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Information for Candidates Preparing for PEB Qualifying Examinations
In order to help candidates as they plan their examination preparation, the PEB has carried out an analysis of recent examination. This analysis is also likely to be of interest to staff in firms who provide support and guidance for trainee attorneys.
Foundation Certificate Examinations
There are high pass rates for FC examinations and so relatively few candidates re-sit them.
Table 1 FC re-sits and pass rates Session Re-sitters FC1 FC2 FC3 FC4 FC5 2021 Number 0 1 1 7 4 Number passing N/a 1 1 5 4 Pass rate N/a 100% 100% 71% 100% 2022 Number 6 4 2 5 6 Number passing 5 2 1 4 3 Pass rate 83% 50% 50% 80% 50% A small number of candidates combine Foundation re-sits with attempting Final examinations.
Table 2 FC and FD re-sit combinations Combined FC re-sits and FD units Session 1 FC 1 FD
1 FC 2 FD
2 FC 1 FD
2 FC 2 FD
Other Number of candidates 2021 2 5 3 1 2 2022 5 2 1 3 1 Table 3 FD pass rates for candidates combining FC re-sits with FD examinations Candidates combining FC re-sits with FD examinations FD1 FD2 FD3 FD4 2021 Number of candidates 10 4 5 3 Number of candidates passing the FD unit 2 1 1 2 Pass rate for the FD unit 20% 25% 20% 67% 2022 Number of candidates 8 4 5 1 Number of candidates passing the FD unit 4 1 4 1 Pass rate for the FD unit 50% 25% 80% 100% Final Diploma Examinations
The highest number of re-sit attempts are for FD4.
Table 4 Pass rates by number of attempts in the previous 5 years Session Number of times unit was attempted in the previous 5 years FD1 FD2 FD3 FD4 2021 1 44% 36% 56% 51% 2 25% 42% 73% 39% 3 10% 50% 0% 38% 4 0% 50% 33% 38% 5 0% 50% N/A 23% Pass rate – all candidates 33% 38% 57% 44% 2022 1 58% 47% 82% 67% 2 51% 43% 92% 49% 3 40% 25% 100% 50% 4 30% 0% 0% 52% 5 15% 0% n/a 40% Pass rate – all candidates 50% 44% 82% 58% Table 5 was compiled from Candidate Survey response data. It is therefore an indicator rather than a fully accurate representation of the percentage of FD4 candidates who have re-sat in the recent examination sessions.
Table 5 Percentage of Candidate Survey respondents reported previous attempts at FD4 examination Session None or one Two Three Four Five or more 2020 75% 9% 8% 1% 7% 2021 73% 15% 5% 3% 4% 2022 66% 15% 8% 4% 7% As reported by candidates, the percentages who have re-sat FD4 one or more times appears relatively consistent in the past three sessions. However, the percentage of candidates with either one or no previous attempts at FD4 has dropped from 75% in the 2020 examination session to 73% in 2021 and to 66% in 2022. With the exception of the 2021 session, FD4 pass rates have steadily improved since 2018 when the pass rate was exceptionally low. This would appear to have resulted in lower percentages of re-sit candidates as reported in the Candidate Survey data.
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FD1 Guidance (P2)
Knowledge and Experience for Final Diploma Examination FD1 Advanced IP Law and Practice (P2)
Introduction
This guidance has been prepared to assist candidates in preparing for the PEB qualifying examinations. They are intended to identify the knowledge and experience candidates should attain prior to sitting the examination.
Different candidates will have widely different opportunities for training and gaining experience, depending on the pattern of work in their firms or companies. Using these guidelines will help candidates to identify areas where the knowledge and experience gained in the workplace will have to be supplemented through tutorials, seminars, training courses, private study or other means.
It is unlikely that candidates with less than three years’ experience in the profession, including at least a year acting mainly on their own responsibility, will have sufficient experience to address this paper.
Overview
This examination tests the competence to properly advise and act for a client in any matter relating to the preparation, prosecution, exploitation and enforcement of patent rights in the UK and via the EPC and PCT. Knowledge of the basic patent law in major countries (notably the USA and Japan) is also required.
While the precise materials may change from year to year, typically the paper is made up of six compulsory short questions relating to application and prosecution procedural matters and two or three longer questions where a client requires advice on patent matters in a commercial situation. Knowledge of the principles of leading case law is recommended, though it is not necessary to quote any cases. Candidates should be familiar with the different needs and expectations of clients from different backgrounds, e.g. with regards to the consequences and costs of suggested actions, and should give sound practical advice accordingly. The time allowed for this paper is 4 hours.
Guidance
It is recommended the candidate be familiar with the statutes set out in the syllabus. In addition, it would be helpful for the candidates to have sufficient practical experience, as described below.
Miscellaneous Practice Matters
Candidates should have advised on and/or prepared at least half of the items in the following list, and should be at least aware of considerations for the others in practice:
For GB patents/applications:
- Assignment.
- Change of name or address.
- Requesting file wrappers and/or UKIPO register extracts.
- Filing statutory declaration or affidavit in support of ex-parte and inter-partes proceedings.
- Request for a discretionary extension of time under r.108 and/or r.110.
- Application to restore a UK patent lapsed for non-payment of a renewal fee.
- Pre-litigation negotiations with a third party.
For EP (UK) patents/applications:
- Completing acceptance/grant procedures before the European Patent Office, beingthoroughly familiar with key due dates.
- Effecting validation of a granted European Patent (UK), being thoroughly familiar with keydue dates including renewal fee due dates.
- Applying for further processing of a European patent application.
- EPO Opposition procedure.
- EPO central limitation procedure.
For GB or EP (UK) patents/applications:
- Opinion on potential protection available for a proposal (not yet the subject of a patent application or other registered protection) in light of the prior art.
- Opinion on inventorship and/or ownership, including employee’s rights.
- Opinion on infringement.
- Opinion on validity (patentability).
- Opinion on validity (sufficiency).
- Opinion on availability of convention priority, including requesting a “late” priority claim.
General/Multi-jurisdiction:
- Estimate of the cost of filing a UK, European and/or International patent application.
- Taking over representation of a UK/European/International application or granted patent.
- Estimate of the cost of filing a patent application in the US or Japan.
- Any matter involving competition law issues.
- Availability of different types of IP right available for a project (e.g. patent, utility model, trade mark, registered and unregistered design rights, copyright, etc.).
- Comparison of claim types available in different jurisdictions.
Patent Office Hearings
Have prepared for, either as principal or assistant:
- 2 ex-parte or inter-partes hearings, at the UK, European or any other national Patent Office. Have attended, either as principal or assistant:
- 1 ex-parte or inter-partes hearing, at the UK, European or any other national Patent Office.
Official Actions from Patent Offices
Have reviewed and advised on:
- 5 official actions from WIPO or a National Patent Office acting as Receiving Office, International Search Authority or International Examining Authority for an International Patent Application.
Have advised on and responded to:
- 10 official actions from the UK and/or European Patent Office, of which at least 5 are from the UK Patent Office
- 5 office actions from any other Patent Offices, but especially from the USPTO and JPO
Filing of New Patent Applications
Have filed or sent instructions for filing:
- 10 UK or European patent applications
- 5 International patent applications
- 5 patent applications, or 5 national phase entries, at other Patent Offices
- A national phase entry to the UK national phase
- At least one entry to the European regional phase
Experience external to the workplace
Have attended:
- 12 hours per year of CPD seminars, including at least some outside the workplace.
Have regularly read:
- 1 monthly IP law publication
Feedback from Examiners
Examiners’ Reports for each past paper are available on the PEB website. In summary Examiners find that candidates would benefit by giving more attention to:
- Priority
- Ownership (who owns rights; how transferred; assignments, etc)
- Novelty (especially ‘Article 54(3) EPC’ type situations)
- Inventive step
- Imagining being in front of the client and giving advice
- Providing the client with advice, not a list of the law that is relevant
- Identifying problem areas in a question and applying the law to those areas
- Creating a time line where the chronology of events is important to the question.
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FD2 Guidance (P3)
Knowledge and Experience for Final Diploma Examination FD2 Drafting of Specifications (P3)
Introduction
This guidance has been prepared to assist candidates in preparing for the PEB qualifying examinations. They are intended to be used to identify the knowledge and experience candidates should attain prior to sitting the examination.
Different candidates will have widely different opportunities for training and gaining experience, depending on the pattern of work in their firms or companies. Using these guidelines will help candidates to identify areas where the knowledge and experience gained in the workplace will have to be supplemented through tutorials, seminars, training courses, private study or other means.
It is unlikely that candidates with less than three years’ experience in the profession, including at least a year acting mainly on their own responsibility, will have sufficient experience to address this paper.
Overview
This document should be read alongside the FD2 syllabus, which details what is expected of a candidate. This examination is a test of competence to understand a simple technical problem and, primarily, to draft claims for a new patent application that clearly define the invention and give the maximum potential for protection in view of the disclosed information. While the technical problem will differ from paper to paper, candidates will always be expected to draft GB claims, both independent and dependent; and to draft a specification, either whole or in part, made up of an introduction, prior art review, object, statement(s) of invention, specific description and abstract. The time allowed for this paper is 4 hours.
Guidance
Candidates should:
- Have drafted 10 UK patent applications.
- Understand how to apply the significant case law on drafting specifications, especially claims, as indicated in the relevant sections of or as reported in:
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- CIPA Black Book.
- Reports of Patent, Design and Trade Marks Cases.
- Be familiar with the principles of drafting descriptions, claims and abstracts for UK, European and International patent applications as indicated in:
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- The Patent Office Manual of Patent Practice.
- Fundamentals of Patent Drafting – Paul Cole, 2006.
- Be competent in amendment practice as examined by examination FD3.
- Have attempted, and have had reviewed, at least 5 past FD2 papers under examination conditions.
Although FD2 tests candidates’ competence in drafting for UK applications only, from a broader practice perspective the candidates are recommended to:
- Have a basic knowledge of the principles of drafting claims for Europe, United States, Australian and Japanese Claims.
- Have prepared a patent application for use in one or more of United States, Australia and Japan.
- Have prepared EP or PCT patent applications.
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FD3 Guidance (P4)
Knowledge and Experience for Final Diploma Examination FD3 Amendment of Specifications (P4)
Introduction
This guidance has been prepared to assist candidates in preparing for the PEB qualifying examinations. They are intended to identify the knowledge and experience candidates should attain prior to sitting the examination.
Different candidates will have widely different opportunities for training and gaining experience, depending on the pattern of work in their firms or companies. Using these guidelines will help candidates to identify areas where the knowledge and experience gained in the workplace will have to be supplemented through tutorials, seminars, training courses, private study or other means.
It is unlikely that candidates with less than three years’ experience in the profession, including at least a year acting mainly on their own responsibility, will have sufficient experience to address this paper.
Overview
This examination is a test of the competence to respond to patentability objections by argument and amendment while ensuring that the patent claims remaining in an application (or proposed for a divisional application) not only meet the requirements for patentability (including e.g. clarity) and amendment but are still of commercial value to the applicant.
While the precise materials may change from year to year, typically the paper is made up of at least: one patent text, one office action, prior art documents or relevant extracts and instructions from the client or other indicating the commercial interest in the invention covered by the patent text. The time allowed for this paper is 3 hours.
Guidance
As part of their answer, candidates are expected to:
- Amend Claim 1 to fix any errors and to address any concerns in the examination report or client letter;
- Correct and expand the dependent claim set, if possible, to provide additional and useful fallback positions;
- Propose an independent claim for a divisional application (if appropriate);
- Prepare a response to the UKIPO that includes a summary of the basis for any amendments, a novelty analysis, and an inventive step analysis, and that deals with any other items specifically raised in the paper (e.g. extensions of time); and
- Provide a memo to the client which explains the actions taken (not only describes what has been done), answers the client’s questions, and (importantly) identifies any potential weaknesses in the response that the client should be aware of.
Candidates are expected to comment on the relevance of all documents to the patentability of the claims, whether this is in the response to the UKIPO or in the memo to the client. Either a Pozzoli/Windsurfing analysis or the EPO problem–solution approach to inventive step will gain marks but it is important that the candidates do not confuse the two approaches in their argumentation.
Prior to this examination candidates should:
- Accumulate the appropriate level of knowledge and experience:
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- Responded to 30 official actions from the UK and/or European Patent Office.
- Reviewed, and responded to at least some of, 10 written opinions from an IPEA.
- If opportunity made available, considered and advised (client or supervising attorney) on amendment in preparation for or during European opposition proceedings on at least 1 occasion.
- Prepared and filed one or (preferably) more divisional applications.
- Have read the significant case law on novelty, inventive step, clarity and amendment issues (including the filing of divisionals) as indicated in the relevant sections of or as reported in:
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- Case Law of the Boards of Appeal of the European Patent Office.
- CIPA Black Book.
- Reports of Patent, Design and Trade Marks Cases.
- Official Journal of the European Patent Office.
- Be familiar with examination principles of novelty, inventive step, clarity and amendment (including the filing of divisionals) in the UK and European Patent Offices as indicated in:
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- The Patent Office Manual of Patent Practice.
- Guidelines for Examination in the European Patent Office.
In particular candidates should be familiar with the tests used by the EPO and the UKIPO respectively when assessing inventive step and the exclusion of certain subject matter from patentability.
- Be competent in drafting practice as examined in Paper FD2.
Feedback from Examiners
Examiners’ comments for each past paper are available on the PEB website. Candidates tend to perform adequately on:
- Assessment of novelty.
- Relevance of publication dates in novelty & inventive step assessment.
Candidates would benefit by giving more attention to:
- Practising arguments in support of inventive step.
- Being alert to prosecution/amendment differences between UK andEuropean practice (eg differences on extension procedures).
- Looking for the points in the question stated to be of practical importance tothe client.
- Setting time management for the paper such that enough time is allowed forthe client report.
- Ensuring that the client report provides a full explanation to the client of theaction taken with particular attention to covering the areas of practical importance to client.
In particular, candidates who concentrate on the practical issues in the question tend to score good marks. Thus if a client needs the claims to cover a new product (his own or a third party product) on the market, but the relevant claims are worded too broadly for patentability, eg from the objections/prior art located by the Examiner, then the claim amendment(s) selected have both to be patentable (be clear; be novel; support a reasonable inventive step argument; not add subject matter, etc.) but ALSO still cover the product. Thus Candidates who move beyond merely identifying a difference, writing a response and just reporting the facts in isolation of what is important to the client, will gain more of the marks available in this paper than those who do not.
Since this paper tests skills in prosecution techniques geared to a commercially relevant situation, candidates need to ensure that their time management is good and allows adequate time to write a client report which indicates the steps taken; how the client’s position is still protected; and the practical consequences of the position taken in response (eg if the amended claims might lead to a lack of unity objection, the client has to be advised that divisional costs may need to be borne in the future if objection is raised and the client wishes to pursue all of the claims). Candidates can test for themselves by practising past papers whether they tend to spend too long on any one part of the answer and whether certain techniques will help to free time for the client report, eg reducing the time taken on the amendment section by only rewriting the claims that have been amended and marking the remainder as ‘unchanged’.
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FD4 Guidance (P6)
Knowledge and Experience for Final Diploma Examination FD4 Infringement and Validity (P6)
Introduction
This guidance has been prepared to assist candidates in preparing for the PEB qualifying examinations. They are intended to identify the knowledge and experience candidates should attain prior to sitting the examination.
Different candidates will have widely different opportunities for training and gaining experience, depending on the pattern of work in their firms or companies. Using these guidelines will help candidates to identify areas where the knowledge and experience gained in the workplace will have to be supplemented through tutorials, seminars, training courses, private study or other means.
It is unlikely that candidates with less than three years’ experience in the profession, including at least a year acting mainly on their own responsibility, will have sufficient experience to address this paper.
Overview
FD4 is a test of the competence to properly advise a client facing the possibility of being an infringer of a patent or the proprietor of a patent being infringed. While the precise materials may change from year to year, typically the paper is made up of at least: 1 patent, 1 alleged infringement, 2 or more prior art documents and 1 letter explaining the background and seeking advice. The time allowed for this paper is 5 hours.
Guidance
Candidates should:
- Understand the fundamentals of interpreting patent claims in the UK.
- Have experience of drafting and prosecution.
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- Drafting and prosecution skills assist a candidate in interpreting a claim and establishing the validity of the claim, as interpreted, against prior art as well as determining whether there is infringement of a valid claim.
- Eighteen months of full-time experience of drafting and prosecution should give a candidate a basic understanding of claim drafting and interpretation.
- Have advised on “freedom to use” or in connection with infringement proceedings.
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- An understanding of the three-way situation of a patent, a possible infringement and prior art that is tested in FD4 will be greatly assisted by “freedom-to-use” exercises. During training in drafting and prosecution a candidate must learn to criticise the work done (e.g. claims drafted) and assess whether the work would withstand an attack on validity and be effective to deter a possible infringer. It is especially helpful for a candidate to be involved in any real life freedom-to-use situation. It is suggested that, as an exercise, initially the candidate can be given the basic papers (e.g. from a previous situation) and asked to prepare a report. This can be compared with the eventual advice given.
- Involvement in infringement proceedings, or in any part of their preparation, will also greatly assist, especially in appreciating that others will often take a different (at least initial) interpretation of a given claim. It is realised that suitable real life infringement situations are not common. Again, using a past example as an exercise is recommended.
- Have completed at least three past papers under examination conditions.
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- These should be reviewed in detail with a tutor.
- Have reviewed the Examiner’s comments for at least 3 past papers.
- Have studied at least 3 decisions, to learn how the UK Courts deal with interpretation.
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- These are real life examples and emphasise how a consistent approach for validity and infringement must be adopted and followed.
- Be aware of the topics examined in Papers FC1 to FC3 as any of these can be relevant to the analysis and advice concerning infringement. In particular, refer to the FD4 syllabus for relevant sections of the UK Patents Act and related rules required for the examination.
- Be familiar with case law relating to interpretation of claims by UK courts and assessment of novelty, obviousness and infringement; as of June 2008, suitable case law is believed to include:
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- Improver Corp v Remington Consumer Products Ltd [1990] FSR 181
- Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC59
- Pozzoli SPA v BDMO S.A & Other’s [2007] EWCA Civ 588
- Conor Medsystems Inc (Respondents) v Angiotech Pharmaceuticals Inc and others. (Appellants) [2008] UKHL 49
- Adhesive Dry Mounting v Trapp (1910) 27 RPC 341
- United Wire v Screen Repair [2000] FSR 204
- Merck & Co Inc v Generics (UK) Limited [2003] EWHC 2842 (pat).
- Kirin-Amgen Inc and others (Appellants) v. Hoechst Marion Roussel Limited and others (Respondents); Kirin-Amgen Inc and others (Respondents) v. Hoechst Marion Roussel Limited and others; [2004] UKHL 46
- Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Patent Application [2006] EWCA Civ 1371
- Astron Clinica Ltd & Others [2008] EWHC 85 (Pat); [2008] WLR (D) 12
Feedback from Examiners
Examiners’ Reports for each past paper are available from the PEB website. In summary candidates perform satisfactorily on:
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- Assessment of novelty
- Assessment of infringement
Candidates would benefit by giving more attention to:
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- Preparation of a detailed interpretation of the claims.
- Modifying the interpretation during the examination after realising e.g. from reading the art that the interpretation is inadequate in some respect.
- Ensuring that an interpretation modified in this way is then consistently applied throughout the answer.
- Providing a reasoned assessment of inventive step.
- Providing useful advice to the client based on the conclusions reached and the particular facts of the question, rather than a list of standard actions that would be common to any infringement situation.
In more detail, on interpretation of the claims, Examiners find that candidates who take an iterative approach to interpretation tend to score good marks. In an iterative approach, an initial interpretation is taken. This may have to be modified later in light of information or knowledge from another part of the question. This isn’t an endless cyclical process, but one in which candidates take a first interpretation then realise during analysis of, say, novelty, that the interpretation needs fine tuning – perhaps there is a term they thought unimportant which now clearly is; perhaps there is a term upon which novelty turns and they realize they looked only in passing at that term first time round, thinking it to be straightforward. If it is realised that more detail is needed then the detail should be added.
If the initial interpretation of a given feature is modified during consideration of, say, infringement and the modified interpretation used to reach conclusions in the infringement section then the same, modified interpretation must also be used for all sections. Hence, when the interpretation is modified during the examination then candidates should go back and modify this wherever it is used. Thus, candidates have to accept that their conclusions on the right meaning of features in the claims may emerge during the examination and that the final interpretation may only come during or even towards the end of the whole exercise.
Candidates who err towards a fuller interpretation of the claims also tend to score good marks. The features selected for interpretation set the framework for the rest of the examination. These features can then each be discussed under validity and infringement, leading to a detailed discussion of many points relevant to the final interpretation and conclusions. A point not covered in the interpretation will not be discussed further, and if it is relevant potential marks will not be gained.
