New e-EQE has major improvements

The original post is on the IP.appify blog.

Major improvements already visible

• A detailed EQE syllabus: the proposal explicitly mentions what candidates need to study and prepare. Assuming it is checked and updated yearly, this will be very useful, especially for those who get little support from their employer.
• Smaller testable blocks: the current C exam has shown that splitting the current exams is impossible, so this is the only way forward.
• More flexibility in question and answer type: using real multiple-choice (not just True/False) greatly simplifies the exam drafting process, and helps non-native speakers at least get some marks if they miss nuance in a question.
• Closer to real-life: the “competencies tested” sections are real-life competences. That means candidates can look at actual real-life examples and discuss with experienced colleagues how they do it.
• No more “puzzle-exams”: mainly achieved by starting again, bottom up with smaller pieces. See below for additional changes needed in the EQE organisation to maintain this.

Suggested changes in proposal

• Missing subjects:
  • M3 & M4: unitary patent (UPC) still needs to be covered
  • M2: communications in appeal
  • M2 or M3: Rules of Procedure for Boards of Appeal
  • M1 & M2: technical fields and types for which claims must be drafted / amended, for example: apparatus, system or device claims with mechanical / electrical / software elements, Means-plus-function, method, process or use claims with actions, Step-plus-function, “Product by process” claim, chemical processes, computer-program, computer-implemented inventions, composition of matter inventions
• Add provisions / subjects that will NOT be tested: such as
  • All exams => no substantive enablement (A. 83 EPC)
  • All exams => no EPC provisions dealing with organisation, internal financing, treaty amendment and treaty accession: A.4, A.4a, A.5 – A.13, R.9, Protocols on Staff Complement / Centralisation / Privileges & Immunities, A.26 – A.36, A.37 – A. 50 and A.165 – A. 166, A.169 – A. 178
  • All exams => no PCT provisions dealing with organisation, internal financing, treaty amendment and treaty accession: A.50 – A.52, A.53, A.54 – A.57, A.58(1)-(4), R.84 – R.85, R.88 – R.89, A.59, A.60 – 61, R.81, R.88 – R.89, A.62 – A.63, A.65 – A.68, A.69(i)-(iii), A.69(vi)-(vii)
  • All exams => no case law expected which is not in the EPO Guidelines or G decisions or published in OJEPO in last 3 years. For the current exams, there is no official limit to case law which can be asked. Preferred is a list of decisions which should be studied. Also possible are selected sections from the Case Law book. Candidates remain free to cite relevant decisions themselves if it supports their arguments.
  • All exams => no OJEPO notice which is not in the EPO Guidelines or published more than 3 years ago. For the current exams, there is no official limit to notices which can be asked. Preferred is a list of notices which should be studied. Candidates remain free to cite relevant notices themselves if it supports their arguments.
  • All exams => no citations required to support arguments relating to national law
  • M1 & M2 => technical fields and types for which claims do not need to be drafted / amended, such as: Markush-group, biotech inventions, claims based on a biological deposit, claims based on a sequence.
• More substantive infringement: infringement is only in M4. Assuming that the level will be similar to the current D2 exam, the substantive analysis will be artificially limited to genus/species relationships and equivalents.
  • M4* should also cover more real-life situations, like Compare a claim to a description of an invention with drawings to determine direct or equivalent infringement, Respond to a Cease-and-Desist letter. Keep it in M4 – M2 is already pretty full, and it fits better in M4 if you consider the level needed.
• Replace M1 by part of M2: (updated 7 Sep 22) the level for M1 is difficult to figure out for both candidates and the exam drafters. It is great to test some basic skills which apply more generally, but there is a big overlap with what you need to master for M2. And M2 is already pretty full. This also allows more appeal subjects to be covered by M2.
  • M1* should cover Drafting claims and description, Replying to an Office Action, Amending claims in Examination, reply to WO-ISA, patentability reasoning), with the M2 mix of multiple choice and open questions / free text, at about the level of the previous A and B exams (these were intended for candidates with only 2 years experience. The current B exam has become too much more advanced).
  • M2* should cover Drafting an opposition or appeal, replying to an opposition or appeal, replying to communications from OD or BoA, Amending claims in opposition or appeal, patentability and legal reasoning.
• Provide example letters: many “competencies tested” are based on real-life, so it would help candidates (and practicing attorneys 🙂 if a selection was available of good real-life examples, such as Drafting an opposition, Drafting an appeal, Reply to notice of opposition, Reply to a notice of appeal etc.
• No “negatively marked” exams: for all exams, start with 0 marks, and award marks for correct and acceptable comments. The current A and B exams start with 100 marks, and candidates lose marks for each “mistake”. But this is only fair to all candidates if every possible mistake can be anticipated by the exam drafters.
• Introduce negative penalty marks: if candidates include something which shows a fundamental or dangerous lack of understanding, some marks should be deducted. For example, on M4 informing a client that they are free to produce “A+B” because they have a patent claiming “A+B”.
• Testing must also reflect “real-life”: to be consistent, a “mistake” which is fully correctable/recoverable later in the proceedings should only lead to a very limited loss of marks. For example:
  • not using a two-part claim (penalised in current A & B exams), using an incorrect “closest prior art” (severely penalised in current C exam), drafting a broader claim than expected (penalised in current A & B exams).
  • less weighting in the marking to trivial and completely obvious arguments, or to trivial invalidity attacks which would be dismissed out-of-hand later in the proceedings
  • solutions expected for claims should not be inherently unclear or over-broad, and an experienced attorney should also find the claims acceptable (a problem with current A & B exams – functional claims are often required for full marks, and phrases like “empty cavity” have been required in past exams.

Changes needed in EPO / epi organisation

• Fewer people making exams: to increase consistency over the different modules.
• Agree an official epi/EPO EQE budget: to reduce reliance on volunteers, to pay at least exam drafters for their time, and to stimulate more people to assist.
• More prominent role for epi: if the exam is to be more “real-life”, then this depends greatly on a proactive role by the epi. Most candidates assume it is EPO exam, so they are unaware of the major contribution by the epi. They do not realise that they can also give feedback through the epi committees.
• Less freedom to deviate from the syllabus: new elements should represent no more than 10% of each exam. Anything larger than that must be announced well-ahead of the exam.
• Fair, consistent treatment for non-native speakers: the current unpublished procedure of non-native speaker checking does not work consistently. Exam lengths and language-use vary wildly between exams and from year-to-year (mainly seen in the current B and C exams). Maximum exam lengths (in words) can be set. In addition, technical terms can easily be translated into many languages (many years ago this used to be provided with the C exam), for example using the WIPO database.
• Transparent, accessible and speedy objection / appeal system: there needs to be a much faster way of identifying and fixing mistakes in the exams. “Highlights” of the current system include: only 1 month to file grounds, no official publication of the exam marking and appeal procedures (except the REE), appeal only accepted by fax (+ confirmation copy) or post, payment only by bank transfer, unreasoned decisions, deliberate delaying of hearings & decisions until after the next exam.
• Provide flexibility for enrolment dates: (added 7 Sep 22) currently the dates are strictly enforced, with no formal ways to request an extension or to request re-establishment. This is very old-fashioned. There should be at least a grace period with a 50% surcharge, and the possibility to request re-establishment if all due care can be proven. With the move to a digital exam, there is no good reason why this should not be provided.
• Introduce compulsory permanent education: it makes no sense to devote this much attention to a small group of future representatives (about 6% of the 12400 practitioners on the list) when the knowledge evaporates within weeks / months of the exam. The goal of the profession should be to elevate and maintain the knowledge levels of ALL practicing professional representatives.
• Allow anyone to take any exam modules at any time: such as qualified European patent attorneys, lawyers, employees of applicants, formalities officers, national attorneys, technical assistants, and EPO examiners, so that they can voluntarily learn and stay up-to-date in a structured way.

Comments on some criticisms

• Testing less means it is easier to pass without studying: actual learning occurs during study and daily practice, and this is the same for every exam. It is even the same for the current EQE exams – some learn less PCT, relying on their EPC knowledge to pass, and they get away with it on about 1/4 of D exams.
  • In the new system, it will be much harder to predict what they will not ask, so the preparation will need to cover more.
  • During preparation, candidates will generate a set of materials which they will continue to use in real-life, so there will be much less of “just learning it for the exam”.
• EQE is the knowledge gateway to the profession: this may have been true in 1980’s, but it is no longer true.
  • EQE candidates currently represent about 6% of the 12400 practitioners on the list. This does not include others who interact with the EPO, such as national lawyers, employees of applicants, formalities officers, trainees and technical assistants / patent engineers.
  • Most of the very detailed knowledge evaporates within a few weeks / months of the exam. Compulsory permanent education would be more effective than over-testing EQE candidates.
  • The most up-to-date professionals in the offices / departments are the formalities officers / paralegals because most changes are procedure-related. It is great news that there is now an EP exam especially for patent administrators !
• Just keep the longer exams: this is not an option. There are there major health and safety issues, and many contracting states have laws against forcing people to work too long behind a computer. In addition, the longer the exam:
  • the more chance that technical difficulties will occur. A crash leads to approximately 20 minutes lost, resulting in additional stress.
  • the more opportunity for cheating
  • the more pages that need to be read on the screen or preprinted (the printer can also fail)
• Go back to separate Electricity/Mechanics and Chemistry modules: (updated 7 Sep 22) in daily private practice, there is less need for such specialists because new clients need to be accommodated. Inventions are made in many different fields even for the same applicant, and this will change for innovative clients. It is much better to have train and assess generalists who can refine their drafting/amending skill during daily work, and are therefore not afraid to learn new areas.
  • a good resource for learning general claim drafting is “Landis on Mechanics of Patent Claim Drafting” by Robert C. Faber. It focusses on US-style (so you need to filter that out), but it has a many practical examples in different technical fields (from Mechanics to Sequence Listings) where you are guided through practical claim drafting. It is an expensive book, but every attorney firm and patent department should really have a copy.
  • of course you should not be reckless or negligent when taking a case, but that applies to all aspects, not just the technical competence. but “competence” = combination of skills (ability to perform a task), knowledge (ability to understand and explain a task), experience (type, years, supervision committed to obtaining said knowledge) and behavior. 
  • “deep” specialists are often preferred in-house, but they are a problem in private practice because their future is coupled to the workload from existing clients. Even “deep” specialists should be continuously learning.
• Go back to the old in-person EQE: this will never happen. It was always a massive effort and cost to arrange all the exam locations, to get the paper copies of the exams there, to collect all the exam answers, to scan them and to mark the handwriting. It was also a massive effort for candidates to ensure that they arrived timely at the exam location with all their books and to write by hand for several hours.
  • but an organisation, like a national patent office, could provide invigilation and reliable internet connections for local candidates (similar to the system used for the UK national exam). They could also provide computers or at least monitors/keyboards. And they would need to provide IT support :-).