Planning Your Foreign Patent Portfolio—The Strict Original Disclosure Requirement

When planning your strategy and budgeting for foreign patenting, it is important to at least be aware of some critical differences between U.S. patent law and foreign patent law.  One such critical difference concerns the “original disclosure” requirement in foreign countries.  This requirement dictates that your claims not go beyond the original disclosure from your patent application as-filed.  The U.S. also has such a requirement, but it is interpreted and applied in a more liberal and inventor-friendly manner than abroad.  As a result, in the U.S. it is generally much easier to amend your patent claims based on the prior art that surfaces during the examination of your patent application.

The European Patent Office

Unfortunately, in certain foreign jurisdictions, including Europe, Japan, and China, applicants face much more stringent constraints on the claim amendments they can make during prosecution.  These constraints may ultimately diminish the commercial value of any patents you may be able to obtain from a particular application and may present you with the hard choice of either pursuing a patent with little worth or abandoning your application.

Two Key Scenarios

The problem arises from the manner in which foreign patent offices determine what constitutes the “original disclosure” in your application.  In particular, foreign patent offices will deem features in the application to be “essential to the invention” and require that they be included in your patent claims even if they are not necessary to distinguish the prior art (i.e., even if your claims are sufficiently “new” without them).  There are two key scenarios that are problematic:

1)      Prior art surfaces during examination and you wish to add some, but not all, features of one of your embodiments to your patent claims to distinguish your invention from the art; or

2)      You develop new products (or your competitors do) that will be excluded by your patent claims unless you remove limitations from your original claims which are not necessary to distinguish the prior art.

As to the first point, when prior art surfaces in the U.S. which would be encompassed by your claims, they are too broad.  However, you can narrow your claims by selecting features from the preferred embodiment and limiting the claims to them.  Generally, you want to select those features that will keep your protection as broad as possible without still encompassing the prior art.  However, in places like Europe, Japan, and China, the examiners will often deem other, additional limitations from the preferred embodiment as “essential” even if your application does not say that they are.  As a result, they will require you to provide even narrower claims than the prior art would actually require.  Depending on how narrow the resulting claims are, they may lose their commercial value in protecting your invention or in excluding key competitive products.

The second point is really a corollary to the first point.  Foreign patent offices will often take the position that everything in your original claims is essential to the invention, and therefore, that you cannot remove  limitations that are would exclude new products (whether they be yours or those of your competitors), even though the resulting claim would still be novel and inventive (non-obvious).  In addition, the examiners will look to the specific implementation details concerning how your invention solves the problem it is intended to solve and deem those details “essential.”

Recommendations for Dealing with the Strict Original Disclosure Requirement of Foreign Patent Offices

First, you may find that the “original disclosure” requirement as applied in foreign countries so deprives your application of commercial value that it may as well be abandoned.  Of course, this is a hard choice and not one to be made lightly.  However, especially where resources are limited, it is important not to allocate them to pursuing “paper patents” with little or no value.

Second, conduct a thorough prior art search.  Prior art searches are likely even more critical when pursuing foreign patent protection because if your original claims are deemed patentable, you are far less likely to be required to further limit them to require any “essential features.”  The best way to ensure that your original claims are patentable is to have a good handle on the universe of potential prior art.

One problem with the manner in which foreign patent offices apply the original disclosure requirement is that it places a far higher premium on the manner in which the patent application is drafted than would otherwise be the case.  Arguably, it exalts form over substance.  If the particular features of your embodiments which are key to patentability are not well understood, it will be difficult or impossible to selectively extract features from specific embodiments–even if they are novel and inventive– without having to further limit the claims to “essential features.”

Third, in your applications avoid suggesting that certain implementation details are “necessary.” If features are optional, say so.  Where possible, provide a number of different embodiments.  Try to describe your solution to the technical problem in a number of progressively abstract ways, each of which sweeps in as many embodiments as possible. Conduct thought experiments with the inventors to conceive of possible design-arounds and expressly cover them in the application.  All of this will require more up front planning and more expense, but it may reduce prosecution expenses associated with trying to navigate between the prior art and the original disclosure requirement.  It will also ultimately improve your chances of obtaining a patent with some value.

One Thought to “Planning Your Foreign Patent Portfolio—The Strict Original Disclosure Requirement”

  1. The requirement to incorporate unnecessary “essential features” into the claims is not the worst problem in foreign prosecution, in my experience, Steve. This requirement has almost always been generically necessary and didn’t really change the practical scope of the claims, for me.

    What has really been a problem for me in JP, EP and CN has been the requirement that all aspects of a claim practically need to be together in the same paragraph or sentence of the specification. That is, when I want to amend, e.g., adding a claim element or providing a narrower range for a claim element to avoid prior art, I essentially get a written description rejection.

    Typically, for purposes of efficiency, I discuss the combination of claim elements generally, then separately discuss the characteristics of those elements in their own separate sections. But when I want to narrow the claims by further characterizing a particular claim element, as discussed in the specification section on that element, the foreign patent office will say there is no support in the specification since the element with the more specific characteristic was never expressly discussed in a paragraph together with the full combination of claim elements.

    I find this insincere on reading the patent rules of the foreign country. They essentially say the same as in the U.S., e.g., that support is enough if one of skill in the art would have understood and expected success. And, honestly, in nearly every case, one of skill would have realized the combination with the more specific claim element would work and was reasonably disclosed. (Ironically, the foreign office would find the claim obvious, if the disclosure were in prior art!)

    What to do? One can disclose inventions with detailed characteristics separately for each claim element. But it is nearly impossible to discuss every combination and permutation of elements and their characteristics in a 20 page (or even 100 page) application. The possibilities raise geometrically.

    Any ideas on how to deal with this problem?

    Gary Baker

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