SUCCESSFUL MULTILATERAL PATENTS Focus on Europe

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1 Elizabeth Dawson of Ipulse Speaker 1b: 1 SUCCESSFUL MULTILATERAL PATENTS Focus on Europe 1. INTRODUCTION All of us to some extent have to try to predict the future when drafting patent applications. We need to consider: What prior art might come to light that we don t already know about and how might we want to amend an application to avoid it? How might the product develop and what might we need to cover? What might the competitors do and how can we stop them? Nowhere is this more true than in Europe. We seem to have the strictest of approaches to the addition of subject matter to applications and hence the greatest restrictions on amendment of applications after filing. Why is this? 2. FIRST TO FILE In Europe we operate a first to file system. The filing date of an application is critical. Most countries in Europe have no grace period. To allow the addition of information to an application after filing would allow applicants to sneak in an extra invention having the benefit of the original filing date. The law is applied very strictly to prevent this and no discussion of drafting for Europe would be complete without an analysis of the seemingly innocuous amendments that are considered to add subject matter to an application. Checking amendments for added subject matter takes up a great deal of examiners time and it is especially difficult for those not working in their mother tongue a point I shall return to later. 3. ADDED SUBJECT MATTER THE PITFALLS 3.1 Claim Broadening Many of you will have experienced first hand the problems involved with trying to broaden a claim in any respect before the European Patent Office (EPO). It is worth revisiting the rationale that largely prevents the broadening of claims. If we understand why such changes are not allowed this will better inform our drafting.

2 Elizabeth Dawson of Ipulse Speaker 1b: 2 When I joined the profession the Patents Court in the UK had just handed down a decision concerning Protoned s application. The application concerned a chair having an adjustable backrest. A gas spring was used for the adjustment of the angle of tilt and a mechanical compression spring was used to allow a slight rocking motion when the angle had been set. During prosecution the applicants sought to amend the term mechanical compression spring in the main claim by deleting the word compression. This was not allowed. Nowhere in the original disclosure was there any indication that the spring allowing rocking was anything other than a compression spring. The amendment was refused on the basis that it effectively added subject matter to the original disclosure, since the amended claim would encompass something that was not disclosed in the application as originally filed. The test applied when considering whether a claim amendment can be allowed is does the amended claim encompass something that was not disclosed in the application documents as originally filed? In the case of Protoned s application, the amended claim would have included tension springs, for example, which were not mentioned in the application documents as originally filed. Numerous subsequent decisions in the EPO have disallowed the broadening of claims following similar reasoning. 3.2 Intermediate Generalisation The same reasoning applies to what we call intermediate generalisations. Consider the following claims: 1. A powered tooth brush having a motor unit including a first drive shaft, a second drive shaft drivingly connected to the first drive shaft and extending perpendicular thereto and having a brush attached to its end remote from the first drive shaft. 2. A tooth brush as claimed in claim 1 in which the brush attached to the second drive shaft can be separated from the motor unit and a sleeve extends from the brush and encircles part of the first drive shaft. Now consider the following amendment: 1. A powered tooth brush having a motor unit including a first drive shaft, a second drive shaft drivingly connected to the first drive shaft and extending perpendicular thereto and having a brush attached to its end remote from the first drive shaft in which the brush attached to the second drive shaft can be separated from the motor unit.

3 Elizabeth Dawson of Ipulse Speaker 1b: 3 2. A tooth brush as claimed in claim 1 in which [the brush attached to the second drive shaft can be separated from the motor unit and] a sleeve extends from the brush and encircles part of the first drive shaft. The amended claims amount to an intermediate generalisation. Claim 1 contains only part of claim 2. The resulting claim is intermediate in scope between claims 1 and 2. On the face of it this amendment potentially adds subject matter to the original disclosure. The examiner will be asking is there any disclosure in the application documents as originally filed of the separable construction without the use of the sleeve? If not, the amendment will not be allowed. One for the chemists: 1. A pharmaceutical composition comprising A plus B. 2. A pharmaceutical composition as claimed in claim 1 further comprising C plus D. A possible amendment: 1. A pharmaceutical composition comprising A plus B plus C. 2. A pharmaceutical composition as claimed in claim 1 further comprising C plus D. Before allowing this amendment the examiner will be asking whether there was any disclosure in the application documents as originally filed of the possibility of the composition including C without D. Don t write claim 3 as a dependent claim from claim 2 if it could depend from claim 1. A similar problem arises: 1. A pharmaceutical composition comprising A plus B. 2. A pharmaceutical composition as claimed in claim 1 further comprising C. 3. A pharmaceutical composition as claimed in claim 2 further comprising D. Now consider this amendment: 1. A pharmaceutical composition comprising A plus B plus D. 2. A pharmaceutical composition as claimed in claim 1 further comprising C. 3. A pharmaceutical composition as claimed in claim 2 further comprising D. Again before allowing this amendment the examiner has to ask whether there was any disclosure of the composition containing D without C. 3.3 Ranges A particular discrepancy between European and US practice arises in connection with the description of ranges. Suppose a claim recites a composition containing between 10 and 50 ml water. It is not then possible to narrow this down to, say, 15 to 20 ml unless the range 15 to 20ml is specifically mentioned in the application documents as originally filed. 3.4 Changes in terminology

4 Elizabeth Dawson of Ipulse Speaker 1b: 4 Even seemingly minor changes in terminology can run us into problems related to the addition of subject matter. The majority of the examiners at the EPO are not native English speakers. Therefore if we so much as change feature to component or person to individual the examiner has to look up the terms in the dictionary and be satisfied that the new term has the same scope as the original term. 3.5 Added subject matter leads to invalidity It might be tempting to congratulate ourselves if we have sneaked an amendment past an examiner that is barely supported by the application documents as originally filed but beware: the eventual patent will be vulnerable to attack. A European patent that contains added subject matter is invalid. Would be infringers will check to see what amendments have been made during prosecution. A patentee may be in the position of not being able to amend a patent to remove the added subject matter. A European patent cannot be amended after grant so as to broaden its scope. Therefore if the added matter is in the main claim, for example, it cannot be removed. 3.6 Priority Beware The same logic is used to determine whether a claim is entitled to its claimed priority date. If a claim encompasses something that was not disclosed in the priority application, which can result simply because it is broader than a corresponding claim in the priority application, the claim is not entitled to the date of the priority application. Then, if the invention has been disclosed during the priority year, that disclosure is citable against the claim and may render the claim invalid, either due to lack of novelty or lack of inventive step over the disclosure. To be on the safe side inventions should not be openly disclosed even after a patent application has been filed to safeguard the possibility of filing a subsequent application claiming priority and describing modifications of the invention. Since the EPC2000 came into force in December 2007 it has been possible to file European patent applications without claims. Our advice to clients is don t even think about it because of added subject matter issues. 4. DRAFTING TIPS: So much for the problems, how can we avoid them? 4.1 Formal Requirements As in most jurisdictions the principal parts of a patent specification for Europe are: Title Introduction Summary of the Invention Brief Description of the Drawings Description Claims

5 Elizabeth Dawson of Ipulse Speaker 1b: 5 Specific headings for each section are not required but are often helpful Title The title should be innocuous and not give away what the invention is. This habit is carried over from UK practice since in the UK the title of a patent application is available to third parties before the application is published Introduction The introduction should simply set the scene for the description of the invention and again not divulge what the invention is. Ideally for Europe it should describe the closest prior art known to the applicant and the problem or problems associated with the prior art insofar as they are relevant to the invention. However avoid using statements of objects or aims Summary of the Invention Having described the prior art the invention should then be described using the terminology of the claims. At this point, to please European examiners, you would explain how the invention solves the problem(s) of the prior art. Personally nowadays I am inclined to use such explanations sparingly and only if the problem is clearly solved by the invention as claimed in the broadest claim, rather than the preferred embodiment. Don t dispense with them altogether though. Put them in the specific description. I shall come back to the problem/solution approach to inventive step later Description Following the brief description of the drawings the preferred embodiment or embodiments of the invention should be described in detail. It follows from what I have said that no amount of detail is too much. There should be sufficient verbal description of the drawings that a blind man having the description read to him will be able to envisage the drawings and fully understand the invention. That will help to ensure that the words we might need later to clarify the claims are already in the description. The advantages of the embodiments should be explained in the description. Be clear about which advantages relate to which embodiment(s) and which features bring about the advantages. This will help to support any fall back positions should it be necessary to limit the claims during prosecution. Bear in mind that the EPO does not recognise the incorporation of documents by reference. It is permissible to refer in the specification to background documents in order to ensure that the disclosure is sufficient. However a certain amount of knowledge can be ascribed to the person skilled in the art and it is not necessary to describe well known objects in detail as part of the disclosure. Thus if the invention relates to a cell phone it is not necessary to describe the basic functions that are now common to all cell phones unless this is vital to understanding the invention. Avoid any suggestion that non-essential features are essential. Do more than just say that they are preferred. Say that they can be omitted/replaced by

6 Elizabeth Dawson of Ipulse Speaker 1b: Claims Claims are interpreted literally in Europe. If an allegedly infringing product does not have all of the features of the claim, in general it will not be found to infringe the claim. So don t put non-essential features in claims. The meaning of the claims should be clear without needing to refer to the description. If there are terms in the claims that do not have a universally accepted meaning, those terms should be defined in the claims to ensure that in court, should it come to that, you get the interpretation of the term that you want. We have strict rules relating to independent claims but there is no numerical limit to the number of independent claims that can be granted in a European patent. Take the example of an inventive method of encrypting data. These independent claims might be granted: Encryption: Decryption: Apparatus for encryption Apparatus for Decryption Method of encryption Method of Decryption Computer program product Computer program product System for encryption and decryption Total: seven independent claims What you can t have in Europe is several independent claims of overlapping scope. Thus, for example, two independent claims to the encryption apparatus could not be pursued. For each independent claim you will typically have subsidiary claims in an inverted pyramid arrangement with each claim being narrower in scope than its predecessor. Take care with the running order and use multiple dependencies to maximise the possibilities for amendment post-filing. Don t make claim 3 depend from claim 2 if it could depend from claim 1. Examine each subsidiary claim to see if it could usefully be split into two or more claims of progressively narrower scope. For computer related inventions and others that border on excluded matter, put the apparatus claims first and with luck if the apparatus claims are acceptable the examiner will not examine corresponding method claims too closely. Some practitioners put potential claims in the description to avoid too many excess claims fees at the outset. This is permissible but remember that in some jurisdictions including France, a patent can only be amended post grant by combining existing claims. Features cannot be imported from the description.

7 Elizabeth Dawson of Ipulse Speaker 1b: 7 Once you are satisfied with the claims, check the description again. In case you have used broader terms to describe things in the claims, make sure that there is consistency of terminology between the description of the invention and the claims. For example, if the claim refers to a biasing member and the specific embodiment has a spring, you might wish to amend the description to state that the embodiment has a biasing member, in this embodiment a spring. More importantly, examine which features you have chosen for subsidiary claims and check that the advantages of those features are clear from reading the description. This will help to flesh out possible fall back positions.

8 Elizabeth Dawson of Ipulse Speaker 1b: 8 5. EPO OPERATIONAL ISSUES 5.1 Auxiliary Requests The EPO, like the USPTO, has a large backlog and examiners are under pressure to dispose of applications in fewer actions. There is now a tendency in the telecoms field to operate a two strikes then refuse policy. After two examination communications applications are often refused unless oral proceedings have been requested, which we now always do to avoid early refusal. This is made worse by the fact that subsidiary claims are given only a cursory examination. Therefore practitioners are making more use of auxiliary requests when responding. These contain claims that might be acceptable to the applicant should the preferred claims not be acceptable. Practitioners are not bound by them but examiners have to examine them. The use of auxiliary requests mitigates the disadvantage of having fewer examination communications. Even if the main request is pursued to oral proceedings or an appeal there may be a psychological advantage in knowing that an acceptable set of claims does exist. 5.2 Additional Prosecution Tips Respond to all objections When amending use the same terminology and cite support the examiner wants to see the amendments word for word in the original application documents Try to meet the examiner half way 6. PROBLEM/SOLUTION The EPO likes to see inventions presented as solutions to technical problems. Thus, beginning from the closest prior art, we are expected to define an objective technical problem and then explain the invention in terms of a solution to the problem. The question is then asked, would the solution to the problem have been obvious to a person skilled in the art? This may depend on what other prior art is available. If the novel feature of a claim is known from another prior art document, the question is would (not could) the skilled man have combined the teachings of the two documents to arrive at the invention? Sometimes the solution to a problem is obvious as soon as the problem has been identified. However an inventive step can reside in the identification of the problem itself.

9 Elizabeth Dawson of Ipulse Speaker 1b: 9 Invariably, during prosecution of an application, more relevant prior art comes to light. Then, the problem has to be redefined beginning from we now know to be the closest prior art. This exercise is somewhat academic. There are some inventions for which the problem/solution approach is appropriate and some for which would result in some rather contrived and perhaps not very convincing arguments that I would not wish to have on the public file. I use the problem solution argument wherever it fits and I do not make one up if it doesn t. In those cases where it doesn t work it is often sufficient to explain the advantages of the invention and why it would not have been obvious to combine the cited documents, and leave it to the examiner to satisfy himself that the invention is a solution to a problem. 7. EXCLUDED SUBJECT MATTER In Europe various things are not considered to be inventions. These are defined in Article 52 (2) EPC as follows: (a) discoveries, scientific theories and mathematical methods; (b) aesthetic creations; (c) schemes, rules and methods for performing mental acts, playing games or doing business, and programs for computers; (d) presentations of information. However according to Article 52(3) EPC: Paragraph 2 shall exclude the patentability of the subject-matter or activities referred to therein only to the extent to which a European patent application or European patent relates to such subject-matter or activities as such. Over the course of the years and many decisions in this area this has led to the practice of allowing patents relating to ostensibly excluded subject matter provided that the claimed invention provides a technical solution to a technical problem. Nowadays you are far more likely to encounter an objection that an invention in this area lacks inventive step than an objection that it relates to excluded subject matter. The current practice of the EPO is firstly to determine whether the claimed subject matter is an invention. Even such things as books and music CDs will pass this test. However they are likely to be refused on the ground that they do not provide a technical solution to a technical problem. One commentator suggested that in order to get over the first hurdle of whether there is an invention at all is to fill the claims with things you can drop on your foot. I like this analogy. Begin with claims to tangible items. You may be surprised at some of the things that the EPO is persuaded are technical problems. These include rendering a graphical user interface that is more convenient for

10 Elizabeth Dawson of Ipulse Speaker 1b: 10 the user (e.g. on a mobile device where space is limited) and operating an application in such a way as to require fewer actions on the part of the user. 8. CONCLUSION Include as much detail as possible. Think out the claims carefully at the outset. There is no substitute for quizzing the inventor in detail before filing the application. Liz Dawson Ipulse 7 April th Floor, 9-10 Savile Row, London W1S 3PF T: F: E:mail@ipulse.biz