A warning about Fox’s P6 notes

Those of you sitting the P6 exam in a few weeks may have been reviewing Nicholas Fox’s notes on the 1999 paper (which were made available when his Informals lecture was cancelled).  However, it has been brought to my attention that Fox’s notes may not have been updated since they were first written to reflect the content / marking schemes of more recent P6 papers.

For example, in the “P6 Advice” document, Fox provides an approximate breakdown of the distribution of marks, which incorrectly states that the novelty section is only generally worth about 10% of the total available marks.  Those of you who have read the “How to Pass P6” book by Nigel Frankland (available from CIPA) will have seen that Frankland provides a table in Chapter 1 that shows the distribution of marks for the more recent papers.  For instance, in 2012, novelty was worth a whopping 34.5% of the total marks, in 2011 it was worth 30.5% and even in 2003, it was worth 18%.  In recent years, there may have been multiple embodiments within a prior art document that need to be construed separately, which means the novelty section is not necessarily straight-forward and may take quite a bit of time.  Similarly, the marks available for the construction section varies from 18% (in 2004) to 27.5% (in 2008).  This may be worth bearing in mind if you were considering using Fox’s mark distribution as a guide to how long to spend on each section of the paper.

In the same document, Fox refers to using the “Windsurfer Test” for inventive step.  As most of you are hopefully aware, the current test for inventiveness in the UK is the Pozzoli SpA v BDMO SA & others case from 2007.  (See section 3.13 of the Manual of Patent Practice).  If you want to use the UK inventive step test in your answer, you must use the steps outlined in Pozzoli, which are somewhat different to those of the old Windsurfing case.

Fox also provides an example answer / mark scheme.  Please note that in the example answer (and in the P6 Advice document) Fox does not consider it necessary to interpret words such as “comprising”, “consisting”, “including”, “characterised in that”, etc. However, this is not consistent with the mark schemes for more recent papers, where these words are interpreted.  (Such words do not usually require more than a few words to interpret, but they are words which have a specific meaning in patent law and should therefore be quickly dealt with.  Even though they may not be worth more than 0.5 marks each, they don’t take long to interpret and those half marks could be crucial!)

While many of Fox’s comments on how to approach a P6 paper are very useful, it is recommended that anyone sitting the P6 paper takes a look at the sample scripts and Examiner’s comments for more recent papers (available here) to get a better idea of how papers are currently marked.



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