My template for Paper DII
As you probably know, Paper DII is about analysing a complex patent situation and giving advice to a client. This part will be worth 50 points in 2021, and we will have 3 hours to answer the questions. I am now sharing a possible template. Of course, you will need to adjust this to the Paper you are doing, but I do hope it will be useful.
You can also find my table (timeline) that can be used for processing all the information provided in the client’s letter. Since it will not be allowed to print the client’s letter, it will be very important to use a good table you are familiar with in order to properly process the information in the letter.
The first part of DII is usually the analysis of the current patent situation, before any improvements. (In this analysis, entitlement issues are irrelevant, only analyse the situation as is.) To gain the maximum marks for this part, you have to analyse every patent application or subject matter as follows, one by one:
1. Status: pending, deemed withdrawn, granted, etc.
2. It is the earliest application disclosing subject matter X.
(Other possible options: It is XY’s first application disclosing subject matter X.
OR: It is the second application disclosing subject matter X.)
If the exam asks you to discuss subject matter by subject matter, start with this point and mention which application is the first one disclosing the subject matter. After that, you can mention the status of that application and continue the analysis.
(If the application is dead, it is sufficient to discuss these first two points.)
3. Effective date of the claims
Claim 1:
Claim 2:
Also discuss: Was priority validly claimed? Why? (4 things to check: 1. same applicant - also name the applicant, 2. within 12 months, 3. same invention, 4. is it the first application?)
Example sentences: Effective date is the filing date, because no priority was claimed. OR: Filing date, since priority was not validly claimed for this claim, because… OR: Priority date, since priority was validly filed, because…
4. Prior art:
”PCT-X” is an Art.54(2) prior art document, since it was published before the effective date of both claims.
”EP-X” is an Art.54(3) prior art document, since it is also a European patent application, and it was filed before but published after the effective date of both claims.
5. Novelty:
Claim 1:
Claim 2:
Example sentences: Novel, because it is the first application disclosing subject matter of the claim. OR: Novel, because there is no prior art disclosing subject matter of the claim. OR: Not novel, since EP-X also discloses the subject matter of the claim.
6. Inventive step (only discuss inventive step if the claim is novel):
Claim 1:
Claim 2:
Example sentences: Inventive, because it has the technical effect of: … (quote the effect from the letter).
7. Conclusion:
Claim 1:
Claim 2:
Example: Not clear / not enabled / added subject matter
Therefore, claim 1 can be validly granted and give right to... OR: claim 1 cannot be validly granted…
8. Exploitation possibilities
XY can obtain a patent in the EPC states where it is subsequently validated, can stop others from using/selling/manufacturing/marketing…
9. Can new application be filed for the subject matter in the important territories for the client?
(Mention if we are still in the priority year and further applications can be filed. For example, if client needs patent in the US –> mention that it can still be protected in the US by filing a patent application in the US in the priority year.)
I use my own A3 sized table for this analysis (combined with a timeline). You need about 50 min - 1 hour to carefully read the letter and fill your table. (From 2021, the letter should be shorter since DII part will only be worth 50 points. Thus, the time spent on the table will be less.)
If you have a good table, the analysis of the current patent situation should be relatively simple. I do not think doing Paper DII electronically will be more difficult than on paper. We will probably be able to highlight the text (such as dates, technical effects, etc.) in the software. As you probably know, we will not be allowed to print it!
I suggest filling your table on paper and then typing your answer in the software. If you have to calculate any periods in DII, include the calculation in your answer. Feel free to download my template by clicking on the button below and print it for yourself on A3 paper. (There is space in the left margin so that you can indicate priority situations with arrows.)
This is what my DII template looks like in use (2015 Paper)