Improvement ideas in a Paper D2

The second question in Paper D2 is often about improvements. There are many possible improvements, and every exam covers different scenarios. I wanted to post a list of possible improvements that I came across so far. I also added the year in which that improvement came up (though the list is not complete), so that you can do the specific Paper if you want to practice that certain topic.

If you are the type of candidate that does not have many ideas for improvements, print a list of these improvement ideas and you can check it during the exam.

Possible improvements:

• Amending a claim
  e.g. limiting the range in a claim to overcome a novelty destroying prior art (see 2016, 2018 Paper D2)
  e.g. amending in order to have the same disclosure as in the priority document so that the amendment changes the effective date (see 2006 Paper D2)

• Changing claim category
  e.g. to overcome a novelty destroying prior art (see 2006 Paper D2)

• Filing divisional
  e.g. if there are multiple inventions or if there is an unclaimed subject matter (see 2010 Paper D2)

• Adding a new claim
  e.g. if there is an unclaimed subject matter (see 2016, 2017 Paper D2)

• Filing third party observations to the EPO
  e.g. to make sure that EPO notices a problem regarding to the competitor’s patent/application (see 2012, 2015 Paper D2, etc.)

• Filing third party observations during the international phase to the IB (see 2016, 2017 Paper D2)

• Adding priority claim
  e.g. to change the effective date and therefore make a claim novel (see 2011, 2016, 2018 and 2019 Paper D2)

• Withdrawing priority claim
  e.g. to postpone publication or to postpone the 31-m time limit to enter Euro-PCT phase (only withdraw priority claim if there are no novelty destroying prior art documents before the new effective date!)

• Withdrawing application
  e.g. to avoid publication (see 2010 Paper D2)

• Filing opposition (in your answer, also write on which ground you are opposing!)
  e.g. if you know that the competitor’s patent was invalidly granted (see 2017, 2019 Paper D2)

• Requesting limitation
  e.g. to correct a claim after grant, for example in case of an enablement issue (see 2009 Paper D2)

• Amending after receiving R.71(3) EPC communication
  e.g. to correct a claim before grant (see 2009, 2017 Paper D2)

• Filing a new EP/PCT application
  e.g. if we are still within 12 months of a national application and certain important countries are not yet covered (see 2012, 2015 Paper D2)

• Adding an undisclosed disclaimer
  e.g. to overcome a novelty-destroying Art.54(3) prior art (see 2006 Paper D2)

• Filing missing pages (if possible, without re-dating)
  e.g. if client forgot to file a few drawings/pages, and without those parts, the disclosure would not be enabling (see 2010 Paper D2)

• Entering Euro-PCT phase with FP
  e.g. if client missed the 31-month time limit, and the Euro-PCT would be very useful either as an Art.54(3) prior art against the competitor’s patent/application or as a future patent right for the client (see 2010, 2012 and 2021 Paper D2)

• Reviving application by requesting FP
  e.g. if recent fees were not paid and it would be very important to save the application (see 2017, 2018 Paper D2)

• Filing an appeal (see 2016 Paper D2)

Sometimes, you might have to summarise the next steps in a certain application process. This might include filing a translation, requesting examination, paying the renewal fee, paying the grant fee and validating the patent, etc.

If it seems that a patent application could be validly granted, you can accelerate the grant so that the client has an enforceable patent right. Depending on the situation, you can:

• Request early publication so that there is a provisional protection,

• Create provisional protection in the EPC states by paying the necessary fees and filing the translation of the claims under Art.67(3) EPC,

• Accelerate the examination by requesting PACE and, if applicable, waiving communications, such as the R.70(2) EPC communication,

• Validate the patent at least in the EPC states where competitor is based and in the countries where the client wants to sell (within 3 months after grant).

Don't forget that almost all Paper D2 exams will include the need of negotiating a cross-license.

Although I really tried to provide you with a broad list, I might have forgotten some improvements. Feel free to add your additional ideas in a comment. Let’s help each other! 😊