Pre-Exam 2024 - our answers to the claims analysis questions (part 3 & part 4)
This year's claims analysis part 3 was about electronic cigarettes while part 4 was about a Product X for use in treating infectious diseases.
Our answers to both claims part are given below. We have numbered the questions and statements for easy reference in the discussion.
Candidates could access the exam in all languages, English, French and German: the language of the question could be selected. All statements were given in all three languages.
In the legal as well as the claims analysis parts, the order of the four statements of each of the questions was randomized, i.e., it was different for different candidates.
In view of the randomized order, we provide the questions and statement together with our answers. If you check your answers with ours, note that the order of the questions and of the four statements from a single question may be different!!!
Please feel invited to comment!
Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 15-03-2024 20:23"), whereas using your real name or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in or make an account - it is OK to just put your (nick) name at the end of your post.
You may also want to check the other blogs: first impressions and legal part.
EDIT 16 March 2024: Corrected our answer to statement 16.2 based on comments below.
Nico & Roel
Part 3
Question 11
Assume that claims I.1 and I.2 are the only claims
filed with the client's patent application.
I.1 An electronic cigarette (100) comprising a liquid
container (130), an atomiser (120) in connection with the liquid container
(130), a communication component (170) and a controller (140) for activating or
deactivating vapour production of the electronic cigarette (100).
I.2 The electronic cigarette of claim I.1, wherein a
time schedule for the vapour production is received from a mobile phone (190)
through the communication component (170).
TRUE While [006] does not
describe the controller also “deactivating” the vapour production, the “or” in
the claim means that the claim scope covers also a potential reading of [006]
in which the controller can only activate (and not deactivate) the vapour
production. In any case, it seems inevitable that the controller can also
deactivate the vapour production after having activated it.
11.2 The electronic cigarette
of the third embodiment of the application is covered by the scope of claim
I.1.
TRUE Although [009] does not
describe the various ‘base’ features of claim I.1 (e.g., liquid container,
atomizer, …), they are shown in Fig. 3.
11.3 The electronic cigarette
of the second embodiment of the application is covered by the scope of claim
I.2.
FALSE According to [008], the
configuration file 180 only includes information received from the mobile phone
190 to verify one or more fingerprints to grant or deny user access and cannot
contain any scheduling information, and thus no time schedule.
11.4 The electronic cigarette
of the fourth embodiment of the application is covered by the scope of claim
I.2.
FALSE In the fourth embodiment,
the communication component 170 appears to have the functionality as described
in the second embodiment (since the third embodiment does not describe any
functionality of this component), and thereby the answer is the same as for
11.3.
Question 12
Assume that claims I.1 and I.2 are the only claims filed with the
client's patent application.
I.1 An electronic cigarette (100) comprising a liquid container (130),
an atomiser (120) in connection with the liquid container (130), a
communication component (170) and a controller (140) for activating or
deactivating vapour production of the electronic cigarette (100).
I.2 The electronic cigarette of claim I.1, wherein a time schedule for
the vapour production is received from a mobile phone (190) through the
communication component (170).
TRUE See the end of [001] +
[003] (although the formulation of "providing a liquid solution" is a bit strange in the statement since the electronic cigarette vapourizes the liquid solution and does not provide it).
12.2 The electronic cigarette
in D1 reads information that can prevent the unauthorised use of disposable
cartridges.
TRUE By validating the
identifier 23, the controller can prevent activation of vapour production for
unauthorized liquid containers, see [001] last sentence and [004].
12.3 The subject-matter of
claim I.2 is novel with respect to D1.
TRUE D1’s software application
only receives data and is not described to be able to send any data to the cigarette,
let alone send a time schedule, see [005].
12.4 The subject-matter of
claim I.1 is novel with respect to D1.
FALSE See
[002], with the activating/deactivating being described in [004].
Question 13
This questions relates to Document D2 (available via
the hyperlink above the statements).
FALSE D2 doesn’t mention health
risks but only ‘greater control’ and ‘personalization’ [001]. In addition, in
[003], it is said that the mobile app can display information about the
e-liquid after scanning its label, but it is not disclosed that this is a type
of information that allows health risks to be determined (e.g., it could simply
be a name of the liquid, its creator, etc.).
13.2 D2 discloses an electronic cigarette with a
communication component configured to read information from an RFID tag to
validate a liquid container.
FALSE D2 pertains to a mobile app.
The app uses the phone’s camera and not an RFID reader.
13.3 The range of nicotine values ranging from 0 mg/ml to
20 mg/ml disclosed in paragraph [013] of the application is novel over D2.
FALSE D2 describes in [004] a
range of 5-7 mg/ml, so two concrete examples, both of which fall within the
range of 0 mg/ml to 20 mg/ml and take away its novelty.
13.4 D2 discloses a liquid solution that comprises further
chemical substances in addition to flavouring.
TRUE D2
discloses at least nicotine, see [004], which appears not to be a flavouring
since both nicotine and flavouring are consistently mentioned in the client’s
application as well as D2 separately, e.g., D2 [002] “nicotine and flavouring”.
Note that one probably cannot base this answer on D2 [002]’s propylene glycol
nor vegetable glycerin since it is not defined in the paper that these are not
flavouring (i.e., it will require use of own technical knowledge).
Question 14
Consider the introduction of the following amendments
to the original claim set I.1-I.2 during the examination proceedings.
Deleted passages are marked as “strikethrough”,
added passages are underlined.
II.1I.1 An electronic cigarette (100)
comprising a liquid container (130), an atomiser (120) in connection with the
liquid container (130) and a mouthpiece (110) through which the user
draws vapour produced by the atomiser (120), a battery (150), a push‑button
(160), a communication component (170) and a controller (140) for activating
or deactivating vapour production of the electronic cigarette (100) being
connected to each of the battery (150), the atomiser (120), the push‑button
(160) and the communication component (170),
wherein, when the controller (140) receives a signal caused by the user
pressing the push-button, the controller activates vapour production by
supplying power from the battery (150) to the atomiser (120),
wherein the atomiser transforms, by heating, the liquid held in the liquid
container (130) into vapour to be inhaled by the user through the mouthpiece
(110).
I.2 The electronic cigarette of claim I.1, wherein a time
schedule for the vapour production is received from a mobile phone (190)
through the communication component (170).
II.2 The electronic cigarette of claim II.1, wherein a
fingerprint sensor (210) transmits identified key markers of the user's
fingerprints to a software application in a mobile phone.
II.3 The electronic cigarette of claim II.1, wherein a short-range
communication signal allows the activation of vapour production.
II.4 The electronic cigarette of claim II.1, wherein a pressure
sensor (310) replaces the push‑button (160) and the pressure sensor (310) sends
a signal to the controller (140) representing a pressure difference for
producing vapour.
14.1 Claim II.3 meets the requirements of Article 123(2)
EPC.
FALSE Short-range communication is
described in the first embodiment [007], and it indeed appears that via a
short-range communication signal, vapour production may be activated. However, in
[007], a specific embodiment is described, namely that the signal transmits a
time schedule contained in a configuration file. Claim II.3 omits these
features, and thereby most likely is an unallowable intermediate generalization
with respect to the first embodiment.
14.2 Claim II.4 meets the requirements of Article 123(2)
EPC.
FALSE While [009] does describe
the push-button being replaced by a pressure sensor, this phrasing in claim
II.4 cannot be used to ‘remove’ the limitation of “push-button” in claim II.1
since it is a dependent claim. In other words, claim II.4 would somehow still
be limited to both a pressure sensor and a push-button but in an
unclear/unspecific manner which is not supported by the application as filed.
Another line of argumentation could be that claim II.4 is thus not to be
interpreted as a dependent claim (since it does not contain the push-button of
claim II.1) and the resulting (very short, very broad) independent claim is not
supported by the application as filed. Yet another line of argumentation is
that “a pressure difference" is not disclosed in [009] , but only a
specific "pressure difference created by the user inhaling through the
mouthpiece 110". The claim wording covers any pressure difference between
any unspecified volumes and thus represents an unallowable intermediate
generalization.
14.3 Claim II.1 meets the
requirements of Article 123(2) EPC.
TRUE This appears to be a verbatim
copy of the description of the first embodiment in [006]
14.4 Claim II.2 meets the
requirements of Article 123(2) EPC.
FALSE Claim II.2 adds the
fingerprint sensor of the second embodiment while using the push-button of the
first embodiment. This combines aspects of the first and second embodiment
without this combination being disclosed or suggested by the application as
filed.
Question 15
Considering the disclosure of documents D1 and D2 and
the claims below, for each of the statements, indicate whether the statement is
true or false:
Assume that claims III.1-3 were originally filed:
III.1 An electronic cigarette (100) comprising a
liquid container (130) comprising a secured electronic identification tag
(510), a communication component (170) for reading the secured electronic
identification tag (510) and a controller (140) configured to allow or prevent
activation of vapour production of the electronic cigarette (100) on the basis
of authentication of the secured electronic identification tag (510) to
validate the liquid container (130).
III.2 An electronic cigarette (100) comprising a liquid container (130)
comprising a secured electronic identification tag (510), a short-range
communication component (170) for reading the secured electronic identification
tag (510) and a controller (140) configured to allow or prevent activation of
vapour production of the electronic cigarette (100) on the basis of
authentication of the secured electronic identification tag (510), wherein
the liquid container (130) contains smoking liquid comprising flavouring and a
therapeutic drug.
III.3 A method of using an electronic cigarette (100) comprising a
liquid container (130) comprising a secured electronic identification tag
(510), a short-range communication component (170) for reading the secured
electronic identification tag (510) and a controller (140) configured to allow
or prevent activation of vapour production of the electronic cigarette (100),
wherein the controller (140) supplies electric power for the vapour production
upon detecting a pressure difference when inhaling from a mouthpiece in the
electronic cigarette (100).
TRUE Claim III.3 is inventive for at least the reason that neither D1 nor D2 discloses an
electronic cigarette which uses a pressure sensor to activate the vapour
production (this being part of the claimed subject matter since the method
claim uses this specific electronic cigarette).
15.2 The subject-matter of
claim III.2 is excluded from patentability.
FALSE This statement alludes to
the exception to patentability defined in Art. 53 but claim III.2 defines a
product to which this provision does not apply, see Art. 53(c) last sentence.
15.3 The subject-matter of
claim III.2 is novel over D1.
TRUE For at least the reason
that the liquid container of D1 is not disclosed to comprise a therapeutic
drug.
15.4 The subject-matter of
claim III.1 is novel over D1.
FALSE See D1 [004], which
discloses at least the “prevent” alternative in claim III.1 (in: a
controller (140) configured to allow or prevent activation of vapour
production).
Part 4
Claim set I filed together with the
description
I.1 Product X for use in a treatment as an antiviral, an antibiotic, an
antifungal or an antiparasitic.
I.2 Product X for use in a treatment by inhibiting receptor Y.
I.3 Product X according to claim I.1, wherein the treatment is antiviral, more
particularly a treatment against rhinovirus, influenza virus or coronavirus.
I.4 Product X according to claim I.1, wherein Product X is administered for at
least 10 days in a dosage of 5-50 mg/kg bodyweight per day.
I.5 Product X, wherein Product X is administered for at least 10 days in a
dosage of 5-50 mg/kg bodyweight per day.
I.6 Product X according to claim I.5, wherein Product X is administered for at
least 10 days in a dosage of 25 mg/kg bodyweight per day.
I.7 Product X according to claim I.1, wherein Product X is administered as
nasal spray.
I.8 Product X according to claim I.1, wherein the treatment is an antibiotic
and wherein Product X is administered as nasal spray.
I.9. A method for therapeutic treatment of a living human, wherein the
treatment comprises administration of Product X.
I.10 The method according to claim I.9, wherein the treatment comprises
intravenous administration.
Question 16
16.1 The usage of Product X as
an antifungal is sufficiently disclosed by the application as filed.
FALSE See [008] “We are about to
start a research programme wherein we will investigate whether there is an
effect of Product X when used as an antifungal or antiparasitic. Such programme
will require immense trial-and-error tests”.
16.2 The EPO will issue a
communication according to Rule 63 EPC because the claim set comprises a
plurality of independent claims of the same category.
** CORRECTED (16 March) ** FALSE The communication should be a R.62a communication for a R.43(2) situation of multiple independent claims.
Update 9 April 2024: the Examiner's report (published today) provides "FRUE", which seems to be an inventive merger of FALSE and TRUE - it is however clear from the reasoning provided that it is meant to be understood as FALSE:
16.4 The EPO will issue a communication according to Rule 63 EPC because the claim set comprises a plurality of independent claims of the same category.
FRUE – The EPO would issue a Rule 62a EPC communication in such case.
Update 10 April 2024: the Examiner's report has been corrected and now provides FALSE for 16.4.
16.3 The subject-matter of claim I.1 is sufficiently disclosed by the application as filed.
FALSE The application as filed
includes "use of a treatment as an antifungal", but [008]: "We
are about to start a research programme wherein we will investigate whether
there is an effect of Product X when used as an antifungal or antiparasitic.
Such programme will require immense trial-and-error tests".
16.4 The usage of Product X as
an antibiotic is sufficiently disclosed by the application as filed.
TRUE [009], [010] and table 1
describe tests with Streptococcus and describes that further experiments were
carried out which demonstrate that the antibiotic effect is reached for any
kind of bacteria.
Question 17
17.1 There is a basis in the application as filed, so that
claim I.5 can be amended compliant to Article 123(2) EPC in a way that the
resulting subject-matter also covers administering Product X for seven
days.
TRUE See [012] "at least
three days, preferably at least ten" in combination with 5-50 mg/kg, one can
thus amend to "at least three days", which covers at least
seven. Note that we cannot amend to "at least seven", as that
is not directly and unambiguously disclosed.
17.2 The subject-matter of claim I.4 is unclear because the
essential feature of administration via nasal spray is missing.
FALSE The application also
describes other ways of administration, in particular via tablets, so the
administration via nasal spray is not essential.
17.3 Claim I.9 is excluded from patentability because it
relates to a method which encompasses at least one therapeutic step.
TRUE Art.53(c), GL G-II, 4.2 & 4.2.1.2
17.4 Claim I.3 is limited to the treatment of rhinoviruses,
influenza viruses and coronaviruses by Product X.
FALSE “more particularly” is seen as introducing
an optional feature, GL F IV 4.9
Question 18
18.1 The subject-matter of
claim I.5 is not novel over D1.
TRUE D1 describes administrating
Product X for 6 months (thus for “at least 10 days”) in a dosage of 50 mg/kg
(which overlaps with the endpoint of the range “5-50 mg/kg”).
18.2 The subject-matter of
claim I.1 is not novel over D1.
FALSE This is a second medical use
claim which is novel over D1 since D1 only describes the use of Product X of
treating cardiac diseases.
18.3 The subject-matter of
claim I.7 is not novel over D2.
TRUE D2 anticipates
claim I.7 by disclosing Product X. Namely, since dependent claim I.7 is not defined
according to GL (2023) G-VI, 7.1.5 (= GL (2024) G-VI, 7.1.5), it
is not considered a second medical use claim according to Art. 54(5), but is
considered a claim to Product X per se. So, the claim lacks novelty over D2
disclosing Product X.
GL (2023) G-VI, 7.1.5 (emphasis added):
" In the following example, the dependent claim is not correctly
formulated according to Art. 54(5).
Claim 1: Composition comprising X for use in the treatment of Y.
Claim 2: Composition according to claim 1, comprising 5 mg X.
The category of claim 2 is unclear and the dependency is doubtful. The
claim appears to depend on a claim directed to a product per se.
The claim would also lack novelty over prior art disclosing a
composition comprising 5 mg X, or a first medical application thereof.
The claim must be reformulated as indicated above by inserting "for
use" between "Composition" and "according" [i.e.,
to " Composition for use according to claim 1, comprising 5 mg X
" . This amendment may be proposed by the examining division in the Rule
71(3) communication without the need to consult the applicant beforehand (see C
V, 1.1, point (f))."
A correctly formulated claim I.7 would read: "Product X for use
according to claim I.1, wherein Product X is administered as nasal spray us."
For this claim, the statement would be FALSE, since D2 does not disclose
any of the therapeutic uses mentioned in claim I.1.
Update 9 April 2024: the Examiner's report (published today) shows that this statement was neutralized. It provides:
18.3 The subject-matter of claim I.7 is not novel over D2.
TRUE and FALSE are accepted as correct answers – Category of claim I.7 might be interpreted as being unclear because dependent claims I.7 does not repeat “product X for use …”, see GL G-VI, 7.1.5. If claim I.7 is interpreted as being directed to the product per se, the term “is administered as nasal spray” could be interpreted as not limiting the product X which is disclosed by D2. If claim I.7 is interpreted as a second medical use claim, the steps of administration as nasal spray would be limiting and, thus, novel over D2. Since the answer depends on the above interpretation, points are awarded for both answers.
18.4 The subject-matter of
claim I.1 is not novel over D3.
TRUE D3 describes Product X for use in a treatment for Lyme
disease, which is a bacterial infection, and thereby gives an example of a use
in a treatment as an antibiotic.
Question 19
19.1 For the following
statement, assume that D1 is regarded as the closest prior art to the
subject-matter of claim I.3: A valid argument that the subject-matter of claim
I.3 involves an inventive step over D1 is that there is no hint in any one of
documents D1, D2 and D3 that Product X has an antiviral effect.
The statement cannot be answered as the claim is not new:
Dependent claims I.3 is not defined according to GL (2023) G-VI, 7.1.5 (=GL (2024) G-VI, 6.1.5), and is thus not considered a second medical use claim according to Art. 54(5), but is considered a claim to Product X per se. So, the claim lacks novelty over D1 disclosing Product X.
A correctly formulated claim I.3 would read:
"Product X for use according to claim I.1, wherein the
treatment is antiviral, more particularly a treatment against rhinovirus,
influenza virus or coronavirus."
For this claim, the statement would be TRUE.
Update 9 April 2024: the Examiner's report (published today) shows that this statement was neutralized. The statement is numbered 19.2 in the Examiner's Report, which provides:
19.2 For the following statement, assume that D1 is regarded as the closest prior art to the subject-matter of claim I.3: A valid argument that the subject-matter of claim I.3 involves an inventive step over D1 is that there is no hint in any one of documents D1, D2 and D3 that Product X has an antiviral effect.
TRUE and FALSE are accepted as correct answers – Category of claim I.3 might be interpreted as being unclear because dependent claims I.3 does not repeat “product X for use …”, see GL G-VI, 7.1.5. If claim I.3, despite the reference to “the treatment” is interpreted as being directed to the product per se, the term “wherein the treatment is antiviral, more particularly a treatment against rhinovirus, influenza virus or coronavirus” could be interpreted as not limiting the product X, the subject-matter of claim I.3 would not be novel and, thus, not inventive over the prior art. If claim I.3 is interpreted as a second medical use claim (because it refers to “the treatment”, the subject-matter would be novel and inventive over the prior art because none of the documents D1, D2 or D3 discloses or hints an antiviral effect. Since the answer depends on the above interpretation, points are awarded for both answers.
19.2 The difference of the
subject-matter of claim I.8 over D3 as closest prior art may be regarded as not
providing a technical effect.
FALSE The distinguishing feature
includes the administration as a nasal spray. This has the technical effect of
providing a higher suppression factor compared to tablets, see table 1 and
[013]. This clearly is a technical effect.
Update 9 April 2024: the Examiner's report (published today) shows that this statement was neutralized. he statement is numbered 19.4 in the Examiner's Report, which provides:
19.4 The difference of the subject-matter of claim I.8 over D3 as closest prior art may be regarded as not providing a technical effect.
TRUE and FALSE are accepted as correct answers – Category of claim I.8 might be interpreted as being unclear because dependent claims I.8 does not repeat “product X for use …”, see GL G-VI, 7.1.5. If it is interpreted as a product claim, there is no difference providing a technical effect. If it is interpreted as a product claims with a medical use, the technical effect would be a higher suppression factor, see table 1, paragraph [13]
19.3 The subject-matter of
claim I.6 is novel over D1.
FALSE Dependent claims I.6 is not
defined according to GL (2023) G-VI, 7.1.5 (=GL (2024) G-VI, 6.1.5),
and is thus not considered a second medical use claim according to Art.
54(5), but is considered a claim to Product X per se. So, the claim lacks
novelty over D1 disclosing Product X.
A correctly formulated claim I.6 would read:
" Product X for use according to claim I.5, wherein Product
X is administered for at least 10 days in a dosage of 25 mg/kg bodyweight per
day."
For this claim, the statement would be TRUE, as the 25 mg/kg dosage
regime was not disclosed in D1.
Update 9 April 2024: the Examiner's report (published today) shows that this statement was neutralized. The statement is also numbered 19.3 in the Examiner's Report, which provides:
19.3 The subject-matter of claim I.6 is novel over D1.
FALSE – because claims I.5 and I.6 do not refer to a second medical use, Article 54(5) EPC does not apply, GL G-VI, 6.1.2.
However, TRUE and FALSE are accepted as correct answers. Category of claim I.6 might be interpreted as being unclear because dependent claim I.6 does not define “product X for use …” see GL G-VI, 7.1.5.
19.4 The subject-matter of
claim I.1 involves an inventive step over D3 alone.
FALSE Claim I.1 lacks novelty over
D3 (see the answer to 18.4) and thus cannot involve an inventive step over D3
alone. Note that it is doubtful to pose a question on inventive step if the claim
is not novel.
Question 20
Claim set II filed by the applicant during
the examination proceedings
Deleted passages are marked as “strikethrough”,
added passages are underlined.
II.1I.1 Product X for use in a treatment as an
antiviral, an antibiotic , an antifungal or an antiparasitic.
I.2 Product X for use in a treatment
by inhibiting receptor Y.
II.2 Product X according to claim
II.1, wherein the treatment is antiviral against RNA viruses.
II.3I.3 Product X according to claim II.1I.1,
wherein the treatment is an antiviral, more particularly a
treatment against rhinovirus, influenza virus or coronavirus.
II.4I.4 Product X according to claim II.1I.1,
wherein Product X is administered for at least 10 days in a dosage of
5-50 mg/kg bodyweight per day.
II.5. Product X according to claim
II.1, wherein Product X is administered for at least 10 days in a dosage of
5-30 mg/kg bodyweight per day.
II.6I.5 Product X, wherein Product X is
administered for at least 10 days in a dosage of 5-50 mg/kg bodyweight per
day.
II.7I.6 Product X according to claim II.6I.5,
wherein Product X is administered for at least 10 days in a dosage of
25 mg/kg bodyweight per day.
II.8I.7 Product X according to claim II.1I.1,
wherein Product X is administered as nasal spray.
II.9I.8 Product X according to claim II.1I.1,
wherein the treatment is an antibiotic and wherein Product X is administered as
nasal spray.
II.10 A composition comprising
Product X and antibiotic compound Z.
I.9. A method for therapeutic
treatment of a living human, wherein the treatment comprises administration of
Product X.
I.10 A method according to claim I.9, wherein the treatment comprises
intravenous administration.
20.1 The
subject-matter of claim II.5 complies with the requirements of
Article 123(2) EPC.
FALSE For at least the reason that the specific dosage of 30mg/kg was not
disclosed in the application as filed.
20.2 The
subject-matter of claim II.2 complies with the requirements of
Article 123(2) EPC.
FALSE For at least the reason that the application
as filed only describes the use in a treatment against three specific RNA
viruses (influenza virus, coronavirus and rhinovirus, see [010]), but not the
general class of RNA viruses.
20.3 The
effect provided by the distinguishing features of the subject-matter of claim
II.10 with respect to D3 is a synergistic effect.
TRUE According to [011], when
Product X is combined with the antibiotic compound Z, the suppression factor
for the streptococcal infection was stronger than the sum of the individual
effects of Product X and compound Z , which matches the definition of a
synergistic effect.
20.4 The
subject-matter of claim II.10 complies with the requirements of
Article 123(2) EPC.
TRUE Claim II.10 is supported by the last sentence of [11].
Update 9 April 2024: the Examiner's report (published today) shows that this statement was neutralized. The statement is numbered 20.3 in the Examiner's Report, which provides:
20.3 The subject-matter of claim II.10 complies with the requirements of Article 123(2) EPC.
TRUE and FALSE are accepted as correct answers – For the English and French versions, the answer is True. Paragraph [11] provides basis to directly and unambiguously derive the subject-matter. For the German version, the answer depends on how the last sentence of paragraph [11] is interpreted.
Didn't pass, 5 points missing to 70, I have 65((
ReplyDeleteSome questions might be neutralised, wait for official result!
DeleteRegarding question 17.1, where you want to cover 7 days in the range.
ReplyDeleteClaim I.5 is an independent claim, which does not refer to the specific indices. In contrast, the embodiment of par. 012 includes the indices: "a further embodiment of the invention is Product X for use as an antiviral, an antibiotic, an antifungal or an antiparasitic, wherein Product X is administered for at least three days, preferably for at least 10 days, in a dosage of 5-50 mg/kg bodyweight, preferably in a dosage of 10-50 mg/kg bodyweight."
Are you not having an intermediate generalization by using the "at least three days" from this embodiment for amending claim I.5 without the indices? Making the correct answer FALSE instead of TRUE.
For the record, I hope you can prove me wrong, as I crossed TRUE on my exam as well.
Product X, wherein Product X is administered for at least 10 days in a dosage of 5-50 mg/kg bodyweight per day.
Hi Johan,
DeleteI crossed false. I considered it was an unallowable generalisation for the reason you mentioned.
For the pre-EQEs you largely have to take these assumptions for granted for a lot of the questions and answers in past exams to make sense. It's worth submitting a complaibnt though.
DeleteThe question was phrased as ro whether there is a way to make an allowable amendment under A123(2)EPC that covers seven days (currently excluded because of "at least ten"). I agree that the features you are saying also need be added, but the possibility of the amendment still exists?
DeleteHi GB, I agree that it is possible to make an allowable amendment that covers the seven days, IF you consider that you have to add the indices in the amendment as well. It seems those 2 points are not yet lost. :-)
DeleteThe question was not whether you can amend to “at least seven”, but whether you can amend such that the scope of protection also **covers** seven - amending to “at least three” (which satisfies 123(2)) achieves that.
DeleteHi Roel
DeleteI understand that amending to "at least seven" is not the question, and it would be moreover not be allowed under 123(2).
My question was rather if you could amend to "at least three" without having an intermediate generalization compared to the embodiment in par. 012? But as GB correctly pointed out, that actually does not matter, as the question is worded broadly and does not limit to only that amendment of "at least three" that you need to cover "seven".
I also put false on this one for the reason you mentioned, Johan.
Delete"...in a way that the resulting subject-matter also covers administering Product X for seven days."
In my opinion, the last part is worded broadly and would only be possible with the introduction of the feature of "use as an antiviral, an antibiotic, an antifungal or an antiparasitic".
In this case, I don't think there is an intermediate generalization problem because claim I.5 was part of the application as filed. Therefore, the claim as filed itself forms support for the disclosure without the discussed feature "use as an antiviral, an antibiotic, an antifungal or an antiparasitic".
DeleteDisagree on 18.4. It doesn't dislcose Product X for use in a treatment as an antiviral, an antifungal or an antiparasitic.
ReplyDeleteand as a result disagree on 19.4
DeleteClaim I.1 is: "Product X for use in a treatment as an antiviral, an antibiotic, an antifungal or an antiparasitic." If one of the options is not novel, the claim is not novel. Even though there are other options that could be novel.
DeleteIs there anything in the GL about that?
DeleteGood question. I could not find anything of the bat. I simply know it to be true, but cannot give you more concrete references.
DeleteYou see a similar situation with multiple depencies. If novelty/inventive step is destroyed for one line of dependency (e.g. claim 3 dependent from claim 1), the claim is not novel/inventive. Regardless of other lines of dependency (e.g. claim 3 dependent from 2, which in turn is dependent from 1) that would be novel/inventive. If you get what I am trying to say.
Hi,
DeleteI see it as specific disclosure destroying the novelty of a generic feature. To my mind, this works for multiple dependencies as well.
Therefore, I think you can refer to case law of BoA (https://www.epo.org/en/legal/case-law/2022/clr_i_c_5_2_6.html) or GL (https://www.epo.org/en/legal/guidelines-epc/2024/g_vi_4.html).
Hope this will help you.
Johan 15 March 2024 at 22:47 is correct. A claim is not new as soon as there is one prior art example that is in its terms - so an OR claim is not new as soon as one of its alternatives is not new. (Often testen in earlier pre-exams)
DeleteRoel - Does that affect the answer of 7.3 ?
DeleteInterestingly, regarding 20.4, the last sentence of [011] in the German version of the description crucially differs from the English version, such that the opposite answer „FALSE“ is obtained, if the German version is used (the German version of the description does not disclose „comprise“ but discloses something like „composition of X and Z“, thus II.10 would be an inadmissible intermediate generalisation)
ReplyDeleteCould you be so kind to add the full text of [011] in German as well as in English to this thread? We do not have that available, and the paper is not yet in the Compendium.
Delete[011] Tabelle 1 zeigt auch, dass Erzeugnis X im Durchschnitt eine schwächere Wirkunggegen eine bakterielle Infektion zu haben scheint als gegen eine Virusinfektion, da derUnterdrückungsfaktor niedriger ist. Als wir jedoch Erzeugnis X in weiteren Versuchen(nicht gezeigt) mit der bekannten antibiotischen Verbindung Z kombinierten, beobachtetenwir einen Unterdrückungsfaktor für die Streptokokkeninfektion (bakterielle Infektion), derstärker war als die Summe der individuellen Wirkungen von Erzeugnis X und Verbindung Z. In einer Ausführungsform wird eine Zusammensetzung aus Erzeugnis X und antibiotischer Verbindung Z bereitgestellt.
DeleteTo be compared with:
Delete[011] Table 1 also shows that Product X appears to have on average a weaker effect
against a bacterial infection than against a viral infection because the suppression factor is
lower. However, when we combined Product X with the known antibiotic compound Z in
other tests (not shown), we observed a suppression factor for the streptococcal infection
(bacterial infection) that was stronger than the sum of the individual effects of Product X
and compound Z. In one embodiment, a composition comprising Product X and antibiotic
compound Z is provided.
Is not there another difference?
English: "In one embodiment, a composition comprising Product X and antibiotic compound Z is provided." seems to relate to a **product** , reflected also in claim "II.10 A composition ***comprising*** Product X and antibiotic compound Z.";
versus
German: "In einer Ausführungsform wird eine Zusammensetzung aus Erzeugnis X und antibiotischer Verbindung Z bereitgestellt." = "Verfahren zur Bereitstellung einer Zusammensetzung aus Erzeugnis X und antibiotischer Verbindung Z" seems to relate to a **method**? And this method does not result in a composition ***comprising*** Product X and antibiotic compound Z, but in a composition ***consisting of*** Product X and antibiotic compound Z, as the method makes the composition aus/from (just) X and Z?
Dear Roel, thanks for your reply! The German version of claim II.10 states: „Zusammensetzung, umfassend Erzeugnis X und antibiotische Verbindung Z“, not a method, as you seem to suggest? In any case, in contrast to claim II.10, the German description does not disclose „umfassend“ (i.e. comprise). So the answer to 20.4 imho should be TRUE if based on the Englsih description and FALSE if based on the German description
Deletethe answer regarding the invitation under rule 63 should be false because the correct invitation is under rule 62a. In the Seminar for the pre exam, there was a question like this!
ReplyDeleteYou are correct. We will correct the blog post.
DeleteArmando, which question are you referring to?
DeleteShould be 16.2 I think
DeleteI was not precise enough :)
DeleteThe question regarding the seminar he referred to.
Hi Danko, i was regerring to a question that was like the one that we faced in the pre-exam. I remember that everyone in the course answered True, but the right answer was False because the right rule is 62a and not 63
Delete12.2 - the question asks about authorised use of a liquid, not use of authorised liquid. The embodiment with fingerprint reader allows authorised use of, whereas the prior art document does not allow/prohibit use of the device by authorised/unauthorised persons. I think the answer is false.
ReplyDeleteIn other words, in the prior art document the use is not authorised/unauthorised; it is the use of authorised/unauthorised cartridges that is controlled.
I also had exactly the same thinking.
DeleteMe too
DeleteI agree with this - the application discloses preventing use of unauthorized cartridges, not unauthorized use of cartridges. The modifier is attached to the cartridges, not the use. You could modify the same invention to obtain preventing unauthorized use, but it's not the same thing.
DeleteI had the same argument and therefore checked FALSE
DeleteFor 16.2, shouldn't it be false? It'd only be true if it was a rule 62a invitation. A rule 63 invitation is for when it's impossible to carry out a meaningful search, not when there's multiple independent claims of the same category, thus the answer is false https://www.epo.org/en/legal/epc/2020/r63.html
ReplyDeleteI agree, Armando also raised this above. Both of yours, and my own, interpretation of this also appears supported by GL B-VIII 3.4
DeleteI tend to agree on this one, as they specifically refer to the number of independent claims in the question. Nevertheless Rule 63 could have some merit as to the method of treatment claims I.9 and I.10, which are not allowed under EPC in the claim set.
DeleteWhen reading GL B VIII.3 it states that "Rule 63 relates only to whether the search is practicable and not to whether its results are likely to be relevant in the later examination proceedings." and "In the particular case of medical method claims, the search division issues a complete search report only when the claims can easily be reworded to comprise patentable subject-matter (see B‑VIII, 2.1)."
GL B VIII 2.1: "Even where a claim is drafted as a method of medical treatment (see G‑II, 4.2) and is therefore not directed to patentable subject-matter, a meaningful search may be possible if the determinant technical feature is the effect of the substance, which can be searched."
In casu, there could still be a meaningful search, although claims I.9 and I.10 are unallowable. So also for this reason, I believe the answer to this question should be FALSE indeed.
I agree. I marked the same answer based on the respective Visser's comments.
DeleteYou are correct. We will correct the blog post. It should be a R.62a for a R.43(2) situation of multiple independent claims. Thanks for spotting
DeleteI too agree. However, I still think an issuance of a R63 communication is justified since the claim set includes a method of treatment, as also recited by Johan.
DeleteI also agree with Peter's reply on 16.03.2024 at 13:41. R63 is justified since there was a method of treatment excluded from patentability and thus the EPO couldn't carry a meaningful search.
DeleteI noted it could be both, isnt?
Deletesee https://www.epo.org/en/legal/guidelines-epc/2023/b_viii_5.html says - In certain cases it may be appropriate to send an invitation according to both Rule 63 (see B‑VIII, 3.1) and Rule 62a(1) (see B‑VIII, 4.1). This may be necessary, for example, in cases where clarifying which claim or claims to search under Rule 62a will not necessarily help to clarify what subject-matter to search because the application contains several independent claims in the same category, none or only some of which can be subject to a meaningful search in respect of their entire scope.
Note that the question is a "reasoned statement": does the claim set have a plurality of independent claims of the same category and is that the reason why the EPO would issue a Rule 63 communication? The question does not ask whether there are possibly also other objections which could cause other invitations.
DeleteHere, the a plurality of independent claims of the same category is a problem under Rule 43(2), for which you get a communication under Rule 62a, not Rule 63.
Rule 62a(1): If the European Patent Office considers that the claims as filed do not comply with Rule 43, paragraph 2, it shall invite the applicant to ...
Rule 43(2): Without prejudice to Article 82, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if ...
versus
Rule 63(1): If the European Patent Office considers that the European patent application fails to such an extent to comply with this Convention that it is impossible to carry out a meaningful search regarding the state of the art on the basis of all or some of the subject-matter claimed, it shall invite ...
Thanks for posting your answers.
ReplyDeleteI am having some troubles following the approach in part 4.
In some answers, claims have been considered directed to a product because "for use" was missing, see:
- 18.3; if medical use is given weight, answer would be opposite
- 19.1; agree with your reasoning, but the question assumed novelty was given (otherwise speaking of CPA and I/S is meaningless)
- 19.3 , use was missing even in I.5, so I am not sure this claim could be rescued without amending the base claim.
For others, the medical use aspects were considered even though "for use" was missing.
- 17.4, should be false because the claim is directed to product as such, not because of "in particular", this only matter if treatment is given weight,
- 18.1 should be true because the (independent) claim I.5 merely requires suitability for administration, and product X was a known API administered for up to six months
-19.2 the technical effect is given by the administration route, a medical use aspect that should not be limiting for claim I.8 if the GL are applied as you did in 18.3, so the answer would be false;
The way I faced the task, was to consider (at least for the dependent claims in case "for use" was in the base claim) that the claims may have been unclear (A84) but still give weight to the use - in real life examination (opposition may be a different story), that's what most examiners would do, indicating the claims must be amended according to GL, but still treat the claims as properly formulated for providing a N/IS opinion.
I have some doubts as to what was being tested here, but I don't have high hopes that the report (and marking) will acknowledge these issues.
Also in part 3, I was almost tossing a coin to decide for statement 12.1 (I answered true, in the end). I understood that the intention was to refer to the third paragraph in D1, but the cigarette "that provides a liquid solution" is plainly false as D1 explicitly described the atomisation process and production of vapour. It's a cigarette, not a straw. I feel a little frustrated with the exam, as we should be applying "a mind willing to understand" to the claims, not to the T/F statements of the exam.
But thanks again for posting the answers
Further thought about 19.2 and 18.3: even if the claim is directed to a product, the suitability for nasal spray would have to be considered (the API is in the form of a nasal spray). So, technical effect would be given (19.2), but also novelty over D2 (18.3 as D2 did not mention nasal spray, I believe)
Deletein 12.1 i wrote true too. I understood that the liquid used in the electronic cigarettes in D1 avoids high nicotine (last paragraph of D1), so it could be implicit that D1 provides electronic cigarettes as the question states
DeleteI agree with you regarding 12.1. The cigarette provides a vapour, not a solution. Thus, any statement indicating that the cigarette provides a vapour is manifestly false.
DeleteHi GB, for suitability only, it is not needed that the prior art shows/describes that it is suitable for the purpose. It is sufficient if the prior art product is suitable, without modification - the suitability may be clear from other sources than the prior art document.
DeleteW.r.t. novelty of the dependent second medical use claims, we just cited what the Guidelines explicitly provide for in GL (2024) G-VI, 6.1.5:
Delete"The category of claim 2 is unclear and the dependency is doubtful. The claim appears to depend on a claim directed to a product per se.
The claim **would also lack novelty** over prior art disclosing a composition comprising 5 mg X, or a first medical application thereof."
That the claim would be novel after an amendment does not overcome the lack of novelty of the claim is it stands - and as is asked.
As with other clarity issues, a lack of clarity may result in other objections (here, lack of novelty; but could in other cases also be, e.g. insufficiency or lack of support).
Hi Roel, thanks for your reply.
DeleteMy further point about suitability is whether the "suitable for" implies a certain formulation of the product. So the claim is not only directed to the pure compound, but to the compound formulated in such a manner (solvent, additives, etc.) to be suitable for the recited administration route (so, a tablet of product x would not be novelty destroying for product X formulated for nasal administration).
Still, even if you want to consider the dependent claims directed to the bare "molecule", rather than the formulated compound, the medical use aspects in claims 1.7 and 1.8 should be treated the same. If 18.3 is true (claim 1.7 is not novel over D2 because not according to the guidelines and directed to the bare molecule), the medical use would also not be a distinguishing feature for 19.2/1.8 (the language concerning nasal administration being the same in 1.7 and 1.8).
The problem I see here is that at least some questions (the ones about IS) asked (even explicitly) to assume that a difference existed, even when the claims were not formulated according to the guidelines - the clearest example being 19.1 asking to assume D1 as CPA for claim 1.3). So, for some questions, we are asked to forget about the guidelines and give weight to the medical use, while in other questions the same medical use would have to be ignored because of the incorrect claim formulation.
So, a statement like 19.1 explicitly calls into question how these claims were meant to be interpreted also with respect to the other questions.
I agree with you GB. Although I find Roel's reasoning to be sound in 18.3 and 19.3, there is just something odd about the inconsistencies with the other questions, especially 19.1 where Roel indicates that the question can't be answered. Not being able to answer a question based on Roel's interpretation definitely cannot be the point of what was trying to be tested in that question. I am just so curious how this is going to be resolved once we see the Examiner's Report.
DeleteI also think that there is a non-zero chance, that they will have to neutralize the entire Claims Part II like what happened in 2022 due to the bizarre inclusion of the passages from last year's exam regarding the erasable ink in the German version, but not in the French or English versions.
DeleteHi Lily, I do not see any erasable ink in the German version, not in the pre-printables that I just downloaded from Wiseflow. Was it in the pdfs that were available during the exam? J.
DeleteDear Anonymous / J
DeleteI just logged into Wiseflow, and they are still there.
Look in Part 4, D1, page 7, the very last paragraph labeled [001] (already you can see that this paragraph is misnumbered, should be [003]). That reads as follows:
[001] Seit einigen Jahren besteht der Wunsch, einen Stift herzustellen, der einen
löschbaren, bleistiftähnlichen Strich erzeugt. Die besondere Auswahl der Farbpigmente ist
dafür wichtig, die Löschbarkeit der von der Zusammensetzung einer löschbaren Tinte
erzeugten Striche zu bewahren.
Then look at Part 4, D2, page 8, the last four lines of paragraph [003]. Again, you will see a misnumbered paragraph [001]. That reads as follows:
[001] Zusammensetzung einer löschbaren Tinte und insbesondere Zusammensetzungen
einer löschbaren Tinte zur Verwendung in Schreibgeräten werden immer populärer.
Zusammensetzungen einer löschbaren Tinte sollten jedoch nicht nur löschbar sein,
sondern bei der Verwendung in Schreibgeräten auch eine gute Schreibleistung aufweisen.
You can enter these into translators and see they are related to the erasable ink subject matter and not medical uses / antivirals / antibiotics.
Best,
Lily
As a follow up, it is page 7 (in adobe pdf), but numbered page 6 - "2024/P4/DE/6". Similarly, it is page 8 (in adobe pdf numbering), but numbered page 7 - "2024/P4/DE/7" that I was referring to.
DeleteAccording to the answers I have 74 points….hope you answered correctly, but I am sure you did
ReplyDeleteQuestion 16: concerning the question about the sufficiently of disclosure. Can we not consider that the invention is sufficiently disclosed since one of the paragraphs what mentioning using product X as antiviral, antibacterial, antifungal and antiparasite by administering a certain amount of product X for a certain number of day
ReplyDelete.
For someone not working in medical field, I applied the fact that at least one embodiment can be found in the description. In 2023 there was one question about Art 83 and it was considered disclosed because there was one exemple in the description.
On a side note I find it challenging to have 3 questions on article 83 in a field as specific as the medical... What's your thoughts?
i think that claim 1 was not sufficiently disclosed because the four alternatives was in “or”, and at least one was nod sufficiently disclosed
Delete“An invitation to conduct a research program” is a clear hint and case law
DeleteRoel, what's the basis ?
DeleteI got the last point of Anika. If the disclosures for antifungal and antibiotic are already asked in questions 16.1 and 16.4, why there is still a question 16.3 for claim I.1?
DeleteI am wondering, should Art. 84 (claims shall be supported by the description) be applied when analysing claim I.1, rather than Art. 83 (sufficient disclosure of the invention) when analysing 16.1 and 16.4?
Art. 83 is addressing the application as a whole: “A detailed description of at least one way of carrying out the invention must be given.” GL F-III.1, which seems partially true in this application.
Art. 84 is addressing the claims. In this case, claim I.1 is not supported by the description. In the end the claim will drop the alternatives that are not described.
Therefore, would the answer to 16.3 be TRUE, as the subject matter of claim I.1 would comply with Art. 83 if alternatives due to Art. 84 to be dropped?
I would argue that the claims are sufficiently disclosed because in French version it is stated that "un tel programme nécessitera d'importants tests par essai-erreur" which is different translation in English version "immense trial-and-error tests".
DeleteImmense and important number of tests is not the same.
Indeed, Roel on 16 March at 09:38 stated that “An invitation to conduct a research program” is a clear hint and case
However, I had another case law in my mind "a reasonable amount of trial-and-error experimentation might be acceptable (T 518/17).
What are your thoughts about it?
Thank you!
GL F-III, 3 (https://www.epo.org/en/legal/guidelines-epc/2024/f_iii_3.html):
Delete"Sufficiency of disclosure cannot be acknowledged if the skilled person has to carry out a research programme based on trial and error to reproduce the results of the invention, with limited chances of success (T 38/11, Reasons 2.6). An example where this may arise is a microbiological process involving mutations. Such a case is to be distinguished from one where repeated success is assured even though accompanied by a proportion of failures, as can arise e.g. in the manufacture of small magnetic cores or electronic components. In this latter case, provided the satisfactory parts can be readily sorted by a non-destructive testing procedure, no objection arises under Art. 83. Another example can be found in the field of artificial intelligence if the mathematical methods and the training datasets are disclosed in insufficient detail to reproduce the technical effect over the whole range claimed. Such a lack of detail may result in a disclosure that is more like an invitation to a research programme (see also G‑II, 3.3.1)."
"a ***reasonable*** amount of trial-and-error experimentation" is a much less effort than an invitation to a research program. T 518/17, cited by you:
"reason 42. In the board's opinion, a ***reasonable*** amount of trial-and-error experimentation may be acceptable to acknowledge that the claimed invention can be carried out without undue burden. This however ***presupposes that sufficient information is available that*** leads the skilled person directly towards success through the evaluation of initial failures. In the present case, and based on the evidence on file, the board considers that information on critical process variables (see points 40. and 41. above) is lacking. The skilled person would therefore need to repeat the lengthy optimisation and improvement process, without any guarantee that fermentation conditions resulting in the formation of subtilisin crystals during fermentation due to high yield would be achieved. Such a situation is often described in the case law as an invitation to perform a "research program" and considered to amount to an undue burden (see CLBA, section II.C.6.7)."
I applied the same fact - at least one embodiment is in the description, which is at least one if the alternatives, thus it is sufficiently disclosed. Moreover, they provide regimen
ReplyDeletefor me caim 1 was not sufficiently disclosed because the alternatives were in "or". At least one of the alternative is not sufficiently disclosed, so claim 1 is not sufficiently disclosed
DeleteHi, I answered the Statement 17.3 as false, since the reasoning of the Statement seems incorrect to me. Claim I.9 is indeed excluded from patentability, because the claim includes „treatment on a human body“ and not a method including a treatment step. Please correct me if I am wrong.
ReplyDelete(Please give your name, initials or a nickname for more pleasant and earlier communication).
DeleteI.9. reads: "A method for therapeutic treatment of a living human, wherein the treatment comprises administration of Product X".
Why do you consider "administration of Product X" in this method claim not a therapeutic treatment step?
I think that the product claims depending on second medical use claims are unclear. I reformulated them to second medical use claims as per:
ReplyDeletehttps://www.epo.org/en/legal/guidelines-epc/2022/g_vi_7_1_5.html
Thus losing points
Indeed, even the epo would rewrite them in the 71(3), so that such dependent claims are construed as directed to use
Deletei considered the claims dependent from the claim 1 wherein “for use” was present as if they were correctly written (they would be rewritten in the 71(3)).
Deletei considered the claims dependent from the other independent claim (not dependent from a “for use” claim) as product by process
I agree that the EPO may, according to the GL section, amend the claims to overcome the clarity issue and to make them novel. But the statements address the claims as they stand, they do not address ''the claim or any amended version thereof".
DeleteYes Armando but in that case these product claims lack clarity so that the scope of the claim is unclear to be able to determine novelty and inventive step.
ReplyDeleteMy answers were:
ReplyDelete12.1 FALSE as electronic cigarette provides solution vaporized from liquid one, but not a liquid solution per se
12.2 FALSE as it does not prevents unauthorised use as an action, it prevents instead the use of the product which is unauthorised just for health reasons. Unauthorised refers to a product, not to action as such
18.3 FALSE as 1.7 is dependent on independent that is use claim, so rather wording amendment to ‘use’ is proposed by 71(3) than novelty is challenged
19.3 TRUE as the claimed regimen is not disclosed in D1
For 20.3 and 20.4 - the composition is disclosed only for use, providing synergic effect when it is for use for that benefit. Wording without ‘use’ means just summed products for me..
19.3 False because it is not dependent from a product for use claim so the process feature it is not limiting. The 71(3) will not insert “for use according to claim 1” because it was an independent claim
Deletei think that 12.1 us True beacuse “provides” can also be interpreted as “presents”, or “has” in some way
Delete12.2 can be True because if the cartridge is unauthorized, also the use of that cartridge would be unauthorized in that electronic cigarette
DeleteHow would they define that the cartridge is unauthorized if they were not allowed to use it? The answer is definitely FALSE to 12.2
Deleteokey, but what does it mean that the cartridge is unauthorized? It means that the use of that cartrdige is unauthorized. it is clear from the document passges.
DeleteReminder: Please do not post your comments anonymously - it is allowed, but it makes responding more difficult and rather clumsy ("Dear Mr/Mrs/Ms Anonymous of 06-03-2024 06:03"), whereas using your real name, your initial or a nickname is more personal, more interesting and makes a more attractive conversation. You do not need to log in, not make an account, nor give your email address; you can us post Comment As --> Name or URL: Give your name, nickname or your initials and use them consistently.
DeleteFor 20.1 if TRUE can we argue that since in [012] it is mentioned that “the suppression factor was not observed to further increase for dosages above around 20 mg/kg”, range 5 to 30 mg/kg does not contravene 123(2) (1. Was not explained as essential; 2. not indispensable; no modification of other features to compensate change)?
ReplyDeleteIt is difficult to react on an incomplete reasoning which at first glance seems incorrect - while maybe you have a point: please explain how you want to use the test to replace/delete features for this newly added claim.
DeleteI am quite a bit nervous about the final markings. Right now it seems that I may have passed, but since many questions appear to be discussed quite intensiley, I am a bit nervous that in the end I might still have failed...
ReplyDeleteSame here. I have only 72 points. Lost a lot with the claim analysis part.
ReplyDeleteI hope that the answers as given here are all correct. ‘…. I have trust in delta that they are
Hi everybody, I just finished checking and I have hopes that the final result will be positive for me, anyway (long) time will tell. I just wanted to bring a big THANK YOU for sustaining this blog and supporting us. Cheers from Italy!
ReplyDeleteYou are very welcome. As we want to thank all candidate that posted comments to our blogs - without those, there would not be a discussion on interpretation differences, unclarities, (unexpected) different solutions, … nor would support for different views be visible and acknowledged.
DeletePlease continue to post your comments, in the few weeks before the results as well as after the results and the examiner’s report has been published, especially if that has surprising twists or comments on neutralization.
I wonder if we could report about unambiguous questions to the EPO? Or only appeal after report?
ReplyDeleteThere is no formal channel, except the complaints for which the deadline has passed. But you can of course send an email to the EQE secretariat, to the attention of the Pre-Exam committee and the Examination Board, to draw their attention to possible issues. Better than to wait for appeal and go to the trouble of appealing and possibly waiting long for a decision.
DeleteYou can also post your comments on this blog (use your name, or at least your initials or a nickname), including a clear argumentation. That may get support or may get reactions that show you whether/what you have overlooked something. The blogs are being read also by the Committees and Examination Board, and -as any other feedback- are taken into account when the marking scheme is reviewed and possibly adapted, incl possible neutralizations.
See also the blog post in the right column "On the interpretation of Pre-Exam Questions and on Pre-Exam appeals (Blog Post)" - https://pre-exam.blogspot.com/2022/02/on-interpretation-of-pre-exam-questions.html
Question 19 was tough - I missed the required, "for use" in questions 19.1 and 19.3, and therefore given I didn't have a problem with 19.1 I found 1.1 to be inventive over D3 alone and so answered 19.4 as TRUE. Question 19 was definitely the toughest overall I thought, especially if you're not properly checking for medical use claims (which I wasn't so late in the paper!)
ReplyDeleteAd 12.4: I marked the question as TRUE (I.1 is novel over D1), because claim 1 claims "an atomiser (120) in connection with the liquid container (130)" and D1 does not disclose this feature. [002] of D1 only discloses, that the atomiser is connected to a controller ("A controller 15 is connected to the communication component 12, to a battery and to an atomiser (both not depicted).") The atomiser is only mentioned once more in [004] in D1, again not stating, that it is in connection with the liquid container (" Upon validating the identifier 23, the controller 15 sends a signal to the atomiser to activate vapour production with the power supplied from the battery.") What are your thoughts on this?
ReplyDeleteI initially thought in the same direction, but then concluded that the connection between the atomiser and the liquid Container is implied and necessary for the function of the cigarette...
DeleteI also had the same thought process as Nina and came to the same conclusion she did.
DeleteIn my opinion, the atomiser is inherently in connection with the liquid container, otherwise the device would not work. The liquid has to go from the liquid container to the atomizer in order to be dispensed.
DeleteThe Examiner's Report for Pre-Exam 2024 has just been published (Compendium)!
ReplyDeleteSix (!) individual statements were neutralized, of which five (5) in the claims part (one in Q.18, three in Q.19 -so that everyone scored 3 or 5 marks for Q.19- and one in Q.20).
See https://pre-exam.blogspot.com/2024/04/pre-exam-2024-examiners-reprt-is-out.html
I have added the reasoning given in the Examiner's Report for the neutralizations in the blog posts with our answers to the legal parts and in that above with our answers to the claims parts.
Roel - I am a little bit confused regarding the Examiner's Report and the Delta Patents answer for 19.3. According to the Examiner's answer and my reading of the guidelines, it seems that both claims 5 and 6 do not refer to a second medical use and therefore are interpreted as products per se. And the neutralization of the question was only due to the potentially unclear claim 6. Does this mean that the Delta Patents answer reproduced below:
Delete"A correctly formulated claim I.6 would read:
" Product X for use according to claim I.5, wherein Product X is administered for at least 10 days in a dosage of 25 mg/kg bodyweight per day."
For this claim, the statement would be TRUE, as the 25 mg/kg dosage regime was not disclosed in D1."
is not correct? E.g., even if claim 6 has "for use", because claim 5 doesn't refer to a particular disease or use as a medicine, the answer would always be FALSE?
I wasn't 100% sure, because claim 5 refers to a dosage, which seems to infer a medical use, but then it wasn't so clear to me anymore after reading the guidelines and the Examiner's report.
Hi Lily,
DeleteThis is of course only a guess, but it seems to me only the statements for which the "correct" format would have made a difference are the ones that have been neutralised.
In the case of 18.2 for claim I.5, even if the claim had been drafted correctly as a second medical use claim, the dosage was still disclosed by the prior art, hence even the correct second medical use claim would have not been novel.
For claim I.6, on the other hand, had the medical use had patentable weight, the answer would have been different, because the dosage was not disclosed (as by Delta Patent comments).
My guess is that only claims I.5 and I.6 were meant to test whether candidates could recognise the correct format for medical use claims; however, because all the other dependent claims were also drafted incorrectly but the questions asked to consider their "corrected" version (giving weight to the medical use aspects), they ended up neutralising all statements for which a different conclusion (T/F) would have been reached depending on whether the medical use aspect had to be considered or not.
Do you not immediately recognize the Guidelines citations in the Examiner's Report, and consider that the references appear to be incorrect?
ReplyDeleteThe reason is that the references to the Guidelines seem to be to the Guidelines of March 2024, rather than the one in force on 31 October 2023 (that of March 2023), the latter being the required version according to Rule 22(1) IPREE. E.g., GL G-VI, 6.1.2 cited in the Examiner's Report was actually G-VI, 7.1.2 in the March 2023 version.
You can see the renumbering in the pdf that shows the modifications as well as on the html pages, e.g., https://www.epo.org/en/legal/guidelines-epc/2024/g_vi_6_1_2.html, when you tick "Show modifications"
I have further thoughts on 12.1.
ReplyDeleteI choose FALSE becouse of this formulation - the cigarette "that provides a liquid solution".
As it is mentioned in the Delta Patents answer, it is confusing. I agree with GB's comment [16 March 2024 at 05:04]: It's a cigarette, not a straw :) I can see also Tom's comment [16 March 2024 at 10:25] presenting similar perspective.
I also considered the wording of whole part 3 paper and it is not said anywhere that electronic cigarette would provide or deliver or administer the liquid solution. It is clear from the paper that a liquid solution needs to be heated, atomised and vapourized. A liquid solution is not provided by any of electronic cigarettes described in the paper. So I assumed (and still think so even after deeper analisis) that the statement is FALSE since the electronic cigarette vapourizes the liquid solution and does not provide it.
The atomisation and vaporisation processes of liquid solution are explicitly described in paragraph [004], third sentence of D1. Those processes are not optional. It is not a right approach to take into consideration just paragraph [002] and [003] of D1. D1 document should be considered as a whole. While assessing the disclosure, it is not permissable to consider individual phrases in isolation.
So regarding to question 12.1 (12.4 in the Examiners' Report) I'm going to file the appeal.
I wonder maybe you could suggest what else can be added here to make the clear statement for the appeal?