Avoiding Pitfalls in European filings Subsequent to Filing a United States Patent ApplicationFebruary 4, 2016

When filing a European patent application subsequent to a United States patent application, via Patent Cooperation Treaty (PCT) or otherwise, it is essential to draft the claims (and preferably the written description) with an eye to, and a working knowledge of, the intricacies of European Patent Laws. Merely appending foreign filing documents to a copy of the United States patent application can have damaging consequences during prosecution.

Patent claims are generally directed to one of four “categories‚¬: product, process, apparatus, or use. In fact, these categories are explicitly identified in the European Patent Convention (EPC) Rule 43. Patent practice in the United States generally permits an applicant to prosecute multiple independent claims from each category to provide the opportunity for varied claim scope. Thus, restriction practice notwithstanding, an applicant might be tempted to include different non-essential technical features and/or features directed to different embodiments in separate independent claims. This temptation should be critically examined domestically and entirely avoided abroad.

In stark contrast to the United States, the EPC stringently limits an applicant to one independent claim from each category.  This provision is subject to a few narrow exceptions: (a) a plurality of interrelated products, (b) different uses of a product or apparatus, (c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.  Guidance to the Rule 43(2)(c) exception states, “[T]he term ‚¬Ëœalternative solutions’ can be interpreted as ‚¬Ëœdifferently or mutually exclusive possibilities.'”Of course, a practitioner attempting to navigate this exception must be cognizant of the unity of invention provision requiring “inventions involve[e] one or more of the same or corresponding special technical features.‚¬

An example: suppose an applicant has an inventive system having a unique sensor assembly and a unique actuator assembly. In the United States patent application, independent claims might recite the basic common features of the system; one independent claim might be directed to the unique sensor assembly, and another to the unique actuator assembly. While a restriction requirement could plausibly result, there is a strong likelihood, based on the context of the overall apparatus claim, that the applicant can concurrently prosecute both independent apparatus claims.

In the European patent application, the above arrangement could run afoul of the unity of invention requirement and/or Rule 43(2) EPC. If the former, the applicant will be required to pay an appreciable supplemental search fee or file the subject matter of the unsearched invention in a divisional application. This could have been avoided with careful preparation and claim drafting.

Furthermore, the sequential order of the claims is not as crucial in the United States patent application. Should the United States examiner restrict the claims, the applicant has an opportunity to elect which claims to pursue prior to search and examination by the examiner. In the European patent application, however, the examiner alleging lack of unity of invention will provide a partial search report directed to a so-called “Invention 1.”More often than not, “Invention 1″is associated with Claim 1 and those claims having the same or corresponding special technical features. Thus, merely including a copy of the claims from the United States patent application without careful consideration in advance of what should be the primary and first claim could result in examination of a less important technical feature to the applicant. The applicant could be constructively forced into paying the supplemental search fee or filing a divisional application.

Along that vein, suppose the unique sensor assembly is of greater commercial importance to the applicant than the unique actuator assembly. Yet, the actuator assembly was included as Claim 1. Even after surrendering the supplemental search fee, the examiner could object to the claims under Rule 43(2) EPC, after which the claims would need to be amended to one independent claim per category, likely to include both the sensor assembly and actuator assembly. The reactionary amendments to satisfy less-substantive requirements will almost never result in a robust and broad claim set as one drafted proactively in light of European Patent Laws and practice. Not to mention each of these communications with the European Patent Office (EPO) is associated with appreciable fees from the EPO and attorneys, both foreign and domestic.

Lastly, suppose the applicant declines to pay the supplemental search fee with intentions of cancelling the claims directed to “Invention 2″and incorporating the subject matter into the claims directed to “Invention 1.”Depending on the circumstances, such an attempt might be unsuccessful, as EPC rules dictate “[a]mended claims may not relate to unsearched subject-matter which does not combine with the originally claimed invention or group of inventions to form a single general inventive concept.‚¬  At this point, the main option available to the applicant would be filing the divisional application associated with significant costs and a delay in prosecution. Again, this could have been avoided with careful preparation and claim drafting.

In many instances, a European patent application will have two independent claims – an apparatus claim and a method claim. The apparatus claim and the method claim should be as broad and generic as reasonably possible and encompass all desired embodiments of the invention. The single apparatus claim and method claim will likely satisfy not only Rule 43(2) EPC, but also the unity of invention requirement through recitation of common “special technical features.‚¬

The takeaway is clear that a patent practitioner should uniquely tailor each European patent application prepared and filed, including the claims and the written description. Failure to do so can bog down the application in a procedural entanglement that can be difficult to undo without significant time and expense. While upfront costs will be associated with such tailoring of a European patent application, depending on the circumstances such costs could pale in comparison to the fees associated with merely “rubber stamping”a United States patent application for foreign filing.