Paper F - Filing and Prosecution Practice
Paper F tests filing and prosecution as a working skill rather than as recall: you are given a technical disclosure, a prior-art situation and a procedural setting, and must produce a claim set plus reasoned advice that an examining division would accept. Marks come from the legal basis you cite (EPC articles and rules, and the EPO Guidelines), not from elegant prose.
Drafting a claim set with a fallback ladder
- Independent claims must be clear, concise and supported by the description (Art. 84), with one independent claim per category actually used (product, apparatus, method, use).
- Draft at the level of generality that is genuinely disclosed. Any generalisation beyond the literal wording must be directly and unambiguously derivable from the application as filed (Art. 123(2), the "gold standard").
- Build dependencies so each fallback is individually disclosed and technically meaningful against the closest prior art. A fallback that exists only inside one specific embodiment is an intermediate generalisation you cannot later use.
- Keep claim 1 to subject-matter the cited art does not disclose, and hold the distinguishing features in dependent claims for the reply stage.
Handling the examining division
- A communication under Art. 94(3) fixes a period. You may request one extension of two months under Rule 132(2), but only before the period expires; a missed deadline costs the application unless further processing (Art. 121, Rule 135) is requested in time with the fee.
- After the first substantive reply, further amendments need the division's consent (Rule 137(3)), so put every fallback you may need into that first amendment.
- Argue with the problem-solution approach: closest prior art, distinguishing feature, objective technical problem, then whether the skilled person would actually have modified (could-would), not merely could have.
- Earlier European applications under Art. 54(3) are prior art for novelty only; do not build an inventive-step attack on them.
- Priority is assessed per claim: if the claimed subject-matter is not directly and unambiguously derivable from the priority document as a whole (G 2/98), that claim loses priority and intervening art becomes citable.
Worked example
As filed: "the housing may be of aluminium, steel or plastics; in a preferred embodiment the housing is aluminium and anodised." D1 discloses a steel housing. Claiming "housing of aluminium or steel" is supported, because the list is literal basis. Claiming "metal housing" is not: it generalises the list and detaches it from the anodising context - an intermediate generalisation. Claiming "aluminium housing, anodised" is safe but needlessly narrow. The right move: aluminium at claim 1 (novel over D1's steel), anodised aluminium as the dependent fallback.
Traps that cost marks
- Amending granted claims: Art. 123(3) bars any extension of scope even where an Art. 123(2) basis exists (G 1/93).
- "Consisting of" closes the claim while "comprising" does not - check every transition word.
- Features read from drawings must be directly and unambiguously derivable, with no function imported from the description.
- Requesting a Rule 132(2) extension after expiry, or filing further processing without the fee, is a lost application.