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Infringement and Validity CIPA FD4 Study Guide By Philip Barnes based on an original version by Nigel Frankland
2018 Edition
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The moral rights of the author have been asserted. All rights reserved. No part of this publication may be translated, reproduced, stored in a retrieval system, or transmitted, in any form or by any means, electronic, mechanical, photocopying, recording or otherwise, without the prior permission of the author. © 2018 Philip Barnes Published and placed on sale by: The Chartered Institute of Patent Attorneys 2nd Floor Halton House 20-23 Holborn London EC1N 2JD United Kingdom Tel: +44 20 7405 9450 Fax: +44 20 7430 0471 Website: www.cipa.org.uk
ISBN 978-0-903932-67-7 Printed and bound by Hobbs The Printers Ltd, Totton, Hampshire
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Infringement and Validity CONTENTS Foreword . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . v Bibliography of cases . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . vii 1. What is FD4 all about? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 1 2. How should I prepare to sit FD4?. . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 9 3. How do I begin with a FD4 paper? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 17 4. How do I begin to tackle interpretation?. . . . . . . . . . . . . . . . . . . . . . . . . . . . . 23 5. Now I have done ‘interpretation’, what comes next? . . . . . . . . . . . . . . . . . . 59 6. How do I deal with novelty? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 71 7. And what about inventive step? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 79 8. Surely that’s the end of validity? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 91 9. Amendment . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 95 10. Is there anything else? . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 99 11. How do I achieve all of this in the examination room? . . . . . . . . . . . . . . . 107 12. So much for the theory… . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 113 Past paper – P6 1998 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 189 Past paper – P6 2010 . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . . 205
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Bibliography of cases This bibliography identifies the cases mentioned in the text, listed in alphabetical order with page references. Some cases are of lesser importance than others. Actavis UK Limited and others (Appellants) v Eli Lilly and Company (Respondent) [2017] UKSC 48...........................................................................................................................2, 25, 36 Ancon Limited v ACS Stainless Steel Fixings Limited [2009] EWCA Civ 498; http://www.bailii.org/ew/cases/EWCA/Civ/2009/498.html.......................................................26, 28, 30 BOS GmbH & Co KG v Cobra UK Automotive Products Division Ltd [2012] EWPCC 38; www.bailii.org/ew/cases/EWPCC/2012/38.html .................................27-28, 35, 83 Catnic v Hill & Smith Ltd. [1982] RPC 183 (not on Bailii) .....................................3, 14, 25, 29, 30, 81 Goldschmidt v EOC Belgium BL/83/99 (not on Bailii).................................................................44, 52 Improver Corp. v Remington [1990] FSR 181 (not on Bailii) ...............................................3, 25, 29, 32 Kirin-Amgen v Hoechst Marion Roussel [sometimes quoted as Transkaryotic Therapies, Inc.] (No. 2) [2005] RPC 9 at page 169;[2004] UKHL 46; www.bailii.org/uk/cases/UKHL/2004/46.html ..........................................................................................................................3, 23, 26, 28, 30-32, 35-36 Lubrizol v Esso BL C/110/96 and [1998] RPC 717 (CA) (not on Bailii) ...................................44, 52 Pozzoli SPA v BDMO SA and others [2007] EWCA Civ 588; FSR37 and http://www.bailii.org/ew/cases/EWCA/Civ/2007/588.html.................81, 82, 85, 86, 149, 159, 180 Ranbaxy (UK) Limited v AstraZeneca AB [2011] EWHC 1831 (Pat); www.bailii.org/ew/cases/EWHC/Patents/2011/1831.html........................35 Smith & Nephew plc v ConvaTec Technologies Inc [2013] EWHC 3955 (Pat); www.bailii.org/ew/cases/EWHC/Patents/2013/3955.html .......................44 Smith & Nephew plc v ConvaTec Technologies Inc [2015] EWCA Civ 607; www.bailii.org/ew/cases/EWCA/Civ/2015/607.html.....................................52 Smith International Inc v Specialised Petroleum Services Group [2005] EWHC 686 (Ch); www.bailii.org/ew/cases/EWHC/Ch/2005/686.html ...................................27
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2. How should I prepare to sit FD4? The PEB ‘Guidelines’ for the FD4 2015 examination are reproduced on pages 14-17 [candidates should check the PEB website for the most up to date guidelines]: FD4 is an examination that requires some knowledge, but is really an examination that tests skills. The paper is always a race against time. The examination does require you to be able to assimilate information quickly, to marshal that information, and then to write a detailed but terse answer. You must be able to read ‘aggressively’. You are not just reading in a kind I-amwilling-to-understand-what-you-are trying-to-say manner, but instead, you should be reading in a what-could-these-words-possibly-mean manner. You are looking for clues, which may be very small clues, just as if you were a detective. All sorts of small oddities have been included in the paper by the examiners, and you have to find them. Maybe this is the ‘meticulous verbal analysis’ that we have been invited to ‘eschew’ in judicial comment in the past, (see Lord Diplock in the Catnic case), but reading in this way may help you readily to identify the points that you will need to discuss to pass FD4. The examination is designed so that there is enough time to deal with the essential points, but not enough time to waffle, and not enough time to deal at length with irrelevant points. To achieve a good mark, the answer should include passages designed to meet all of the sections of the marking schedule. When attempting the FD4 paper you may find it easy to gain the first marks available in each section, but somewhat harder to gain the rest of the marks, demonstrating the law of diminishing returns. Consequently, at least attempting all sections would seem to be a sensible plan, even if some sections are incomplete. If you are sweeping a dusty room, and you have to sweep up the maximum amount of dust in a short time you will probably do better if you roughly sweep the whole area, rather than if you sweep only a part of it to perfection. It is the same with FD4 – if you take the time to do one section absolutely perfectly, you will probably not have left enough time to score a pass mark on the remaining sections. All of this requires good time control, and that can only be achieved with practice. While doing past papers without any time constraint may be beneficial in the beginning, the need for practice under examination conditions cannot be over-emphasised. Doing a past paper in one two-hour and one three-hour session is not the same as doing it under examination conditions, as there will be time to think and analyse between the sessions. It is by doing past papers within the five hours that you may realise that, for example, you need to practise handwriting, which is something that is not done frequently, in these days of computers and digital dictation. Also by practising on past papers you will be able to assess the problems of timing, and learn the importance of being able to deal with a complex point succinctly, while still covering the major features of the argument. Also you will become familiar with the sort of points that the examiners put into the questions, so that you will be able to identify the points that need discussion when you sit the paper for real. FD4 has many similarities to the day-to-day work of an attorney. However, in FD4 the ultimate ‘client’ or consumer of your work product is the examiner. You must provide what this ‘client’ wants, and to do that you must be able to put yourself mentally in his/her shoes. The examiner is an attorney of some years post-qualifying experience, and almost certainly holds down a good job in industry or private practice, with expectations that a goodly number of chargeable hours are scored each month. You can help the examiners (and help them to award you marks) by entering into the spirit 14
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2. How should I prepare to sit FD4? of the examination, overlooking any technical inconsistencies or absurdities (you try writing a scenario for FD4, and see how difficult it is!) and by writing as clearly as possible, so that the examiners do not have to struggle to read your script. Most handwriting can be read more easily if it is double spaced. Also, you can help the examiners by setting out your answer as seven sections corresponding to the seven sections of the marking schedule. Your paper will be marked by two examiners independently. They then compare the marks awarded, and if there is a discrepancy they will discuss the matter and agree a mark. They will be looking closely at candidates who have marks in the high 40s, to see if they can justify a higher mark. Any scripts where the mark remains in the high 40s will be looked at again by a member of the Patent Examination Board. The examiners really do try hard to ensure that any candidate who has written a script that justifies a pass is actually given a pass. Being a patent attorney is being part of a service industry, and if you are in a service industry you must be able to work out what the client wants and then be able to provide it. In FD4 it is just the same, but you must understand that the examiner is the client! Remember, however, that when you are construing, or determining infringement or validity you should be dispassionate, and you should reach the same conclusion regardless of whether your client is the patentee or the infringer. Your client needs to know the situation as it really is. If there are arguments that one side or the other could run, they may be outlined, but you must try to reach a ‘fair’ conclusion, rather than siding with your client while preparing an opinion. It is in the memorandum of advice that you can put forward arguments that specifically support your client. Finally, it cannot be over-emphasised that to pass FD4 you will need the appropriate set of skills, and you will only obtain them by practice, and the most valuable practice is practice under examination conditions.
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3. How do I begin with a FD4 paper? while you are asked to do specific things, there is usually at least one ‘unasked question’, which may be amendment, or internal validity, or something that the client should do. In the real world clients often do not know what it is that they need to be told. They have a problem and they know that, but they are not sure of all of the ramifications of the problem and have no idea what the solution might possibly be. They present the patent attorney with information which may be incomplete is some areas, and which may include data that is of no relevance whatsoever. They may ask specific questions, but they will almost certainly not ask all of the questions that they should have asked. It is the job of the attorney to sort out the relevant from the irrelevant, and it is the job of the attorney to answer the questions that have been asked, and also the questions that were not asked but which should have been asked. FD4 attempts to emulate this real-world situation, and so there is usually at least one ‘unasked question’. As you read the letter from the client be on the lookout for more prior art, or a disclosure about something that has been sold, or a further comment about one of the disclosures that you have already read. If this is the case, look very closely. The additional disclosure may have a very substantial effect on your understanding of the situation, or may raise a question that needs to be answered. Always be very alert in FD4 when information about a single product or embodiment is supplied to you in two places, for example in a ‘document’ and in a comment from the client. Read the comment from the client as you read the relevant ‘document’, as often the combination of information from the two sources will give you a very valuable insight. Bear in mind, the examiner may not actually tell you that the two sources of information are actually related to the same product. For example, the client’s letter may talk about a product that has been on the market, and the relevant US patent may have turned up in your search. In such a situation the examiner would expect candidates at least to ask a question to see if the US patent does indeed relate to the product that has been marketed. It may be wise to read all of the material that you have read so far again before looking at the specification of the patent. Now, finally, you can read the text of the patent and consider the drawings. Again, you may choose to mark the text, and the drawings, with the same colours used to identify the ‘features’ in the claims, to highlight the actual disclosure of those ‘features’ in the specification and drawings of the patent. It will pay to read the patent a number of times, looking for language that is the same as that used in the claims (even if the language is used in connection with a different feature), and also looking for language that addresses features in the claims, but uses wording different to that found in the claims. Also, can you see any features or concepts that are in the claims, but are not to be found in the specification at all? Are there ‘Statements of Invention’, and do they correspond exactly with the claims? In FD4 there are often discrepancies, and it is important that they are observed, and then dealt with. The examiner has included the discrepancies for a reason! As you read the paper look for features in each document that are the same as any features in the different embodiments that are ‘on the table’. Something that is the same in the infringement and in the prior art must be dealt with consistently when considering novelty and infringement. A point of identity between the infringement and the prior art may be an indication that a ‘Gillette’ defence should be considered. The logic of this defence is that if the claim is broad enough to catch the alleged infringement, then it is broad enough to be invalid over the prior art, 20
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3. How do I begin with a FD4 paper? but if the claim is narrow enough to be valid over the prior art, it is too narrow to catch the alleged infringement. It is worth repeating that in FD4 if ever you come across something that is an ‘alternative’ or ‘modified’ embodiment, look at it very closely indeed, regardless of whether it is in the prior art, or in the infringement. Quite frequently, in FD4, such alternative embodiments are very relevant. Conclusions that have been made in connection with the main embodiment may have to be totally reversed. Also remember to be very wary of a second independent claim. Such a claim may look superficially as if it has the same restrictions as the first independent claim, but in the FD4 examination this is rarely the situation. Clearly, you must, while reading the paper, concentrate on the technical features of the infringement, the prior art, the embodiments described in the patent, and those defined in the claims. However, you must also bear in mind that there will be a ‘commercial situation’ which might involve many factors, such as the relative sizes of the contesting parties, prior use, contributory infringement, compulsory licences, and so on. It is easy to think that once you have decided that the patent is valid or invalid, and that it is infringed or not infringed, then the job is done. There is more to FD4 than just infringement and validity. You have to provide sensible advice, in the light of your conclusions, with that advice being appropriate to the ‘commercial situation’. By now you should have a good idea as to which words or phrases in the claims will prove to be less than totally clear when compared with the relevant features of the ‘infringement’ and the prior art, and should also know where ‘evidence’ can be found as to what these words or phrases might or might not mean. At this stage you may find it valuable, for your own purposes, for you to set out your strategy for answering the paper by producing a simplified ‘feature comparison chart’ which lists the primary features of the claim (e.g. widget, elbow, connecting end), and then indicates, for example with use of ticks, crosses and question marks, whether any feature of each claim of the patent is clearly present or clearly absent from the ‘infringement’ and each item of prior art. Such a chart can show quite clearly the passages of the claim where some doubt exists, and it is these passages that will need to be selected for detailed consideration. Be careful not to make this too elaborate else you may waste precious time. Not all candidates find this approach useful, but for some it gives a direction to their answer at a relatively early stage in the examination. In preparing the chart it can be of value to identify and think about the differences between the described embodiment(s) of the patent, and the described examples of the infringement and prior art. If this analysis can be done without using the actual words in the claim, it may help clarify your thoughts on the matter. This can help you keep in your head all of the “interlocking puzzle” that is a typical FD4 paper. The examiners have made it clear in their ‘Comments’, which are published each year after the papers have been marked, that they do not award marks for simple charts. If you are answering the paper using a table, this would be in relation to the infringement and novelty sections and candidates must remember to cite the page and line references for any features that they find that match the claim element being analysed and also candidates must remember, for features that do not exactly match the claim element, to explain why the features found in the infringing article/prior art document fall within your construction of the relevant claim element. Infringement and Validity • 2018
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4. How do I begin to tackle interpretation?
EXERCISE 1 – notes For a set of claims that gave us an understanding of the invention on a quick reading, there really are quite a lot of ‘problems’. Here are some thoughts that might have passed your mind. Claim 1. What is a sequestering tile? The word may seem familiar to those who have studied chemistry, where sequestration is the removal of ions from a solution, but what could the word mean in the claim? It is ‘for’ a solar energy collector. Does that include a tile intended for a very different purpose, such a tile for an underfloor heating system, which might have the necessary features and properties? Does the ‘having a metal carbide collector surface’ apply to the tile itself, or to the solar collector in which the tile is to be used? The tile has a ‘water inlet and outlet’. Could that be just one pipe, through which the water goes in and out, or must it be two separate things, an identifiable inlet and an identifiable outlet? How many passages make a plurality? How small is a small diameter? The water flow passages extend through the tile…we might think they are in the plane of the tile, but could they go another way? Could these passages go from the top surface of the tile, through to the bottom surface of the tile, to prevent rainwater accumulating on the tile? Claim 2. How can the inlet and outlet of a tile engage each other? Or else what is it that the inlet and outlet engage? On a quick reading the impression might be obtained that the claim says that the outlet of one tile sealingly engages the inlet of the next tile… but there is only one tile in the claim. Claim 3. This is dependent on claim 1 where there is a plurality of parallel passages, but now we have a single passage. How could that work? What does ‘sinuous’ mean? Is there a repercussive effect on claim 1? Could the word ‘passages’ in claim1 be broad enough to mean ‘sections of a single passage’?
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4. How do I begin to tackle interpretation? Claim 4. The claim refers to ‘the channel’. What channel? There has been no reference to a channel before. The inner coating of plastic seems reasonable. It has metal particles embedded in it. But what is the ‘it’? One might think it is the plastic, but could it be the tile? The grammar is very ambiguous. If the final words of the claim had been… and it has a metal edge to engage the metal edge of an identical adjacent tile… you would have taken the last phrase as relating to the tile as a whole. Claim 5. What could be more straightforward? This is claim depending on a single preceding claim, which had introduced the concept of metal particles, with the claim specifying the metal as zinc. But look again at claim 1 which refers to a metal carbide. Maybe the ‘metal’ of claim 5 is a reference to the metal of the metal carbide. Claim 6. This claim is dependent on any one of the preceding claims, but the concept of the particles was only introduced in claim 4. The range is interesting. It goes from 0.5 mm to about 1 mm. So one end of the range is ‘made fuzzy’ or loosely defined by virtue of the word ‘about’ while the other end is precise. What can we make of that? Should the other end be equally ‘fuzzy’, or should it be precise as different language has been used? We will probably have to look at the examples in the patent for an answer to that one. Otherwise we will just have to jump one way or the other, and try hard to justify why the skilled person would reach that understanding. Also bear in mind that the courts may well take into account the technical possibility of accurate measurement. How do you measure diameter when there are a number of particles all of which can have slightly different sizes? Are the particles necessarily spherical? What is the diameter of a non-spherical particle? There are lots of considerations that may have to be taken into account. And we must do all of that in about 50 words! And even at this stage you can almost guess that somewhere in the infringement or the prior art there will be zinc particles having a diameter of 0.45 mm. So, a set of claims which, at a quick reading, seem to be generally ‘all-right’ can be seen to be riddled with problems and points that need to be construed that we can identify before we see the specification at all! That is often the case of claims in the FD4 examination. It will be necessary for you to develop an appropriate style of reading, mentally questioning every word and phrase, if you are to see all of the points that have been incorporated in the claims in the FD4 examination paper.
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5. Now I have done ‘interpretation’, what comes next? If you looked first at just the language of the claims you may have seen the ambiguity in the opening words of claim 1 – is the bowsaw or the blade made of the steel strip? Even before you read the description you may well appreciate the answer to this, but in the FD4 examination you should put a few words explaining the position, and giving a reason. The reason might be just that the described blade is a steel strip… but there is a problem with this as the blade is actually just described as ‘strip 1’ at the very beginning of the specific description, with no mention of ‘steel’. So the description does not actually describe the invention. So the ‘reason’ has to be expanded to refer to the ‘steel strip’ mentioned with reference to Figure 1, and the fact that the skilled person would expect the ‘strip’ of Figure 2 to be of the same material as there is no indication to the contrary. You might write the word ‘Amend’ on your answer to remind you to look again at this point when you deal with the amendment section. The teeth of the infringement are in exactly the same place as the teeth of the preferred embodiment, and the arrangement of cutting edges identified by reference numerals 3 in Figure 1 is the same as the arrangement shown by the reference numerals 36 in Figure 4, and so the parts of the claim relating to these features are non-contentious. However, a meaning must be given, with reasons, although it should be very brief. The final phrase ‘arranged in groups of four’ also does not seem contentious. The offset of the teeth mentioned in Figure 2 may be a problem. The language ‘offset alternately’ is only used with reference to the embodiment of Figure 1. The description of the preferred embodiment only directs the reader to Figure 2. This is a dilemma, but somehow you must make a ‘sensible’ construction. You could very reasonably explain that the skilled reader would think the words of the claim have the same meaning that they do in the description of Figure 1, with a consequence that the described embodiment is not inside the claim. Alternatively you could explain that the skilled person would at least expect the described embodiment to be within the claim, and thus would understand the words to be restricted to the arrangement shown, where all the teeth of the first group are offset the left, and all the teeth of the second group are offset to the right, and so on. It is also possible to reach a conclusion that the words are broad enough to cover both the arrangement of Figure 1, with strict alternation of the offset of the individual teeth, and also the arrangement of Figure 2, where the teeth of each group have the same offset, successive groups being offset in different directions. The general rule is that the words should be understood to cover the preferred embodiments as described, while possibly additionaly covering other possibilities, unless the language positively excludes this (but recall University of Queensland where ‘before’ was understood to mean ‘after’ so that the claim covered the described embodiment). Can you appreciate that explaining these ‘delicate’ differences of meaning can pose quite a challenge, as you have to find words which explain the situation, without confusing the reader? Of course, a patent attorney must be able to use words in an accurate way, and FD4 is testing this skill. Before we leave claim 2, could this claim have a repercussive effect on claim 1? We may come back to this point. 68
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5. Now I have done ‘interpretation’, what comes next? Claim 3 seems non-contentious as the ends of the blade of Figure 2 look just like the ends of the blade of Figure 4. In claim 4 the ‘clear spaces’ may be a problem. However, in the patent there is no description at all of the spaces 4 in the blade of Figure 2. They are identified as ‘gaps 4’, but then only in an indirect way in a description of the operation of the saw. What must a space have (or not have) to be clear? Will any space that performs the function of the the gap 4 be a ‘clear space’? These are questions you will have to answer to determine whether the gaps 38 with raker teeth 37 are ‘clear spaces’. You might suggest that they are very definite spaces which are clearly visible, and so they are ‘clear’. You might equally suggest that they are ‘obstructed’ by the raker teeth, and so are not ‘clear’. The conclusion you reach will have an effect on whether the claim is infringed or not. So, the points that really need discussion relate to where the infringement differs from the described embodiment of the invention, and where the claims are poorly drafted. Are you surprised at how much there is to find and discuss in a short patent and a short set of claims?
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7. And what about inventive step?
EXERCISE 5 – notes Who is the skilled person? What is the common general knowledge of the skilled person? Surely the title and pre-amble help with defining the skilled person. The title is ‘saw blade’ and the preamble begins with a reference to ‘saw blade’, followed by ‘more particularly… bowsaw blade’. There seems to be a strong argument that the skilled person knows about saw blades in general. Is the blade of Figure 1 common general knowledge? It is described as if it is the only type of bowsaw blade that has been used before. Is the bandsaw blade common general knowledge? This would seem most unlikely if it was only sold in one location during a three-week period. However, maybe the investigations only revealed one use, and in truth the blade was very popular and in widespread use. Maybe we should ask the client, who may have knowledge of the saw blade market, if there is any further information. Is the circular saw common general knowledge? It is in a textbook, but it relates to a very special type of blade, used for cutting marble rather than wood. So there is quite a lot to deal with in deciding which documents are available for use in an ‘inventive step’ attack, and there are a lot of arguments that lead to opposite conclusions. What is the inventive concept of the claim? The answer to this question depends on your construction. It might be that the teeth are divided into groups of four which are separated by gaps. It might be that the teeth are in groups of four, with the teeth of each groupbeing offset in the same direction, successive groups having different directions of offset. It might be simplest just to refer to the construction of the claim. The closest prior art would seem to be the admitted blade of Figure 1. If your construction of claim 1 permitted, then the bandsaw would also be close prior art. You have already considered the differences between these items and the claims. You may have concluded that some claims are anticipated, but some claims may remain unanticipated by this prior art. Can we now find ‘the difference’ in any of the common general knowledge documents available to us? And if we can find ‘the difference’ is there anything that would lead us at least to try to use that ‘difference’, or is there anything that would make us think that trying the ‘difference’ would just be a waste of time? The answers to these questions depend very much on your initial interpretation of the claims, and your analysis of the prior art, and your thinking about the circular saw blade. While it does have a tooth pattern which is identical to that of the preferred embodiment, it is a circular saw, and so only has the leading edge of each tooth sharpened, and it is intended for use in cutting marble, whereas you could conclude ( from the closing words of the second paragraph of the patent) that bowsaws are only used for cutting wood. 88
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7. And what about inventive step? Did you see that the circular saw could have been ‘formed of a steel strip’? Could the sheet used to make the circular blades, which is one blade wide and ten blades long be a strip? If it is a strip, is the blade ‘formed of a steel strip’? You can see there is some room to argue here, but is it relevant? Even if the circular blade is formed of a steel strip, is the circular saw blade a blade ‘for a bowsaw’? Of course, in a real FD4 examination you would have the circular saw to consider when doing novelty, and the point of ‘formed of a steel strip’ would have to be discussed at that time. So, there are various possible ‘obviousness’ attacks. The blade of Fig 1 can be the prior art, and that can be combined with the tooth layout of the circular saw. The bandsaw can be combined with the circular saw (depending on your construction of ‘for’ in claim 1). The bandsaw can be combined with Figure 1.
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8. Surely that’s the end of validity? surprising that many of the specifications in FD4 do not have a statement of invention, and so may not describe the invention in the same words as used in the claim. Sometimes there is a statement of invention which is very slightly different from the main claim. It is very easy for the eye to slide over small points like this, but often in the real world a small point can make all the difference. Often, on looking at specific words in the claim it is impossible to find the same words anywhere in the specification. A range specified in the claim may not appear as such in the specification. There may be one or two examples within the range, or even at the ends of the range, but no real disclosure of the range itself. There may be a reference in the claim to a range of materials, such as ‘metals’, while the specification may only disclose specific metals such as iron, lead and copper. As the subject-matter of the FD4 patent is usually straightforward, the examiner often uses a very deficient description, and candidates often do not observe that things that should have been described have not been described because, once you have the general idea, the rest is obvious. The examiner plays on this by claiming features that have not been described at all. For example, the claim may recite the steps of replacing a blade on a knife, i.e. taking out the old blade and putting in a new one. The description may only show how the knife is taken apart and the old blade taken out. There is no description of putting in a new blade and re-building the knife. It is as plain as a pikestaff as to how this is done, but there is no description. So there may well not be an enabling description of sufficient detail for the skilled person to put the complete invention into effect, although there may be a counter argument that the missing information is so trivial that the skilled person would immediately fully understand the situation. All of the oddities of this type that you may observe have probably been planted by the examiner to enable you to spot them and raise questions on the internal validity of the patent. A bit like an Easter egg-hunt. The clues have been hidden, but in such a way that they can be found relatively easily if you just look. Look out for anything that the letter from the client says is ‘difficult’. For example, the client may say ‘it was difficult to assess the average molecular weight…’ and there may be no real teaching in the specification as to how this is to be done, even though this parameter appeared in the claims. There would be a mark for questioning the sufficiency of the specification on this point. Also look for anything that is “essential” in the description but not in the claims, or anything that looks like the skilled person would need to conduct experimentation to figure out what to use to implement the invention across the whole scope of protection that is claimed. There would be a few marks for questioning the sufficiency of the specification on any of these points. Marks can be easily gained for observing these shortcomings in the specification, and then a few marks more may be available in the amendment section for at least beginning to improve the situation by incorporating into the specification statements of invention corresponding to the wording of the claims. Then the specification does at least in itself disclose the underlying concepts as defined in the claims, as well as giving the originally present specific examples. Here, again, beginning to address the amendment section before you actually get to it may pay dividends, as you can provide the solution to the problem while the problem itself is fresh in your mind. The remaining two specific grounds of revocation relate one way or another to amendments. Section 72(d) relates to the situation where the matter disclosed in the specification of the patent 92
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8. Surely that’s the end of validity? extends beyond that in the application for the patent, as filed. Note that any information in the whole application as originally filed, including the claims, can be present in the specification of the granted patent without any problems arising, so material can be copied from the claims into the description. Section 72(e) relates to the situation where the protection conferred by the patent has been extended by an amendment that should not have been allowed. Such an amendment is usually considered to be a post-grant amendment. If the FD4 examiner is to set up a situation where either of the last two grounds is relevant, then copies of the documents before and after amendment will have to be available, or the precise nature of the amendment would have to be spelled out in some other way, making the papers of the question more voluminous, and so it would seem most unlikely that either of these two grounds will appear in FD4. So, after looking for novelty and inventive step, you should at least consider if there is any possibility of the invention being incapable of industrial application or being excluded subjectmatter, and then really look for any areas where the description may be thought to be insufficient to enable to skilled person to put the invention, as defined in any of the claims, into practice. If you find there to be any reason why there is internal invalidity, then you should explain the whole position quite clearly in your answer. This section does not lend itself to the threecolumn approach as used in Interpretation, infringement and novelty, and so you will have to remember to include your reasons for any conclusion that you reach. If you cannot find any grounds for internal invalidity, it is probably worth just saying that, to show that you have considered it. You might say that the description and drawings mention all of the features in the claim, and so the disclosure is enabling. Even if the examiners disagree with you, they will have to give you some credit for addressing the issue and for giving a reason. If you say nothing at all about sufficiency and internal validity the examiners have no option – they can give you no marks. One final thing to look out for is that the patent may be a recently granted European Patent, and so you may have to consider the grounds for opposition.
EXERCISE 6 Consider the bowsaw blade patent, and write notes on internal validity. Then turn the page.
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9. Amendment If the claims were difficult to construe it might be possible to review the language of the claims by 'correction of error' and this may help ensure that the claims are then construed in the way that the patentee would prefer. Were there any ‘linguistic tricks’ that need to be addressed to solve problems of false antecedents, or ambiguities, or possible ambiguities? Are there incorrect claim dependencies that need sorting out? It may be that there is a claim that is invalid which cannot be made valid. Such a claim may well usefully just be deleted (especially if the subject-matter of the claim is not infringed) so that the patent is valid and enforceable, rather than being only a partially valid patent. Are there any obvious clerical errors in the specification, or the drawings? Often the examiner puts a slight error in the drawings, such as incorrect shading, or an additional line, and even minor matters like this can be amended to improve the position of the patentee (provided that the amendment is really a ‘correction’, and it is apparent that nothing else could really have been intended). It can help greatly if you propose the actual amendment that should be made. It is easy to say that the claim should be amended to make it novel and non-obvious over the prior art, but the examiner will appreciate seeing the actual wording that you would use, and possibly some explanation as to why this wording has been selected, showing how the wording makes the claim valid, or more likely to be valid, and showing how the amended claim is still infringed. While you can always consider simply combining the main claim with a sub-claim, or even combining the main claim with one or more features selected from the sub-claims, it is often more rewarding (specially in FD4) to look for a feature or features that can be found in the description of the preferred embodiment(s) and also in the infringement. It is often features of this type that can form the basis of a very satisfactory amendment. It is always possible when amending a granted patent to end up with two independent claims of differing scope. Post grant there is no ground for objection on the basis of non-unity of invention. Provided each of the independent claims is based on and narrower than the original main claim, and is patentably distinguished from the prior art, then the amendment should be allowable. If you cannot see any amendment that even begins to improve the position of the patentee, you should show the examiner that you have considered some options before deciding that there is no satisfactory amendment available. You might say that there is no available helpful amendment because… the only claim that is novel and inventive is claim 5, and if that is incorporated into claim 1 the claim may be valid, but would not be infringed…
A passage such as this does show the examiner that you tried to be creative on behalf of the patentee rather than just saying to yourself ‘that looks difficult… I cannot think of anything to write about that’. In the real world, if you had an infringement that took many of the features described in the patent, but not necessarily defined in the claims, you might be tempted to add a final independent claim that included everything common to the invention as described, and the infringement. Such a claim may well be very narrow, but with a lot of features the validity of the claim could hardly be called into question, and with all the features being present in the infringement, the infringer would be unlikely to escape. Now would an amendment of that type ‘improve the patentee’s position’? 96
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9. Amendment Do not fall into the trap of suggesting that if the main claim of a patent were to be amended by deleting one or more words that do not seem to be ‘essential’ then there would be infringement. Any amendment that makes a non-infringed claim into an infringed claim must be ‘claim broadening’, which is not allowed after the patent has been granted. On the other hand, if the question relates to the possible future infringement of a pending application that is proceeding towards grant, then a very different situation may obtain. Of course, if you say nothing about amendment, the examiner can give you no marks for amendment, and as we have seen, every year there is at least one mark for this topic.
EXERCISE 7 Can you think of any amendments that might be made to the patent? Note them down before you turn the page.
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10. Is there anything else?
EXERCISE 8 – notes Several ‘clues’ might have been seen and assessed before the client is given any advice. The client seems to be short of cash, and has only just dipped a toe in the water, and so may wish to just abandon his business plan. If so, a letter explaining this to the patentee will suffice, especially if it is possible to point out why the patent is invalid or not infringed. If the client wishes to continue with his business, what are the options? To show that the patent is invalid and/or not infringed it would be necessary to apply to the Court for a certificate of noninfringement. Costs? If the case is defended, the costs may well be measured in hundreds thousand pounds. One could apply for a declaration of non-infringement from the Intellectual Property Office, which would be less expensive, or apply for an Intellectual Property Office Opinion, at very much less cost, but that is not binding. Mediation might be a possibility, but only if the other side agrees to this procedure. Is the ‘threat’ of the letter ‘groundless’? Can the patentee really apply for punitive damages? But then again, how old is the patent? Does the fact that the client thinks that the blades of Figure 4 are superior to anything else on the market have any relevance? The client used to design blades, so must have an eye on what is on the market? Could it be that the blade of Figure 2 is not on the market? Have you realised yet that we are possibly in a compulsory licence scenario? The fact that the infringer is an ex-employee does not seem relevant in this question. The employee does not seem to be using any confidential information, although it would be wise to check the contract of employment to see if there are any restrictive terms. Although the ex-employee is not actually manufacturing, he is ‘offering to dispose of’ the product, and so is committing a potentially infringing act. It may well be that the Icelandic Company is also a direct infringer, as they are the ones who are ‘importing’, although the ex-employee and the Icelandic company may be joint tortfeasors.
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10. Is there anything else?
EXERCISE 9 You are approached by your client who manufactures bowsaw blades. He filed his own application and obtained the British patent four years ago. He explains that in recent weeks a new blade (as shown in Figure 4) has appeared on the market, which is being imported from China at a rock bottom price. He believes that his ex-marketing manager, who left his company a month ago, took a copy of his client list, and has been contacting them to supply them with the Chinese blades. This has totally destroyed your client’s turnover, as his only product is the blade of Figure 2. He is concerned that if the sales of the Chinese product continue he will have to close his business. What points should be covered in the advice to the client? Write some notes before you turn the page.
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11. How do I achieve all of this in the examination room? Next, you must at least consider internal validity. Spend a second or two carefully considering whether there is anything to be said under this heading. Usually it is possible to raise some criticism of the patent in this area – even if it is just to say that the description does not use some of the actual words found in the claims and so it can be suggested that ‘the invention’ is not disclosed as such in the specification. Are there ambiguities that make the teaching less than perfectly clear? If you address internal validity, and there is a mark or two on the marking schedule under this heading you may get one or both marks, but if you do not address this section you will get no marks. In 2014, there were marks for commenting that reference numbers had been used inaccurately in the text. You must address the question of possible amendment. Even if you just propose a claim that is narrower than the present one, but still infringed, you will get a proportion of the available marks. Finally, you must do a memorandum which summarises the situation and outlines one or two reasonable courses of action (that is, reasonable in the light of your conclusions as to the position that the client finds himself in). You must keep an eye on your watch during the examination. If you seem to be taking too long on one section it may be appropriate to move on to the next section. If time permits, you can always go back. It can be seen that there just is not the time available to discuss any point at length. The comments that are given must be brief and to the point, but must show the reasoning. The examiners stress this every year in their comments. They need the reasons, not just the conclusion. So, time is short. It may pay to be generous with the time given to interpretation, since if this section is done thoroughly, the infringement and novelty sections may well prove to be relatively easy to complete. However, there is no time to waffle, and no time to change your mind. Once you have made a decision on a specific point you must stick with it (unless you realise the situation very early in your answer) and continue with your answer in a logical manner, even if you become increasingly convinced that you have made a ‘wrong’ interpretation. This does not mean to say that you cannot, when you reach a point in infringement or novelty where you understand that your interpretation is not clear enough, or is still ambiguous, go back and expand or clarify your interpretation. If you do this you must ensure that the clarified interpretation is used consistently throughout your answer. Remember that the examiner tries to set points ‘in balance’, and even if you have gone for an interpretation that is (in the mind of the examiners) the ‘weaker’ of two interpretations, you will still get a good mark if you have given your reasons. You can cover any doubts on the final conclusion that you have reached in your letter to the client. You may think it unfair that FD4 is such a race against time, but that has always been the nature of the examination. It is an examination that can be passed. Every year some candidates pass at their first attempt. But it is an examination of your skills as a patent attorney, and you will need to practise those skills before you attempt the examination. Sitting the examination before you are ready – and only the most able of candidates are ready after two years in the profession – will waste your time, and the examiner’s time, and will not improve your confidence levels. Sitting the examination before you have attempted a good number of past papers, with at least three attempts being under simulated examination conditions, is also most likely to lead to a fail. 110
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11. How do I achieve all of this in the examination room? The examiners try, every year, to pass as many candidates as possible, but when some candidates presenting themselves for the examination who can only achieve 20% of the marks, or less, it not surprising that the overall pas rate is low. But, now you know what is required of you, if you can find time for some serious practice you have every prospect of being a successful candidate. Remember that it is in the interest of your employer that you qualify as quickly as practicable. As a qualified attorney you will be of more value to your employer than as a trainee. Ask your employer for time to practise, and, if possible, a room other than your office, where you will not be troubled by telephone calls or e-mails. If you were out of the office seeing a client any urgent situations would be dealt with by others within your organisation, so the office can continue to function even if you are locked away in the library or a conference room for five hours on a Thursday morning. If you, as a candidate for FD4 still need a single word of advice as to how the examination is to be passed… that word is PRACTICE.
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12. So much for the theory… 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. 186
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12. So much for the theory… 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.
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