[co-author: Phillip Sanger, Chartered & European Patent Attorney, Director, Vault IP Limited]
Planning an extended European vacation for your patent application? A lengthy stay in Munich with possible outings to The Hague, Berlin, Vienna, or Brussels? While your patent application won’t be strolling through the Marienplatz, the Brandenburg Gate, or the Schoenbrunn Palace, packing will still be essential. “Packing” in this case does not mean preparing for the weather or to be properly dressed for dinner. By “packing,” we mean preparing a U.S. patent application or PCT application for eventual examination at the European Patent Office (EPO). U.S. and European patent practices are different. Unwary U.S. applicants can draft a patent application perfectly suited for familiar U.S. rules that will encounter complications in Europe. There are ways to “pack” a U.S. patent application to make it easier to prosecute before the EPO. This article will provide some suggestions to avoid common problems with patent applications in Europe.
I. Eligible Subject Matter
What is considered a patentable invention is slightly different in Europe compared to the U.S., so evaluate what claims are packed into a patent application that is eventually destined for Europe. While some of the items packed into the claims or specification may not be used until you reach European shores, other items may be helpful in the U.S. too.
Software is patentable in Europe. The legal framework of Art. 52 EPC states that in Europe, computer programs “as such” are not inventions, but this is not a blanket prohibition on computer or software related inventions. A significant body of EPO case law has developed to clarify what is, and is not, patentable in this field. The invention is not excluded by Art. 52 EPC as long as there is some degree of technicality to the claim - even if it is trivial. The degree of technicality can be explicit, such as the inclusion of a computer, or implicit, such as a technical effect resulting from working the invention. This is referred to as the “any-hardware” approach.
The result is that (contrary to popular belief) the exclusion of Art. 52 EPC is rarely used by the EPO these days, and is interpreted narrowly. The exclusion will not apply if the claim has any technical character or involves a technical teaching. The EPO explicitly states that “inventions having a technical character that are or may be implemented by a computer program are not excluded from patentability.”
The question of patentability of software has more recently been shifted into the realm of inventive step, which is where many software-related inventions run into problems at the EPO. The EPO asks: “Considering those features which contribute to technical character, does the invention provide a non-obvious solution to a technical problem?” The advance or inventive step itself needs to be technical in nature. If it is not, then the invention is considered to be obvious.
One example of this is in the HITACHI case from which the above approach is derived. In this case, the patentee sought to protect a method of improving online auctions. The problem (which was undoubtedly technical) was that bids can get out of sync. This is an inherent problem with internet auctions. The patentee’s claimed apparatus (a server) and method involved requesting a desired bid and a maximum bid from each bidder. The system would then calculate the winner using this information alone, and as such no real-time input was required. The claims were not excluded as a software program under Art. 52 EPC because there was a trivial technical feature in the claim, namely a server. Although this was the case, the invention was deemed obvious because the advance was non-technical. Instead of tackling the underlying technical problem (the delay), the patentee sought to circumvent it by non-technical means (changing the rules of the auction). As such, the only advance lay in a business method rather than in a technical means.
So the applicant needs to be in a position to argue that the advance (i.e., the new and inventive feature) is technical in nature. In other words the advance does not solely lie in excluded subject matter, and instead provides a technical solution to a technical problem.
It is important to say that this area of case law is still developing at the EPO. There is no definitive decision from the Enlarged Board of Appeal to settle the position. The national positions also can vary. For example, the approach of the UK national courts differs.
B. Business Methods
The EPO deals with business methods in much the same way as software. A claim will not be refused as a business method per se if it contains technical subject matter, no matter how trivial (e.g., a computer or software having some degree of technical character when run). The problem again comes with inventive step. The claim will be deemed obvious if, like in the HITACHI case, the advance lies solely in the business method. The advance needs to contain at least some further technical effect and not just lie in the way business is done.
Under Art. 53(c) EPC, methods of treatment of the human or animal body by surgery or therapy and diagnostic methods practiced on the human or animal body are excluded from patentability.
With respect to surgery, in practice, the EPO examiners can interpret this exclusion quite broadly, even to the extent that any method of operating a medical device can be objected to.
The leading decision from the Enlarged Board of Appeal is G1/07. The method concerned an imaging method which involved an injection into the heart. The Board stated that if the method had the following characteristics then it would be excluded as a surgical method:
This is true even if the surgical method is only one step in a process regardless of what the other steps are. Therefore, the exclusion is broader than the software exclusion discussed above.
EPO examiners generally take a very cautious approach with respect to surgical methods. If there is even a whiff of surgical content, an EPO examiner will likely object. Therefore, unless the applicant has an appetite for fighting the Boards of Appeal, it is advisable to be prepared to rely on apparatus claims (noting that “use” is generally an act of infringement in EPC contracting states).
In terms of diagnostic methods, this exclusion is narrower. The method needs to contain the following steps to be excluded:
European requirements and fees related to a specification may indicate that you packed too much or packed the wrong stuff. EPO rules related to essential/necessary features and fees related to page count and the number of claims can quickly cause regret over a lengthy, verbose patent application.
A. Avoiding Essential/Necessary Features
An EPO examiner may require that the claim be amended to include features found in the specification that are described as essential or necessary. If the specification mentions that something “must” be included for the device to operate, then the EPO examiner may request that this feature be included in the independent claim.
Generally, the essential features are those required to carry out the invention (i.e., those that enable the invention to provide the required technical effect). The EPC requires that the claims are supported by the description, and, consequently, anything in the description which is described as essential must be in the independent claims.
Any features which do not contribute to the technical effect (i.e., solving the problem) are not essential. Therefore, although a claim to a new efficient engine coolant pump would ordinarily require an engine to run, the engine is not essential because it does not contribute to the solution.
EPO fees are sizeable and can add up quickly. Whereas a U.S. patent application includes 20 claims without fees, a European patent application only includes 15. Likewise, while a U.S. patent includes 100 sheets without fees, a European patent application only includes 35. Thus, even if a U.S. patent application avoided excess fees, the same specification and claims can still incur significant fees in Europe.
As a U.S. patent practitioner who receives or reviews European patent applications knows, claim styles in Europe are different from the U.S. This European style can be adopted or built in to maximize possible claim scope and avoid objections in Europe.
A. Independent Claims
A European patent application generally only has one independent claim of each type (e.g., apparatus, method). Multiple independent claims of the same type (e.g., two apparatus claims) are allowed, but are the exception. Thus, it can be difficult to file a single European patent application with, for example, three independent claims covering different apparatus embodiments.
Means-plus-function claims have advantages in Europe not found in the U.S. For example, “means for providing a resilient force” is broader than “resilient member” because the former includes items like magnets. Equivalent scope can potentially be achieved in most cases without “means plus function,” but it can be a useful tool to have in the attorney’s arsenal if required. In fact, the EPO teaches this claim format during qualifying exams.
C. Dependent Claims to the Overall System
Claims to a system that the claimed component is used in are usually made dependent. For example, a permissible European claim is “A car comprising the engine of claim 1…”
EPO examiners seek clarity. Some U.S. claims will not easily transfer to Europe. For example, U.S. claims which start as “In an X…” or “An X in a Y…” can encounter resistance. Claims referring to features of components that are not part of the claim itself are usually frowned upon by EPO examiners, such as claiming a plug with reference to the features of a socket. Such claim language may be objected to if the EPO examiner feels it is unclear.
IV. Avoiding Amendment Pitfalls
Europe differs from the U.S. when it comes to making amendments. Spend some time thinking about what to pack in the specification to avoid a mid-flight panic.
A. Written Support
In the U.S., your specification is like a reservoir. A U.S. patent attorney can take bits and pieces of the text or drawings to make a desired amendment. This support can even be implicit if the patent attorney can convince a U.S. examiner. EPO examiners are on a different continent (both literally and figuratively) when it comes to what constitutes written support for an amendment. To avoid problems with your amendments, ideally the proposed amendment should be explicitly disclosed in the specification (e.g., word-for-word). That said, the law is more flexible than EPO examiners tend to acknowledge. The golden rule is that the skilled reader must be able to directly and unambiguously, using common general knowledge, derive the feature from the disclosure of the invention as filed. Therefore, there is no requirement for literal basis. While literal support may make life easier during prosecution, implicit disclosure of features can be used as basis for amendment in Europe. It just may take more effort than in the U.S.
B. “Intermediate Generalisation”
The other major difference for amendments in Europe is that taking a bit of an embodiment as an amendment may require bringing other features of that embodiment into the claim. Taking one feature in isolation from an embodiment without the necessary accompanying features is referred to as “intermediate generalisation,” which is foreign to U.S. patent attorneys in both concept and spelling. The idea behind “intermediate generalisation” is that if feature A is disclosed only with feature B, and the two features work together to provide the technical effect, then isolating feature A for amendment is generally not permissible. Therefore, to amend a claim with feature A without “intermediate generalisation,” feature B also must be included.
EPO examiners tend to be too prescriptive, and will ask for just about every feature to be added. If there are two features in an embodiment (A and B), the question to be answered is whether the skilled person would understand that A is separable from B. Ideally A and B should be described as separable, or claimed in different dependent claims (or at least separate statements of invention). If not, the EPO may request that the applicant establish that:
C. Broadening a Claim Feature
Broadening a claim feature can be difficult in Europe. Whereas a broadening reissue application is possible in the U.S., there is a blanket prohibition against broadening post-grant in Europe, including during opposition. Before grant, removing features from the independent claims as-filed is subject to a test. The removal of a feature from an independent claim is permitted if the skilled person would directly and unambiguously recognize that:
The feature was not explained as essential in the disclosure;
The feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve; and
The replacement or removal requires no real modification of other features to compensate for the change.
D. Multiple Dependencies
Europe allows (and even encourages) multiple dependencies. This can provide benefits during prosecution and future litigation not usually seen in the U.S. due to its multiple dependency fees.
Extra time packing a suitcase can mean the difference between a rewarding visit to Europe and a money-wasting disaster that you abandon early. The same is true for a patent application. Whether you’re certain a patent application will eventually be filed in Europe or whether it’s still just a possibility, plan your specification and claims accordingly. The minor tweaks to the claims and specification suggested here generally won’t add pages or impact U.S. prosecution. In fact, many of the changes that will help in Europe also can help in the U.S. or in other countries like China or Japan, which can justify any increased costs. Regardless of which European country you nationalize in or which language you eventually need translations for, packing a patent application for Europe can streamline prosecution, save time, and reduce attorney fees.