Foreign Patenting Challenges for U.S. Companies – Amending Patent Claims During Prosecution

Foreign Patenting Challenges for U.S. Companies – Amending Patent Claims During Prosecution

We live in a global economy, and foreign markets are more important than ever. In many businesses, protecting intellectual property in foreign markets is at least, if not more, important than protecting it in the United States. Unfortunately, there is no “international patent” that can be enforced worldwide, and a U.S. patent cannot be enforced abroad.  As a result, many companies have to seek patents in foreign countries whose laws and/or practices may differ dramatically from ours. Europe, China, Japan, Canada, and Korea are some of the foreign jurisdictions that our clients have typically been most interested in, although some of our clients have also pursued patents in places like Brazil, India, and in the Middle East.

In general, U.S. lawyers cannot practice law in foreign countries and cannot represent applicants before foreign patent offices. What this typically means for a U.S. based company is that its U.S. patent counsel works with foreign patent counsel in the countries or regions of interest to secure patent rights.

In general, the laws of many other countries for determining what can be patented are facially similar to U.S. laws. They typically require that patent claims be novel and non-obvious, although the latter requirement is typically articulated as an “inventive step” requirement. Foreign countries also typically have some version of the enablement, written description, and definiteness requirements that we have here. That said, the application of seemingly similar laws in foreign countries may differ significantly from their application in the U.S. As we explain below, in comparison to the U.S., when patenting abroad it is often more important  to identify the patentable features of an invention before filing a patent application.

Foreign Written Description Requirements

Despite the facial similarities, at least in practice, there is a significant difference in the way that foreign countries apply their version of the written description requirement, and it can pose significant headaches (and cost) for U.S. companies. In our experience, foreign patent authorities such as the European Patent Office, Japanese Patent Office, and Chinese Patent Office make it far more difficult to amend patent claims in a commercially useful way than does the U.S. Patent & Trademark Office.

When prior art is asserted by any patent office, the applicant has to determine whether to argue that the prior art does not disclose or suggest what is claimed or amend its claims to distinguish the prior art. If amendments are required, the applicant will typically want to make minimal amendments in order to keep its claims as broad as possible while still distinguishing the prior art. In the U.S. this is not necessarily that difficult as applicants can often look to the embodiments in their application and select features that distinguish the prior art in a way that does not compromise the scope (and commercial value) of their claims.

This amendment process is not necessarily so easy in foreign countries. It is usually not a problem to amend claims to include features that were already present in a dependent claim at the time the application was filed. Unfortunately, the prior art that surfaces during examination may not have been known or considered when the application was drafted, and the dependent claims that were filed with the application may be of little help. In that case, the applicant must look to the specification embodiments for features with which to limit its claims. This is where problems can arise.

If the applicant tries to limit claims based on specific features from an embodiment in the specification, many foreign patent offices will require the applicant to also limit the claims with other features in the embodiment even if those other features are not necessary to distinguish the prior art. The foreign examiners will typically decide that certain features of an embodiment are “essential” and force the applicant to include those “essential” features in any amendment directed to that embodiment. As a result, it can be far more difficult to select individual features from an embodiment or to generalize the features of an embodiment in a claim amendment.

This approach can have a dramatic effect on the value of patent claims. In many cases, applicants are ultimately forced to amend their claims in a manner that makes them easy to design around and which compromises their commercial utility.

U.S. law forbids claim amendments that introduce “new matter” into a patent application or which otherwise go beyond the written description of the patent application. On its face, the governing European Patent Convention provision dealing with claim amendments appears to be consistent with U.S. law, stating that: “[t]he European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.” European Patent Convention, Article 123(2). However, the manner in which the law is applied is significantly different than the manner in which the U.S. counterpart law is applied.  In general, it has been our experience that when seeking to amend claims to include features from an embodiment in the specification, the European examiners often require the inclusion of features that compromise the value of the claims. In addition, it is far more difficult to combine features from different embodiments than in the U.S.

In our experience, this problem is particularly acute in China. In the U.S. and Europe, examiners recognize that a feature may be inherently disclosed in a patent application because it necessarily follows from what is expressly described. As a result, such inherent features can be used to distinguish the prior art. We understand from working with Chinese firms that China does not recognize the doctrine of inherent disclosure. Therefore, the claims can only be amended to include features that are expressly described.

Can’t We Simply File More Claims?

To deal with the foregoing problems, one may be tempted to simply file a large number of claims with various permutations of features and combinations of features. However, that approach can be very costly.  For example, patent applicants are allowed fifteen (15) claims as part of the normal filing, search, and examination fees in Europe. Each additional claim costs $338 U.S., which can result in a hefty sum if many additional claims are added. Therefore, it is typically not feasible to simply cover the universe of possible claims and claim strategies at the time of filing.

The Importance of Understanding the Patentable Invention(s) Before Filing Abroad

There are some technical strategies for dealing with these issues, including using multiple dependent claims. However, in order to maximize your chances of obtaining valuable patent claims in Europe and other foreign jurisdictions, it is important to identify the patentable invention before filing a patent application.  Thus, patentability searches are probably more important for foreign patent applicants than for U.S. patent applicants.

In the U.S. the penalty for misapprehending what may ultimately be deemed patentable is not nearly as severe as in foreign countries because the U.S. provides significantly more flexibility in amending claims during prosecution. If the patenable features of an invention in a foreign application are not well understood, an applicant may find itself unable to distinguish the prior art in any commercially useful way. In other words, the applicant may be forced to choose between not obtaining a patent and obtaining one that is easily designed around by competitors. In that case, the applicant finds itself in the unfortunate position of dedicating its technology to the public with little or no reward.

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