Informal Sharing Session for
Singapore Patent Agents
Qualifying Examinations 2012
Paper B
Tim Watkin
Marks & Clerk Singapore
Structure of this talk
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Traditional format of Paper B question
How to answer this question
How to frame amendment
Example
How to answer other parts of the question
Change to syllabus last year
Why people fail Paper B
Traditional format of the question
• You are prosecuting a Singapore patent application on
behalf of a client.
• A written opinion has issued, citing prior art
• The client has written you a letter commenting on the
written opinion.
- Sometimes he makes a suggestion for
amendments (usually a bad suggestion).
- Sometime he gives you commercial information,
which helps you decide what you feature the patent
should concentrate on.
• You have to prepare a response to the written opinion,
including amendments
• And sometimes a letter to the client.
How to answer a question in the
traditional format:
Review the application, rejected claims and the prior art
Find the difference and amend the claims
Prepare response to written opinion
Prepare letter to client
Reviewing the application, rejected claims
and the prior art
What is the invention?
• Do different claims of the
application have different
priority dates?
What is the prior art?
Check the dates of the prior art. Is the prior art relevant?
To which claims? For inventive step, or just novelty?
Look at the whole prior art and do not
simply analyze the prior art claims
Finding the difference and
amending the claims
Differences
Features in the claims which are not in the prior art
Different subject matter
Different technical problem
Amending the claims
Include at least one difference between the
application and the prior art
Add new claims if necessary
Word the claims as broadly as possible but ensure
support is present
Where do I find support for
amendments?
• Two types of Paper B:
1. Literal support in the description or the
original claims (EPO/DE approach)
2. General support in entire application, e.g.
in figures (UK approach). So you have to
invent new words.
• Singapore is usually style 1, not style 2.
The invention
• A ceiling fan
The Fan
•
Original claim
1. A fan having a plurality of blades, the
blades extending from a hub.
Prior art
• There may be multiple sheets 1, arranged
on a common hub, and driven with
different phases (i.e. when one sheet is
stationary at the end of the arc, another
sheet is moving).
The Fan
•
Amended claim:
1. A fan having a plurality of blades, the
blades extending from a hub, the blades
being arranged upon rotation of the
blades about an axis, to generate a flow
of air parallel to the axis.
Note: functional limitation
Response to Written Opinion
List the rejections by the examiner
List the claim amendments
Identify support for the amendments
Explain how your claim amendments can
overcome the prior art
Novelty (Preferably short)
Inventive step (Should be well argued)
Address other objections
Clarity, Unity, Correct errors in claims, etc.
Focus on
independent claims
Letter to Client
Opportunity to explain to the examiner why you
have chosen the amendment!
Client’s letter should include:
1) Options / alternatives to the current claim
amendments, together with their pros and cons
2) Divisional required?
3) Answers to client’s questions
Change to Syllabus Last year
•
Clarifies that any situation can be
examined in which a patent is amended,
including also:
1. Amendment before paying grant fee
2. Post-grant amendment
•
The issues are very similar in these
additional situations, but....
-
For 1, consider requirements of Sec 30
For 2, consider requirements of Sec 84(3)(b)
Why people fail paper B
Most Common errors:
- Amended Claims cover prior art
- Amended Claims do not cover all
embodiments and commercial products
e.g. Is there a clue in the paper to what the client or the
competitor are actually selling? If so, ensure that it is within the
claims.
- The Humpty Dumpty Fallacy
The Humpty Dumpty Fallacy
‘There's glory for you!’, said Humpty Dumpty
`I don't know what you mean by "glory," ' Alice said.
Humpty Dumpty smiled contemptuously. `Of course you
don't -- till I tell you. I meant "there's a nice knock-down
argument for you!“ '
`But "glory" doesn't mean "a nice knock-down argument,"'
Alice objected.
`When I use a word,' Humpty Dumpty said in rather a
scornful tone, `it means just what I choose it to mean –
neither more nor less.'
Lewis Carroll – Alice Through the Looking Glass
(Chapter 6)
The Humpty Dumpty Fallacy in Action
1. A fan having a plurality of blades, the
blades extending from a hub, wherein the
fan produces a longitudinal flow of air
when the hub rotates.
The Humpty Dumpty Fallacy in Action
1. A fan having a plurality of blades, the
blades extending from a hub, wherein the
fan rotates continuously.
Informal Sharing Session for
Singapore Patent Agents
Qualifying Examinations 2012
Paper C
Tim Watkin
Marks & Clerk Singapore
Format of the question
• A first party has a granted Singapore patent
• A second party has a product which may be covered by
the patent
• You are aware of prior art
• You have to advise one of the parties (impartially):
• Is the patent infringed?
• Is the patent valid?
• Can it be made valid by amendment?
- Not asked every year. It depends who your
client is.
• Are there legal problems with the patent?
- e.g. were the “related claims” rules broken
during prosecution)?
• Are there any legal issues to advise on?
Structure of Answers
Interpretation of each claim
Validity of each claim
Infringement of each claim
Amendment
Answers to legal issues
Interpretation
What terms to take into account?
Many terms have an obvious meaning and do not require interpretation
Marks are awarded only for words with a certain ambiguity
There are more marks on the marking schedule for claim terms which are
important in assessing validity and infringement
NOTE: Interpretations are binding for the whole paper
Validity
• When attacking a claim, refer to all elements of
the claim
• Match each element in the claim with a specific
reference in a prior art document.
• Inventive steps attacks
– Windsurfer (UK). This is the fundamental way to approach
inventive step, since approved in Singapore courts.
- Could-would or problem-solution (EP). Useful ways to argue.
• Attack each claim combination separately
• Attacks based on insufficient disclosure of
subject matter: not wanted!
Infringement
Demonstrating infringement
Must show all elements of a certain claim are present in the infringing
product/method
Use the same interpretation as before
Consider each claim combination
separately.
For example, “Claim 3 is infringed
when dependent on claim 1, but
not when dependent on claim 2.”
Infringement
Literal vs. Non-literal infringement
If an element is not literally present, the claim is not literally
infringed. But it may be on a purposive construction of a claim term.
This purposive construction could emerge naturally from your
construction of the claim term (e.g. what does “vertical” mean?).
Alternatively, non-literal infringement may be found even when the
variation is not suggested by a natural interpretation of a claim term
The “Improver questions”:
Improver Corporation v Remington Consumer Products Ltd
(but see Kirin-Amgen v Hoechst Marion Roussel, which
emphasized that this is just one aspect of purposive
construction)
Amendment
• If the patent is invalid, and if your client is
the patentee, propose an amendment
– Not necessary to prepare a full amended
claim set
– Must still ensure that the patent covers the
infringing article
– If any priority claim is necessary for validity,
the amendment must be supported by the
priority document
General Remarks
• Is there a right answer? Yes, and here it is....
• Numbering claim elements to avoid having to
write them out many times (pros/cons)
• Using tables
– Probably useful for yourself.
– But do not present your answers in the form
of a table of ticks and crosses!
– A table is only acceptable as part of the
answer if each box contains as much content
as equivalent conventional prose.
General Remarks
• Legal Section
– Certain issues come up with high frequency:
- Interlocutory injunctions,
- “balance of convenience” (American Cyanamid etc)
- advisability of litigation,
- strength of the parties, etc
- Threats,
- Advisability of filing revocation action,...
General Remarks
• Preparing for Paper C
– Do past year papers!
– Get them marked!
• Time management
– Only 240 minutes of working time!
THANK YOU!
• Website: http://www.marks-clerk.com/
• Email: [email protected]