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20 November 2015PatentsIvor Elrifi and David Wraige

Square peg in a round hole: drafting US-based patents for European approval

A universal goal of patent applicants is to draft applications that lead to enforceable granted patents in the territories of interest. Coupled to that goal is the need to be able to prosecute the applications successfully in the relevant patent offices. However, different national/regional laws introduce tension into the drafting of a patent application. For example, drafting the application to improve the chances of successful enforcement in one country can radically affect the prospects of successful prosecution in another. Drafting different applications for different jurisdictions is a possible solution, but requires applicants to bear the additional expense and management headache associated with that.

The US and Europe are two regions where patent drafting practices have evolved in such a way that it can often appear there are irreconcilable incompatibilities. However, with careful planning, it is possible to draft patent applications that are capable of successful prosecution and enforcement in both territories. Between them, the economies of the US and Europe accounted for nearly 50% of global GDP in 2014. Being able to address the markets in these economies successfully with a single patent application is therefore very compelling for patent applicants generally. In this article, we look at some of the difficulties faced when prosecuting US-originating patent applications in Europe as a result of the different legal standards applied in the two jurisdictions.

Allowability of amendments

The allowability of amendments is a perennial problem. The difficulty stems from the fact that the approach adopted in assessing the allowability of an amendment to a patent application is much stricter at the European Patent Office (EPO) than in the US.

In Europe, the allowability of amendments is governed by article 123(2) of the European Patent Convention (EPC). This states that an amendment cannot result in a patent application or patent containing subject matter which extends beyond the content of the application as filed.

This has been interpreted by the EPO’s boards of appeal to mean that an amended claim cannot contain subject matter that is not disclosed in the patent application as filed. However, what is considered by the EPO to be disclosed in the application as filed is very tightly restricted. It is not enough that someone would very likely consider the subject matter of a desired amendment having read the application as filed; the only thing that counts is what is actually disclosed. For example, a disclosure in the application as filed of screws or adhesive for fixing two components together is not enough to warrant an amendment to rivets.

This strict approach often leaves those with US-originating applications feeling that they are being unduly restricted in the amendments that they are able to make. Amendments that would be available to them under US law are simply inconceivable in Europe. This tension between the US and European approaches is exacerbated when it becomes apparent that an amendment to include subject matter that has actually been disclosed in the application as filed is also not allowed.

This can occur because it is not only what is disclosed that matters but also the manner of the disclosure. Where features are only disclosed in combination, the EPO will often consider that one of the features in isolation of the others with which it is disclosed cannot be used as the basis for an amendment.

While these issues can certainly be frustrating, the temptation to try to pull the wool over an examiner’s eyes must be resisted. It might be possible to persuade an examiner to accept an amendment with dubious basis in the application as filed. A third party might then exploit the making of this amendment as the basis for an opposition. However, it is usually not possible to remove a limiting amendment after a patent has been granted because the scope of protection of a granted European patent may not be extended. The end result of the opposition is almost certainly revocation of the patent.

These issues can be addressed so that a European application can be successfully prosecuted without sacrificing the corresponding US patent. The key is in drafting the summary section of the patent specification. All too often, the summary section is rather sparse, with little possibility of using it as the basis for any meaningful amendments. Another common style of summary section reflects the wording of the claims verbatim.

With a little thought, this style of summary can be extended to include basis for any amendment that the draughtsperson is able to conceive might be required from their knowledge of the invention at the drafting stage. Similarly, care should be taken to specify technically separable features individually in the summary so that each can be used in isolation of the others as the basis for an amendment in the future.

Clarity and indefiniteness

US and European patent laws both govern the allowable extent of ambiguity of the claims of a patent application. In the US, claims are objectionable if they are “indefinite”. The US Supreme Court held in Nautilus v Biosig Instruments (June 2014) that a claim would be indefinite if it fails to inform, with reasonable certainty, about the scope of the invention. In Europe, claims are required to be “clear and concise”.

The intentions are undoubtedly similar, but the implementation in Europe has evolved such that the practical requirements are different. European examiners routinely raise clarity objections against claims that would not be expected to be considered indefinite in the US.

For example, US-originating patent applications commonly have multiple device claims and/or multiple method claims. This is generally not allowed under the EPC. Other clarity issues that often arise at the EPO relate to (i) the use of relative terms such as “about” and “approximately” in claims; (ii) the expression of claimed subject matter in terms of the result that is to be achieved rather than the technical features necessary to bring about the effect; and (iii) the definition of claimed subject matter by reference to material parameters and claims that define a first entity by reference to another entity.

“This strict approach often leaves those with US-originating applications feeling that they are being unduly restricted in the amendments that they are able to make.”

There is no particular solution to these problems other than to know that they exist and draft a patent application accordingly. Having said that, knowledge of their existence will allow them to be pre-empted and, if it is desired to have different claim wording for the US and Europe, to provide suitable basis in the summary section to enable amendment in Europe in due course.

The right to priority

The right to priority is fundamental to the validity of many patent applications. Even if there are no relevant disclosures by third parties during the priority year, patent applicants commonly disclose their inventions during this time period as they wish to commercialise their inventions without delay. Unfortunately, it is a right that is easily lost in Europe, which can lead to an applicant’s own disclosure invalidating its patents or patent applications.

A major cause of difficulty arises from the relatively strict approach adopted in Europe to assessing whether the same invention is disclosed in a priority application and the application claiming priority. The EPO takes a similar approach to that used in assessing whether subject matter is added by an amendment. Therefore, if the scope of a claim is broader than is disclosed in a priority application, the right to priority is likely to be forfeit. Conversely, if the scope of a claim is more limited than is disclosed in a priority application, a claim to priority will be valid only if the limiting features are disclosed in the priority application in combination with the other claimed features.

This strict approach does not sit well with the concept of provisional applications that are often used in the US to establish a priority date. Since these do not include claims, there is a real danger that the draughtsperson will not have set out the invention as precisely as might be required. The result is that the invention disclosed in the provisional application will not be the one that is ultimately claimed in applications claiming priority from the provisional application, leading to a loss of priority.

There is no legal remedy to this kind of problem; it must be addressed when drafting the provisional application. Ideally, this would be achieved by drafting claims upfront. If that is not done then the invention should be set out in the broadest technically sensible terms along with all optional features that might conceivably be required. If this is done, it should be possible to retain the priority right.

The results of broadening of an invention during the priority year have been discussed at length among European practitioners recently as they raise the spectre of toxic divisionals. The theory is that a divisional application with the same text as the parent can be used to invalidate the parent if the parent claims an invention more broadly than disclosed in the priority application. This is currently under consideration by the EPO’s Enlarged Board of Appeal. Whatever it decides, this underscores the need to consider the scope of the invention carefully when establishing a priority date.

Another type of US-specific application that can cause problems with priority in Europe is the continuation-in-part. This is because priority can be validly claimed in Europe only from the first application to disclose the claimed subject matter. A continuation-in-part can therefore only be used as the basis for a priority claim for subject matter that is newly disclosed within it. If the subject matter for which priority is desired is also disclosed in the parent application, the priority claim will be invalid.

The ownership of the priority right is another factor that can catch the unwary off guard. In Europe, priority may be claimed only by the applicant for the priority application or his/her successor in title. The catch is that the transfer to the successor in title must occur during the priority year. Again, there is no remedy for a defect here.

It should be clear from the above that careful vigilance is required for a successful priority claim in Europe. Coupled with that, careful drafting of the priority application is required to ensure that the right to priority is not subsequently lost on filing a European application. Such issues often arise for the first time during opposition proceedings when options are naturally more limited. The potential for wasting a significant investment is therefore very real.

Inventive step

Most US practitioners are aware that the EPO assesses inventive step using its problem-and-solution approach. What is not always known, however, is that the objective problem used in this assessment must be derivable from the application as filed.

This requirement can be at odds with the drafting practice of many US practitioners, who avoid discussing any problems associated with the prior art and explaining the technical benefits provided by the features of the invention. This is for fear that such discussion might imply that disclosed features are essential to the invention. Obviously, such an implication could cause serious problems both in prosecution of an application and enforcement of a granted patent.

However, it should be compatible with both US and European practices to mention the technical benefits provided by the features disclosed in a patent specification, provided that the specification does not imply or state that the features are essential or that it is essential that a particular problem is solved. Doing so will certainly ease prosecution in Europe.

While there is no panacea for drafting a global patent application, many of the potentially fatal issues that repeatedly arise can be addressed with careful drafting and decision-making. Well thought-out preparations at the initial drafting stage can pay dividends in the long run.

Ivor Elrifi is a partner at  Cooley. He can be contacted at: ielrifi@cooley.com

David Wraige is a special counsel at Cooley. He can be contacted at: dwraige@cooley.com

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