EQEs - don't speculate beyond the content of the paper (D 11/18)

[Warning: Paper B 2018 spoilers]

Patent law cannot exist in isolation from the technical subject matter to which patents are concerned. Candidates taking the European Qualifying Exams (EQE) are specialized in very different areas of technical subject matter. However, it would be impossible to provide separate tests of patent law as applied to each of these different technical areas. The EQEs therefore attempt to test only the "law" aspect of patents. Candidates are not required to bring any of their own technical knowledge into the exam, and thereby no candidate should be disadvantaged because for their technical area. However, what is "technical" and what is "obvious from common general knowledge" is not always easy to define. Both candidates and writers of the EQE papers can inadvertently use their own technical knowledge to come to conclusions that cannot be justified from the exam paper itself.

The recent decision in D 11/18 is a reminder of the difficulty faced by both candidates and those setting the EQE in not over-interpreting the paper. In D 11/18, a 2018 EQE candidate successfully appealed the decision of the Examination Board to fail his Paper B script (D 11/18). The Disciplinary Board found a serious and obvious error in the Examiner's Report and remitted the script back to the Examination Board for re-marking.

Paper B of the European Qualifying Examinations is the "amendment" paper. The exam requires candidates to respond to an examination report from the EPO by amending the claims of an application. The candidate is given an instruction letter from a client, a copy of the application, the examination report and the prior art cited in the report.

The appellant in D 11/18 failed Paper B 2018, with a mark of 35/100 (the pass mark is 50). The candidate's appeal to the Disciplinary Board (DB) included the Main Request to the DB "to instruct the Examination Board to remark my Paper B".

A remittal to the Examination Board (EB) by the DB requires the decision of the EB to have been based on a "serious and obvious mistake" (see Case Law of the Boards of Appeal, V 2.6.3). In D 11/18 the DB also noted that the role of the DB is not to review the number of marks awarded by the Examination Board for a particular script. If the appeal is successful, the DB is therefore not required to remark the paper but remits it back to the EB.

As some readers may remember, Paper B 2018 related to a fuse for protecting electronic circuits. Claim 1 specified a fuse that solved the problem of metal re-flow in to the gap between the electrodes of a blown fuse. To achieve a valid claim, candidates were expected to amend claim 1 to specify the copper content of the fuse track and to include an epoxy resin cover. When heated the epoxy resin cover softened and flowed into the gap between the electrodes of the blown fuse.

Fuse - Paper B 2018

In his appeal, the candidate argued (among other complaints) that the mark script's addition of the epoxy resin cover to claim 1 added matter (Article 123(2) EPC). The candidate also argued that his own alternative amendment to claim 1, contrary to the opinion of the Examiner's Report, established inventive step over the prior art.

The candidate did not amend claim 1 to include the epoxy resin cover. Instead, the candidate included the functional feature that the fuse included a cover layer configured to soften and flow. The candidate argued that specifying a cover layer made of epoxy resin added matter (Article 123(2) EPC). This was because, the candidate argued, the application did not indicate that the use of epoxy resin as the material for the cover was essential. However, the DB found that epoxy resin was the only material identified in the Paper as providing the claimed function of the cover. Extrapolating beyond "epoxy resin", the DB argued, would therefore have required speculation beyond the content of the paper (Rule 22(3) IPREE (r. 5))

The candidate also argued that his alternative amended claim should have been considered inventive. The mark scheme indicated that a claim relying on the functional feature that the cover-layer was configured to soften and flow (as opposed to an epoxy resin cover in particular) was not inventive. Reliance on the functional feature thus led to a deduction of 10 marks. The mark scheme stated that such a claim could not be considered inventive because one of the prior art documents (D2) disclosed fuses with glass layers that were inherently configured to soften and flow. The candidate argued that D2 did not disclose that all types of glass would soften and flow and further submitted evidence that all types of glass do not soften and flow.

The DB's opinion was that "it is common general knowledge that in principle glass has the property to melt when heated". The evidence submitted by the candidate, the DB argued, was not applicable as it related to "anomalous glass". The DB therefore could not see that the "Examiner's Report had started from a premise which had been obviously incorrect either technically or legally", in that they had assumed the glass will generally soften and flow.

However, the DB could find no "proper support" in Paper B 2018 that the glass layer in D2 was inherently configured to soften and flow. D2, in fact, indicated that the glass layer explodes on exposure to excess heat (as opposed to softening and flowing). The assumption in the mark scheme regarding the properties of the glass cover in D2, the DB determined, was therefore "a serious and obvious mistake" on behalf of the Examination Board. It seems the Examination Board assumed a general knowledge about the properties of glass that strayed into the "technical".

The DB therefore concluded that that the appeal was well founded on this issue of the assumption in the mark scheme regarding the disclosure of D2. The DB therefore set aside the decision under appeal and remitted the candidate's paper back to the Examination Board for "thorough re-marking of the appellant's whole answer paper" (r. 9). The appeal fee was also reimbursed.

Lessons can therefore be found in D 11/18 for markers and candidates a like. In the EQE, it is key that the information provided in the paper should be taken at face value, and key that it is possible to do so.