Sufficiency, Amendments, and Conclusion in FD4

So you’ve made it through the longest sections of the FD4 paper, and now you just need to get to the end and maximize the marks you have in the time you have left.

When I sat FD4, I didn’t always have a ton of time at this stage of the exam. Nonetheless, the marks here might be the difference between a pass and a fail.

Here are my tips for the final three sections of the exam. If you have something to share, why not comment on this article for others to see?

Sufficiency or ‘Does it work?’

In real life, sufficiency is often the least promising way to have a patent for an invention knocked out, unless there are clear issues with the invention as claimed which can be demonstrated. In FD4, you don’t have access to a lab to test the invention, nor do you have an specialist knowledge of the invention disclosed in the paper (and even if you did, it would not help you in the exam).

The only information you have is what is contained in the documents before you.

I think it is fair to say that sufficiency has, at least in my recent memory, been a brief section offering few marks for short comment. For the papers where it is an issue, it is typically very obvious from the client letter that something is amiss. If you see something amiss, remember to think it through - is it so-called “Biogen” sufficiency? Is the issue something which falls into reasonable trial and error? There will be pointers in the letter and perhaps the prior art. Make sure to highlight the passages a unique colour so that you can quickly find them at the end of the exam.

Of course, you may end up one of the years where there are simply no issues and a single mark is awarded.

Amendments

Can you get a claim which is valid and infringed? If not, can you get a claim which is valid and commercially relevant? If not, can you get a claim which is valid?

Your job in this situation is to improve your client’s position as much as is possible. As in real life, there may not be a perfect amendment which offers your client the ability to block this competitor and maintain their patent, but there still may be some commercially relevant scope available. Think through your analysis of the documents and see if there’s something you can do to improve your client’s position.

As a part of this, justify why the proposed amendments improve their position.

Conclusion

Ten marks, not to be sniffed at. Your advice should be tailored to the client’s situation, and there will invariably be things in the client letter which hint at what needs to be discussed. Again, highlight such passages in a unique colour so that you can quickly find them as time runs low at the end of the exam.

You may get a one or two ‘free beer’ marks for generic advice that is almost always applicable (e.g. ‘Do a prior art search’, check status of patent re: renewals), but to score high marks in this section, your advice will be suitable for the situation at hand. Try to think about actions, procedures, and timelines. In other words, what can they do to improve and make use of/avoid the patent claims, how do they do that, and how quickly?

Closing remarks

I hope this series of articles has been useful. If you have any specific types of content you’d like to see regarding FD4, please send me an e-mail to the address on the ‘About Me’ page of this blog. Thank you.

Andy