Paper D2: 5 common mistakes
After 10 D2 study group meetings (8-12 candidates in a group), I noted the most frequently made mistakes so that you can all learn from these and gain more marks.
Mistake No. 1: not writing (enough) about the prior art
I am starting with the most common mistake. Candidates very often fail to describe the prior art in their situation as-is analysis and only mention novelty destroying prior art. A statement I hear often is “there is no prior art”, which is rarely true. There are usually several pieces of prior art, i.e. documents published before the effective date. It might be the case that the prior art is not novelty destroying, but that does not change the fact that there is still prior art, making the statement “there is no prior art” incorrect.
If you don’t have time to describe all prior art, a better statement to use is “there is no relevant prior art” or “there is no novelty destroying prior art”.
In my D2 answer, I tried to describe all pieces of prior art, even if not relevant. Then, under novelty, I only discussed the relevant ones.
Mistake No. 2: assuming the EPO is correct
The EPO might raise objections and these objections are not always right (e.g. lack of clarity or essential feature missing, see 2012 Paper D2 for example). You have to double check, using the information about the disclosures, if the EPO is right or not. Usually, there are hints in the client’s letter to help you decide (again, see 2012 Paper D2).
My point is: don’t assume that every EPO objection is right.
Mistake No. 3: assuming the EPO finds every relevant prior art
In the D2 part it often happens that the EPO doesn't find all prior art and grants a patent invalidly (e.g. 2021 Paper D2). In this case, you might need to suggest attacking that patent (if it belongs to the competitor) or limiting (if it is your client's).
For this reason, you cannot argue in your answer that "Yes, claim is novel, because the EPO already sent the R.71(3) communication". While this might be true in certain cases, this is not a good argument. Novelty should be argued based on the effective date and prior art published before that date (plus Art.54(3) if applicable) and never with the fact that the search report was positive or communication about the intention to grant was already sent.
Mistake No. 4: not writing down the “obvious”
The marker does not know what you are thinking while writing your answer. You can only get marks for things you actually write down. Candidates, especially smart candidates (which, let’s face it, applies for basically everyone in our profession) often think “oh that is obvious, I don’t need to write that down”. However, this is not true, you can get a lot of marks for analysing relatively simple things, such as the validity of the priority claim.
Remember that repeating information from the text (e.g. the filing date is XX.XX.XXXX) does not give you marks, but using the information from the text to make new conclusions gives you marks, e.g. “the effective date is the filing date, since there was no priority claimed”. This statement is so obvious, right? And you still need to write it down to get your mark.
Mistake No. 5: Writing in general, not applying the facts from the letter
Saying general things, such as “the claim is novel” or “the claim is not novel” are not good enough, you always have to give reasons, using information from the text or conclusion from your analysis. Saying that “the claim is novel, because there is no prior art disclosing X” is much better.
To give you another example, I’m going to use my example in the previous point, the step of checking the priority claim. Writing that “the effective date is the filing date” is not a full argument, you have to argue why. Similarly, writing that “the effective date is the priority date” is not enough yet. Saying that “the priority is valid because the application was filed by the same applicant” is still a bit broad, you should add who that applicant is. (And then also discuss the other requirements of a valid priority claim.)
This is what I wrote for an application in my actual EQE (2021):
Effective date of claim 1: filing date of W-EP, since the claimed priority is not valid. Although W-EP was filed within 12 months of W-IT, by the same applicant: W, it was not claimed from the first application. The first application is W-JP for S, so priority should have been claimed from W-JP, no later than 12 months from W-JP (until 2 Jan 2018).
Would you like to do D2 exams together?
My last D2 study group starts on 8 January 2022, which is fully booked with 10 people. However, since a few people are usually missing from the meetings, I decided to allow 1-2 more people if there is an interest.