M1 Part 1 – our provisional answers
First of all a big thank you to all of you who forwarded us the M1 paper, or the bits and pieces thereof that they had available! No benchmarkers were invited for the M1 paper so we had to do the paper after the candidates did it.
Of course we were very curious as to what
the paper would be like, as we had so little information to go on beforehand.
Fortunately, there were no big surprises for us in terms of level or topics of
the questions. Product-by-process claims were a hot topic in this paper. I
indeed would regard that as a typical M1-level topic, but I was surprised that
it came up in so many of the questions. I personally would have liked a bit
more variety in topics.
Like many candidates we were surprised to
see the invention in M1 Part 1 was again a hand plane for woodworking, just
like in the mock M1 as available on the EPO-website. We now suspect that we
know the hobby of at least one member of the M1 exam committee.
Below you’ll find our provisional answers.
Please note that these do not necessary match the official model solution or
the marking scheme. At this point we don’t know anything more about those than
you do, we can only give our considerations and the conclusions we drew from
those.
Q1: Only “No, at least one essential
feature is missing.”
Claim 1 is a regular process claim, and
doesn’t have any undefined relative of otherwise unclear terms. It claims a
treating step, which is not a result to be achieved. However, according to the
first paragraph of page 2 of the description, it is necessary that a strong
acid is used. This is not mentioned in the claim, so an essential feature is
missing.
Q2: “Yes , it is in conformity with
Article 84 EPC”
There is no parameter in the claim at all,
so also not an exotic one. “Obtainable by” is a regular and accepted way of
wording a product-by-process claim, so it is not unclear or a result to be
achieved. No essential features of the product seem to be missing. Note that
claim 4 is referring to the process of claim 3, which include the strong acids
as claim 3 refers back to claim 2. So all is fine.
Q3: Physical entity - yes
Claim 4 is a product-by-process claim,
which is a claim to a product (GL F-IV, 4.12). A claim referring to another
claim in a different category is generally not a dependent claim (GL F-IV. 3.8)
Q4:
|
|
|
D1 |
D2 |
D3 |
|
A |
Claim 1 |
novel |
novel |
Not novel |
|
B |
Claim 2 |
novel |
novel |
Not novel |
|
C |
Claim 3 |
novel |
novel |
Not novel |
D1: art. 54(2)
EPC
D2: art. 54(2) EPC
D3: art. 54(3) EPC if effective date is
priority date and art. 54(2) EPC if effective date is filing date (but in both
cases relevant for novelty)
Claim 1 vs D1:
·
D1 discloses the body being
coated with a polymer,
·
application: body is part of
hand plane;
·
process disclosed in D1 but no
acid -> claim 1 novel
Claim 1 vs D2: no disclosure of coating
with a polymeric material
Claim 1 vs D3: HCl is an example of an
acid, genus/species -> claim 1 not novel
Claims 2 and 3 vs. D1, D2, D3: novel
because dependent on claim 1
Claim 2 vs D3: not novel, D3 discloses HCl
Claim 3 vs D3: disclosed in D3 so not novel
Q5: yes – yes – no
D1: does not disclose any treatment with
acid, acid treatment is visible in the product (see D2) so the product-by-process
claim 4 is novel because the product has different characteristics than the
product of D1.
D2: the process of claim 3 results in a
polymeric coating on the body of the hand plane. D2 does not disclose a
polymeric coating and also not a hand plane
D3: carrying out the process of D3
inevitably results in the hand plane of claim 4, no different characteristics
of the hand plane of claim 4 as compared to the result of the method of D3
Q6: yes – yes - yes
D1: does not disclose any treatment with
acid
D2: does not disclose a polymeric coating
and also not a hand plane
D3: does not disclose the pressure of 2 bar
Q7: yes – no – yes – yes – no
Claim 1: disclosed by claim of DK-1
Claim 2: is directed to the process for
coating a metallic surface (as in the claim of DK-1) but specifies the
acids that were disclosed in the first paragraph of page 2 of the description
of DK-1. This paragraph is directed to coating specifically the metal plane
body, not any metallic surface.
Claim 3: disclosed in first paragraph page
2 DK-1.
Claim 4: implicit, the skilled person inevitably
arrives at the product of claim 4 by carrying out the method of DK-1 (GL G-VI,
5)
Claim 5: no basis for combination of the
temperature and the time on one hand and the pressure on the other hand.
Q8:
|
|
D1 |
D2 |
|
Claim 1 D3 |
Novel, D1
no HCl |
Not novel,
selection from single list |
|
Claim 2 D3 |
Novel
because claim 1 is novel |
Novel
because D2 does not disclose hand tool for woodworking |
Q9: No
R. 137(1) EPC.
The exception to this is if you need to
correct deficiencies in the application under R. 58 EPC but there is no
indication in the paper that this is relevant for this question.
Q10:
|
|
D2 |
D3 |
|
Am claim 1 |
novel |
novel |
|
Am claim 2 |
novel |
novel |
|
Am claim 3 |
novel |
novel |
|
Am claim 4 |
novel |
novel |
In view of D2: D2 does not disclose a
process for coating with a polymeric material. “Process for” is limiting when
the “for” is not inevitably obtained (GL F-IV, 4.13.3).
Claim 2-4 novel in view of D2 because they
are dependent from claim 1
In view of D3: D3 does not disclose the 6
strong acids as mentioned in claim 1.
Claim 2-4 novel in view of D3 because they
are dependent from claim 1
Q11: true – true - false
D1: Effect of acid treatment is visible
under electron microscope -> so different product characteristics in the
hand plane of EP-1
D2: no hand plane body disclosed in D2
D3: treatment with HCl gives the same
characteristics as treatment with the other strong acids (see D2)
Q12: yes – no - yes
Amended claim 1: all strong acids mentioned
in first par. page 2 of application as filed
Amended claim 2: time/temperature only
disclosed in combination with HCl
Amended claim 3: embodiment with 2 bar
pressure: disclosed in combination with any of the 7 strong acids
Q13a: only “Providing a longer-lasting
reduction in fiction between a metallic hand plane and the wooden workpiece”
See the last paragraph of page 1 of the
description
Q13b: only D2
Effective date of amended claim 1 = prio
date so D3 is Art. 54(3) EPC
Q14: Only “D2 does not mention coating
metallic objects with polymeric materials such as PTFE”
Considerations:
-
Distinguishing feature wrt D1 =
acid treatment
-
Claim 1 is not limited to
woodworking hand tools
-
D2 does give info about
technical effect of acid treatment
Q15a: “The subject-matter of claim 1 is
novel over D2” and “Claim 2 is in conformity with Article 123(2) EPC”
Claim 1 not in conformity with Art. 123(2)
because there is no disclosure of the other strong acids.
Q15b: True - False
Note: we assumed that the question was
about “amended claim 3 of D3” as D3 as filed does not have a claim 3.
Having a patent does not give your freedom
to operate.
Infringement risk: yes because product-by-process
claim is a claim to a product, even when a different process is applied to
manufacture the product.
Thank you for your provisional answers.
ReplyDeleteI think there is one « yes » too many in Q7 and that you only answered half of Q15b
MG
I'll check
DeleteFixed it
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ReplyDeleteThank you so much for your answers!! I have a slightly different answer to question 14, since I only picked the third option. I don't see a reason why the third option should not apply as a valid argument? And I did not indicate the second option because D1 already disclosed coating metallic objects with polymeric materials such as PTFE, so that it would not be a valid argument for low or no relevance of D2 since D1 is our closest prior art.
ReplyDeleteMy consideration here was that because D2 is about coating metal objects, so it is not a very remote technical field.
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ReplyDeleteAlso I answered false for Q15b because it specifically did not state "amended" Claim 3 of D3 while it said "amended claim 1 of EP-1". And since there was no original claim 3 I just wrote false, I thought hard about the question and decided to answer as the question was written and not make any assumptions
DeleteI was confused at first as well, looking for clkaim 3 in D3 as filed. But then I checked the amended claims of D3, noted that there was a claim 3 and assumed they intended that one.
DeleteFor Q9, I answered yes because since claim 1 isn't in conformity with Art. 84 EPC (which we learned in Q1) one would want to amend the claim to already circumvent a rejection that would inevitably come later. Perhaps that is too practical of me and I just lose the two points?! Such is life...it will be a close call for me due to Q14/Q15 and no idea how many points I will actually receive. During the F exam, they were stingy with points and often you would get 0 if you missed even just one part.
ReplyDeleteR. 137(1) EPC - you have to wait until you get the search report.
DeleteThank you for your provisional answers, I partly disagree with you answer to Q5, as I do not think Claim 4 is novel over D1. You have stated that "acid treatment is visible in the product (see D2)", but D2 states "The changed and enhanced surface quality of the metallic surface following the strong acid treatment is clearly visible using an electron microscope", there is no evidence here that this visibility persists after applying the metal coating, this could easily be read as simply being visible before applying the metal coating. And even if it were still visible after applying the 'metal' coating there is no evidence it is also still visible after applying a 'polymer' coating. Given the point of the polymer coating is to reduce friction (i.e. a different purpose), it seems unlikely this coating also works the same way. Overall there doesn't seem to be sufficient evidence in the prior art that a hand plane produced with or without the acid treatment look any different (or can be distinguished), and hence the hand plane made by the process of D1 would seemingly be novelty destroying to Claim 4.
ReplyDeleteI agree with you... What about Q11 though? in regards to "Amended claim 5 is novel over D1" I also wrote false
DeleteI agree with you, for the same reason I wrote No in Q5 and false in Q11
DeleteHmm, are there any requirements that a visual difference is necessary? GL F-IV, 4.12 only specifies "differences...in the properties of the products”. So I had the same answer as DeltaPatents as I figured that a product made by the claimed method appears to have different properties than one made by the method according to D1, particularly regarding longer-lasting adhesion of polymeric coatings.
Delete@zx and @MF, agreed, I think those bits of Q5 and Q11 effectively ask the same question and so hinge on the same point of understanding. I also said amended claim 5 was not novel over D1.
Delete@AB, I see your point but I would argue that, as you suggest, the stated 'property of the product' created by the strong acid treatment is to make the low friction "longer lasting" (by preventing the coating peeling off sooner) but there is no fine line about what 'longer' means here. For instance, if a hand plane lost its polymer coating after X days, how could you know if it had been treated with acid beforehand based on that? As GL F-IV, 4.12 states "The burden of proof for an allegedly distinguishing "product-by-process" feature lies with the applicant, who has to provide evidence that the modification of the process parameters results in another product, for example by showing that distinct differences exist in the properties of the products.". I cant see how adhesion lasting 'longer' could be called a 'distinct property', and there's no evidence in DK-1 of this anyway (only in D2), so the safer option here is surely to assume the products are indistinguishable until proven otherwise by the applicant?
I think I agree with AB, albeit purely in the context of this exam and the question. The properties are simply different according to D2 and to DK-1, which we need to take at face value for the exam. If it's not visually identifiable, then it is at least identifiable in the long-lasting of the adhesion. Whether that can be proven or not is a different matter altogether.
Delete@Anonymous 15:44, I agree that we know nothing about how the applicant will prove this difference or if anyone will notice the difference between a D1-hand plane and a hand plane obtained by the claimed process.
DeleteI took the text of the applicant as the truth, and figured that if the polymeric coating adhesion is made longer lasting, the claimed hand plane must have some (unknown to me) property that provides that longer lasting adhesion which is not present in a hand plane obtained by the process of D1.
Indeed, it was our consideration that the acid treatment gives the hand plane different properties, and even one you cna identify when looking at the metal surface under an electron microscope, and that therefore the hand plane of the product-by-process claim is different from known hand planes. Also in the context of the exam, why else would they tell you that the effect of the acid treatment can be detected in the finished product?
DeleteMany thanks for doing this and for the time and energy everyone at Delta invests. I am not sure I agree for question 7 and claim 2. I noted in the exam that the description consistently refers to metallic hand plane body. However, there is no technical reason why the form of the object with the metallic surface should be important. I consider the teaching of claim 2 can be derived directly and unambiguously from DK-1.
ReplyDeleteWe considered the "metallic plane body" to be a species of the genus "metallic surface". And you cannot claim priority of "copper" if the priority application only discloses "metal"
DeleteQ14 - Regarding question 14, I honestly had some difficulty understanding exactly what it was asking, and I believe I may have interpreted it the opposite way. Could someone please clarify its exact meaning?
ReplyDeleteWhen reading it again, I also see that the question could have been written clearer. Did you interpret is as "which arguments are of no or low relevance"?
DeleteIf it is of any help, I interpreted the question like this: "If an objection for lack of inventive step in view of D1 in combination with D2 was raised against amended claim 1, what would be valid arguments for alleging that D2 is not relevant when evaluating the inventive step of this claim?"
Then I figured that an argument could be: "A skilled person within the field of polymeric coating of metal object (to which field the claim pertain) would not expect to find a solution to the OTP in D2, as D2 does not mention coating metallic objects with polymeric materials such as PTFE (it mentions only coating with metal)". So I checked the second alternative. The other options did not seem like valid arguments to me.
But isn't the OTP completely unrelated to the coating with PTFE, as D1 already discloses that? So the OTP for me was more like the one mentioned in Q13a. And then it doesn't matter for your problem-solution approach whether D2 contains the coating with polymeric materials as long as it might have a solution to the technical problem (which does not require polymeric materials per se)?
Delete@OO, I agree that if the technical field of the skilled person is set based on the OTP stated in Q13, then my answer would not be valid. In my line of thinking, I determined the technical field of the skilled person based on amended claim 1 as a whole (not only the distinguishing features - rather the intro of the claim "A process for coating a metallic surface with a polymeric material..." ).
DeleteI'm not sure which of our lines of thinking is the correct one. I've never thought about determining the field based on the OTP. It seems like if you do that, you are free to use any document, as long as they are related to the problem in question? If that is what the exam committee had in mind for this question, then I'm wrong.
Amended claim 1 relates to a process for coating a metallic surface with a polymeric material. The OTP is as in Q13, the longer lasting reduction of friction - which is linked to the polymeric coating. Hence the relevance of coating with polymeric materials. By the way, my main reason for not selecting the third option was the formulation of that statement, saying that D2 is in a very remote technical field. As D2 is still about coating metal objects (just with a different type of coating) I decided it was not a "very remote technical field".
DeleteFor Q12 why does the amended claim 1 has basis in the original application DK-1? I understand the application DK-1 it only discloses metal surfaces for metallic hand planes and not metal surfaces in general as the amended claim 1 for EP-1 is claiming? Then the claim does not have basis in DK-1. Or am I missing something in the description?
ReplyDeleteClaim 4 is specifying the hand plane body, thus for claim 4 this is not an issue anymore, but maybe it is okay for all of the claims?
In the sense of A.123(2), EP-1 is the "application as filed". So for Q12, the disclosure of DK-1 is not relevant.
DeleteAB, I agree that EP-1 is the application as filed, but EP-1 has the same description as DK-1 thus the claim needs to not extend the beyond the content of the application as filed, which is EP-1 to fulfill Art. 123(2) EPC, and in this case the description is the same as for DK-1. As you say the amended claim 1 may have basis in the claims of EP-1, but for strong acids and metalic surfaces I cannot see that there is any embodiment of EP-1 disclosing that neither in the claims of EP-1 either. I still cannot se where there is basis in EP-1 for the amended claim 1.
DeleteMy thinking was that support could be found in claim 1 + claim 2 of EP1 + selections from the list of the definition of a strong acid (selection from 1 list).
DeleteAB, Ok I see that basis, I just missed that. Thanks the reply.
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ReplyDeleteThank you for your provisional answers.
ReplyDeleteI just have one concern regarding Q14. I choose both the second and third option, i.e. your answer + D2 only mentions jewellery = remote technical field.
As far as I can interpret the Guidelines, it should be considered whether the skilled person, faced with the OTP and starting from D1 and consulting D2 would be inclined to modify D1 to arrive at claim 1. My point is that even though claim 1 is not limited to woodworking hand tools, D1 is only concerned with this and not of coating metals in general.
Also, according to GL G VII.5.2, the OTP is determined by the application (not just claims), CPA and distinguishing features. Therefore, the OTP can i.e. be the one formulated in Q13.
So, since both CPA and OTP are related to metallic hand planes, why would the fact that D2 only mentions jewellery not be a valid argument?
As mentioned in a few commetns above as well, my main consideration was that the third option says that coating jewellery would be a "very remote" technical field. As D2 is still about coating metallic objects, I decided it was not a "very remote technical field".
DeleteThank you very much for your work! I was wondering whether in Q13b D3 should also be relevant for inventive step, as the subject-matter of amended claim 1 ist not originally disclosed in DK-1 in the claimed combination and therefore the priority is not claimed validly for amended claim 1 … adding a nice little extra twist to the „standard“ question of A.54(3)-documents in inventive step combinations … what do you think?
ReplyDeleteYou are correct, the question hinges upon whether or not priority is valid for amended claim 1. My notes say it is, but frankly I can't recall exactly what my argument was there. Looking at the paper now with fresh eyes I think that a good argument can be made that the priority of amended claim 1 is not valid, because DK-1 does not disclose the combination of the metallic surface and the strong acid.
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