D 9/09 – More Trouble With Marks

Normally I do not present decisions of the Disciplinary Board, but I found this one quite entertaining.

The appeal was filed by a candidate who had failed the EQE 2009 after having been awarded the following marks: A: 49; B: 55; C: 39; D: 57.

*** Translation of the German original ***

[2.1] The appellant pointed out that the (fictitious) client’s letter on which paper A was based clearly and unambiguously indicated that the client did not desire to obtain patent protection for the process using the arsenical acid solution, which had no economic value. As the candidate had no reason not to respect the wishes of the client, it was not justified to deduce marks if this process variant was not claimed.

[2.1.1] Against this, it can be argued that it is possible to be of the opinion – and this opinion is generally held – that a professional representative is not required and should not limit himself to slavishly implement the indications of his client (which in practice are not meant to be limitations for the patent protection to be obtained) – irrespective of the fact that the text of the client’s letter (which is fictitious, but inspired by real life) does not contain unambiguous or express indications; it does not contain indications regarding the extent of the desired patent protection at all. Rather, the client consults a representative for the very reason that the applicant cannot or does not wish to assess which options he has and what the corresponding expectations of success are. In the situation underlying the exam paper this would mean that even subject-matter in which the client is presently not interested is incorporated into the application, be it only “as a precaution”, in order not to generate additional costs but to offer the applicant more options regarding methods, use (possibly via licences) and development. Thus there is no contradiction in a legally relevant sense when – quite in line with the “fit-to-practice” criterion (see Rule 4 IPREQE) – the copies of the candidates are also assessed according to this point of view. The instructions to candidates also unambiguously indicate that the candidates are expected “to draft an independent claim (or claims) which offers the applicant the broadest possible protection and at the same time has a good chance of succeeding before the EPO”.

[2.1.2] In his second submission the appellant has explained that, as a consequence of the fact that it was not possible to consult the (fictitious) client, there was an irremediable (unaufklärbar) contradiction between the fact that the candidate was expected to accept the facts given in the paper (Instructions to candidates I.3) – in the present case, the fact that the client did not desire patent protection for the arsenical solution – and the fact that this was to be ignored and a claim that was as broad as possible was to be drafted. It is to be noted in this context that this assertion does not correspond to the content of the client’s letter because it does not contain any indications on the scope of the patent protection to be obtained […]. Consequently, there is no contradiction with the instructions that the drafted claims should provide maximum protection, nor is there a contradiction with the matter of course that the wording proposed by the candidate should correspond to a “useful” claim.

[2.1.3] Thus the examination question was not contradictory in the sense that the Board could treat it as an obviously erroneous (cf. D 13/02, which the candidate has invoked).

[2.2] The appellant also explained that the evaluation scheme used for the process claim to be drafted in paper A was unfair and violated the principle of fair treatment. The evaluation scheme used, according to which the candidate did not receive marks for certain partial performances (Teilleistungen) but marks were deduced from the maximum number of marks when certain partial performances had not been provided, had the consequence, on the one hand, that in the end the candidates who had provided such a partial performance received (i.e. were not deducted) significantly less – about >1.5 times less – marks than they would have lost if they had not provided the very same partial performance. On the other hand, this scheme led to the absurd result of negative marks. However, as they were not allocated – in extreme cases (only) 0 marks were awarded –, the candidates were unequally treated, which violated Article 16 REQE: better candidates having a positive overall number of marks lose marks if there were (further) mistakes, whereas worse candidates who already had 0 marks and who made the very same mistake would not lose any marks. In practice, the appellant had been deduced more marks for missing partial performances than other candidates. Sanctioning the very same mistake by deducing varying amounts of marks was hardly in line with the requirement of uniform marking, or justified in view of the “fit-to-practice” criterion. The latter was not applied at all; but [what was applied was] “a very clear evaluation scheme” allocating a well-defined number of marks (and well-defined deductions of marks) for each individual aspect of the claims to be drafted, each individual aspect being independent of the other individual aspects”.

[2.2.1] The fact that the (theoretical) overall amount of deductions under Article 16 REQE that are allocated to individual “mistakes” can be greater than the maximum amount of marks that are available, together with the fact that 0 is the minimum number of marks (i.e. there are no negative marks) is not objectionable from a legal (and substantial) point of view. Irrespective of the fact that the appropriateness of a deduction of marks, in case a partial aspect of the examination question was not solved or solved in a way that was not optimal, is an issue related to marking (Bewertungsfrage) for which the Board is not competent, it is not required by logic, nor can it be deduced from the “fit-to-practice” criterion, that the allocation of 0 marks is only admissible if each and every partial aspect was awarded 0 marks (cf. D 8/07 [5] and many other decisions regarding the EQE 2007, according to which it is not in line with Rule 4(2) and (3) IPREQE to treat a copy that is to be allocated marks as if it was a list of independent individual questions, as in a Multiple-Choice-System). It is common, even outside the EQE, not to award negative marks, and this practice is appropriate because deficiencies in the solution of a (partial) problem do not necessarily impair the performances in other (partial) problems that are distinct in respect to substance.

[2.2.2] Moreover, and very generally speaking, it is simply not true that according to the Examiner’s Report a rigid marking scheme had been applied, according to which each (possible) variant of features had been considered in complete isolation and a fixed amount of marks was awarded or deduced for it or for its absence, respectively. The opposite is true, as is apparent to any competent or unbiased reader of the Report without further ado; therefore, this does not need to be explained in detail here.

[2.3] As far as paper C is concerned, the applicant pointed out that the way in which the problem regarding the priority claim of the opposed patent was presented was defective and misleading, because the (fictitious) client’s letter stated: “We have further noticed that the claim to priority was filed for the present patent in July 2007 for the first time.” The terminology was wrong because one could not “file” a claim to priority.

The applicant [explained that] as a consequence, he had lost precious time when trying to solve the dilemma with which he was faced, i.e. that according to the “Instructions for candidates” he had to accept the facts given in the paper and to limit himself to these facts. The EQE should not evaluate candidates according to their tolerance with respect to wrong terminology (which many applicants had not even noticed in the heat of the action). A correct assessment of the candidates in view of their fitness-to-practice required a correct terminology to be used in the questions and solutions. It was not appropriate to require the candidates to perform textual exegesis.

[2.3.1] It is undisputed that it is part of the essential capacities of a professional representative to be able to understand his clients even when they do not express themselves in a way that is in line with the EPC – which they cannot realistically be expected to do. As rightly explained by the appellant, “utmost precision of speech” can be expected from a professional representative in his work (and, of course, from the competent bodies of the EPO) but not from clients. However, when drafting the (fictitious) letter of a client, the expression “claim to priority … filed”, which is not an expression used by specialists (fachterminologisch) but close to reality and which apparently was found appropriate for this very reason, was chosen.

NB: A nice way of saying that even drafters of EQE papers do not always use utmost precision of speech.

[2.3.2] This does not mean that some sort of “textual exegesis”, i.e. an interpretation of an abstract norm, is required. The way in which the problem was formulated did not trigger, let alone compel the appellant to approach the client’s letter accordingly. The Board does not understand the assertion that other candidates had overlooked this “discrepancy” and were, as a consequence, unjustifiably favoured with respect to the appellant, who was more thorough. Rather, it has to be assumed that these other candidates from the outset based their reasoning on the correct meaning of this expression in the context of the examination question, simply because under the given circumstances the expression “claim to priority … filed” in the client’s letter was neither misleading nor wrong. Such an “advantage”, however, cannot be interpreted to constitute a legal discrimination of the appellant.

[2.3.3] It is certainly true that, as pointed out by the appellant in his second submission, a candidate may expect the problems with which he is confronted to be free of errors. It may also be true that the deliberate introduction of errors into the problem would be problematic, both from a legal and a substantial point of view. However, as explained above, there was no substantial error in the problem. Whether and to what extent a given expression of the problem corresponds to the purpose of the EQE is not a legal question. How “close to reality” and, more generally, how exam problems are to be drafted in order to ensure an assessment of each of the many candidates regarding their “fitness-to-practice” that is as reliable as possible, taking due account of the legal framework and the requirement to limit the efforts of the candidates and the examining bodies to a reasonable extent, is a demanding optimisation task that is exclusively entrusted to the Examination Board.

[2.4] As to paper C of the exam the appellant pointed out that his response regarding the late submission of the claim to priority (“A deficiency pursuant to R 38(2) cannot be remedied, so that the priority claim pursuant to A 91(1)(d) and A 91(3) is invalid.”) may not “correspond to the practice of the EPO under the EPC 1973” but followed directly from the EPC and its Implementing Regulation.

In this regard the Board has to limit itself to the statement that, as a matter of principle, it cannot review the allocation of marks in a case where a candidate wishes to base his future activity as representative on his personal interpretation of the EPC, which deliberately contradicts the case law and the practice of the EPO.

I love it!

[2.5] The appellant also invoked a serious violation of the principle of protection of legitimate expectations. Within the framework of the EQE 2009 the Examination Board had without prior announcement considered invalid a criterion for determining the closest prior art, which is a central aspect of paper C, which it had established for the EQE 2007 and implemented in a way that was very visible to the public (mit großer Öffentlichkeitswirksamkeit), including corresponding instructions to tutors, i.e. that (a) a document the subject-matter of which was not suitable for the purpose of the invention, because of its particular properties, per definitionem could not qualify as closest prior art for inventive step attacks. This follows from passage (b) “In order to identify the closest prior art document it was necessary to take into account the whole teaching of documents including negative statements.” in the Examiners’ Report to paper C of the EQE 2007. As a reaction to what happened around paper C of 2007 the preparatory courses for the EQE teach that a document containing a negative statement as to its suitability for the purpose of the invention cannot qualify as closest prior art. The candidates could expect this guiding sentence (Orientierungssatz) to be valid until it was obsolete as a consequence of changes of law or case law.

Accordingly, the assessment of paper C of 2007 [NB: this should read 2009] should not have been based on Annex 2 as closest prior art because this document discloses an object (a wooden table comprising a plate that must not be heated to temperatures above 50°C), which clearly makes it unsuitable for the purpose of the invention (heating food to temperatures of 60-65°C). Thus the solution provided by the Examination Board was based on a technically or legally wrong basis.

[2.5.1] It is true indeed that the Board has to examine any alleged violation of the principle of protection of legitimate expectations, which is a violation of higher-ranking law, and has to avenge it, if such a violation is confirmed. However, the facts and arguments submitted by the appellant do not allow to draw such a conclusion.

[2.5.2] Irrespective of the fact that it does not necessarily follow from the passage (b), above, which, incidentally, is preceded by the sentence “It is established case law …” (Examiners’ Report 2007, point 2 of the general remarks), that a document containing a negative statement regarding the suitability of its subject-matter for the purpose of the invention cannot possibly qualify as closest prior art in the EQE, there is no evidence whatsoever for the assertion according to which such a guiding sentence was taught in the preparatory courses for the EQE 2009 in a misleading way, for which the Examination Board was responsible.

[2.5.3] Moreover, papers C 2007 and 2009 are based on (fictitious) factual situations that are not related to each other, both regarding the impugned patent and the prior art. Thus the solutions to these problems are to be obtained and marked independently of each other, it being noted that the factual correctness of the “model” solution that underlies the evaluation has to be assessed on the basis of the EPC, the case law of the Boards of appeal and the practice of the EPO, but not on the basis of (assumed) guiding sentences of the Examination Board. A candidate ought to know this.

[2.5.4] Thus there is no legal or factual basis for assuming a situation of legitimate expectations as alleged by the appellant.

[2.6] The Board cannot endorse the argumentation of the appellant according to which a candidate should not be held accountable (via a reduced number of marks) for using […] a reasoning based on a document (here: Annex 3) as closest prior art, which reasoning has been qualified as “generally not convincing” in the Examiner’s Report. In the end this argumentation boils down to saying that a candidate could never be held accountable for a performance that has been found to be insufficient. Only the Examination Board could be held accountable because whenever a problem was not solved or badly solved, it bore the responsibility because it had (badly) “designed” the problem or provided improper or even wrong criteria for its solution.

Apparently the appellant has misunderstood the decisions related to the EQE 2007 (such as D 7/07) dealing with a global addition of marks (pauschale Punktevergabe) by the Examination Board, whereby the Board – in line with the corresponding case law, see D 3/00 and D 7/05) intended to appropriately reward the candidate, in particular when the problem-solution approach was correctly formulated, even though the candidate had chosen what it considered to be the wrong document for assessing inventive step.

[2.7] In his second submission […] the appellant has submitted that and why the solution proposed by the Examination Board in respect of the closest prior art to be chosen (i.e. Annex 2) was simply and objectively wrong. Examination proceedings which, as far as the object of the exam is concerned, are based on technically wrong premises, are in conflict with the principles of legal security and fairness and cannot meet the purpose of the EQE, i.e. the assessment whether the candidate is “fit to-practice”. Thus the case law according to which a factual review of the examination proceedings cannot be part of the tasks of the Board of appeal, could only refer to the appropriateness of the marking but not to the definition of the “correct” answers by the Examination Board according to which the marks were allocated.

[2.7.1] This assertion is neither logical nor in line with the established case law, according to which decisions of the Examination Boards can only be reviewed in regard to violations of the law. The question of whether a certain document rightfully constitutes the closest prior art for the purposes of the “problem-solution-approach” certainly does not qualify as such. The appellant has not provided evidence that the assessment was based on a clearly wrong technical or legal basis, i.e. a basis that contradicts the laws of logic and is apparent even without any fresh factual or legal assessment of the copy of the appellant (cf. D 9/00, D 6/04). Rather, he has provided arguments supporting his opinion that the approach presented as model solution, on which the marking of paper C was based, was wrong as to its substance. However, these arguments are based – as is the allegedly wrong model solution – on an assessment of the technical content of the relevant prior art documents, and in particular of Annex 2 (and in particular whether the relevant statements in this document would deter the skilled person from considering the solution according to the invention […]). The appellant has made the choice, based on his technical knowledge and on the pieces of information at his disposal, and of his (not necessarily uniquely correct) understanding of them, to use Annex 3 as a basis for attacking the patent (paper C of the exam). Even on a conceptual level, one cannot accuse the Examination Board of having committed a legal error because it (as well as the interested public and supposedly most of the candidates) had found another document to be the closest prior art and thus as more suitable.

[2.7.2] Moreover, had there been an obvious error as defined above, which was apparent without reviewing afresh the copy – such as a model solution that was self-contradictory or drafted in a misleading way (regarding the paper itself, see D 13/0 (sic)) – one might have expected that not only the appellant but also other candidates and/or the Examination Board and/or Examiners would have noted such an error and that there would have been discussions on that topic. However, the appellant has not asserted anything in this regard and the Board has not heard of such by other means either.

[3] The appellant is not entitled to have access to the instructions to the Examiners as well as their notes and annotations concerning the individual papers (request 3), at least when the marking sheets satisfied the legal minimum requirements (D 7/05 [12] and D 13/02 cited therein, etc.).

[3.1] The appellant referred to D 7/05 and argued that the minimum requirements had not been fulfilled because for 93 of the marks available in paper C there was only an allocation to the categories “Use of information” and “Argumentation”, without there being an allocation of the marks awarded to the individual attacks and their various aspects.

However, this is not required in application of the criteria set forth in D 7/05, it being observed that this decision was based on a specific indefiniteness of the marking sheet (which is not the case here), i.e. the 55 marks available for paper D II were allocated to four categories designated by “A”, “B”, “C”, and “D”, so that even considering the disposition of the paper as well as the “Possible Solution” in the Compendium … an outsider could not find out to which element of the candidate’s answer to part II of paper D the number of marks in categories A, B, C, and D had been allocated (point [10] of the reasons). This deficiency of the then marking sheet for paper D was remedied by expressly allocating each of the - still (only) four – groups of marks to one of the four examination questions. Moreover, paper C in the application form (Bewerbungsbogen; I guess this should read Bewertungsbogen, i.e. marking sheet; I have corrected the rest of the paragraph accordingly) of which each of the three groups of marks are allocated to a well-defined aspect, differs from paper D, not only in its volume and duration of the paper but also and in particular in its structure. Whereas paper D, in spite of the unitary factual situation (einheitlicher Sachverhalt), consists in distinct legal questions each of which has its proper answer, paper C requires a coherent train of thought (Gedankenführung), the development of a purposeful, factual “global strategy” that is adapted to factual and legal requirements, in the evaluation of which according to the “fit-to-practice” criterion the rating of the individual parts of the answer cannot be made without considering the overall context of the copy (D 3/00 [3]) and even answers that deviate from the what was expected but which nevertheless are arguable and ably justified have to be marked in a fair way (D 7/05 [headnote 2]). In this context the allocation of marks in the marking sheets for paper C according to the three criteria mentioned therein – which, incidentally, is well-proven and has never been seriously challenged – is appropriate and quite instructive for the candidate. Thus it simply is not true that these marking sheets are “de facto useless for understanding the decision on the outcome of the examination” and, therefore, do not contain any details on the marking within the meaning of Rule 6(1) IPREQE. As far as the possibility of understanding (Nachvollziehbarkeit) of the marking is concerned, one must not forget that it is to be ensured not only via the indications in the marking sheets but also in connection with the documents published in the Compendium. Last, but not least, the fact that this was also the case for paper C of the EQE 2009 is confirmed by the explanations provided in the statement of grounds of appeal wherein the appellant explains in great detail, based on the “Examiners’ Report Paper C 2009”, why he thinks that he should have been allocated a greater amount of marks (which is sometimes indicated with great precision) for certain aspects of the answer, even in paper C […].

[3.2] Thus the “documents and marking schemes which actually formed the basis for the evaluation of the candidate” are already accessible to the appellant: first of all, his copy; the “marking scheme” is provided in the “Examiners’ Report”. As far as internal notes regarding the evaluation of the attack against claim 1 in paper C are concerned, one may expect that they exist. However, their mere existence does not legally entitle [the appellant] to have them made accessible [to him] (see point [3] above), apart from the fact that this would be tantamount to obtaining a “fishing expedition” (Einholung eines Erkundungsbeweises), which is not acceptable even according to general rules of proceedings. If there is no evidence that legal principles have been violated in the marking (which the Examination Board itself had acknowledged in view of the marking of paper C of the EQE 2007, see point [2.6] above) this could only serve the review of the appropriateness or correctness of the marking, which cannot be the object of appeal proceedings (D 20/96, D 6/02). […]

The appeal is dismissed.

Should you wish to download the whole decision (in German), just click here.

NB: There is also a second decision in this case because the appellant requested a correction of the decision (here).