Examination Guidance
FD1 Guidance (P2)
Knowledge and Experience for Final Diploma Examination FD1 Advanced IP Law and Practice (P2)
Overview
The FD1 examination tests candidates’ competence to properly advise and act for a client in any matter relating to the preparation, prosecution, exploitation and enforcement of patent rights in the UK and via the EPC and PCT. Knowledge of the basic patent law in major countries (notably the USA and Japan) is also required.
The question paper comprises a number of short-answer questions relating to application and prosecution procedural matters and three optional, longer questions from which two should be attempted. The longer questions each present a scenario where a client requires advice on patent matters in a commercial situation. Knowledge of the principles of leading case law is recommended, though it is not necessary to quote any cases. Candidates should be familiar with the different needs and expectations of clients from different backgrounds, for example with regards to the consequences and costs of suggested actions, and should give sound practical advice accordingly.
The FD examinations test candidates’ ability to assess issues pertinent to the facts presented taking into account regulatory requirements (IPReg’s Core Regulatory Framework), the Registered Patent Attorney’s duties to clients, and professional ethics applicable to IP practitioners. A script that contains unethical advice, proposals or statements does not meet the requirements for award of a Pass in an FD examination.
Guidance
It is strongly recommended that before taking the FD1 examination, candidates should have advised on and/or prepared the majority of the items in the following list, and should be aware of considerations for the others in practice:
GB patents/applications:
- Assignment
- Change of name or address
- Requesting file wrappers and/or UKIPO register extracts
- Filing statutory declaration or affidavit in support of ex-parte and inter-partes proceedings
- Request for a discretionary extension of time under 108 and/or r.110
- Application to restore a UK patent lapsed for non-payment of a renewal fee
- Pre-litigation negotiations with a third party
EP (UK) patents/applications:
- Completing acceptance/grant procedures before the European Patent Office, being thoroughly familiar with key due dates
- Effecting validation of a granted European Patent (UK), being thoroughly familiar with key due dates including renewal fee due dates
- Applying for further processing of a European patent application
- EPO Opposition procedure
- EPO central limitation procedure
GB or EP (UK) patents/applications:
- Opinion on potential protection available for a proposal (not yet the subject of a patent application or other registered protection) in light of the prior art
- Opinion on inventorship and/or ownership, including employee’s rights
- Opinion on infringement
- Opinion on validity (patentability)
- Opinion on validity (sufficiency)
- Opinion on availability of convention priority, including requesting a “late” priority claim
General/Multi-jurisdiction:
- Estimate of the cost of filing a UK, European and/or International patent application
- Taking over representation of a UK/European/International application or granted patent
- Estimate of the cost of filing a patent application in the US or Japan
- Any matter involving competition law issues
- Availability of different types of IP right available for a project (e.g. patent, utility model, trade mark, registered and unregistered design rights, copyright, etc.)
- Comparison of claim types available in different jurisdictions
Patent Office Hearings:
Experience of preparing for, either as principal or assistant:
- ex-parte or inter-partes hearings, at the UK, European or any other national Patent Have attended, either as principal or assistant:
- one ex-parte or inter-partes hearing, at the UK, European or any other national Patent Office
Official Actions from Patent Offices
Experience of reviewing and advising on:
- Five official actions from WIPO or a National Patent Office acting as Receiving Office, International Search Authority or International Examining Authority for an International Patent Application.
Experience of advising on and responding to:
- Ten official actions from the UK and/or European Patent Office, of which at least 5 are from the UK Patent Office
- Five office actions from any other Patent Offices, but especially from the USPTO and JPO
Filing new patent applications
Experience of filing or sending instructions for filing:
- Ten UK or European patent applications
- Five International patent applications
- Five patent applications, or five national phase entries, at other Patent Offices
- A national phase entry to the UK national phase
- At least one entry to the European regional phase
FD2 Guidance (P3)
Knowledge and Experience for Final Diploma Examination FD2 Drafting of Specifications (P3)
Introduction
This guidance has been prepared to assist candidates preparing for the PEB Qualifying Examinations. It is intended to identify the knowledge and experience candidates should attain prior to sitting the examination.
Different candidates will have widely different opportunities for training and gaining experience, depending on the pattern of work in their firms or companies. This guidance is designed to help candidates to identify areas where the knowledge and experience gained in the workplace will have to be supplemented through tutorials, seminars, training courses, private study or other means.
This guidance should be read together with the FD2 syllabus. Syllabi are reviewed annually and updated versions are published on the PEB website in the April before the October examination session. It is recommended that candidates familiarise themselves with the Acts and Rules set out in the syllabus.
Candidates are recommended to make use of past question papers and mark schemes, which are also available on the PEB website. In addition, the Principal Examiners’ reports on the examinations explain common areas of weakness seen in candidates’ answers.
Examiners report that there is a clear link between the length of professional experience and success in the Qualifying Examinations. It is unlikely that candidates with less than three years’ experience in the profession, including at least a year acting mainly on their own responsibility, will have sufficient experience to be successful in the FD2 examination.
In addition to professional experience listed below, candidates are advised to attend at least twelve hours per year of CPD seminars, including some delivered outside their workplace, such as those offered by CIPA. Candidates are also advised to regularly read a monthly IP law publication.
Overview
The FD2 examination is a test of competence to understand a simple technical problem and, primarily, to draft claims for a new patent application that clearly define the invention and give the maximum potential for protection in view of the disclosed information. While the technical problem will differ from paper to paper, candidates will always be expected to draft GB claims, both independent and dependent; and to draft a specification, either whole or in part, made up of an introduction, prior art review, object, statement(s) of invention, specific description and abstract.
The FD examinations test candidates’ ability to assess issues pertinent to the facts presented taking into account regulatory requirements (IPReg’s Core Regulatory Framework), the Registered Patent Attorney’s duties to clients, and professional ethics applicable to IP practitioners. A script that contains unethical advice, proposals or statements does not meet the requirements for award of a Pass in an FD examination.
Guidance
It is strongly recommended that before taking the FD2 examination, candidates should:
- Have drafted at least ten UK patent
- Understand how to apply the significant case law on drafting specifications, especially claims, as indicated in the relevant sections of or as reported in:
- CIPA Guide to the Patents Acts (2022) Ed. Paul Cole, pub. Sweet and Maxwell (“The Black Book”)
- Reports of patent, design and trade marks
- Be familiar with the principles of drafting descriptions, claims and abstracts for UK, European and International patent applications as indicated in:
- The Patent Office Manual of Patent Practice
- Fundamentals of Patent Drafting (2006) Paul Cole, pub CIPA.
- Be competent in amendment practice as examined by FD3 Amendment of Specifications.
- Have attempted under timed conditions, and have had reviewed, at least five past FD2 papers.
Although FD2 tests candidates’ competence in drafting for UK applications only, from a broader practice perspective candidates are recommended to:
- Have a basic knowledge of the principles of drafting claims for Europe, United States, Australian and Japanese Claims.
- Have prepared at least one patent application for use in one or more of United States, Australia and Japan.
- Have prepared EP or PCT patent applications.
FD3 Guidance (P4)
Knowledge and Experience for Final Diploma Examination FD3 Amendment of Specifications (P4)
This guidance has been prepared to assist candidates preparing for the PEB Qualifying Examinations. It is intended to identify the knowledge and experience candidates should attain prior to sitting the examination.
Different candidates will have widely different opportunities for training and gaining experience, depending on the pattern of work in their firms or companies. This guidance is designed to help candidates to identify areas where the knowledge and experience gained in the workplace will have to be supplemented through tutorials, seminars, training courses, private study or other means.
This guidance should be read together with the FD3 syllabus. Syllabi are reviewed annually and updated versions are published on the PEB website in the April before the October examination session. It is recommended that candidates familiarise themselves with the Acts and Rules set out in the syllabus.
Candidates are recommended to make use of past question papers and mark schemes, which are also available on the PEB website. In addition, the Principal Examiners’ reports on the examinations explain common areas of weakness seen in candidates’ answers.
Examiners report that there is a clear link between the length of professional experience and success in the Qualifying Examinations. It is unlikely that candidates with less than three years’ experience in the profession, including at least a year acting mainly on their own responsibility, will have sufficient experience to be successful in the FD3 examination. Candidates who concentrate on the practical issues in the scenario tend to be more successful. For example, if a client needs the claims to cover a new product (their own or a third party product) on the market, but the relevant claims are worded too broadly for patentability, such as from the objections/prior art located by the Examiner, then the claim amendment(s) selected have both to be patentable (be clear; be novel; support a reasonable inventive step argument; not add subject matter, etc.) but also still cover the product. Candidates who move beyond merely identifying a difference, writing a response and just reporting the facts in isolation of what is important to the client, will gain more of the marks available in this paper than those who do not.
FD3 tests skills in prosecution techniques geared to a commercially relevant situation. Candidates need to allow adequate time to write a client report which indicates the steps taken; how the client’s position is still protected; and the practical consequences of the position taken in response. For example, if the amended claims might lead to a lack of unity objection, the client has to be advised that divisional costs may need to be borne in the future if objection is raised and the client wishes to pursue all of the claims.
In addition to professional experience listed below, candidates are advised to attend at least twelve hours per year of CPD seminars, including some delivered outside their workplace, such as those offered by CIPA. Candidates are also advised to regularly read a monthly IP law publication.
Overview
The FD3 examination is a test of competence to respond to patentability objections by argument and amendment while ensuring that the patent claims remaining in an application (or proposed for a divisional application) not only meet the requirements for patentability (including for example clarity) and amendment but are still of commercial value to the applicant.
While the precise materials may change from year to year, typically the question paper comprises at least: one patent text, one office action, prior art documents or relevant extracts and instructions from the client or other indicating the commercial interest in the invention covered by the patent text.
The FD examinations test candidates’ ability to assess issues pertinent to the facts presented taking into account regulatory requirements (IPReg’s Core Regulatory Framework), the Registered Patent Attorney’s duties to clients, and professional ethics applicable to IP practitioners. A script that contains unethical advice, proposals or statements does not meet the requirements for award of a Pass in an FD examination.
Guidance
The FD3 examination tests candidates’ competence in:
- Amending Claim 1, if necessary, to fix any errors and to address any concerns in the examination report or client letter;
- Correcting and expanding the dependent claim set, if possible and advisable, to provide additional and useful fallback positions;
- Proposing an independent claim for a divisional application (if appropriate);
- Producing a response to the UKIPO that includes a summary of the basis for any amendments, a novelty analysis, and an inventive step analysis, and that deals with any other items specifically raised in the paper (e.g. extensions of time); and
- Providing a memo that forms the basis for a report to the client which explains the actions taken (not only describing what has been done), answers the client’s questions, and (importantly) identifies any potential weaknesses in the response that the client should be aware of.
Candidates are expected to comment on the relevance of all documents to the patentability of the claims, whether this is in the response to the UKIPO or in the memo to the client. Either a Pozzoli/Windsurfing analysis or the EPO problem-solution approach to inventive step is acceptable, but it is important that the candidates do not confuse the two approaches in their argumentation.
It is strongly recommended that before taking the FD3 examination, candidates should have:
- Developed an appropriate level of knowledge and experience by:
- Responding to 30 official actions from the UK and/or European Patent Office
- Reviewing, and responding to at least some of, ten written opinions from an IPEA
- On at least one occasion, if the opportunity is available, considering and advising (the client or supervising attorney) on amendment in preparation for or during European opposition proceedings
- Preparing and filing at least one divisional
- Familiarised themselves with the significant case law on novelty, inventive step, clarity and amendment issues (including the filing of divisionals) as indicated in the relevant sections of or as reported in:
- Case Law of the Boards of Appeal of the European Patent Office
- CIPA Black Book
- Reports of Patent, Design and Trade Marks Cases
- Official Journal of the European Patent
- Developed an understanding of examination principles of novelty, inventive step, clarity and amendment (including the filing of divisionals) in the UK and European Patent Offices as indicated in:
- The Patent Office Manual of Patent Practice
- Guidelines for Examination in the European Patent Office
In particular candidates should be familiar with the tests used by the EPO and the UKIPO respectively when assessing inventive step and the exclusion of certain subject matter from patentability.
- Developed competence in drafting practice as examined in FD2 Amendment of Specifications.
FD4 Guidance (P6)
Knowledge and Experience for Final Diploma Examination FD4 Infringement and Validity (P6)
Introduction
This guidance has been prepared to assist candidates in preparing for the PEB qualifying examinations. They are intended to identify the knowledge and experience candidates should attain prior to sitting the examination.
Different candidates will have widely different opportunities for training and gaining experience, depending on the pattern of work in their firms or companies. Using these guidelines will help candidates to identify areas where the knowledge and experience gained in the workplace will have to be supplemented through tutorials, seminars, training courses, private study or other means.
This guidance should be read together with the FD4 syllabus. Syllabi are reviewed annually and updated versions are published on the PEB website in the April before the October examination session. It is recommended that candidates familiarise themselves with the Acts and Rules set out in the syllabus and with the topics examined in Foundation Units FC1 to FC3, as any of these can be relevant to the analysis and advice concerning infringement.
Candidates are recommended to make use of past question papers and mark schemes, which are also available on the PEB website. In addition, the Principal Examiners’ reports on the examinations explain common areas of weakness seen in candidates’ answers.
Examiners report that there is a clear link between the length of professional experience and success in the Qualifying Examinations.
Overview
FD4 is a test of the competence to properly advise a client facing the possibility of being an infringer of a patent or the proprietor of a patent being infringed. While the precise materials may change from year to year, typically the paper is made up of at least: 1 patent, 1 alleged infringement, 2 or more prior art documents and 1 letter explaining the background and seeking advice. The time allowed for this paper is 5 hours.
The FD examinations test candidates’ ability to assess issues pertinent to the facts presented taking into account regulatory requirements (IPReg’s Core Regulatory Framework), the Registered Patent Attorney’s duties to clients, and professional ethics applicable to IP practitioners. A script that contains unethical advice, proposals or statements does not meet the requirements for award of a Pass in an FD examination.
Guidance
It is strongly recommended that before taking the FD4 examination, candidates should:
- Understand the fundamentals of interpreting patent claims in the
- Have experience of drafting and prosecution:
- Drafting and prosecution skills assist a candidate in interpreting a claim and establishing the validity of the claim, as interpreted, against prior art as well as determining whether there is infringement of a valid claim.
- A minimum of 18 months’ full-time experience of drafting and prosecution, which should enable a candidate to develop an understanding of claim drafting and
- Have advised on “freedom to use” or in connection with infringement proceedings:
- Understanding of the three-way situation of a patent, a possible infringement and prior art that is tested in FD4 can be assisted by “freedom-to-use” exercises. During training in drafting and prosecution a candidate must learn to criticise the work done (for example claims drafted) and assess whether the work would withstand an attack on validity and be effective to deter a possible infringer. It is especially helpful for a candidate to be involved in any real-life freedom-to-use situation. It is suggested that, as an exercise, the candidate could be given the basic papers (for example from a previous situation) and asked to prepare a report. This could be compared with the eventual advice given.
- Involvement in infringement proceedings, or in any part of their preparation, will also greatly assist, especially in appreciating that others will often take a different (at least initial) interpretation of a given claim. It is realised that suitable real life infringement situations are not common, but using a past example as an exercise is recommended.
- Have completed at least three past papers under timed conditions, which should be reviewed with a tutor using the published mark scheme and the Principal Examiner’s report.
- Have developed understanding of how the UK Courts deal with interpretation by studying at least three Real life examples show how a consistent approach for validity and infringement must be followed.
- Be familiar with case law relating to interpretation of claims by UK courts and assessment of novelty, obviousness and infringement, including (as at March 2025):
- Adhesive Dry Mounting v Trapp [1910] 27 RPC 341
- Gillette Safety Razor Co Ltd v Anglo-American Trading Co Ltd [1913] 30 R.P.C. 465
- Catnic Components Ltd v Hill & Smith Ltd [1982] RPC 183
- Windsurfing International Inc v Tabur Marine (Great Britain) Ltd [1985] RPC59
- Improver Corp v Remington Consumer Products Ltd [1990] FSR 181
- Aerotel Ltd v Telco Holdings Ltd and Macrossan’s Patent Application [2006] EWCA Civ 1371
- Kirin-Amgen Inc and others (Appellants) v. Hoechst Marion Roussel Limited and others (Respondents); Kirin-Amgen Inc and others (Respondents) v. Hoechst Marion Roussel Limited and others; [2004] UKHL 46
- Pozzoli SPA v BDMO S.A & Other’s [2007] EWCA Civ 588
- Virgin Atlantic Airways Ltd v Premium Aircraft Interiors Group [2009] EWCA Civ 1062
- Schutz (UK) Ltd v Werit UK Ltd [2013] UKSC 16
- Actavis UK Ltd v Eli Lilly & Co [2017] UKSC 48
- Icescape Ltd v Ice-World International BV & Others [2018] EWCA Civ 2219.
- E Mishan and Sons Inc (t/a Emson) v Hozelock Ltd [2019] EWHC 991 (Pat)
- Vernacare Ltd v Moulded Fibre Products Ltd [2022] EWHC 2197 (IPEC).