An introduction to FD4: Infringement & Validity

The FD4 examination is often considered the most difficult of all of the professional examinations to pass.

It’s no surprise - few get a lot of opportunity to consider infringement and validity under UK law, unlike the skills required of the other examinations.

It is a technique exam, so without the opportunity or guidance to practice technique, studying for the exam can feel like an uphill struggle.

I’m hoping that by taking you through the examination section by section, I can at least arm you with a tried and tested technique to apply to the examination and increase your chances of passing. The technique I’ll teach is the one I used the year that I passed. Forgive me if what I am saying seems obvious - this series of articles is intended to help candidates of all levels.

The first place to start is to look at the syllabus and to debunk some myths around FD4.

Exam Overview

The syllabus (here) summarises quite succinctly what the examination expects of a candidate. Namely, the exam requires each candidate to:

• Prepare an infringement and validity analysis under UK law appropriate to the facts and the clients needs;

• Reach an informed opinion on a finely balanced point;

• Use information provided to support the opinion reached;

• Propose actions based solely on the information provided;

• Identify further information that may be required; and

• Where appropriate; provide an alternative view.

Preparing an infringement and validity analysis appropriate to the facts and the clients needs

The exam, as in real life, requires you to use the facts and be responsive to your clients needs. If your client states there is no room for collaboration with a patent holder/infringer, there is little point in recommending they negotiate a licence.

Likewise, making things up based on information outside the paper is generally not going to attract marks either. You need to assimilate what the paper actually tells you, and to use it in your answer. Using UK law, the paper requires you to provide a Construction, Infringement (including Actavis analysis, these days), Novelty, Inventive Step, & Sufficiency analysis. This requires you to know how to do each section. I’ll have an article dedicated to each section over the course of the next few months to give you a technique you can use. Based on the abovementioned analysis, you’ll need to consider whether any amendments are required, and provide your client with up to 10 marks (generally) worth of advice. The advice section is normally focused on issues the client flags in their letter, with advice suiting the outcome of your analysis.

Reach an informed opinion on a finely balanced point & use the information provided to support the opinion reached

Without any spoilers, it is clear that the examination, as in real life, provides features of the claims which can be interpreted different ways. People often wonder whether there is a ‘correct’ or ‘preferred’ answer when it comes to interpreting the claims and how the rest of the paper shakes out as a result. It is clear from the syllabus and the most recent exam report that this is not the case. What is being asked of you is to use the information provided to reach an informed opinion. In other words, as long as your interpretation is reasonable and supported using appropriate information from the documents provided, you will meet what the syllabus requires. It follows that you cannot expect to attract marks by pulling your conclusions out of thin air. It is also clear that you must evidence your opinion using the documents (e.g. the specification when construing the claims).

Propose actions based solely on the information provided

Again, the syllabus demonstrates that a good answer will look at the information at hand, and propose actions as appropriate. I appreciate this can seem easier said than done, but there are generally many pointers in the client letter as to what may need doing, especially for the advice section. The less easy actions may be ones to figure out based on your analysis.

Identify further information that may be required

Sometimes, you don’t have everything you need. You may need to flag it. A classic example would be where the infringement is based on the analysis of a pamphlet/magazine article/other publication and you have no idea if that is the product they are actually selling now. The further information would be that you should do a test purchase and analyse the product.

Where appropriate, propose an alternative view

This is also fairly self explanatory. Where it seems the facts could clearly go one way or another, it may be worth giving both views. Clearly the syllabus indicates that you will not be penalised for this. However, I would err against doing this for every single point - you don’t have time to provide every outcome for every interpretation of every feature. Instead, it should be the features where it is not clear cut.

The biggest mistake I made the years that I failed FD4

The biggest mistake I made when trying to pass FD4 was to look at the mark scheme as a template for a good answer. I knew how to construe claims, and understood the various sections of the paper, but I kept failing. If you compare the mark scheme to the exemplary scripts the PEB provides, you will see that those scripts are actually the best guide for a good answer structure. Time and again, they demonstrate a thought out analysis in each section, with each point reasoned well using evidence provided in the paper. The examiner’s report from 2024 is explicit in this regard, saying:

“The mark scheme indicates where marks could be awarded and provides guidance on points that should attract marks. It does not set out prescriptively the only points for which marks can be awarded (especially for later sections). It is not an exemplar answer. To be awarded high marks, points made in an answer needed to be (a) clear, (b) reasonable in view of the source material and (c) fully justified.”

It was only once I understood how to structure my answer to demonstrate the required techniques that I passed. Therefore, if I have one piece of advice for your first steps into this exam, it is to use the example scripts as a guide for technique, and not the mark scheme.

In the coming weeks, I’ll post a summary of my technique for each section of the paper, starting with construction.

Thanks for reading!