The team is joined by GuestKats Mirko Brüß, Rosie Burbidge, Nedim Malovic, Frantzeska Papadopolou, Mathilde Pavis, and Eibhlin Vardy
InternKats: Rose Hughes, Ieva Giedrimaite, and Cecilia Sbrolli
SpecialKats: Verónica Rodríguez Arguijo (TechieKat), Hayleigh Bosher (Book Review Editor), and Tian Lu (Asia Correspondent).

Friday, 23 March 2018

Investment disputes, trademarks and licenses, and ICSID tribunals-"Bridgestone v. Panama"

Kat friend Simon Klopschinski, of rospatt osten pross, has kept IPKat readers up-to-date on major developments in arbitration law as they apply to IP. Below he discusses an important recent result in this regard, Bridgestone v. Panama.

In the recent intellectual property-related investment arbitration of Bridgestone v. Panama, the arbitral tribunal in its Decision on Expedited Objections of December 13, 2017 assumed jurisdiction over the case. It did so by qualifying trademarks and licenses as “investment” within the meaning of Article 25 of theICSID Convention and the relevant international investment agreement (IIA), i.e. the United States-Panama Trade Promotion Agreement (TPA). The ICSID Convention establishes the International Centre for Settlement of Investment Disputes (ICSID) in Washington DC, which is the major investor-state dispute settlement (ISDS), forum. Article 25 ICSID Convention provides “[t]he jurisdiction of the Centre shall extend to any legal dispute arising directly out of an investment [...].

The Bridgestone v. Panama case differs from previous IP-related investment arbitrations, e.g. Philip Morris v. Uruguay, in that the tribunal regarded trademarks and licenses as sufficient to constitute an “investment” under Article 25 ICSID Convention, despite the absence of any other form of investment commonly associated with investment, e.g. shares or real property. Thereby, the tribunal has opened an additional possibility to litigate IP disputes in an ISDS context.

The facts of the Bridgestone v. Panama arbitration read like an unjustified threats case gone wild. Different entities of the Japanese Bridgestone group, which manufactures and markets tires, owned the trademarks BRIDGESTONE and FIRESTONE or were licensees of these trademarks, respectively. It was the policy of the Bridgestone group to oppose any third party application to register a trademark in relation to tires that bears the suffix “-stone”. After the Chinese Luque Group had unsuccessfully tried in 2002 to register the RIVERSTONE trademark in the US, on November 3, 2004, Bridgestone’s US lawyers wrote to Luque, warning them that Luque would be “acting at its own peril” if it used the RIVERSTONE trademark in other countries. In 2005, a Luque subsidiary filed for registration of the RIVERSTONE trademark in Panama. In response, the two Bridgestone entities BSJ and BSLS, in their respective capacities as the owners of the BRIDGESTONE and FIRESTONE trademarks in Panama opposed the Luque application. The opposition was denied in first instance proceedings. BSJ and BSLS filed an appeal but subsequently withdrew it.

Luque then commenced proceedings in the Panamanian court against BSJ and BSLS, alleging that its filing of the opposition proceedings had been wrongful and had caused Luque to cease sales of RIVERSTONE tires out of a fear that their inventory would be seized if they were to lose in court. Luque, inter alia, argued that these fears were justified taking into account the letter of Bridgestone’s US lawyers of November 3, 2004 (see above). In 2014, the Panamanian Supreme Court decided in favour of Luque and ordered in its judgment of May 28, 2014 BSJ and BSLS to pay US$ 5 million (plus attorney fees) to Luque.

In response, the two Bridgestone entities BSLS and BSAM filed a request for arbitration with the ICSID against Panama. BSLS and BSAM claimed for compensation in the amount of US$ 16 million under the TPA, arguing that the judgment of the Panamanian Supreme Court had diminished the value of their investment, i.e. trademarks and licenses, by weakening the protection given to them in Panama and elsewhere in Latin America. As far as BSLS is concerned, the investment relied on is the FIRESTONE trademark registered in its name in Panama. The investments in relation to which BSAM seeks relief are (i) the license that it had been granted by BSLS to use the FIRESTONE trademark registered in Panama; and (ii) the license that its wholly owned subsidiary, BATO, had been granted by BSJ to use the BRIDGESTONE trademark registered in Panama. In its Decision on Expedited Objections of December 13, 2017, as discussed below, the arbitral tribunal dismissed a number of preliminary objections that Panama had raised.

One of Panama’s objections was that BSAM did not have a qualifying investment. Under the applicable rules of the TPA, an “investment” must be an asset that is capable of being owned and controlled. In addition, the asset claimed to be an investment must have the “characteristics” of an investment, i.e. a commitment of capital or other resources, expectation of gain or profit, and assumption of risk. Similar criteria apply to an “investment” under Article 25 ICSID Convention. The tribunal set up the following legal standards under which trademarks and licenses can qualify as an investment:
“In summary, a registered trademark will constitute a qualifying investment provided that it is exploited by its owner by activities that, together with the trademark itself, have the normal characteristics of an investment” (para. 177)."

“Under the footnote to Article 10.29 (g) of the TPA a license will not have the characteristics of an investment unless it creates rights protected under domestic law, that is under the law of the host State. No similar provision applies to (f) “intellectual property rights”, but the Tribunal is in no doubt that they must be rights protected under the law of Panama, otherwise they can neither properly be described as “intellectual property rights”, nor as “assets.”

The respective Claimant must own or control, directly or indirectly, the rights granted by each License.

The License must be exploited by the licensee in the same way as a trademark must be exploited if it is to qualify as an investment, as above described”
(paras. 178 to 180).
The tribunal held that a trademark is exploited by the manufacture, promotion and sale of goods that bear the mark. Such exploitation confers upon the trademark, by virtue of the core trademark functions, the characteristics of an investment. Thus, resources are dedicated, both to the production of the articles sold bearing the trademark and to the promotion and support of those sales. Another way to exploit a trademark is that the owner may license the use of the trademark under an agreement that grants to the licensee the right to exploit the trademark for its own benefit.

Against this background, the arbitral tribunal found that BSAM’s rights as licensee of the BRIDGESTONE and FIRESTONE trademarks were qualifying investments:
“Where the owner of a trademark licenses its use to a licensee, it is necessary to distinguish carefully between the interest of the owner and the interest of the licensee, each of which may be capable of constituting an investment. If the owner does no more than grant a license of the trademark, in consideration of the payment of royalties by the licensee, the value of the trademark to the owner will reflect the amount of royalties received, while the value of the license to the licensee will reflect the fruits of the exploitation of the trademark, out of which the royalties are paid.

Thus, in the present case, the claim of BSLS, as the owner of the FIRESTONE trademark, must be distinguished from the claim of BSAM, as licensee of that trademark.

So far as the BRIDGESTONE trademark is concerned, BSJ, as owner, has no claim because, being a Japanese company, it falls outside the protection of the TPA. BSAM’s claim as indirect owner and controller of the license enjoyed by BATO, mirrors its claim as licensee of the FIRESTONE trademark”
(para. 219 to 221).
Another objection raised by Panama was that there was no investment “arising directly out” of an investment, as required by Article 25 ICSID Convention. The tribunal dismissed the objection insofar as it relates to Bridgestone’s disputed claim to have suffered damage within Panama, as follows:
“Any owner of a trademark, or a license to use a trademark, in Panama will be concerned, as a result of the precedent set by the Supreme Court, that steps reasonably taken to enforce it may result in a heavy liability in damages. The chilling effect of this makes the protection afforded by or in respect of a trademark in Panama more expensive to enforce, and the trademark less attractive and less valuable in consequence. This in its turn is likely to encourage the registration and use in Panama of trademarks that are confusingly similar to, inter alia, the FIRESTONE and BRIDGESTONE trademarks, thereby further diminishing the goodwill attaching to those brands” (para. 245).
The results of the arbitral proceedings on their merits remain to be seen. In any event, the arbitral tribunal’s decision is a further step towards IP rights entering the ISDS theatre. For further reading have a look here, here, here, and here.

Picture on upper left by Jack. E Boucher is in the public domain.

Picture on lower right by Alexrk and is licensed under GNU Free Documentation license.

Around the IP blogs!

IPKat is here with your weekly round up of the goings-on around the IP blogosphere. This week's highlights include the Dutch equivalent of Actavis v ICOS (Tadalafil), a US ruling on patent eligible subject matter and medical diagnostic methods and contradiction between the CJEU and the Spanish Supreme Court on SPC regulations. 


Actavis v ICOS - Netherlands

Last year, IPKat reported on the UK Court of Appeadecision Actavis v ICOS [2017] EWCA Civ 1671, in which the concept of "obvious to try" for a particular dosage regime was assessed in the context of clinical trial data. EPLAW reports on the equivalent Dutch case. In a similar decision to the UK courts, the Dutch District Court ruled that the skilled person, when starting from the prior art, would arrive at the claimed dosage range in various non-inventive steps constituting to "no more than walking down a one-way-street". The Dutch EP patent was thus revoked. 

US patent eligible subject matter

Patentlyo analyses a recent split Federal Circuit ruling concerning patent eligible subject matter, particularly applied to medical diagnostic methods, and Alice/Mayo step 2, i.e. whether the claims include an inventive concept beyond a natural law “sufficient to transform the claims into a patent-eligible application” (MPEP § 2106)The Federal circuit ruled that a claim directed to a method of detecting human body temperature was valid and did not relate to patent ineligible subject matter. The court's reasoning is worth a read for US applicants encountering Alice/Mayo objections who are looking for potential ways-forward. 

Cheshire knows all about Alice
Indian patent working requirement

TrustinIP explores the historical background and modern day relevance of the Statement of Patent Working requirement in India. Section 146(2) of the Indian Patent Act requires every Indian patentee and licensee (exclusive or otherwise) to provide an annual statement of the extent to which the patented invention has been worked on a commercial scale in India. The deadline for providing the statement is the 31st March of each year. As described on TrustInIP, non-compliance with the requirement can result in a fine of 1 million rupees (~ £11,000), whilst knowingly providing false information can be punished with imprisonment for up to 1 year (Indian Patent Act, Section 122). TrustinIP considers the relevance of this requirement to modern patent practice and technologies, and comments on recent indications that the provision may soon be targeted for reform. 

National genetic heritage and traditional knowledge in Brazil

On a previous Around the IP Blogs, IPKat highlighted IPTangos report on the approach of Peru to biopiracy relating to unauthorized and/or non-compensated access and/or use of biological resources or traditional knowledge (TK) of indigenous people. This week, IPTango reports that the Brazilian Instituto Nacional da Propriedade Industrial (INPI) has given notice that they will now (from 27 February 2018) be issuing formal Official Actions asking all applicants for Brazilian patent applications relating to national genetic heritage and/or TK, to provide proof in the form of a positive declaration of authorization to access the relevant resources. If no such declaration is provided within 60 days, the INPI will assume there has been no access to such resources, and will continue with examination. IPTango asks, if the INPI continues regardless of whether a declaration is filed, what will be the practical purpose of the office action?

Brazilian Kat
Event report - Union IP, Indirect Infringement

Tufty the cat reports on the UNION-IP Round Table Event in Germany, which focused on the approach of different European jurisdictions to indirect infringement. 


The SPC blog reports on the development in Sweden regarding the correction of the duration of SPCs, in the context of the CJEU ruling C-492/16that the term of an SPC is set by the rules of the Regulation 469/2009 and cannot be set by a national patent office. In second instance proceedings, the Spanish Patent and Market Court of Appeal (PMCA) found that the Spanish patent office was competent to decide on the duration of an SPC. The Spanish Supreme Court recently decided not to hear an appeal of the relevant cases, such that the second instance decision of the PMCA became final, in apparent contradiction to the position of the CJEU. 

Spanish Supreme Court


The Kluwer Copyright blog reports on the recent ruling by the Spanish court in proceedings brought against a number of internet providers. The proceedings were brought by various audiovisual producers belonging to the Motion Picture Association of America (MPAA) and were aimed at forcing the providers to block internet access to certain websites providing content infringing the claimants' copyright. As pointed out by Kluwer Copyright, one interesting aspect of this judgement is that it was directed against the internet providers as opposed to the websites themselves. 

Trade marks

Marques Class 46 provides a guest post by Ricardo Alberto Antequera on the recent changes in Venezuela of the foreign currency system used to calculate and pay official fees at public authorities, including IP office fees. 

Sources of case law?

Finally, IP Draughts muses on case law trawling and argues that legal firms providing case law reports need to get better at explaining the context and importance of a case. Of course, for important IP case law, there is IPKat!

Thursday, 22 March 2018

National and EU text and data mining exceptions: room for coexistence?

If only all mining activities
were these cheerful!
A few days ago this blog reported that Irish Government has recently proposed the introduction into Irish law (new section 53A of the Copyright Act) of a copyright exception for text and data mining (TDM).

From an EU standpoint, the most interesting aspects of the Irish proposal are probably the following:
  • First, its timing: while it is true that a TDM exception was first proposed in the 2013 Modernising Copyright Report, an actual initiative of that Member State's Government comes at a time when discussion is well underway to introduce a mandatory TDM exception at the EU level [Article 3 of the Proposal for a Directive on copyright in the Digital Single Market - on the EU proposal see further here and here]
  • Secondly, the different scope of the Irish exception [which would be derived from Article 5(3)(a) of the InfoSoc Directive] and the EU exception, in the sense that the former – while only allowing non-commercial TDM – would not limit the catalogue of beneficiaries. The EU exception – at least in the version proposed by the EU Commission - would instead be available to ‘research organisations’.
Following the publication of the IPKat post, I have engaged in some discussions on whether and to what extent national TDM exceptions – having a different scope from the EU one – would survive after the introduction of an EU exception. Another question would be whether EU Member States could continue to rely on Article 5(3)(a) of the InfoSoc Directive to introduce their own TDM exceptions following the introduction of an EU exception.

These questions do not have an easy answer, especially if one looks at the text of the directive as originally proposed by the EU Commission.

Dreaming of freedom ...
The Commission’s version

Arguably, the text of the original Commission’s proposal does not leave room for national TDM exceptions.

If in fact one looks at Recital 5, the goal seems to be one of maximum harmonization, in the sense that other directives – including the InfoSoc Directive and its TDM exception under the umbrella of the research exception – would only apply to “uses not covered by the exceptions or the limitation provided for in this Directive [ie the Directive on copyright in the Digital Single Market]”. 

This might mean that, as the new directive covers TDM, there will be no room for national transpositions of Article 5(3)(a) of the InfoSoc Directive to allow TDM that bypass the Directive on copyright in the Digital Single Market.

This conclusion appears reinforced if one also considers Recital 14, which highlights the shortcomings of TDM exceptions rooted within the InfoSoc Directive alone.

The Council’s latest version

However, things may be different if the version of the EU TDM exception eventually adopted was the one most recently proposed by the Council.

In fact, in this version (which would appear the last instance in which the Council has touched upon TDM), what is interesting is the wording of Recital 5 and Article 17.

First, Recital 5 states that “[t]he exceptions and limitations existing in Union law should continue to apply, including to text and data mining, education and preservation activities, as long as they do not limit the scope of the mandatory exceptions laid down in this Directive and on condition that their application does not adversely affect nor circumvent the mandatory rules set out in this Directive”. 

This would suggest that national TDM exceptions could survive after the adoption of this new directive, as long as certain conditions are satisfied. In a way, this solution appears to have points of resemblance with the grandfather clause in Article 5(3)(o) of the InfoSoc Directive.

... and freedom
Article 17(2)(b) requires that the InfoSoc Directive is amended, to the effect that exceptions adopted pursuant to Article 5(3)(a) will be without prejudice to the exceptions and the limitation provided for in the new directive … including TDM. 

This might suggest that, even after the introduction of an EU TDM exception, Member States could retain the freedom to introduce their own national (non-commercial) TDM exceptions, without any particular limitations as regards the types of beneficiaries.

While an approach of the kind suggested by the Council would have the merit of retaining some flexibility and national freedom as regards possible approaches to and regulation of TDM activities, it could also impair the goals of harmonization, including underlying internal market-building goals. In any case, an EU action of this kind would achieve minimum harmonization in the area of TDM (especially if the resulting EU exception was only aimed at research organisations), while substantial disparities might remain in place (or subsequently arise) at the EU level.

Next steps

The Bulgarian presidency of the Council is expected to continue its work and find compromise solutions that meet the approval of Member States. 

In parallel, the European Parliament is also working on the text of the directive, and the JURI Committee Rapporteur – MEP Voss – is expected to issue his Report sometime soon, the vote in that Committee being now scheduled for late April.

Courts continue to struggle to find appropriate forms of injunctive relief when social media is involved: Frank Industries versus Nike

Social media offer new opportunities for trademark owners to contact and engage consumers.  At the same time, alleged unauthorised uses of trademark by third parties in social media threads have become more and more frequent. In an attempt to control and limit the damage, rightsholders apply for injunctive relief, presenting the courts with the difficult task of balancing between the protection of a registered trademark and the irreparable damage that might result from erasing social media threads in connection with the alleged infringer.  The case at hand, Frank Industries v. Nike Retail [2018] EWCA Civ 497 , in addressing the alleged unauthorised use of the registered trademark LNDR (UK and EU mark) owned by Frank Industries (FI), by Nike UK, provides an excellent example of this tension. 

Both companies design and sell sportswear. Nike launched an advertising campaign to promote its brand to Londoners, under the slogan “Nothing beats a Londoner”. During the campaign, Nike used the marks LDNR and LNDR as forms of abbreviation for the slogan. The campaign was launched in the beginning of January 2018, and already on 26 January 2018, FI's solicitors wrote to Nike, complaining that the sign was infringing the registered mark.  Nike carried on using the sign, and the following week it proceeded to launching a video using the signs on YouTube. 

FI began proceedings against Nike, alleging both trade mark infringement and passing off seeking also both an injunction restraining Nike from infringing the marks and from passing off and an order for delivery up or destruction on oath of infringing material.

Preliminary injunctions ruling

On 22 February 2018, FI applied for an interim injunction, which  was granted on  2 March 2018 by the High Court of Justice ([2018] EWHC 424 (IPEC). Paragraph 1 of the order was a restraining order while paragraph 2 was a mandatory order requiring Nike, by 4 p.m. on 16 March 2018, to take all reasonable steps to delete the signs LDNR, LNDR, LDNER and LNDER from social media accounts within its reasonable control, including Twitter, Facebook, Instagram and YouTube.  The scope of the interim injunction is for a period of four months (taking into consideration that the trial date is set for the 12th of July 2018). The ruling of the High Court was appealed and the Court of Appeal ruling came on the 13March 2018.

Lord Justice Lewison considered the steps followed by the High Court in ruling on the preliminary injunction (see paragraph 10 of the High Court judgement):

 "Following the sequence set out by Lord Hoffmann, I must consider the following matters in deciding whether to grant an interim injunction.  One, whether the damages will be an adequate remedy for the claimant; if so, no injunction should be granted.  This must be on the assumption that the defendant is good for the damages: See American Cyanamid at page 408. Two, whether there is a serious question to be tried; if not, no injunction should be granted.  Three, if the answers to one and two are no and yes, respectively, whether the cross‑undertaking in damages would provide the defendant with an adequate remedy if an injunction were granted; if yes, the injunction should be granted.  Four, if there is a risk of irreparable harm both ways, the court must go on to assess the balance of irreparable harm in order to determine whether granting or withholding the injunction is more likely to cause the greater irremediable prejudice overall.  Five, among the non‑exhaustive list of matters which the court may take into account are (a) the nature of the prejudice to the claimant if no injunction is granted and the nature of the prejudice to the defendant if an injunction is granted; (b) the likelihood of the prejudice in each case occurring; (c) the extent to which the prejudice may be compensated by an order of damages, or by the cross‑undertaking; (d) the likelihood of either party being able to satisfy such an award; and (e) the court's opinion of the relative strength of the parties' cases."

According to Lord Justice Lewison, the High Court application of the above-mentioned criteria was correct. There is a serious danger that the public would perceive FI’s own goods as being in some way part of Nike’s business. The issue to be tried was undoubtedly serious, and thus the  remaining core question was whether Nike would suffer irreparable harm by the grant of the injunction. While the reasoning behind the prohibitory injunction is, according to the Court of Appeal, solid, the High Court  sparse in its words when it comes to the mandatory injunctions. It simply provided that Nike is not only supposed to refrain from future activities but also to take affirmative steps to remove Instragram posts, tweets and a Youtube video.

According to the Court of Appeal, mandatory actions in general are more likely to cause irremediable prejudice than where a defendant is merely prevented from taking or continuing with some course of action (see Films Rover International Limited v Cannon Film Sales Limited [1987] 1 WLR 670. The High Court judge dealt with the mandatory part of the order in one short passage, at paragraph [28] of the judgment.  He said: 

"The effect of an injunction would be to require Nike to remove its video in its present form from YouTube and other media and to remove LDNR references from its website.  So far as the YouTube video is concerned, LDNR is only used, or only significantly used, right at the end of the video.  Mr. Campbell told me that no objection would be taken to the remainder of the video being used. Therefore all that Nike would have to do would be to remove that small last section; otherwise, the video can remain on YouTube and other social media.  So far as Nike's website is concerned, it would not, it seems to me, be very difficult to remove the sign."

The ruling of the Court of Appeal

The Court of Appeal had to consider the  delicate balance between the interest in providing adequate and efficient injunctions until trial, and the importance of not causing irreparable damage to the social media presence of the alleged infringer. The Court of Appeal concluded that the High Court ruling disregarded the fact that amending a YouTube video entails its removal and reposting (with a different URL).  The effect would be that Nike would lose all posted comments as well as all video shares and likes. Similarly, deleting Instagram posts would lead to the removal of all related comments and posts. 

Twitter posts particularly concerned the Court of Appeal. Deleting existing posts was considered by the Court of Appeal to be of an irreversible and far-reaching nature because it would deprive Nike of the benefit of continuing conversations between young Londoners. 
LNDR an abbreviation for London, free for all or trademark use?

Twitter posts particularly concerned the Court of Appeal. Deleting existing posts was considered by the Court of Appeal to be of an irreversible and far-reaching nature because it would deprive Nike of the benefit of continuing conversations between young Londoners. The Court of Appeal  reversed thus the High Court ruling   regarding Twitter posts. Furthermore, the Court of Appeal ruled that with regards to Instagram, Nike would be able to archive them rather than simply deleting them, while the YouTube video need not be removed provided the offending signs are blurred.

This case reminds us of the importance of social media, the role they play and the power that they have in the communication between trademark holders and the public. They are much more than a mere communication media, being rather the platform upon which public discussion takes place and, as such,  worth protecting (such as the tweets by young Londoners in connection with Nike). The Court of Appeal, contrary to the High Court, seems to take into consideration the potential value of social media (by providing for the archiving posts in the case of Instagram and blurring offending signs in YouTube videos) as well as  undesirable  technical  consequences (such as deleting a tweet deletes all subsequent comments and discussions on the  tweet in question) in order to find a balance between the interests of the rightsholder and the potential damages inflicted on the alleged infringer.

Wednesday, 21 March 2018

Controversy looming for this year's pre-EQE

The pre-examination European Qualifying Examination ("pre-EQE") was introduced in 2012 as an entrance exam to the main EQE for European Patent Attorneys. Only after passing the pre-EQE is a European patent attorney trainee allowed to enroll for the Main Exam. 

Controversy over the pre-EQE is not new. In previous years, candidates have successfully appealed to the disciplinary board of appeal (DBA) against their result on the grounds that the answers to some of the questions were ambiguous (D3/14)

This Kat has been alerted to the fact that, this year, the questions for the pre-EQE were particularly ambiguous, setting the stage for the greatest pre-EQE controversy so far. 

UPDATE: The pre-EQE results have now been released, see here.  
The Examiner's report can be viewed here

2018 pre-EQE

The pre-EQE

The pre-EQE is a multiple choice exam, with 20 questions, each question having 4 statements for which candidates must indicate true or false. A complicated marking scheme dictates that for each question: 4/4 = 5 marks, 3/4 = 3 marks, 2/5 = 1 mark, and 1/5 = 0 marks. The complicated mark scheme highly rewards getting all of the statements within a question right, or equivalently, heavily penalises one mistake in a question. The pass mark is 70/100. 

The paper is divided into two sections, legal questions and claim analysis. The claim analysis section deals with issues of clarity, added matter, novelty and inventiveness with regards to a series of claim sets, amendments and prior art documents.  

It may seem odd to those used to EP patent application prosecution, that claim analysis may be reduced to mere true or false statements. Deciding on the closest prior art and inventiveness without the opportunity to argue your point can feel, at times, unfair. At the very least, it is hoped that the issues presented in the exam should be fairly clear-cut and unambiguous. 

To complicate matters, the pre-EQE may be taken in English (EN), French (FR: "Examen préliminaire") or German (DE: "Vorprüfung"), for which there are corresponding versions of the paper. It is intended that the answers to the EN, FR and DE papers are identical. 

Every year, DeltaPatents provides their model solution to the pre-EQE (EN version) before release of the official mark scheme. In recent years, the German Plattform für den Gewerblichen Rechtsschutz (GG-IP) has also been providing model solutions (DE version). It has become customary for candidates to check their solutions with these model answers before the release of the official mark scheme and results. In 2017, the DeltaPatents solution was identical to the official solution.


Given the subject-matter and format of the exam, it is perhaps not surprising that the pre-EQE has already been beset by controversy. In 2015, following successful appeal by a candidate to the disciplinary board of appeal (DBA), the EPO published an Addendum to the 2015 pre-EQE, in which it was decided to a award marks for either True or False for 2 statements in Question 15 and 17 respectively. After some initial uncertainty, the marks of candidates who did not file an appeal, but who would have passed in light of the changes, were upgraded (IPKat here and here).

This year

The 2018 pre-EQE (EN, FR and DE) took place at the end of last month. This Kat has been alerted by colleagues to a worrying disparity between the solutions provided by GG-IP and DeltaPatents this yearParticularly, the GG-IP and DeltaPatent model answers differ on 5 points, corresponding to an alarming 10 marks (out of 100), (for comparison, last year's GG-IP solution differed from the DeltaPatents solution on 2 statements, corresponding to 4 marks out of 100). The complicated mark scheme of the pre-EQE causes ambiguity in a few statements to have a disproportionately large impact on a candidate's marks. The official solution has not yet been released. 

The disagreement was in regard to the answers to questions 11.2, 12.4, 14.3, 16.1 and 18.1. 
Pre-EQE 2018: Water filter lid

All of these questions are also highlighted as problematic in the DeltaPatent pre-EQE blog, and from a quick analysis of the paper, this Kat agrees that the answers to these questions are not clear cut (at least in the EN version). Q12.4, for example, relates to Article 84 EPC (clarity) and asks whether a feature of a claim simply claims a solution to a problem and not the technical features that provide this solution:

"...a counter configured to automatically increment in response to water being added to the jug"

DeltaPatents thinks no, Article 84 EPC is not contravened, whilst GG-IP thinks that it is. This Kat notes that somebody involved in the prosecution of European patent applications, might expect the EPO to reject such a claim, but that the Examiner may be persuaded by argument. 

Q16.1 relates to claims directed to a plurality of interrelated products. GG-IP concluded that 2 independent claims (a 1st claim directed to a filter lid for a water jug and a further claim directed to a jug with a filter lid), are interrelated products, whilst DeltaPatent believes that they are not. 

Worryingly, still further issues with the claims have been raised in the comments on the DeltaPatent blog (that do not even correspond to the differences between Delta and GG-IP answers). A particularly problematic question, according to DeltaPatents itself, is Q 12.2 which concerns the correct two-part form for a claim in view of a stipulated prior art document. 

The DeltaPatent and GG-IP bloggers are experienced European Patent Attorneys and tutors. The disparity between their solutions clearly demonstrates that the claim analysis section of this year's pre-EQE is far from unambiguous. 

Kat confused by claim analysis
Whilst the solutions to the EN, FR and DE versions of the paper should be identical, translation issues can lead to different interpretations. Indeed, according to D 1/94 a translation error may be considered to contravene Article 11(3) of the Regulation on the European qualifying examination for professional representatives (REE) "since this provision assumes that the translation from the language selected by the candidate into one of the official languages of the EPO is totally correct". However, such a magnitude of issues with this year's paper suggests this is not just a translation problem.

This Kat has been unable to find a model answer for the FR version of the paper, but feels this would be a useful comparison. 

As a gateway to the main EQE, passing the pre-EQE is of considerable importance to a trainee European patent attorney. A fail means a candidate must wait about another 2 years before they can take the Main Exam. The degree of ambiguity in this year's questions will thus be causing significant anxiety. 

The official pre-EQE marks scheme and results will be published in the coming months. Stay tuned to IPKat for further news. 

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