and Paris Convention and in relevant laws of Contracting States.
18. For all the questions under point 16(a), the candidate must cite any Articles, Rules or other legal basis relevant to his answer. In the opinion under point 16(b) he should preferably do the same.