Pages 95-100

REPRESENTATION

European qualifying examination

Instructions to candidates for preparing their answers

Having regard to Articles 13 and 15(1) and (2) of the Regulation on the European qualifying examination for professional representatives (REE) as worded in the text dated 9 December 1993 (OJ EPO 1994, 7), the Examination Board has amended its instructions (OJ EPO 1995, 145) with effect from 19 January 2000 to read as follows:

I. General provisions

1. 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.

2. It will be assumed that candidates have read the examination paper in the language in which they give their answer. Where this is not the case, candidates should indicate on the front page of their answer the language in which they read the paper. The same applies to candidates who, having filed a corresponding request when enrolling for the examination, give their answer in a language other than English, French or German.

3. Candidates are to accept the facts given in the paper and to limit themselves to these facts. Whether and to what extent these facts are used is the responsibility of the candidate. Candidates are not to use any special knowledge they may have of the field of the invention.

II. Paper A

Time: 3 ½ hours, second day, morning

4. Candidates are to assume that they have received a letter from their client which includes a description of an invention for which the client wishes to obtain a European patent, together with references to the most pertinent prior art known to him.

5. They are expected to draft an independent claim (or claims) which offers the applicant the broadest possible protection and at the same time has a good chance of succeeding before the EPO. When drafting the claim(s), candidates should bear in mind the requirements of the Convention, including the need for novelty and inventive step, and the recommendations made in the Guidelines for Examination in the EPO. Dependent claims, which should be limited to a reasonable number, should be drafted in order to provide a fall-back position in the event of failure of the independent claim(s).

6. Candidates are also expected to draft an introduction, ie that part of the description which precedes the examples or the explanation of the drawings. The introduction should be sufficient to provide support for the independent claim(s). In particular, candidates should give consideration to the advisability of mentioning the advantages of the invention in the introduction.

7. Candidates are expected to draft claims and an introduction for one European application only. The application should meet the requirements of the Convention as to unity. If in practice candidates would seek to protect further inventions by filing one or more separate applications, they should, in a note, clearly identify the features of the independent claim of such separate application(s), for example by referring to selected portions of the claims, or, alternatively, draft the claim itself.

8. In addition to their answer, candidates may (although this is not mandatory) set out on a separate sheet of paper the reasons for their choice of answer: for example, why they selected a particular form of claim, a particular feature for an independent claim or a particular piece of prior art as starting point, or why they rejected or preferred a particular item of prior art.

Supplementary notes from candidates to examiners cannot, however, replace essential parts of candidates' answers.

9. Those sheets of the examination paper which candidates might wish to cut up and include in their answer will be printed on one side only. Scissors, glue and transparent gummed tape may be used, but no staplers. Sheets containing drawings will also be printed on one side only.

III. Paper B

Time: 4 hours, second day, afternoon

10. In this paper, candidates should assume that a European patent application has been filed designating all the contracting states, and that the European Patent Office has issued an official communication. The paper may include a client's letter containing instructions about the way the client wishes to prosecute the European patent application.

11. Candidates are expected to respond to all points raised in the official communication. The response should be in the form of a letter to the EPO accompanied, where appropriate, by an amended set of claims. The description should not, however, be amended.

The claims should afford the broadest possible protection while meeting the requirements of the Convention. In their letter of response candidates should set out their arguments in support of the patentability of the independent claim(s).

12. If candidates consider that any part of the application ought to be made the subject of one or more divisional applications, they should, in a note, clearly identify the features of the independent claim of such divisional application(s), for example by referring to selected portions of their claims, or, alternatively, draft the claim itself.

IV. Paper C

Time: 6 hours, third day, morning

13. The notice of opposition prepared by candidates 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 anonymity, candidates must not give their real name, but should instead use the name of the representative to whom the client's letter is addressed.

14. The notice of opposition should contain all those (and no other) grounds - where possible against all the claims - which candidates consider in this particular case to be prejudicial to the maintenance of the patent. The omission of a good ground for opposition will lead to a loss of marks commensurate with the importance of the ground in the case concerned. The grounds of Article 100(b) will not be used.

Candidates must also briefly set out on a separate sheet reasons why they adopted or did not adopt the suggestions of the client. In addition any questions the client may have posed should be answered.

15. The paper will be presented in the form of a letter from a client to a professional representative accompanied by the European patent to be opposed and prior art documents. The annexed prior art will comprise at least three documents, including one in English and German only, one in English and French only, and one in German and French only.

16. The paper will contain a glossary of the specialist terminology used in the documents in the three official languages of the EPO as well as in any official language of a contracting state requested for that particular examination under Article 15(3), second sentence, REE.

17. Candidates are expected to put themselves in the position of the representative and, using only the information provided by the client, to prepare a notice of opposition which when typed would be ready for filing. The pre-printed opposition form provided may be used, but it is not obligatory and marks will not be lost if it is not used.

18. All claims should be treated separately taking due note of their dependencies.

19. Documents should be referred to by their annex number only, indicating the language used.

20. It is to be assumed that for all annexes which claim a priority, the disclosures of the annexes are identical with those of the corresponding priority documents unless there is evidence to suggest otherwise.

If, however, any facts presented need to be confirmed, eg in the case of an alleged prior public disclosure, candidates would be expected to state that such confirmation would be filed later.

Regardless of the date of the client's letter, candidates are to assume there is no possibility to confer with him.

21. Candidates should be aware that Annex 1 is fictitious and is not necessarily in a form that would have led to a patent granted by the European Patent Office.

V. Paper D

Time: Part I - 3 hours, first day, morning; Part II - 4 hours, first day, afternoon*

22. Paper D Part I comprises questions relating to different areas of the candidates' legal knowledge. Candidates must answer all the questions. Answers should be brief and to the point. For all questions candidates must cite any articles, rules or other legal basis relevant to their answer.

23. Paper D Part II comprises an enquiry from a client requiring an answer in the form of a legal opinion.

In their opinion candidates must explain the legal consequences of the situation as described.

Candidates will be expected to demonstrate their ability to deal with a complex industrial property law situation involving fundamental issues of patentability, rights of inventors, inventions as property and third party rights, as defined in particular, but not solely, in Articles 52 to 89 EPC, corresponding articles of the PCT, the Agreement relating to Community Patents and the Paris Convention, as well as in the relevant laws of the contracting states. Candidates should preferably cite any articles, rules or other legal basis relevant to their answer.

24. One grade will be given for Paper D, based on the marks awarded for Parts I and II.