DRAFTING A COMMON SPECIFICATION FOR USPTO AND EPO PRACTICE Christopher Francis, Bejin Bieneman PLC Sullivan Fountain, Keltie LLP January 18, 2018 CLE CREDITS After the webinar concludes, a follow-up e-mail will be sent to participants regarding CLE. For more information, please e-mail Danielle Hall at hall@b2iplaw.com. 2017 Bejin Bieneman PLC All rights reserved.
OUTLINE Goal: Draft a common description for EP and US filing Claims can be tailored to the jurisdiction The rest of the specification can be common to: Maximize claim scope Reduce cost for preparation and prosecution EPO s Strict Approach to Support for Claim Language US Claim Construction Restriction Practice Software: Patent-Eligible Subject Matter 2 2
EP LITERAL SUPPORT Literal support for amendments EPO approach to amendments is more strict than in US Key is compliance with Article 123(2) EPC: A European application may not be amended in such a way that it contains subject matter which extends beyond the application as filed Underlying idea is to ensure that an applicant should not be allowed to improve their position by adding subject matter that was not disclosed in the application as filed. Case law has developed test of directly and unambiguously derivable Recent relaxation from the perceived position of verbatim support 3 3
EP LITERAL SUPPORT (CONT D) Literal support for priority Priority also requires that subject matter is directly and unambiguously derivable from priority document G2/98 Back of the napkin US provisional may cause problems for priority When disclosure changes between US provisional and EP application, be cautious when amending the claims in European prosecution to ensure that support is directly and unambiguously derivable from the US provisional Ensure provisional disclosure is as full as possible Include language in disclosure that could feasibly support later claims; discuss alternative embodiments and different levels of generalization of broad features Follow up with full filing as soon as possible Claiming priority to the first application relating to the subject matter in question Priority requires chain of title, so priority document should be assigned (even if just a US provisional) Assignments should be in writing, signed by both parties, specify that right to claim priority is assigned as well as the right to be granted a patent, dated before later filing, identify the priority filing Ensure that all applicants (also inventors as listed as applicants) on priority case(s) are also all listed as applicants in priority claiming cases. 4 4
LITERAL SUPPORT: DRAFTING TAKEAWAYS Amendments to undisclosed combination of features intermediate generalisations undisclosed combination of selected features, lying somewhere between an originally broad disclosure and a more limited specific disclosure Useful case to illustrate issue EPO Technical Board of Appeal case T219/09 see drawings More lenient in UK - AP Racing v Alcon components Practical steps Care during drafting to ensure that all significant features are included in the claim set Summary of invention section can be used to link features Be alert to embodiment features that may not appear in other embodiments Single specific embodiment can be risky include more embodiments if at all possible 5 5
INITIAL CLAIM STRATEGY Multiple-Dependent Claims Cost prohibitive in USPTO: extra fee for multiple-dependent, and multiple-dependent counts as multiple claims EPO: A multiple dependent claim counts as one claim Provides support for amendments Strategy based on Originating Jurisdiction EPO Originating Application Prepare EPO claim set with multiple dependent claims Remove multiple-dependent claims upon entry into the US PCT or US Provisional Originating Application Multiple-dependent claims will create priority for later EPO application US Utility Originating Application Include section of detailed description that includes a listing of EPO claim set, and include multiple dependency Remember excess claim fees 6 6
CLAIM CONSTRUCTION Specification word selection Background and Summary/Object of the Invention Claims word selection means and nonce words 7 7
PATENT PROFANITY Examples of words in the description that can narrow claim interpretation: The invention Required/Necessary/Need/Must Preferably Background Law Claims are given their plain and ordinary meaning in light of the specification (Phillips v. AWH Corp., 415 F.3d 1303 (Fed. Cir. 2005)) BUT sometimes it is proper to depart from plain and ordinary meaning: When the inventor is his own lexicographer and provides a definition other than the plain and ordinary meaning (See CCS Fitness, Inc. v. Brunswick Corp., 288 F.3d 1359 (Fed. Cir. 2002)) Disavowal (See SciMed Life Sys., Inc. v. Advanced Cardiovascular Sys., Inc., 242 F.3d 1337 (Fed. Cir. 2001)) 8 8
PATENT PROFANITY CASELAW X2Y Attenuators, LLC v. International Trade Commission, 757 F.3d. 1358 (Fed. Cir. 2014) Claim term: electrode Patent holder (X2Y) argues for plain and ordinary meaning Intel argues for construction requiring sandwich configuration Court construed electrode as a common conductive pathway electrode positioned between paired electromagnetically opposite conductors Disavowal of plain and ordinary meaning because common conductive pathway between conductors as described as universal to all embodiments and an essential element among all embodiments or connotations of the invention. 9 9
PATENT PROFANITY CASELAW (CONT D) Regents of the University of Minnesota v. AGA Medical, 717 F.3d 929 (Fed. Cir. 2013) 1. A septal defect closure device comprising first and second occluding disks, each disk comprising a flexible, biologically compatible membrane capable of being collapsed for passage through a catheter and elastically returning to a predetermined shape for tautly holding a portion of the membrane against a septum; a central portion of the membrane of the first disk being affixed to a central portion of the membrane of the second disk to define a conjoint disk the first disk being affixed to the second disk construed as two separately formed disks subsequently attached together, and does not include a unitary component Disavowal because specification does not provide an example of unitary construction and states that [t]he present invention provides a simple, reliable device for effectively occluding a septal defect. The instant closure device includes first and second occluding disks which are attached to one another. Gutterglove, Inc. v. American Die and Rollforming (Eastern District of California, Markman opinion, September 18, 2017) (See https://www.b2ipreport.com/claims-interpreted/description-invention-specification-limitsclaim-construction/) Disavowal based on description of this invention 10 10
PATENT PROFANITY CASELAW (CONT.) GE Lighting Solutions, LLC. v. AgiLight, Inc., 750 F.3d 1304 (Fed. Cir. 2014) Provides summary of examples of disavowal caselaw the present invention, Regents of Univ. of Minn. v. AGA Medical, 717 F.3d 929 (Fed. Cir. 2013) required, Andersen Corp. v. Fiber Composites, LLC, 474 F.3d 1361 (Fed. Cir. 2007) important, SafeTCare Mfg., Inc. v. Tele-Made, Inc., 497 F.3d 1262 (Fed. Cir. 2007) Disparaging an embodiment, Chicago Bd. Options Exch v. Int l Sec. Exch., 677 F.3d 1361 (Fed. Cir. 2012) very important feature and disparaged alternatives, Inpro II Licensing v. T-Mobile USA, 450 F.3d 1350 (Fed. Cir. 2008) No disavowal in this case The specifications consistently refer to the IDC connector of Figure 6 merely as a depicted embodiment The detailed description does not describe the depicted IDC connector as the present invention, as essential, or as important. The specification does not disparage other IDC connectors. 11 11
CONSIDERATIONS FOR THE BACKGROUND Limit description of prior art in the Background, and instead focus on the problem that the subject invention solves Consider avoiding characterizing/disparaging the prior art Inpro II Licensing, S.A.R.L. v. T-Mobile, and Research in Motion, 450 F.3d 1350 (Fed. Cir. 2008) Safetcare Manufacturing v. Telemade Inc., 497 F.3d 1262 (Fed. Cir. 2007) Rembrandt Patent Innovations LLC v. Apple Inc., No. 2016-2324 (Fed. Cir. 2017) (https://www.b2ipreport.com/swip-report/fed-cir-statements-specification-limit-patent-claims/) Balance the first two points with 101 patent eligibility concerns and EPO Problem-Solution Approach Identifying a solution to a technical problem can be important See concurrence in Ultramercial, Inc. v. Hulu, LLC, 772 F.3d 709 (Fed. Cir. 2014) 12 12
CLE CREDIT What state is Bejin Bieneman PLC located? Answer: Michigan If you are seeking CLE, enter Michigan through presentation software. 13 13
CONSIDERATIONS FOR THE SUMMARY For US only, it can make sense to omit the Summary For cases to be filed in USPTO and EPO: Discuss the claim language at a high level Associate advantages with the claim language (perhaps identifying the advantages as nonlimiting examples) For US filing, perhaps have this as beginning of Detailed Description as opposed to being labeled Summary ) 14 14
MEANS-PLUS-FUNCTION 35 USC 112(f) An element in a claim for a combination may be expressed as a means or step for performing a specified function without the recital of structure, material, or acts in support thereof, and such claim shall be construed to cover the corresponding structure, material, or acts described in the specification and equivalents thereof. In the US, means creates a rebuttable presumption that 112(f) applies Nonce words: Williamson v. Citrix Online LLC, 792 F.3d, 1339 (Fed. Cir. 2015) (en banc) Claim: a distributed learning control module [1] for receiving communications transmitted between the presenter and the audience member computer systems and [2] for relaying the communications to an intended receiving computer system and [3] for coordinating the operation of the streaming data module. Module (a well-known nonce word ) replaced means Other examples of potential nonce words: mechanism, element, device 15 15
MEANS-PLUS-FUNCTION PRACTICE TIPS Intentional invocation of 112(f) may be valuable If intend to invoke 112(f), use means If invoking 112(f), include full description of all potential structure in the Detailed Description If not intending to invoke 112(f), beware of nonce words followed by only function Full elaboration of structure in Detailed Description is beneficial: Can avoid 112(b) invalidation in Williamson Can lower the impact of unintended MPF Means-plus-function wording in EPO not objectionable and can be useful when use correctly Include tailored MPF claim set in US originating application either at the end as a series of clauses or in the summary of invention section 16 16
RESTRICTION EPO EPC Rule 43 lists four categories: product, process, apparatus, or use EPC limits claim set to one independent claim from each category USPTO Possible to get a restriction between method and apparatus claims Can (and often should) have independent claims of varying scope directed at same category Different invention in same category will be restricted May consider embracing divisional practice distinct, separately enforceable patents (but also adds filing and maintenance cost) 17 17
RESTRICTION PRACTICE POINTERS Draft all claims at initial application preparation Include support in detailed description for all claims Proactive strategy in each jurisdiction EPO If disclosure/prior art/business supports more than one claim for a category, plan for divisional or concurrent filings US and EPO If claims toward different inventions (whether in same category or not), plan for divisional or concurrent filings US Remember that a restricted method claim is automatically rejoined if amended to include all apparatus limitations of an allowed apparatus claim May consider embracing divisional practice separately enforceable patents that are distinct from each other and separately enforceable (but also adds filing and maintenance cost) Benefit to US provisional or PCT application is that all claims can be included at time of filing (to ensure support) and edited accordingly upon entry into EP and US 18 18
EPO ELIGIBLE SUBJECT MATTER: SOFTWARE Patent eligibility is considered at the inventive step stage Any hardware approach: a CII claim can clear eligibility hurdle by including at least one technical feature this can just be a general purpose computing system The claim features that are novel over the closest prior art document must provide a solution to a technical problem, and thereby provide a technical advantage. Things that work here include increase of efficiency, communication security etc. Software implemented business methods particularly challenging can be virtually impossible to formulate a technical problem in the subject matter of the application. i.e. financial transaction systems. Such cases are often termed mixed inventions in examination analysis, the business features are separated from the technical features, and only the technical ones are considered for inventive step Business considerations can contextualise the technical problem Q would the skilled person, when tasked with implementing the business method steps, arrive at the invention by doing his/her routine work? Example from EPO examination guidelines computerised shopping method 19 19
EPO ELIGIBLE SUBJECT MATTER (CONT D) COMPUTERISED SHOPPING METHOD underlined text indicated novel features over CPA Method of facilitating shopping on a mobile device wherein: (a) the user selects two or more products to be purchased; (b) the mobile device transmits the selected products data and the device location to a server; (c) the server accesses a database of vendors to identify vendors offering at least one of the selected products; (d) the server determines, on the basis of the device location and the identified vendors, an optimal shopping tour for purchasing the selected products by accessing a cache memory in which optimal shopping tours determined for previous requests are stored; and (e) the server transmits the optimal shopping tour to the mobile device for displaying. 20 20
US ELIGIBLE SUBJECT MATTER Alice v. CLS Bank (Supreme Court, 2014), and Mayo v. Prometheus (Supreme Court, 2012) Two-part test (1) is a patent claim drawn to an abstract idea or law of nature, and (2) if so, does the claim include a significant additional innovation to render the abstract idea patent-eligible? 21 21
Enfish, LLC v. Microsoft Corp., 822 F.3d 1327 (Fed. Cir. 2016) Software can make non-abstract improvements to computer technology just as hardware improvements can [T]he claims were not directed to an abstract idea because the plain focus of the claims is on an improvement to computer functionality itself, not on economic or other tasks for which a computer is used in its ordinary capacity. [T]he claims are directed to a specific implementation of a solution to a problem in the software arts. Accordingly, we find the claims at issue are not directed to an abstract idea. Essentially the same as the EPO problem-solution approach? Compare/Contrast US ELIGIBLE SUBJECT MATTER (CONT D) Electric Power Group, LLC, v. Alstom, 830 F.3d 1350 (Fed. Cir. 2016) This case is different than Enfish because the focus of the claims is not on such an improvement in computers as tools, but on certain independently abstract ideas that use computers as tools. 22 22
SOFTWARE PRACTICE POINTERS It is all about the technical implementation (both US and EPO) Include a detailed algorithm in the figures, and fully elaborate in the detailed description Clearly describe and enable how the software operates hardware 23 23
Christopher Francis francis@b2iplaw.com Visit the Bejin Bieneman website at: www.b2iplaw.com Sullivan Fountain sullivan.fountain@keltie.com Visit the Keltie website at: www.keltie.com And the Bejin Bieneman blogs at: www.b2ipreport.com www.swipreport.com www.claimsinterpreted.com 24