Publications

April 20, 1999
Paper given at the 15th Annual Joint Seminar of the Philadelphia, New Jersey, and New York Intellectual Property Law Associations and the Connecticut Patent Law Association, Philadelphia, PA

The European Patent Convention (EPC) provides a vehicle for obtaining patent protection in any or all eighteen member countries with a single centralized examination taking place at the European Patent Office (EPO). In addition to all current members of the European Community (EC) certain other European countries (notably Switzerland) are EPC members and many Central and Eastern European countries have been invited to accede to the EPC. Furthermore, there is an increasing likelihood that a European Community patent system will be created which would likely be administered through the EPO.

Despite the growing significance of having protection in Europe, U.S. patent practitioners preparing original U.S. patent applications often fail to properly consider that such applications may ultimately be prosecuted outside of the U.S. Typically, consideration of how to prepare an application for prosecution outside of the U.S. is given only after the original U.S. application has been filed and PCT, EPO, or national applications are being filed toward the end of the Paris Convention priority year. Consideration of EPO requirements during preparation of an original application can save much down-the-line time and financial expenditure when corresponding cases are filed in Europe and in other countries whose patent practices resemble Europe’s more than those of the U.S. In addition, early consideration of EPO requirements will increase the likelihood of obtaining broad, valid and enforceable claims.

Considerations regarding EPC patents should not end with the anticipated actions of an examiner at the EPO. Ultimately, the patent will be enforced in national courts. Such courts may differ from each other and from the EPO on issues involving application of the EPC, and the Regulations Implementing the EPC (the Rules) and other issues such as the strictness of claim interpretation (for example, regarding the coverage of means-plus-function claims). Also, it must be emphasized that validity and infringement of the patent may be determined by a judge in the home jurisdiction of the accused infringer. Thus the preparation of EPO applications as well as the original U.S. applications should be undertaken with enforcement of the ultimate EPC or national patent in national European courts.

II. FORMAT OF CLAIMS

Under Rule 29(1) the preferred format for an independent claim is analogous Jepson-type format. A preamble lists “those technical features which are necessary for the definition of the claimed subject-matter but which, in combination, are part of the prior art”. Rule 29(1)(a). This is followed by the transitional phrase “characterized in that” or “characterized by” and thereafter followed by a statement of “the technical features which, in combination with the features” in the preamble are to be claimed. As in the U.S., the inclusion of a feature or combination of features in the preamble will be regarded as an admission that such feature or combination is prior art. Thus although one should attempt to follow the basic format so as to avoid a rejection under Rule 29(1)(a) one should err on the side of excluding features from the preamble.

III. NUMBER OF CLAIMS

A. Total Claims

In the EPO, additional fees are incurred when the total number of claims exceeds ten (10). Furthermore, it is required that the “number of the claims shall be reasonable in consideration of the nature of the invention claimed”. Rule 29(5). EPO examiners may refuse entry of a perceived excessive number of claims.

The applicant may limit the number of claims by the use of multiple dependent claims. Use of multiple dependent claims may be awkward where the various base or intervening claims utilize alternate terminology to identify a given element (e.g., where independent claim 1 identifies a given element as a “socket” and independent claim 2 identifies the same element as a “receptacle”). This makes it difficult for a subsequent multiple dependent claim to reference the element in both claims 1 and 2. Where such alternative terminology can be avoided without unduly restricting the claims, multiple dependent claims are further facilitated.

B. Independent Claims

The EPO prefers that there be only a single independent claim in each “category” (product, process, apparatus or use). Rule 29(2). More may be allowed “where it is not appropriate, having regard to the subject-matter of the application, to cover this subject-matter by a single claim”.

Often, a U.S. application may have a multiplicity of independent claims due to a very specific prior art reference precluding consolidation of certain independent claims into a more generic independent claim. EPO practice offers a number of convenient avenues to address the situation:

1. Means Plus Function Elements
Whereas 35 USC §112(6) operates to restrict the coverage of U.S. patent claims which include functional elements, there is no similar provision in the Articles and Rules of the European Patent Convention. Accordingly, the use of functional claim elements may be advantageous in Europe, especially when utilized to create a generic independent claim for which dependent claims can include the structural aspects of the various species within the genus. However, there are possible negative consequences to use of means-plus-function claims in EPO applications. These negative consequences may come into play during examination or, often worse, when the resulting European patent is being enforced in a national court. Without the limiting interpretation of 35 USC §112(6) a term such as “means for transmitting” may:

A. be objected to by an examiner or held invalid by a court as lacking proper support in a description which may identify only a specific means (see Guidelines for Examination in the European Patent Office (EPC Guidelines), Part C, Chapter III, 6.5);

B. allow an examiner or court to use any prior art element which could have performed the stated function to invalidate the claim; or

C. be subject to rejection as attempting “to define the invention by a result to be achieved – particularly if it amounts to claiming the underlying technical problem.” EPC Guidelines, C-III, 4.7.

To avoid these disadvantages of means-plus-function, the following steps should be taken where appropriate:

A. include in the description a variety of alternatives for any element claimed in means-plus-function language (this is advantageously done by listing the general properties of the alternative means, identifying the alternative means, and identifying the reasons why any one means is preferred over the others); and

B. name the means with a generic yet not unduly limiting name (e.g., “a detector”) as this may tend to limit the likelihood of an examiner or court going far afield for invalidating art.

2. Negative Limitations
The EPO specifically permits claiming by means of negative limitation or “disclaimer”. EPC Guidelines, C-III, 4.12. This may be done to provide novelty over prior art. A disclaimer is permitted where the non-disclaimed subject matter “cannot be defined more clearly and concisely by means of positive features”. Id. For example, a claim could include “a transmission coupling rotation of shaft A to rotation of shaft B but not including a belt and pulley arrangement”. A disclaimer may be added by amendment “even in the absence of support for the excluded matter in the original documents”. Id. This, however, is more often utilized when the prior art is discovered during prosecution. In U.S. practice, a negative limitation made during prosecution will be scrutinized as possible new matter. See MPEP 2173.05(i).

3. Markush Groups 1 and Claiming in the Alternative
The EPO is relatively flexible in permitting Markush-type groups in the creation of a generic claim, e.g., “a transmission arrangement that transmits rotation from shaft A to shaft B selected from the group consisting of intermeshing gears, a fluid coupling, and a chain and chainring arrangement”. U.S. practice may be more strict in the required degree of relatedness of the elements of the group. See MPEP 803.02 and 2173.05(h). Claims in the alternative are also possible and may be preferable, e.g., “a transmission arrangement that transmits rotation from shaft A to shaft B and comprises intermeshing gears, a fluid coupling, or a chain and chainring arrangement”.

In the EPO, there is preference that elements identified in the claims “be followed by reference signs relating to these features and placed between parentheses”. Rule 29(7). When a claim element refers to more than one feature of a given embodiment, the reference numerals for the separate features should be separated by a comma (e.g., “arms (40, 42, 44)”). Where claim elements refer to features of different embodiments, the reference numerals for the different embodiments should be separated by semi-colons (e.g., “arms (40, 42, 44; 140, 142, 144)”).

Consideration of this requirement when preparing the original priority application is advantageous. This will ensure that reference numerals have been included in the specification and drawings for all important features and that such reference numerals are consistently utilized throughout the various embodiments shown in the application. It also will avoid the considerable expense required to add or correct reference numerals at a later date.

“Physical values shall be expressed in the units recognized in international practice, wherever appropriate in terms of the metric system using SI units”. Rule 35(12). In a PCT application is subject to PCT Rule 10.1(a) which states “[u]nits of weights and measures shall be expressed in terms of the metric system, or also expressed in such terms if first expressed in terms of a different system.”

U.S. inventors often utilize English units or combinations of English units and metric units. These will typically be reflected in an original U.S. patent application. Appropriate consideration of the ultimate need to include metric units for all physical values may avoid subsequent problems.

When English units in an original U.S. patent application are converted to metric units in the preparation of an EPO or PCT application, it may be later argued by an accused infringer that the original U.S. application does not support the converted metric units since the appropriate number of significant figures may be unclear (e.g., does “1 inch” support “25 mm” or “25.4 mm”, let alone “25-26 mm”?).

The problems of conversion to metric units may be exacerbated by the frequent usage of the term “about” in U.S. claims, a practice not usually acceptable in the EPO. EPC Guidelines, C-III, 4.5a. Accordingly, when viewed in light of the specification, prior art and prosecution history, terms such as “about 1 inch” or “about 5 feet to about 6 feet”, may be useful U.S. claims but, when translated to “25.4mm” and “1.5m to 1.8m” may not provide adequate protection. It is thus appropriate to consider how the physical units included in the original U.S. application will be treated in Europe so that the values ultimately utilized in Europe provide appropriate coverage and cannot be challenged as lacking support in the original U.S. application.

Where a patent attorney is provided with a large amount of data in English units it may be difficult to justify the time spent to convert all the data into metric units at the time the original U.S. priority application is prepared. However, where it appears that physical values may be important elements in obtaining allowable claims, appropriate metric conversions should at least be included for those values when the U.S. application is prepared.

Where a PCT application is used as a vehicle to ultimately obtain protection in Europe, a number of considerations are present. It is often advantageous to include far more claims in a PCT application than may be desired or needed in a European patent or patent application.

If a unity of invention is lacking, the PCT allows for the International Search and International Preliminary Examination to be directed to multiple inventions (PCT Rules 40 and 68) subject to payment of relatively small fees. Separate groups of claims may be directed to each of the separate inventions.

When a PCT application claims priority of a U.S. patent application, often the U.S. application will not have been examined at the time the PCT application is prepared and filed. Furthermore, many PCT applications are either filed as original applications or filed claiming priority only to one or more provisional applications. In the absence of a prior indication of patentability, a multiplicity of claims may be advantageous to obtain from the International Search Report an indication of particular patentable subject matter in the event that the broadest as-filed claims are indicated as unpatentable.

Furthermore, to the extent that the PCT application designates countries (e.g., the U.S.) which allow relatively large numbers of claims, the PCT application is then advantageously not limited to the number of claims appropriate in an EPO application. With this in mind, there are a number of considerations in preparing claims for a PCT application.

One possible strategy in preparing PCT claims to make best use of the PCT process while laying the groundwork for subsequent prosecution in the EPO is to prepare a PCT claim set that consists of an intended set of EPO-appropriate claims as a first group of PCT claims, followed by a second group of dependent claims depending from the first group, followed by a third group of additional independent claims (and associated dependent claims) which might be more appropriate to U.S. practice. The primary function of the second group of claims is to provide some indication of possible patentable subject matter in the event that the claims in the first group are indicated as unpatentable. Upon examination, if it is necessary for patentability, elements drawn from the second group of claims may be incorporated into the first group. Otherwise, the second group claims may be cancelled (either in the International Stage or via preliminary amendment when entering the National Stage). Similarly, the third group of claims may be cancelled via preliminary amendment when entering the National Stage in the EPO while the first group may be cancelled when entering the National Stage in the U.S.

It can be seen from the foregoing examples that early consideration of the requirements of the European Patent Office may improve the quality of patent protection obtained in Europe and beyond.

The European Patent Office
http://www.european-patent-office.org/

The European Patent Convention
http://www.european-patent-office.org/epc97/english/english/index_fr.htm

Regulations Implementing the European Patent Convention
http://www.european-patent-office.org/reg_impl/english/toce-fr/ind_fr.htm

Guidelines for Examination in the European Patent Office
http://www.european-patent-office.org/guidelines/english/gui_lin/ind_fr.htm

The World Intellectual Property Organization
http://www.wipo.org/eng/main.htm

ENDNOTES

1. Ex parte Markush, 1925 C.D. 126 (Comm’r Pat. 1925)