Drafting a Patent Application for Multiple Jurisdictions: Keeping up with Globalization
Filing patent applications with a global perspective is increasingly important in this globalized era. It reduces extra costs while drafting a patent application and provides a common priority date for the invention. However, drafting a common application may be a little ambitious and risky at the same time due to differences in patent systems and prosecution practices of various countries. But the task is not entirely impossible if different requirements are met closely in a single patent application.
In this article, we will discuss the various factors that play a critical role in drafting a patent application for multiple jurisdictions. Let’s begin.
Key Factors in Drafting a Patent Application for Multiple Jurisdictions
For drafting a single patent application for multiple jurisdictions, the drafter needs to be aware of all the different requirements that ought to be present in the patent application. Some critical considerations while writing the patent application are shown in Figure 1 below:
1. Rules related to the Claims: Let us begin with claim-related laws in different jurisdictions. The number of claims and the types of claims varies with the jurisdiction. For instance, the European Patent Office (EPO) permits 15 claims without additional costs, whereas the United States Patent and Trademark Office (USPTO) permits 20 claims without any extra charges. Moreover, there is an extra upfront fee of USD 820 (subject to change) for adding multiple-dependent claims, which are counted as unique claims in the United States patent system.
In contrast, the EPO counts multiple-dependent claims as a single claim – with no upfront cost for adding multiple-dependent claims. Therefore, IP experts recommend preparing claim sets with multiple-dependent claims for EPO patent applications. For patent filing with the USPTO, the applicant should remove multiple dependencies from the dependent claims. Moreover, in the USA, a patent applicant can have three independent claims. This allows for a broader scope of protection.
However, if the application originates in Patent Cooperation Treaty (PCT) or it is a US-originating application, the multiple-dependent claims will create priority for the later EPO applications. In this case, expert patent drafters recommend including the sections you want to claim in the EPO to be included in the detailed description word-by-word to avoid any subject matter added in the EPO applications.
2. Grace Period Provisions: Now, let us move to our second factor in drafting a patent application for multiple jurisdictions – the grace period provision. Ideally, the patent application or the invention is to be filed before the invention has been disclosed to the public. This is done to avoid the disclosure from becoming “prior art”. The examiner will consider the revelation made to the public before filing the patent application to examine the novelty and the inventive step.
However, countries provide a “grace period” to the inventors to make things lenient. Let us understand this with an example. Suppose an applicant files a patent application after publishing/disclosing the invention to the public within a specific time. In that case, the earlier disclosure is not considered prior art of the filed patent application. In the US and South Korea, the grace period is one year before the effective filing date. This preserves the novelty or the obviousness of the claimed invention. However, in China, the grace period provision is comparatively strict.
China permits a grace period of six months before the filing date. In addition to that, this grace period is available under limited circumstances and is scrutinized by the Chinese government. Further, the EPO has additional constraints on the grace period. While the EPO offers a six-month grace period, the applicant can disclose the inventions at specific recognized exhibitions only, and after obtaining a supporting certificate to support the claims. So, to sum things up, China and EPO provide half the grace period as compared to that of the US and South Korea. Therefore, it becomes crucial to ensure the invention is not disclosed publicly or by any means if the applicant desires global protection of the patent application.
3. Best Practices while writing the undersigned sections: Technically, the background can limit the claims’ scope and lead to obvious rejections by the examiner. In the US, patent applications are typically moving towards thin backgrounds since the more ground the examiners have, the more chances they have to reject a patent application. However, the EPO utilizes the problem-solution approach while prosecuting patent applications. So, it is recommended to state the problem in the background without stating the solution and avoid describing any prior art or reference to the prior art or publications anywhere in the application.
The individual drafting a patent application should try to reach a middle ground while drafting the summary. The USPTO clarifies that the summary is optional, so it might make sense for the applicant to omit the summary completely. However, this type of application can create problems if the applicant wishes to file for a patent in other jurisdictions at a later stage. On the other hand, a well-written summary may help the EPO during prosecution.
Therefore, it is advised to paraphrase the claim language or write the claim language at a higher level and include it in the summary while writing the USPTO applications. For writing the EPO summary, it is advised to add associate advantages within the claim language. It includes the exact text in a paragraph labeled as advantages of the disclosure in the detailed descriptions to avoid any addition of the subject matter while the applicant is filing in other jurisdictions. You can also read our article on common patent drafting mistakes to steer clear of office actions or rejection.
4. Language and terminology considerations: It is always advised to use consistent terminologies while drafting a patent application for any jurisdiction. The consistent vocabulary helps safeguard against subject matter-related issues in the future at the EPO, or any claim construction disputes post-patent grant in the US. However, if we consider the South Korean patent office, it is more similar to the US patent system with regards to drafting a patent application.
The South Korean patent law lays down several requirements pertaining to patent drafts. It requires specifications to provide a detailed explanation so the person adept in the art can easily practice the invention. The written description should support claims which should be clearly and concisely written. In addition, patent profanity needs to be considered while drafting applications that may be acceptable in all jurisdictions. Patent applicants must avoid using “all,” “always,” “certain,” “each,” “important,” “invention,” “necessary,” “need,” “should,” and “so forth”, as such words tend to limit the scope of the claims, or at times, even alter the meaning of the claims.
Drafting a patent application can be a challenging task, especially when preparing a common application for more than one jurisdiction. There are several critical factors that need to be taken into consideration. A lack of expertise will cause a loss of time and valuable financial and human resources that can be utilized elsewhere. A successful patent drafting for many jurisdictions needs in-depth knowledge about rules related to claims, grace period provisions, best practices, and languages and terminology. If you are not confident about it or lack the in-house capabilities, it is best to outsource the task to a trusted third-party service provider.
Since 2008, Sagacious IP has been at the forefront in delivering high-quality IP solutions. Its team of IP experts specializes in patent drafting. The focus is not only on meeting the requirements of the concerned patent office, but also to strive for the broadest coverage for the patent. Moreover, working in tandem with subject matter experts ensures the highest levels of accuracy from a technical viewpoint, for coverage over all possible variations. Visit the service page to know more.
– Yojit Bhugra (Engineering Drafting) and the Editorial Team