Examination Board for the European qualifying examination
1. Appointment of members of the examination committees
The Examination Board appointed with effect from 19 January 2000 F. Benussi (IT) F. Benussi (IT), B. Czech (AT) and J. Kofoed (DK) as members of one of the three examination committees; their term of office will expire on 31 October 2001.
2. Examination results
In accordance with Article 17(2) of the Regulation on the European qualifying examination for professional representatives (REE) the following candidate was successful in the European qualifying examination 1999:
Instructions to candidates concerning the conduct of the examination
Having regard to Article 7(2) of the Regulation on the European qualifying examination for professional representatives (REE) as worded in the text dated 9 December 1993 (OJ EPO 1994, 7), the Examination Board has amended its instructions (OJ EPO 1995, 145) with effect from 19 January 2000 to read as follows:
1. Candidates who fail to comply with instructions given by the Examination Board or, on the basis thereof, by the invigilators, may be disqualified from the examination. The Board will take a decision on the matter as soon as possible after the examination. However, if candidates disturb other candidates the invigilators are empowered to suspend them at once from the paper during which this occurs.
2. After they have taken their seats in the hall but before the starting bell rings, candidates may ask questions orally regarding the conduct of the examination. After the starting bell has rung, any questions must be asked in writing. Questions relating to the text of papers will normally not be answered.
3. In the hall, each candidate will be supplied with:
(a) a single copy of the relevant papers in English, French and German,
(b) a sufficient supply of paper,
(c) a coloured sheet and an envelope,
(d) on the morning and afternoon of the second day, upon request a copy of the papers in (a) technical specialisation(s) other than that (those) indicated on the enrolment application form.
4. Candidates must bring a black pen and are advised to bring the material and documents as listed under 4.1 and 4.2. These will not be available at the examination centre. They are free to bring any additional material or documents, except for the items mentioned under point 6.1. None of these materials or documents may, however, be inserted in the answer paper.
4.1 A yellow highlighting pen, scissors, a staple remover, paper clips, glue and transparent gummed tape;
4.2 The documents mentioned below in the versions valid as at 31 December of the year preceding the European qualifying examination in question:
(a) Convention on the Grant of European Patents (European Patent Convention)
(b) Implementing Regulations to the Convention on the Grant of European Patents
(c) Protocol on the Centralisation of the European Patent System and on its Introduction (Protocol on Centralisation)
(d) Protocol on Jurisdiction and the Recognition of Decisions in respect of the Right to the Grant of a European Patent (Protocol on Recognition)
(e) Rules relating to Fees
(f) Notice of the President of the EPO concerning the arrangements for deposit accounts
(g) Patent Cooperation Treaty (PCT)
(h) Regulations under the Patent Cooperation Treaty (PCT)
(i) Paris Convention for the Protection of Industrial Property
(j) List of the Contracting States to the European Patent Convention and of the Contracting States to the PCT.
5. Candidates are requested:
5.1 to occupy the place they have been allocated in the hall throughout the examination unless otherwise advised;
5.2 before the starting bell rings, to write their full name (legibly!) and usual signature on the separate coloured sheet;
5.3 to number the sheets of their answer paper at the top in consecutive arabic numerals;
5.4 to write on one side of the sheet only;
5.5 to write legibly! Scripts that cannot be read cannot be marked. Candidates have to bear in mind that their answer papers may be marked by examiners whose mother tongue is not the language in which the paper is written;
5.6 to write in black only and to use only yellow highlighting pens. Candidates have to bear in mind that their answer papers will be photocopied for marking;
5.7 after completing each answer paper, to place it in the envelope provided and hand it to an invigilator. No other documents must be placed in the envelope;
5.8 when the closing bell rings:
(a) to stop writing immediately,
(b) to place the answer paper together with the coloured sheet in the envelope provided,
(c) to hand in the envelope promptly to an invigilator.
The closing bell will be announced 5 minutes before it rings.
6. Candidates are not permitted to:
6.1 bring to the examination any electronic devices, staplers or material that may disturb other candidates;
6.2 look at the examination paper before the starting bell rings, unless instructed to do so by an invigilator;
6.3 cheat or attempt to cheat;
6.4 communicate with each other between the starting bell and the closing bell;
6.5 write their name or initials anywhere other than on the coloured sheet;
6.6 smoke in the hall;
6.7 leave the hall without the consent of an invigilator, which may be withheld in particular if the examination is being conducted at more than one centre at different times.
7. Complaints concerning the conduct of the examination will not be entertained by the Examination Board unless a written statement of the facts is submitted to an invigilator at the latest half an hour after the closing bell has rung on the final day of the examination.
Instructions to candidates for preparing their answers
Having regard to Articles 13 and 15(1) and (2) of the Regulation on the European qualifying examination for professional representatives (REE) as worded in the text dated 9 December 1993 (OJ EPO 1994, 7), the Examination Board has amended its instructions (OJ EPO 1995, 145) with effect from 19 January 2000 to read as follows:
I. General provisions
1. Candidates are expected to be sufficiently familiar with
- the Guidelines for Examination in the EPO and
- the content of the Official Journal of the EPO
as published up to the end of the year preceding their examination.
2. It will be assumed that candidates have read the examination paper in the language in which they give their answer. Where this is not the case, candidates should indicate on the front page of their answer the language in which they read the paper. The same applies to candidates who, having filed a corresponding request when enrolling for the examination, give their answer in a language other than English, French or German.
3. Candidates are to accept the facts given in the paper and to limit themselves to these facts. Whether and to what extent these facts are used is the responsibility of the candidate. Candidates are not to use any special knowledge they may have of the field of the invention.
II. Paper A
Time: 3 ½ hours, second day, morning
4. Candidates are to assume that they have received a letter from their client which includes a description of an invention for which the client wishes to obtain a European patent, together with references to the most pertinent prior art known to him.
5. They are expected to draft an independent claim (or claims) which offers the applicant the broadest possible protection and at the same time has a good chance of succeeding before the EPO. When drafting the claim(s), candidates should bear in mind the requirements of the Convention, including the need for novelty and inventive step, and the recommendations made in the Guidelines for Examination in the EPO. Dependent claims, which should be limited to a reasonable number, should be drafted in order to provide a fall-back position in the event of failure of the independent claim(s).
6. Candidates are also expected to draft an introduction, ie that part of the description which precedes the examples or the explanation of the drawings. The introduction should be sufficient to provide support for the independent claim(s). In particular, candidates should give consideration to the advisability of mentioning the advantages of the invention in the introduction.
7. Candidates are expected to draft claims and an introduction for one European application only. The application should meet the requirements of the Convention as to unity. If in practice candidates would seek to protect further inventions by filing one or more separate applications, they should, in a note, clearly identify the features of the independent claim of such separate application(s), for example by referring to selected portions of the claims, or, alternatively, draft the claim itself.
8. In addition to their answer, candidates may (although this is not mandatory) set out on a separate sheet of paper the reasons for their choice of answer: for example, why they selected a particular form of claim, a particular feature for an independent claim or a particular piece of prior art as starting point, or why they rejected or preferred a particular item of prior art.
Supplementary notes from candidates to examiners cannot, however, replace essential parts of candidates' answers.
9. Those sheets of the examination paper which candidates might wish to cut up and include in their answer will be printed on one side only. Scissors, glue and transparent gummed tape may be used, but no staplers. Sheets containing drawings will also be printed on one side only.
III. Paper B
Time: 4 hours, second day, afternoon
10. In this paper, candidates should assume that a European patent application has been filed designating all the contracting states, and that the European Patent Office has issued an official communication. The paper may include a client's letter containing instructions about the way the client wishes to prosecute the European patent application.
11. Candidates are expected to respond to all points raised in the official communication. The response should be in the form of a letter to the EPO accompanied, where appropriate, by an amended set of claims. The description should not, however, be amended.
The claims should afford the broadest possible protection while meeting the requirements of the Convention. In their letter of response candidates should set out their arguments in support of the patentability of the independent claim(s).
12. If candidates consider that any part of the application ought to be made the subject of one or more divisional applications, they should, in a note, clearly identify the features of the independent claim of such divisional application(s), for example by referring to selected portions of their claims, or, alternatively, draft the claim itself.
IV. Paper C
Time: 6 hours, third day, morning
13. The notice of opposition prepared by candidates should comply with Article 100 and Rule 55 of the European Patent Convention (EPC), bearing in mind the relevant recommendations in the Guidelines for Examination in the EPO, Part D. However, in order to maintain anonymity, candidates must not give their real name, but should instead use the name of the representative to whom the client's letter is addressed.
14. The notice of opposition should contain all those (and no other) grounds - where possible against all the claims - which candidates consider in this particular case to be prejudicial to the maintenance of the patent. The omission of a good ground for opposition will lead to a loss of marks commensurate with the importance of the ground in the case concerned. The grounds of Article 100(b) will not be used.
Candidates must also briefly set out on a separate sheet reasons why they adopted or did not adopt the suggestions of the client. In addition any questions the client may have posed should be answered.
15. The paper will be presented in the form of a letter from a client to a professional representative accompanied by the European patent to be opposed and prior art documents. The annexed prior art will comprise at least three documents, including one in English and German only, one in English and French only, and one in German and French only.
16. The paper will contain a glossary of the specialist terminology used in the documents in the three official languages of the EPO as well as in any official language of a contracting state requested for that particular examination under Article 15(3), second sentence, REE.
17. Candidates are expected to put themselves in the position of the representative and, using only the information provided by the client, to prepare a notice of opposition which when typed would be ready for filing. The pre-printed opposition form provided may be used, but it is not obligatory and marks will not be lost if it is not used.
18. All claims should be treated separately taking due note of their dependencies.
19. Documents should be referred to by their annex number only, indicating the language used.
20. It is to be assumed that for all annexes which claim a priority, the disclosures of the annexes are identical with those of the corresponding priority documents unless there is evidence to suggest otherwise.
If, however, any facts presented need to be confirmed, eg in the case of an alleged prior public disclosure, candidates would be expected to state that such confirmation would be filed later.
Regardless of the date of the client's letter, candidates are to assume there is no possibility to confer with him.
21. Candidates should be aware that Annex 1 is fictitious and is not necessarily in a form that would have led to a patent granted by the European Patent Office.
V. Paper D
Time: Part I - 3 hours, first day, morning; Part II - 4 hours, first day, afternoon*
22. Paper D Part I comprises questions relating to different areas of the candidates' legal knowledge. Candidates must answer all the questions. Answers should be brief and to the point. For all questions candidates must cite any articles, rules or other legal basis relevant to their answer.
23. Paper D Part II comprises an enquiry from a client requiring an answer in the form of a legal opinion.
In their opinion candidates must explain the legal consequences of the situation as described.
Candidates will be expected to demonstrate their ability to deal with a complex industrial property law situation involving fundamental issues of patentability, rights of inventors, inventions as property and third party rights, as defined in particular, but not solely, in Articles 52 to 89 EPC, corresponding articles of the PCT, the Agreement relating to Community Patents and the Paris Convention, as well as in the relevant laws of the contracting states. Candidates should preferably cite any articles, rules or other legal basis relevant to their answer.
24. One grade will be given for Paper D, based on the marks awarded for Parts I and II.
List of references to landmark decisions
THE EXAMINATION SECRETARIAT,
Having regard to Articles 8(d) and 9, paragraph 2(d), of the Regulation on the European qualifying examination for professional representatives (REE) of 9 December 1993 (OJ EPO 1994, 7), and Rule 1 of the REE implementing provisions of 28 April 1998 (OJ EPO 1998, 364),
Hereby publishes the list of references to landmark decisions in EPO case law pursuant to Article 12 REE and applicable to the European qualifying examination 2001:
(a) All decisions mentioned in the Guidelines for Examination in the European Patent Office (version valid as at 31 December 2000);
(b) All decisions mentioned in the EPO publication "Case Law of the Boards of Appeal of the European Patent Office" published in 1999, 3rd edition 1998;
(c) All decisions published in the Official Journal of the EPO in 1998, 1999 and 2000 and those mentioned in the special editions on EPO Board of Appeal case law 1998, 1999 and 2000.
Publication of this list does not imply that candidates will not be tested on additional case law relevant to interpretation of the law referred to in Article 12(a)(i) to (iii) REE.
* Amended by decision of the Examination Board with effect from 1.3.1999.