Align claim drafting and

filing strategies to optimize protection

in the EPO, GPTO and USPTO

February 25, 2011 Presented by

Sean P. Daley and Jan-Malte Schley

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Outline

Motivation Claim drafting Content and purpose of the description Impact on filing strategy

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Motivation

Legal requirements in the US and before the EPO or GPTO are different Assume that the non-US priority application is part of the prosecution history of the counterpart US patent application Statements desirable for an EP or DE application may negatively impact the US family member

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Motivation

Cost saving –A well drafted priority filing will not

only optimize protection around the world, it will also facilitate prosecution down the road in your targeted jurisdictions

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Claim drafting - Goals

Cover all aspects of the invention Cover entire stream of commerce No room for designing around Uphold validity in litigation or opposition

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Claim drafting – Independent claims

Only a single independent claim per category is usually allowed – Rules 43(2) and 62a EPC – Unless there is one of the exceptions to

Rule 43(2) EPC, multiple independent claims per category will not fly and just cause additional objections during prosecution

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Claim drafting – Independent claims

Not as much emphasis in finding the one and only perfect wording to describe your invention – Be open to consider multiple ways or take

different views to describe your invention – Consider drafting several independent

claims – different independent claims being narrower in some aspects and broader in other aspects

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Claim drafting – Independent claims

Draft claims as appropriate for European or German practice – Make sure to cover all instances of the

invention – e.g. solar cell, panel including solar cells

Work with US practitioner to include claims appropriate for US practice

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Claim drafting – Number of Claims

Maximum 15 claims total – EPO claim fees are very high

– GPTO claim fees are much more

moderate

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Claim drafting – Number of Claims

Don’t restrict your thoughts too much by formal requirements – Especially with multiple independent

claims a total of 15 claims is likely not enough to describe all aspects of your invention

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Claim drafting – Number of Claims

Draft as many claims as seems appropriate to cover all aspects of the invention – don’t restrict yourself to 15 – Article 123(2) EPC – original disclosure – To optimize protection in the US in most

cases you want to get more than 15 claims granted

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Claim drafting – Two-Part Form

Two-part form

– Rule 43(1) EPC

– Start with the presumably “closest prior art” available during preparation of the application and put the distinguishing features into the characterizing portion

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Claim drafting – Two-Part Form

Two-part form might have legal and factual drawbacks – Features mentioned in the preamble

might be regarded as admission that they were known

– The preamble might contain unnecessary features limiting the claim

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Claim drafting – Two-Part Form

Don’t use two-part form – Two-part form can still be added in

Europe later on if necessary

Focus on the invention – optimize claims in view of the invention, closest prior art is likely to change during prosecution

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Claim drafting - Summary

Draft claims as appropriate for European or German practice – Avoid two-part form – Don’t restrict yourself to 15 claims

Consider putting claims as “embodiments” into the description – see example on the next slide Work with US practitioner to include claims appropriate for US practice

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Claim drafting - Summary

Claims as “embodiments” in the description:

… detailed description … “In addition or as an alternative to the above, the following embodiments are described: Embodiment 1 is directed to …[claim 1]. Embodiment 2 is directed to embodiment 1, wherein …[claim 2]. Embodiment 3 is directed to embodiment 1 or 2, further comprising …[claim 3].”

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Description – Content and Purpose Provide detailed description of all aspects of the invention Facilitate prosecution Provide as many details as possible for additional fall back position (such that incorporating such features into the claims would be in line with original disclosure requirements) Satisfy written description, enablement and best mode requirements

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Description - Background section

It is common practice in Europe to acknowledge the prior art in the background section It is good practice to be very careful about any statements which characterize the prior art – negative statements should generally be avoided

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Description - Background section

No requirement to characterize the prior art Statements made in the background can be considered admissions regarding the prior art Inaccurate, incomplete or misleading statements may serve as a basis for an allegation of inequitable conduct

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Description - Background section

Consider drafting a very brief background section with only general statements regarding known technologies Minimize characterization of prior art – List prior art without comment – Use direct quotations – Avoid noting any shortcomings of prior art

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Sidebar – Information Disclosure Statements

While focusing on the invention, make sure that all relevant prior art known by the inventors or searched in the course of preparing the application gets properly cited in the US later on.

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Description - Technical Effects

… recent EPO opposition case … … technical advantages not explicitly mentioned in the originally filed application were argued … Quote from the interlocutory decision: “…These claimed advantages have been thus accorded a very low level of credibility due to this lack of basis. To do otherwise would be to accord the inventiveness of the representative a level of importance equal to the principle of first filing and thus render the latter a nonsense. …”

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Description - Technical Effects

Provide technical effects and advantages to improve position to argue inventive step – Link effects and advantages to features – Technical effects become more and more

important for prosecution and during opposition proceedings • Especially for computer-implemented

inventions it is of utmost importance to show that a technical problem is solved

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Description - Technical Effects

Statements about technical advantages might lead to a narrower claim construction during litigation Carefully drafted statements about advantages are unlikely to help during prosecution but may help during litigation

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Description - Technical Effects Carefully provide technical advantages and effects – Use non-binding language – Generally try to avoid linking specific

advantages to specific features – Consider providing technical advantages

• in a non-binding general manner at the end of the summary section and

• using non-binding language when stating advantages in the detailed description

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Description - Detailed Description

Having European original disclosure requirements (Art. 123(2) EPC) in mind, the detailed description is frequently written using language and formulations close to that of claims. The detailed description is important but may sometimes not be within the primary focus of European application drafting.

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Description - Detailed Description

Significantly more flexibility in amending the claims – Rich resource for additional fall back

positions – No issues like inadmissible intermediate

generalization Make sure to satisfy enablement and best mode requirements

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Description - Detailed Description Describe as many details as possible while staying flexible – Avoid discussing embodiments as separate or

alternatives; keep possibility to combine – Avoid using language like “preferred” or

“preferably” which may narrow claim construction

Disclose all aspects of the technology – Cover competitors at various points along the stream

of commerce – Support for additional fall back positions

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Description - Figures

In Europe it is generally difficult to take features for claim amendments from the figures – The EPO is more restrictive in this respect than

the German case law

The figures are important but may sometimes not be within the primary focus of European application drafting.

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Description - Figures

Significantly more flexibility in amending claims – Figures may serve as a good basis for

claim amendments – Good technical drawings may explain an

invention more clearly than many words can do

Formal requirements for drawings are stricter in the US compared to Europe

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Description - Figures Provide well prepared and technically meaningful drawings – consider providing more drawings than necessary under European practice – Drawings (e.g. a circuit diagram) are helpful to

explain the invention – Drawings can be very useful to serve as a basis

for claim limitations in the US – Good technical drawings are relatively immune to

shortcomings of translations (consider German -> English -> Japanese)

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Filing strategy

The universe of possibilities for your patent family is defined by your priority filing. A well drafted priority filing will not only lead to better protection in the jurisdictions you target, but it will also facilitate prosecution for all family members and thus save costs.

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Filing strategy

Being aware of different legal requirements of targeted jurisdictions can allow for a filing strategy for most areas of technology (mechanics, electronics, materials) to be based on a single well prepared priority filing. The earlier you define the target jurisdictions, the better the priority application can be tailored to these jurisdictions.

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Filing strategies

There are exceptions to using a single priority filing for an invention like: – Computer-implemented inventions including

non-technical features (Is still a technical problem solved?) • Consider drafting separate priority

applications for US and other jurisdictions • Consider carefully where to file – maybe no

DE/EP filing at all

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Thank you !

Sean P. Daley Sean P. Daley is a Principal in the Boston office of Fish & Richardson P.C. He has a Ph.D. in physical chemistry from MIT. His practice emphasizes patent portfolio development, strategy and analysis, including prosecution, opinion and due diligence work, primarily in the areas of chemistry, materials science, physics and mechanics. He has significant additional experience in patent litigation. Dr. Daley works with clients of all different sizes, and has particular expertise in working with European-based companies in developing strategies for optimizing US patent rights.

Jan-Malte Schley Jan-Malte Schley is a Principal in the Munich office of Fish & Richardson P.C. He has a Dr.-Ing. in electrical engineering and information technology. His practice emphasizes patent litigation and patent prosecution, especially opposition and appeal proceedings. Dr. Schley has special technical expertise in the areas of software, telecommunications, optics, semiconductors, electronics as well as medical devices.