Patently Strategic - Patent Strategy for Startups
Patently Strategic - Patent Strategy for Startups
European Patent Practice
What are your options for protecting inventions across Europe? In this month’s episode, we’re taking a journey across the pond with a discussion on European Patent Practice. This episode is part two of a series we’re doing on International Patenting and follows Ashley’s exceptional Travel Guide to Foreign Protection from earlier this season.
Even in a globalized economy, patents are still nationalized documents. For example, a U.S. patent only grants the right to exclude others from making, using, selling, and importing the claimed invention within the United States. It has no bearing on activities in Europe, Canada, Mexico, China, or anywhere else in the world. To restrict activities there, you will typically need a patent granted in each relevant country. This can boil down to filing and prosecution on a per-country basis. However, those seeking protection in Europe do have some additional options for a single application granting protection in multiple nations.
** Guest Host: Dr. Will Doherty **
To help navigate the very complicated European landscape, we reached out to a good friend of Aurora’s—Dr. Will Doherty of Albright IP. And we’re so glad we did. In this episode, Will puts on an absolute masterclass on European patent practice.
Beyond being a great teacher with a sharp sense of classic British humor, Will is an experienced Chartered British Patent Attorney, European Patent Attorney, and IP Litigator. As a Patents Director at Albright, he prepares, files, and prosecutes patents with great success in a wide range of technical sectors globally, in addition to handling patent infringement matters. Will is a member of and regulated by IPReg, the independent professional regulatory body in the UK for Patent and Trademark Attorneys. He is also a long-standing member of the Chartered Institute of Patent Attorneys in the UK and the European Patent Institute. Will’s academic background is in Chemistry, with a doctorate in Physical and Theoretical Chemistry.
** Episode Overview **
⦿ European patent process, EPO participating countries, key players in the system, and how it all compares to USPTO and PCT processes.
⦿ Strategic considerations around filing in individual countries vs. using EPO, translation implications, cost considerations, fee timelines, filing timeline implications, market alignment, and rights enforcement.
⦿ Interplay with newer Unitary Patents and the Unitary Patent Court.
⦿ Key practitioner takeaways, including some insightful claim drafting tips for medical-type applications, which are viewed very differently in Europe than in the U.S.
** Mossoff Minute: Price Controls on Standardized Technologies **
In this month's Mossoff Minute, Professor Adam Mossoff is discussing an issue that could cause huge problems in Europe and for the global innovation economy, more broadly.
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Josh: [00:00:00] G'day and welcome to the Patently Strategic Podcast where we discuss all things at the intersection of business, technology, and patents. This podcast is a monthly discussion among experts in the field of patenting. It is for inventors, founders, and IP professionals alike, established or aspiring. And in this month's episode, we're taking a journey across the pond with a discussion on European patent practice.
This episode is part two of a series we're doing on international patenting and follows Ashley's exceptional travel guide to foreign protection from earlier this season to help navigate the very complicated European landscape, we reached out to good friend of Aurora's, Dr. Will Doherty of Albright ip Albright is one of our go-to foreign associates for helping our clients obtain the best possible European IP rights across all the key markets.
And we're so glad we did. In this episode, will puts on an absolute masterclass on European patent practice. For anyone less familiar with international patenting, I highly recommend [00:01:00] you check out Ashley's episode. But as a brief on-ramp and a globalized economy, it's essential to understand the patents are still nationalized documents.
For example, a US patent only grants the right to exclude others from making, using, selling, and importing the claimed invention within the United States. It has no bearing on activities in Europe, Canada, Mexico, China, or anywhere else in the world. To restrict activities there, you'll typically need a patent granted in each relevant country.
This can boil down to filing and prosecution on a per country basis. However, those seeking protection in Europe do have some additional options for a single application granting protection. In multiple nations 39 contracting nations of the European Patent Convention, a separate treaty, more inclusive than EU membership, have organized a unified European patent office for short the EPO.
Instead of applying directly to the National Patent Offices, you may file a single application with EPO. That office then examines the case and upon its allowance of the claims, [00:02:00] you may then pay an additional validation fee for each member country of your choosing, plus any further translation costs to obtain a proper national patent in each of those countries.
And as the panel will discuss, there's also more recently, an additional or alternative form of patent production available in Europe under the unitary patent, where 18 signatory countries have agreed to have one forum for patent proceedings resulting in one decision that is enforceable across all 18 countries.
Given many strategic factors, understanding your options is key to securing robust international protection for your inventions. You'll quickly see why we ask Will to guest host this episode and helping us unpack everything you need to know about European patent practice. Beyond being a great teacher with a sharp sense of classic British humor, will is an experienced chartered British patent attorney, European patent attorney, and IP litigator.
As a patents director at Albright, he prepares files and prosecutes patents with great success in a wide range of technical sectors globally. In addition to handling patents, infringement [00:03:00] matters, will is a member of and regulated by IP Reg, the independent professional regulatory body in the UK for patented trademark attorneys.
He's also a longstanding member of the Chartered Institute of Patent Attorneys in the uk and the European Patent Institute. Will's academic background is in chemistry with a doctorate in physical and theoretical chemistry. When delving into any new topic, I'm constantly ribbed a little for trying to take everything back to the Big Bang, but I do think the approach is invaluable for building context.
We did this with Professor Mossoff and our Why Patents Exist episode, which primarily focuses on the genesis of the US system, but Will does this beautifully for today's story on the other side of the Atlantic. The conversation is highly practical and instructive, but will kicks it all off by delving into the rich tapestry of European history and how nationalism warfare, and subsequent sociopolitical shifts.
Heavily influence the creation and adaptation of legal systems across Europe. Tracing all the way back to the Napoleonic era Will provides a highly entertaining, fast-paced historical framework [00:04:00] for understanding the continent's diverse legal traditions, which manifest in significant strategy impacting ways even today.
Along the way will in the panel discuss European patent process, EPO, participating countries key players in the system, and how it all compares to the U-S-P-T-O and PCT processes. Strategic considerations around filing in individual countries versus using EPO, translation implications, cost considerations, fee timelines, filing, timeline implications, market alignment and rights enforcement, interplay with newer unitary patents and the unitary patent court and key practitioner takeaways, including some insightful claim, drafting tips for medical type applications, which are viewed very differently in Europe than in the us.
Will is joined today by our always exception of group of IP experts, including. Dr. Ashley Sloate, president and Director of Patent Strategy at Aurora. Dr. David Jackal, president of Jackal Consulting, Kristen Hansen, patent Strategy specialist at Aurora Albert Dew, patent strategist at Aurora. And Dr. Tiffany Miller, [00:05:00] patent strategist at Aurora.
Now, before jumping in with the panel, we'd like to take you to the next installment of the Mossoff Minute, a monthly segment that builds on our Patent Wars episode and features short conversations with Professor Adam Mossoff, providing updates and quick takes on movements in patent reform, significant court rulings, innovation policy happenings, and occasional Star Wars references.
We'd like to congratulate Adam this month for being asked to join the United States Patent and Trademark Office. As a senior advisor, we're gonna be working on legal and policy matters in the patent system. We can't think of anyone better for a seat at the table in these critical times. No one has a better command of the history, the law, or where we need to take it to get back to a gold standard system.
It's important to note however that views expressed on the Mossoff minute are Adam's personal views and not necessarily those of the U-S-P-T-O. Quite on topic for this month's installment. Adam is discussing an issue that could cause huge problems in Europe and for the global innovation economy. More broadly,
Adam Mossoff: lots of developments are occurring internationally with respect to [00:06:00] patents and our global innovation economy.
The European Union, very rightly and wisely, decided to withdraw a proposed regulatory regime that would've imposed price controls and other types of restrictions on the licensing of patents on what we call standardized technologies like 5G and wifi and other types of, of core technologies, or USB ports and things like that.
It was a very smart idea. It was really badly conceived, but unfortunately then the United Kingdom stepped up a month later and said, we wanna now consider imposing price controls on licensing of the standardized technologies and the patents on these standardized technologies. It seems that the idea of price controls is simply the bad idea that won't die.
Price controls historically and economically. Everyone recognizes it destroys markets. It destroys the ability to create new innovations and new values that create flourishing human lives in society and drives economic growth. [00:07:00]Hopefully, the UK will see the light in the same way that the European Union did, and we'll also decide not to adopt this regulatory regime.
Stay tuned.
Josh: Thanks, Adam. We're also publishing clips from the Mossoff Minute as short form videos on Instagram reels, YouTube shorts, and TikTok. You can check out these shorts and follow us at Aurora patents on all three platforms. And now without further ado. Take it away will.
Will: Okay. So I'm gonna talk about European patent process with a little bit of a history lesson to begin with.
Ashley: Josh loved this when he saw this 'cause Will takes it all the way back. Yeah. You know, gives us a good, good reflection.
Will: So the history of Europe is riddled with nationalism and, and war. There are dozens of countries in Europe, and the borders of those countries have changed drastically over the centuries.
Once upon a [00:08:00] time there were kingdoms, dukedom, principalities, even empires, and, and some of those still survive today. It's, it's a fractured continent. But let me take you back a few centuries to the early days of the us The Revolutionary War has finished and the King of England has more pressing things to think about.
There's one man in particular giving Europe the runaround, and that's Napoleon Bonaparte. The Napoleonic Wars were a bloody period in European history, but also one of profound change, uh, across the continent. So setting the stage, the year is 1804 and the Napoleonic code has just been created. That's a civil code of laws for a Democratic era associated from the whims of, of the monarchy.
By 1812, the French Empire of Napoleon spans across the [00:09:00] Europe from the Iberian Peninsula all the way down into Portugal, and then on the other side up to Russia. Whilst Napoleon's Grand Army is conquering everything in its path, the legal code, the Napoleonic code spreading across the continent and the whole of Europe, pretty much.
Finds itself with a unified legal system. Over time, all empires fall and the French Empire was no different. But after the Napoleon's defeat at Waterloo, that code remained fast forward more than a century, and the second World War devastated Europe. Germany has been split in two by the Allied forces and on the Soviet side.
The iron curtain has come down. It's 1957 and the Cold War is in full swing. Old Es are forgotten, and there's a desire for cooperation across Western [00:10:00] Europe, in particular that point, the first European communities formed between West Germany, France, Italy, Belgium, the Netherlands, and Luxembourg. Thus, that's the start of the political and economic collaboration in earnest between European nations.
That's made all the simpler by the consistent set of legal principles across those countries. Moving forwards. We're into 1973 and the European Patent Convention is signed. Purpose of IP systems is to reward r and d and not forgetting patents are economic tools. So there's an interest in economically developed countries in Europe, in that patent system, that European patent system.
The European Patent Convention is signed between West Germany, France, Belgium, Netherlands, Luxembourg Plus, Switzerland, and the uk. So therein, we've already got a [00:11:00] bit of a split. There's a divergence between that political union that formed the European community. The economic collaboration of European patent system.
We've suddenly got Switzerland and the UK involved. That goes a little bit of the way to explain some of the curiosities of the, the European patent system. We, in the UK, operate under a, a common law system, unlike the civil code that exists in continental Europe. So at, at the point of genesis of, of the European Patent Convention, uk, France, Germany, arguing over the details of, of the actual, uh, rules and, and systems of the, the EPC, and there's a little bit of that UK common law bleed into the, uh, the European system.
Following on from that, we're in 1993, signing for the Mastery Treaty. The European Union is formed that extends that European community to uk, Ireland, [00:12:00] Denmark, Greece, Spain and Portugal. At that point. We're an end of history territory. Countries of Europe appear to be on convergent path towards unity and prosperity forevermore.
That's the so-called ever closer union that is the European Union. And that's, uh, that's a phrase that came back to haunt us in in 2016 when, uh, UK pulled outta the European Union. Putting that to one side. We've got a European patent system formed. Politics and economics make uneasy bedfellows. But we've got the system and we've suddenly got the European Patent Office formed 1977 that's headquartered in Munich and the EPO as the power to grant European patents across all of the contracting member states of the EPC.
That European Patent Convention has grown with members over time. The current contracting member states are. Albania, Austria, [00:13:00] Belgium, Bulgaria, Croatia, Cyprus, Czech Republic, Denmark, Estonia, Finland, France, Germany, Greece, Hungary, Iceland, Ireland, Italy. Lavia, Lichtenstein, Lithuania, Luxembourg, Malta, Monaco, Montenegro, Netherlands, north Macedonian, Norway, Poland, Portugal, Romania, San Marino, Serbia, lov, aki, SIA, Spain, Sweden, Switzerland, Turkey, and the uk And Better Men than me will have tried to reel those off without something in front of them.
Kristen: I was gonna ask them the song Drinking Game. Yeah. Or I want a song, you know, like, yeah.
Will: Yeah. So something like the Element song, it would be good. Yeah. You know, you you'd, you'd be able to reel them off without actually having to, to look 'em up. There's also one extension State, and that's Bosnia and his governor and six validation states, Morocco, Moldova, Tunisia, Cambodia, Georgia, and Lao, which joined in April 25.
So you'll note there that actually quite a lot of those countries aren't even in Europe. So the European patent covers [00:14:00] up to 45 territories in total, which obviously is a lot in one go, and therefore it's possible to get quite a lot of bang for your buck with a European application provided. The number of states you want to cover is all you're interested in.
Now, I dunno about you, but some of those countries are probably a little bit more commercially important than others, and therefore that there's a desire to actually think about at the beginning of the process whether or not the European patent is the right way forward. Because actually maybe it's just a German patent.
Fine European patent convention covers all of those countries, but each individual state has its own patent laws. So it's possible to apply directly for patents in each individual country. And it's also. Possible to enforce them in each individual country. So there's a, there's a bit of a [00:15:00] conceptual split between the European patent, which is a, a universal right, but also this, this European patent system, which actually really feeds into a lot of individual countries.
National laws, somewhat difficult concept to somewhat grasp, you get your head around, particularly for, for non-Europeans. And it's, it's often quite difficult for us as, as European patents to get our heads around and the way the process works. But who's involved in the system? I've talked about the EPO, which is a huge non-governmental organization with vast numbers of technically qualified examiners, just, just like the U-S-P-T-O, and they're responsible for the grant of European patents.
Those examiners are highly technically qualified. On top of that, they must also be multilingual because those patents in Europe can be filed in [00:16:00] any of English, French or German, and there's no, there's no preference for any of those. So European examiners must themselves be fluent in at least two of those languages.
So they're quite hard people to come by. Gotta have the technical skills, gotta have the linguistic skills as well. Um, and, and certainly English patent examiners are, are few and far between at the EPO because most of the English don't speak anything other than English. So, so, you know, you're often dealing with, with French or German, Spanish, Italian examiners on the other side, you've got people like me, European patent attorneys who've taken the, the alternative routes.
We are registered to represent clients before, not only the EPO, but our own national offices as well, which means we've got that. Twin view, we could see both how to get the European patents granted, but also how you then go through that local national enforcement process. [00:17:00] But primarily that,
Ashley: is that a double barring then kind of like in the know, like in the US to be barred in every state?
So then are you, is it like a separate exam for the UK and then a separate exam for EPO or is there some reciprocity?
Will: That's right. So the, the UK system, you have exams that you take to, to qualify. I mean, I hesitate to call it the barring because we're, we're somewhere between, um, a patent attorney and a patent agent.
In truth in that we, we have limited rights of representation in, in court. We can only represent clients before, um, specific IP courts, the IPEC in the uk, um, the high courts in the patents division. Um. The EPO have their own qualifying exams. Um, there's a, there's a little bit of, um, leeway given if you've passed the European exams on drafting an amendment, you, you get a buy in in the UK exams, but [00:18:00] ultimately you still have to take both routes if you want to have that dual qualification.
Okay. So from there, we've got the people involved. But what's actually in a European patent? Well, I'm probably telling you guys to suck eggs really, because it's very much the same sort of document that you have in a US patent. You've got description, you've got claims, you've got drawings, but there are crucial differences.
And first and foremost is that point that I was making about individual national rights. The European patent application is a bundle. It's a bundle of national rights, and that means that although it's. Centrally examined, it can technically have different parts of the application in each individual state.
So it is possible, say, depending on the, the prior art considerations that come up across to have, say, different claims in [00:19:00] the European patent application in the UK and France, because there are potential prior individual rights in those countries that may be novelty destroying. So it's, it's, um, it's often referred to as that single patent application, but it's in many ways not, it is a, a collective, hopefully singular app application that is examined and granted centrally, but assessed according to the national laws when it comes to infringement and validity later on.
It's also unusual in the sense that you've got the choice of languages when you file the application. So we can pick English, we can pick German, we can pick French, and that language propagates through the application process. It becomes the official language of the application. Now you've got to pick one of those three official languages.
They're the official languages of the EPO. Uh, and Spanish and Italian speakers often feel quite hard done by there [00:20:00] because they've, they've missed out on the, the translation provisions. But for simplicity's sake, we've got the three languages. So that covers the language arrangements of quite a lot of those original countries that formed the EPC, uh, the, the Luxembourg, the Switzerlands.
They, they've got English and French and uh, French and German in their national languages to start with. So you can see why they've decided on those three languages from the get go. By the time the patent grants claims of the European application must have been translated into all three languages. And at that point, suddenly you've got a multilingual document in in front of you.
So one of the biggest things that applicants and practitioners need to be aware of when it comes to Europe is translations play a massive part. Absolutely huge part in the European pattern system. And translation is [00:21:00] naturally quite a subjective process. Languages don't necessarily map onto one another.
Exactly. And with with patterns that can obviously result in differences in scope in different countries if your translation has gone astray. So that leads to the scenario where European patent examiners. Have this very well documented and justified reputation for extreme linguistic strictness during the examination process.
Though they are, they're gonna be really hot on making sure that if you are making amendments, they are rigidly stuck to the wording that you used from the beginning, because otherwise you can propagate translation mistakes through.
Now I've, I've touched on it slightly before. Each European country does have its own national patent office, and it is possible to file a patent application in each country individually. I think Ashley touched [00:22:00] on this in the previous podcast, that there are decisions to be made about whether or not you do go with the European process, but the main advantage of the European patent application is that you avoid the need to go through examination in the local language of that country.
If you file an individual application in, um, Poland, you're gonna be filing a Polish specification, you're gonna be dealing with a Polish language application. And there are considerations on the technical subject matter as well. So, so
Ashley: go back to that real quick. So is there not, so as an example, like Germany, let's take Germany just for as, because a lot of times clients when they do go through EPO, sometimes they maybe only validate in Germany 'cause it tends to be more of the economic center, at least on that side of the pond.
And so, um, is there no, like if we had a client that wanted to file [00:23:00] just in Germany directly, is there not an English. Recourse or is the person that you're working with in Germany, for example, the whatever representation you have, are they going through some kind of translation process or Anyways, yeah,
Will: yeah.
I mean the, the DPMA will expect your direct file, German application to be in German. Some countries have kind of a dual system, so the Netherlands, technically you can file your application in English, provided you put your claims into Dutch. So they have that kind of split arrangement. But by and large, you're expecting to put your application into the local language.
Germany. Germany used to go to German.
Ashley: The only way to run through the in, oh, go ahead. I was saying all, all communications are in German then? Yes.
Will: Okay. Yes. So you'd, you'd expect then your, your correspondence with the German patent office direct to be in German. So the way, if you want to prosecute that in English, [00:24:00] you can go through it through the EPO.
Um, which allows you to then run everything in English and then file your German claims translations at the end. So it's a bit odd that you might have a German patent application fully forced into German if you file it directly, but a European patent application you might file in English only, then translate the claims into German, and then suddenly that's, that's valid.
In Germany, it is the, it is the split between the two systems, um, that creates that oddity want of a better word.
You might have technical subject matter considerations as well. So if you've got flippantly a, a tea cozy, maybe you want to think about a UK patent only. You know, Europe, Europe drinks coffee. We don't. Um, so I, I think from, from that side of things, there are serious considerations for applicants. Based on where their target markets are, because ultimately [00:25:00] a European patent application is going to be more expensive once you get above one or two countries.
Kristen: Hey Will. Yeah. That leads me to a question, uh, you and I ran into here this last month. So with Brexit and with the UK versus other validated countries in Europe, what do you recommend, kind of for a tip or a trick if it really isn't dependent on the invention? Like t Cozy in the UK but not Europe, if it really is something you want in both the UK and other European countries that you're gonna validate in.
Do you suggest filing as an EPO application and then validating later in the uk or just walk, walk me through that scenario. For, for the team.
Will: I mean, you're going to get, um, a lot of, a lot of hypotheticals based on. Which countries you, you're actually going to want to go into, you know, you, you'll as a, [00:26:00] as a patent applicant, you'll have an idea as to which countries are important.
Hopefully, obviously the EPO system gives you a lot of flexibility. 'cause process is slow and you don't need to make your decision on countries until we're possibly talking five, six years down the line. That obviously gives you a massive advantage over filing uk, Germany, France, either directly via the Paris Convention or as, as PCT national phases.
Um, generally I'd say to, to applicants, think about, think about that. Flexibility is probably your, your biggest benefit. Um, particularly if you've not got a technical reason to, to, to select countries. Um, obviously there are cost implications to doing that, but they don't really manifest until. Quite a way down the line and, and often, often applicants will decide to [00:27:00] abandon applications.
So your upfront costs with European versus multiple individual nations is, is probably going to be lower.
Kristen: Okay. So at the end of your process, let's say you go PCT national stage and now you have to validate, you would validate separately now in the UK and separately now in other European countries as well. Um, is there any problem or overlap or issue or like something where I have the same patent application in the same jurisdiction between the UK and like another European country Or that only, you only run into that if you have an EPO and a UK in parallel.
Will: Exactly that. So, um, okay. From, from the purposes of, of differentiating between the applications. Yes. You've, the EPO patent is a bundle of national rights, but they're, they're separate, so they're not [00:28:00] conflicting in any way. So your, your German one doesn't interact with the British one. Yes. You might get them knocked out centrally via an opposition process, for example, but ultimately, if you're gonna enforce them, they're going to be in different places with filing, uh, an EPO national phase versus a UK national phase, well, suddenly you've got two patents that could both come into force in the uk.
So you end up with effectively a double patenting type problem. Um, and the EPO pretty much always takes precedence. So there is a, a strategic consideration there if the, if the local patent office see that you've got a, the European patent granted. And a local patent applied for, or in the process of granting, usually there'll be a forced revocation of the local one.
Kristen: Got it.
Will: Unless you can remove the double patenting issue
Kristen: change.
Will: So actually you can almost do it. Um, you can almost treat it like a [00:29:00] process for, uh, uh, a backdoor divisional if, if you really want where you, that's what I was
Ashley: thinking. You know, I'm thinking situation, like if you did like a system claim in the UK or something and like a device or something in Europe or some, you know,
Will: it certainly saves you the money on, uh, filing a divisional in Europe.
If you, if maybe one of your, one of your inventions is a little bit less crucial than the others.
Dave: Does that conflict, that potential, like revocation only come into play if you d decide to extend Grant in the UK from the European? Like what if you had a UK patent that you're going and then you have a European patent that gets allowed or Yeah, I guess gets allowed, but then you don't extend the European grant in the uk.
Can you stick with your original UK patent and not have the
Will: EPAO patent, like read on it? [00:30:00] No. So you've gotta be really careful with that. Actually, David, um, the, the, the crystallization of those rights in the country technically comes into force at the point of grant. The validation process, uh, at the end makes it enforceable, but the patent is already effectively granted in that country.
So at that point, you've suddenly got UK and UK at the same time. The way to get around it is. For the grant of the European patent, say if you want to maintain an existing uk right, you need to revoke the de designation of the UK on the European patent so that it effectively becomes a, a Europe minus UK patent.
Yeah, okay. It can be quite tricky to make that decision because, um, certainly in the uk the patent office make the decision based on whether or not the claims overlap sufficiently to raise a double patenting objection. But what does that mean? [00:31:00] Well, if, if you've got a broad claim in Europe and a narrow claim in the uk, you might think you're okay.
But if your broad claim in Europe has a dependent claim, which then matches the scope of the, the British application, it's, it's going to lead to that revocation problem.
Dave: Thanks. Interesting. Yeah.
Will: Fine. Back onto process. That's there's, i, I gonna jump into this anyway. On the, uh, the European patent system, if we go back and imagine we've got a, a pending US utility application, we've secured a finding date, what do you do next?
Well, you make your priority claim with a direct file European application. For instance, we're talking non PCT at this stage. So at that point in the process, EPO want filing fee and search fee, but we're already getting some, some fees upfront, but not [00:32:00] all of them. That's, that's perhaps a slight difference to the way the the US system works in that we've got this very discreet separation between the search and examination divisions of the EPO.
You get a search report early on in the European patent process, and then much later on you get examination reports, whereas you might only just get straight office actions, uh, at the U-S-P-T-O.
The rationale is that it gives applicants time to decide whether or not they want to commit to those later examination fees. So it's expensive process. That European application process you can pull out before you pay the examination fees,
publication 18 months from priority date, same as everywhere else. But that publication brings out the search report into the public domain, and that then triggers the next deadline, which is the deadline for, [00:33:00] uh, payment of the examination fee. So within six months of that search report being published, EPO is going to want their examination fee, and that shuttles the application into the examining division.
And that's the point at which the designation fee comes into being designation Fees are a historic charge. For the EPO because it is nominally the price of electing all the member states of the EPC into the application. Now, once upon a time, you had to individually pay for countries on a territory by territory BA basis.
Um, and that kind of links back into the point I was making about the, uh, the retraction of designated states. You could once upon a time have just left countries out in order to avoid double patenting in, in local countries, but it was rare. So the EPO moved to the system where all countries all at once, we'll have the [00:34:00] full fee, thank you very much, and then you pull them back out.
If, if you don't want overlap, fine. The EPO is a very good system for extracting fees from applicants. Um, it's wealthy. So
Ashley: will, is there a cost savings? I mean, just for argument's sake. So, like most of our clients, I would argue, when they're considering validation, the key countries that come up routinely are, you know, Germany, France, uh, maybe sometimes Spain, maybe sometimes Italy, the Netherlands, uk.
Um, that's kind of it. So is there, is there really any true cost savings to like und designating all of those other countries? Are we talking about like a couple hundred bucks? Are we talking about, you know, tens of dollars?
Will: No. So there's no saving whatsoever now? Um, not in, okay. It's, that's the old system.
The old system was country by country designation. Now it's just the one fee you pull them [00:35:00] out just to avoid the, the overlap.
Ashley: Okay. Okay. So there is no, okay, gotcha.
Will: Yeah, they, they, they don't like giving money back. It's the truth.
Ashley: That's a shared, uh, goal, I think of most patent offices.
Will: Well, I mean, um, you know, the, the micro fees came in last year, um, for European applications for, for SMEs and, and charities and, and universities, things like that.
Um, but it was noticeable that when the EPO did that, well, great, we're putting these 30% discounts on official fees, but suddenly we we're gonna jack up quite a lot of the fees by about 30%. So really, it just means that the large entities are paying quite a lot more. Now,
Kristen: I have kind of a political question for you.
So in the us, the US patent office is very fee-based and fee run. And so they don't take, I don't know if they take any government like money to, to run and operate. Is is the European patent office like that or are they more [00:36:00] like a government hand? Uh,
Will: I, I can't answer that completely factually. Okay.
'cause I don't know the exact answer, but my understanding is that there is a, there's a. There's an amount of money that's paid obviously by official fees into the system. And I believe there is a, a cross exchange of funds from local patent offices because they have di diverted some of their work to the EPO.
So there, there's an element of governmental fees going in, in, in that direction.
Kristen: Oh, interesting. Okay. Thank you.
Dave: Per peripherally sort of related question. In, in the US you know, examiners don't get a lot of time, um, to examine each application and they're on this whole quota system and they, you know, have all these incentives and need to move things through their desk.
Sure. It seems like European examiners, um. Are are, are given a lot more time to dig into all [00:37:00] these nitty gritty, um, details and looking back at the specification and the exact language and a lot of stuff that the US examiners don't, don't, aren't, you know, differences in law of course. But, um, I'm curious if the, you know, or if they're, how that works for the European examiners.
Do they have a similar kind of quota system or more time
Will: it's moving in that direction? Certainly they get, they get a lotted amounts of time to deal with, with specific actions. Certainly discussions with, with examiners as, as alluded to that, um, there's a lot of political controversy within the EPO about the, the workers' rights, um, and how much time there are allotted the things, how much expectation there is to increase productivity.
Uh, you know, and it all boils down to what is the point of the EPO? Is it a. Is it a means for [00:38:00] issuing patents or is it a means for churning out as many work products as as possible over a certain amount of time? Um, and certainly the direction of travel has been in, in that latter direction recently. Um, they pride themselves on high quality patents, but obviously if you reduce the amount of time that any examiner has to look at a case, it's gonna reduce the quality of, of the patent.
So they have these conflicting, conflicting aims. Um, there are lots of, there are lots of user questionnaires that we get as, as attorneys and therefore users of the system as to, well, what do you actually expect outta the system? And, and it seems rare that the feedback is ever, uh, incorporated. Fees go up.
Examination timelines are, are designed to come down, but that's not necessarily always in the, uh, the best interest of the applicant if they want the application to keep spinning along.
Ashley: Will, you just didn't realize that, you know, where those emails go and the [00:39:00] surveys is just to a paper shredder on the other side.
You know,
Will: I don't think they use any paper these days, to be honest. The epo, it's, it's just a, a great digital shredder.
Fine. Where did we get to? We were on, um, selection of individual states. Well, that doesn't happen anymore. Um, but at some point in the process, you're paying an examination fee. You're paying a designation fee off it goes to the examiners in the, the examination division. Fine. How soon is that gonna come back?
Well, very long time away. It might be that they've got targets for getting through actions, but the number of European patent applications is going up. So the queue is getting longer. So you're probably looking at years down the line that examination's going to occur unless you go through an acceleration process.
So possibly the European patent applications just sat there in stasis for a very long time and then [00:40:00] suddenly it's maintenance fee time. Your renewal fees are paid year on year during pendency. So that can be quite a big shock to applicants who are used to say the the post-grant renewal system that, that, that's in most other countries around the world.
Obviously there, there's a few exceptions around, but certainly the US PTO pays 'em after grants. Most of the far Eastern countries pay their renewal fees after grant. And those renewal fees aren't small because they are, they are tagged to, uh, a nominal percentage that tracks the, the kind of number of countries that are validated in.
So they're kind of pegged to what you'd expect to pay if you were paying four, five countries worth of renewal fees locally. So they go up, up and up and up and up pretty quickly. And, and some countries have quite big jumps later on in their, um, [00:41:00] in their, uh, renewal system. Certainly after the 10th year in the UK we get big jumps.
Uh, and the epos no different. Um, that's an interesting point. It comes back to Kristen's point from earlier. Actually. There is an element of the fees going backwards to the national offices as well based on the renewal fees because the, the, the national offices are missing out on their renewal fees based on the slow process of, of the EPO.
So there, there is a bit of, of back and forth when it comes to fees going, um, in and outta the EPO. Let's say we're, we're through the process though examinations happened. We get a notice of intent to grant. Applicant then needs to confirm that their text is, is alter their satisfaction and we've got more fees to pay.
Grant and publishing fees need to be paid. We've then got to do translation of the claims into the other two languages that we didn't pick when we filed the application. That's a first translation step, and we're gonna [00:42:00] see from here on in that we get translation after translation in the grant process, which can be a little bit surprising once we've, we've met the requirements of paying the, the grant and publishing fees.
Great. We get a granted patent and so we're onto validation. We've got the bundle of national rights, but we need to meet the individual requirements of the national offices. So UK IPO, happy with the English language patent that we've got in place, or the French language pattern with English claims. All good and well, Italy?
No, they're going to want to see everything in Italian. So we've got individual national requirements put in place on top of the European grant. Before that though. We've got the first validation deadline in effect, and that's the unitary patent deadline. One month from Grant. We need to decide whether or not we're gonna file a unitary patent.
So that's a relatively recent addition to the European patent process, [00:43:00] 2023 and onwards. But it is the closest thing we've got to a formal EU patent because it is, it covers a, a relatively broad, but not complete subset of EU countries in one go. And what we need to do for the unitary patent is file a unitary patent request.
Say we want this to, to come into force and file a translation again. So this now is a translation into one of the other EU languages that's available, not a specific EU language mind. This is actually a bit of a cheat on the part of the EPO because there isn't any legal effect to the, uh, translation of the unitary.
Translation for the unitary patent, it's very much there to provide training data for their translation programs. So probably at some point the requirement to translate the entire unitary patent on grant will [00:44:00] disappear and there will be, uh, an EPO created machine translation system that will hopefully get better and better over time.
Whether that will work in practice is going to be interesting because what we see is that the translations that get put in place for the unitary patent request are the cheap ones. So we see a lot of, we see a lot of Spanish go in and we see quite a loss of, um, German just because we're already doing their claims.
A little bit of French, maybe some polish for people that are validating in Poland. Anyway. Not a lot beyond that. So I'm not, not entirely clear how the EPO are gonna be training their systems on all the other languages that they're proposing to, to translate into. I, I don't think we see many Latvian translations, for instance.
Kristen: So from a process perspective, if you decide [00:45:00] you want that unitary patent, you, you can just say, so fill out the paperwork and the translation and do that. But if you previously opted out, you know, I think we're gonna have a few years of things where we had cases where we opted out of that system. Do you have to revoke that?
And then you can also get the unitary patent? The
Will: optout is, is automatically revoked when the unitary patent request goes in. Oh, okay. Because it's, it's, it's non-compliant. Compliant with the existence of the unitary patent.
Kristen: Okay.
Will: Um, so unitary patent must be. Opted into the Unified Patent Court. Um, so the Unified Patent Court is the, the central court of jurisdiction for the unitary patent, plus validated states, which are members of the U unitary patent, even if you're not using a unitary patent unless opted out.
So the purpose of the optout is to take, say, a German validation [00:46:00] outside of the scope of the Unified Patents court jurisdiction. It's,
Kristen: and can, can you opt out anymore or is that date gone?
Will: It's still, it's still viable. Um, it's just we see a lot of people, uh, making unitary patent requests because it's, it's, it's cost effective.
Sure, sure. Um, and to be honest, the people that are fighting in the Unified Patent Court are. Big entities, it's expensive to, to litigate there. So for SMEs, for even, you know, medium to large businesses, probably the, the cost of the, the cost saving that you get from the unitary patent is too much of a win versus the risk of being in the unified patent court, even though it's relatively untested system.
So we're seeing fewer and fewer opt out requests over time. Uh, people are just happy to sit in the system and hope that, you know, the, the Googles of the [00:47:00] world don't come down on them.
Ashley: Well, in my, it seemed like, I mean this is a few years back now, but when, I can't remember if you provided these data or if we kind of just put this together, but it seemed to me that if you weren't gonna validate in four more countries that the UPC was more expensive if you were just gonna validate in.
Fewer than four countries. It wa it was cheaper to do individual validation. I mean, you still have the enforcement issues, right? Yeah. There's no unified court for enforcement. But if you're more concerned about front end costs, is that still hold true? Is that like rough metric?
Will: Yeah, it is. There's a couple of factors when it comes to the cost of the, the unitary patent.
One is, well, you've gotta put a translation in place. So the, the balance of the, the fee for validation slightly depends on whether the countries that you want to validate in are translation heavy countries. Mm-hmm. So at the point of validation, possibly an, an Italian translation is gonna cost you the same as a filing a unitary [00:48:00] patent request.
So at that point, it's a one or nothing. Great. You've, you've already, you've already made your saving by, um, doing unitary patent by getting Italy in the bargain. Um, if you are looking at things like Germany, France. Netherlands and let's say, uh, who else is in the system that, that's not too complicated.
Belgium, maybe those four. Well, you don't have to do a lot of translating in those countries because they're all, they're all broadly speaking, permissive when it comes to the amount of translation you have to submit. Dutch only need the Dutch claims. Germany, France, Belgium, they're, they're, uh, London agreement countries.
So they don't need the, um, additional translation requirements. Um, so really you're not paying a lot for translation there. The, that's maybe the tipping point, because beyond that, you start adding extra countries in on a validation level, maybe you're paying less, but [00:49:00] your, your renewal fees will start to go up and up and up.
Mm. 'cause the unitary patent renewal fees are set as a cumulative amount of, uh, what is it? It's uk, France, Germany, Italy, as was in. 20 something, 20 20, 20 20 something or other whenever they came up with the official fees.
Kristen: Mm-hmm. So the
Will: renewal fees are based on out of date renewal fees to start. Um, but it's set, it's set on four countries.
So your unitary patent renewal fees will be lower than, say, five countries worth of renewal fees once you start paying them direct to, to the national offices. So that's, that balance point is probably never going to change there. Um, the one thing you can't do is say, oh, well, I've done Germany, France, Netherlands, Switzerland, Bulgaria [00:50:00] in a classical validation mode.
Maybe I say, well, I made a mistake with Bulgaria, I'll just drop it. Well, if you've gone via the unitary route. You can't just throw out a a country, it's, it's the one, right? So you are, you are committed to paying that four's worth of renewal fees forevermore, or you lose the unitary patent. So it, it's, it's, it's a slightly longer term view if we look at it like that, because we've got to project how sooner we may be going to kill parts of the, the patent if we were just left to our own devices and, and choosing country by country.
Yeah, it's tricky. It's tricky. There's, there's probably no hard and fast answer. Um, I'd say it's probably relatively rare for somebody ticking along with a patent portfolio to start saying, I'll chip away and, and drop these rights. It's from a, from a mental load perspective. It's a lot easier to just say, renew 'em [00:51:00] all or don't renew them.
Yeah. So I think may, maybe I over egg that point a little bit to clients really as, as being a, a bit of a fear factor.
Kristen: No, it's good. It's a good, it's a good point. Go ahead Dave.
Dave: Yeah. One thing, and I'm curious to get your perspective on this will, one question that we get and we also ask clients to think about when they're deciding where to extend Grant, is if there was ever an issue of infringement or or enforcement, would you spend the money to litigate an infringement in Belgium or in one of these small jurisdictions?
And especially I, what you were just saying is interesting about the unitary court system being so expensive, if that's where your infringement is. Sure. The unitary. Patent covers Belgium. But would you ever spend the money to litigate that and uh, as opposed to, well, if it's Germany yes. Or [00:52:00] if it's Great Britain.
I know that's outside of the unitary system, but a lot of our clients think about markets and competitors of course. But, but where might the infringement or problem happen and would we spend the money ever to try to enforce there does, what's your perspective on that? Does that change your recommendation for whether would someone would spend the extra money to go with a u unitary patent versus just extending grant in Germany and Great Britain outside of the unitary patent anyway?
Unit unitary, patent plus Great Britain or Germany plus Great Britain. You know what I mean? I mean the, I
Will: mean, it's ex excellent point. Um, what's the purpose of a Belgian patent? Is, is what it boils down to, I suppose. Well. If you're gonna litigate, you probably, you're probably gonna start somewhere, aren't you?
So you're gonna have forum shop, and if you win, say [00:53:00] let's say you get an injunction in Germany, probably you're going to encourage action against the infringer based on the Belgian market. And if you've already got the judgment in Germany or, or in the UK or in whichever is the prime market, you're probably gonna have a much more receptive target.
I would say you're probably never realistically going to litigate in one of the smaller jurisdictions, but that's not the point. The point is that you're probably gonna try and get the, the early judgment in the big one in order to make the infringer rollover everywhere else because they know that you could.
Do it. Whether you, and, and obviously if they've lost then they've got a big, a big problem in, in recoverable costs from you bringing an action in another jurisdiction where it's just gonna be legal fees thrown down the drain. Um, so it still [00:54:00] comes back to the, the kind of key and core point is where is the recoverable amount going to be relevant?
So if the Belgian market is worthless, don't validate in Belgium, if it's an incredibly valuable market, do it. Don't litigate there. Stick, stick your, uh, or in the UK or in Germany or, or France if you're so inclined. But, you know, stick to the big patent courts that have got extensive experience and good processes in order to apply consistent logic in the other ones.
That's, that's usually what I'd say. And certainly from a, a UK. Practitioner's perspective, I'd always say forum shot to the UK first because we've got lots of relatively cheap and cheerful processes for getting decent opinions. We've got patent office opinions on infringement and, and, um, validity that we can apply for the cost.
Peanuts, frankly, they're non-binding, but obviously it's [00:55:00] persuasive to a court. If the patent office has already said, well, these guys infringe, you know, you can get that for four figure sum, which you couldn't take a court action for that amount. So it's all about playing games and trying to encourage, um, infringes to settle, settle based on your most suitable jurisdiction.
Dave: Thanks. Yeah, no, that, that makes a lot of sense. I a lot of, whenever we're talking about international protection, you can't file in every country around the world. Of course. So usually, I guess, unless maybe you're like your IBM or something, but, um, like if, if, if, if, um, what we're mainly often trying to do is have the conversation of where are the big markets so that you can block someone from making it worth their while to compete against you, et cetera.
And that, from that perspective, the unitary patent could have a ton of value because it, it, it does let you file in all those countries around the world or [00:56:00] not really around Europe, um, and, and cover everything, which is really not an option when you're thinking about most other places, even if you're not gonna litigate there, to your point.
So that, that's interesting. Yeah.
Will: Yeah. I mean that's the, that's, that's the, the rub. Um, you go for the unitary patent, you get that broad scope of protection, but. You've lost the right to go through one of the, the German courts, which are quite, quite reasonable when it comes to throwing out injunctions.
Yeah. Um, so that is, that is the flip side. That's why you'd opt out, frankly, if you wanted to make use of, um, you know, nullity action in, in Germany, for instance. Obviously if you've got the unitary pattern plus a UK one, you can always start your, your process in the uk, which is, you know, sneaky. You certainly don't, certainly don't wanna pay UPC court fees if you can avoid it, uh, as a small entity.
Fine. We've talked about direct route. What's next on the agenda? Probably just to [00:57:00] have a quick comparison to the Euro PCT process. So Euro, PCT, you're not filing direct via the Paris convention. You're filing, uh, a national phase of 31 months probably. Um, sometimes we refer to it as the regional phase, just.
For semantic fun. Um, but because we've missed a lot of those deadlines I talked about before in terms of, um, search fee, filing fee, examination fee deadlines, we've gotta pay them all upfront. So EPO at that point gets a relatively expensive rep because suddenly lots of fees that were otherwise spread out over a long period of time all get clustered together.
That said, um, if you've got the option to shop for your preferred ISA, if you choose the EPO in your PCT, suddenly that search fee gets waived. So you've probably knocked off third of those official fees off in one go because you've already paid it effectively. So that if you [00:58:00] know the client is, is keen on the EPO, not only can it speed up the process using the EPO as the ISA, but it can also make it cheaper for them downstream, otherwise.
You get voluntary amendment opportunities within six months or so of entering the national phase. So that can give you a little bit of flexibility to address problems in the international search report, but otherwise from there. Great. You're into the same process that I was discussing on the, on the Paris Convention route.
So going back to fees, obviously I've talked about the EPO being expensive, particular things to think about. Well, we've got claims fees, got claims fees in excess of 15 and punitive claims fees in excess of 50. So really if drafting, I guess you kind of want to have that in the back of your mind.
Obviously it's not that dissimilar to having 23 claims in as in the U-S-P-T-O, but that ramp up [00:59:00] to everything above 50. You know, you're, you're looking at tens of thousands of euros for claims fees once you go up beyond that. So there is value in making sure that you've got. A sensible set of options for the, the applicant early on that you can easily go.
Well, look, he, these are the EPO claims. I've knocked out a lot of the, the croft. The other thing to think about is, is tech heavy jurisdiction, tech heavy fields, data heavy fields can be punished quite severely for having lots of pages. So, PCT applications, which are run to hundreds of pages, can get quite severely punished on page count.
So if you can, if you can be concise in a, in a PCT application, I know it's not possible sometimes for, for support for your, your actual filing, but, um, you might wanna keep the page count down to avoid those excess page fees. The other thing that we don't have in Europe [01:00:00] is fees for having multiple independent claims.
So there's no bar cost wise to having multiple independent claims. The risk that you run with different independent claims in an EPR application is that the EPR examiner says, this is not a concise application, or this is plural subject matter, and that's it. They just won't search those multiple independent claims.
So running quite a lot of independent claims when you contract down to 15, maybe at national phase entry, runs the risk of you only getting one claim search potentially. So there is a, there is a strategic consideration there to make sure that, that, that doesn't apply. Fine. Um, let's talk a little bit about some substantive points of EPO process.
The processes between the EPO and the US PTO are not all that different. You've got certain [01:01:00] patentability exclusions, you know, schemes, rules, methods for performing a mental act. Presentations of information abstract matter rejections do exist at the EPO and they're pretty similar to what you'd expect at the, at the U-S-P-T-O.
What's quite interesting is there are limitations at the EPO around methods of treatment and diagnosis of the human or animal body. So there are, there can run into difficulties with granting of, of medical method claims. Patents can be granted to therapeutic or diagnostic products if they're novel and inventive or if their medical use is.
So you can't have, um, the old Swiss type of claim at the EPO, your use of product X in the treatment of disease Y. But you can construct a claim, which is the flip of that. So product X for use in the treatment of disease y that's an okay claim structure. So it, it's quite [01:02:00] useful to think about. Building claims with maybe European requirements in mind if you're doing medical type applications, because otherwise you'll probably just get pointless clarity objections from a European examiner downstream.
They'll just tell you, reverse this in order to, to have it searched. Those new medical uses, they can cover new dosage, raise regimes, new modes of administration of drugs, or even new patient groupings that the, the, the medical treatment is, is applicable to. So it's, it's permissive provided you've structured your claims correctly.
Kristen: Can you say that again? Product X for use. So
Will: the, the valid EPO construc construction for a second medical use is Product X for use in the treatment of disease y. So it's, it's got to be a product claim ultimately, but the, the [01:03:00] novelty, the inventiveness can be granted by the use. So you, you, you enforce on, well, the sale of the, the drug for the particular purpose rather than the administration of it.
Think about novelty, um, that follows on from, as the next step from excluded matter. Um, there's not masses of differences to U-S-P-T-O practice, but you do need to think about the, the absence of a a, an inventor grace period in, in Europe. I think, again, that's something that Ashley touched on in the, the international podcast.
Um, but you can't use the US grace period provisions in Europe. There's an absolute novelty bar for disclosures that beat the priority date. There's also, um, what we have our. Novelty only citations, which are filed before, but published after [01:04:00] documents, which are either European or Euro PCT applications.
So EP or w documents that have subsequently gone into European phase. They can be cited against the novelty of claims, but not inventive step. So that puts them in a slightly odd category effectively, that the, the EPO is saying that, well, we, we don't want two patents granted with the same thing, but we can't have expected and invented to have known about something for obviousness before it was published, which is somewhat reasonable, but it's quite a cumbersome mechanism to, to look at prior art that way.
Um, what's sometimes taken for granted at the EPO is that once a European examiner finds a defect in a claim on novelty grounds, they, they often won't then move on to inventive step. They'll just say, well, claims non-compliant with the EPC. So it, it does feel [01:05:00] sometimes like the deck is stacked against the applicant.
You, you've kind of gotta preempt the inventive step attack when you respond. You're expected to respond on inventive step grounds, even if the objection's not there because it's subsidiary to novelty. Um, so that, that then feeds into, well, how do you do that? Luckily, I say luckily, but the, the rigid structure of the EPOS problem solution approach to the assessment of inventive step does kind of tease you along.
So the identification of the novel features of the claim will help. Identify what you're going to use in your inventive step argument At the EPO, what we do is we find the closest single prior art document acting as the most likely starting point for the skilled person to arrive at the claimed invention.
The differences between that document and the claimed invention are determined, [01:06:00] and those differences are what you'd expect to have argued on novelty. It's then the purpose of those differences within the whole invention that allows for the formulation of an objective technical problem to be identified.
And once you've identified that objective technical problem, you work out whether the skill problem has deemed the skilled person would've deemed the solution obvious. And that's, that's how the two-part structure of a, a European claim appears. The characterizing characterized by or characterizing that structure, it's the EPO asking you to split between.
The stuff known in the prior art and the stuff that's not, and then you're explaining why the characterizing portion is inventive in its own right. That might look like it's something that benefits third parties more than the patentee, frankly, when you read a claim. And, and that may well be true. Um, why they do that?
Well, I, I think that's, [01:07:00] it's a lot to do with everything being strict at the EPO. There's a rigid set of rules to follow and they're trying to balance that third party rights versus, um, patentee rights all in, in one go so that it's easy to, to enforce when, and it comes back to, you're possibly doing it in lots of different languages.
So it allows for kind of simplified access to the inventiveness points that you're arguing on during litigation.
Um, what's, what's interesting about that objective technical problem construction is that at the EPO, if you haven't put something in your application in the description to explain what the objective technical problem is, you run the risk of the European examiner just deciding it for you. So there's a lot of what we do is making [01:08:00] sure that there are sufficient advantages, just littered through the description to make sure that you can point back, well this is actually my objective technical problem.
It was there all along. The absence of that can give you a lot of problems during European examination. Let's say the EPO has found prior art related to all the claims. You found the core inventive difference to make your in, uh, problem solution attack work. Hidden away in the detailed description, suddenly we're at the point of EPO added matter problems.
EPO applies a test that's modestly called the gold standard, where amendments can only be made within the limits of what a skill person would directly and an unambiguously derived from the disclosure. And the disclosure is deemed to be description claims, drawings, but not abstract, which is something that can, people can fall, found off quite a lot.
Abstracts not deemed relevant for [01:09:00] amendments. What EPO examiners are quite fond of saying is that the description is not a reservoir of information from which features can be cherry picked. Um, that comes up all the time. Um, but in, in practical terms, it means that if there's a, unless there's a specific pointer in the description stating that a certain feature is applicable to, in general terms, to all embodiments.
A European examiner is probably going to deem that feature to be embodiment specific, and then if you try and make an amendment on that feature, all of the other features of the embodiment are probably going to be forced to be absorbed into the claims. That's really difficult to anticipate when drafting short, snappy sentences are probably the way to go so that you kind of separate out individual features rather than have long linked sentences.
That does at least keep European examiners at Bay [01:10:00] Intermediate generalization. That's something that European examiners are really big on, which is broadly the attempt to secure claim protection, which is between an original broad statement in the disclosure and an embodiment specific disclosure. So what it helps to have is, is hierarchical funneling of features in of claim.
Intes baked into the description. If I was to broadly claim a vehicle, you know, claim, and then my only example in the description is Tesla model three, I'm gonna find it difficult to generalize to a car even or an EV because that wording isn't in the description somewhere. So having those intermediate positions littered in place does give you mechanisms to get around the, the hideous intermediate generalization problem that EPO examiners will inevitably throw.
Fine, I'll jump through [01:11:00] the grant process section because I've talked a lot about, we've talked a lot about unitary patterns already. In fact, we talked about UPC enforcement to loss. Um, but in terms of the UPC enforcement needs to be either. In the national court or at the UPC, you need to make strategic decisions early on as to whether or not you, you really want that to happen.
So at the point of validation, that's where the, the discussion with the client needs to be had. Am I going to classically validate as in pick individual countries and ignore the unitary patent in order to select that opt-out process to avoid the jurisdiction of the uni unitary unified patent court, UPC, or am I going to accept that I want the unitary patent and all the, the advantages cost-wise that that brings me and accept that that court could [01:12:00] centrally revoke the entire unitary patent in, won't go.
That's, that's the discussion to, to be had with with clients early on for countries outside the Europe UPC. Well, litigation is. Unchanged UK patents litigated in UK courts. So are UK parts of European patents. Same for Spanish validations, Czech validations, so on so forth. Any of the non 18 countries that form part of the unitary patent system.
Why, why aren't all the EU countries in the UPC? Is, is a pretty common question. Well, EU countries, they're the only ones that are permitted to be in. So UK, Switzerland can't be in at all. Spain kept out on linguistic grounds, pretty unhappy that the UPC mandated that process had to be conducted in French, [01:13:00] German, or English.
Same as the the EPO. Some countries, um, had objections on. Um, commercial grounds that they might, that the UPC was not actually not very valuable to their internal patent system. That was, that was the reason the Czech Republic gave to, to stay out. So there's lots of sort of BT squabbling within Europe over whether they should actually form this true EU patent.
Something has come along, something is there in terms of unitary patent, but it's not been fully and wholly accepted. So we've still got this bipartite system and to circle back entirely. That's the history of Europe in, in a nutshell. You get economic and political co collaboration, but there's, there's bickering, there's fighting over the details.
But ultimately, you know, the first European pattern was filed 1978. So, so something's been going right over the past [01:14:00] 40 years. Europeans can work together. Overall, what are some useful points for practitioners to take away? Well, one EPO is expensive, but equally it can be quite good value at the same time, certainly in terms of those upfront costs for, for clients.
But applicants do need to think about whether or not jumping into the system is sensible. We need to have a think about whether actually just uk, Germany, France perhaps is, is all they really need. And whether that's actually the more cost effective thing to do. Having a good understanding of, of what you're going to get into in terms of validation early on in the process is actually quite important for making those decisions.
So there is, there is a loss of value in looking forwards to the very end of the process to work out whether or [01:15:00]not. You're gonna go down the, the direct file route or the unitary pattern route or, or just, or even the u European pattern route at, at all. In terms of practical points during examination, probably the thing that US practitioners most have issues with is that added matter point intermediate generalization is, is an awful thing to, to get stuck on when you've got something that's clever.
So trying to make sure that at the drafting stage you've got plenty of terms that you can rely on to avoid later. Um, problems on an added matter front is, is probably the best advice I can give to any, any U-S-B-T-O agent or, or attorney. Equally on that technical problem to be solved side of things for inventive step.
Well, the more advantageous features that are listed in the application, the [01:16:00] more likely it is you're going to get through a problem solution attack on your pattern. So putting those features in from the get go, great. Even if they only go in at PCT stage. But also just be careful with the claims because there are lots of traps you can fall into on punitive costs for starts in terms of the claims fees themselves, but also putting in claims that aren't compliant with the eligibility rules.
So we're talking about the, maybe those medical method type claims, putting them in Swiss format, but also putting in those multiple independent claims and, and making sure that you're not putting claims in that are just not going to get searched at all. This is a waste of time. So there's some summary points there.
Hopefully that's a bit of a, a whistle stop tour through EPO process.
Kristen: No, it was really good. Thank you. Uh, I [01:17:00] will say this from work product that you see coming out of us. Uh, please do let us know if something is, is big. No, no. Or if, if, Hey, you don't wanna do this.
Will: Good, good. Well, I mean, the more we can make it streamlined, the better because the less likely it is, you're gonna get into trouble with those, you know, extended renewal fees 'cause you're speeding up the process.
If it's smooth, um, the less likely it is that you're gonna get into, um, you know, potential difficulties with, with scope. Um, you know, we, yeah, I mean it all comes back to that added master point. Added master is, is just the worst of the objections that you can get in, in Europe. Um, safer sufficiency objections.
You know, we. Touch wood, we don't get too many of those unless, um, someone's let the, the AI run loose on, on the draft in the first instance.
Kristen: You know, so internally we don't tend to have a huge problem utilizing AI kind of appropriately, but we have a lot of clients who [01:18:00] really wanna get involved. And ai, I threw this in AI and, and even if it's Sandboxed ai, where it's kind of protected and not out in the world, the things that it spits out that aren't vetted by the inventors is crazy.
And the things that are coming in, it is. And I, you know, I'm given 30 page documents to read about something they think should be in their application. And I, I'm like, I don't even think any of this should be in there. Like, where did this come from? Yeah. It's, it's crazy.
Will: Yeah. It's, it, and the, certainly I get a lot of, a lot of clients sending me well patent applications that are ready for review.
Um, which are, you know, claims barely in English and detailed description, which is, uh, you know, just, just randomly generated. Um, and it, it, it's, it's difficult, it's difficult to say that actually this is going to give you sufficiency problems, you know, no matter where you go. [01:19:00] Um, yeah, it's, it's an increasing problem.
And I dunno whether like the, the professional AI drafting tools are gonna solve this completely. You know, they, it, it's a tool at the end of the day, isn't it? It still requires some sort of advisory input as to whether or not it's doing the right thing.
Kristen: Yeah, absolutely. So, I don't know when her article is due, but Ashley is working on an article for, um, a US company called, I think, Thompson Innovation.
And she's vetting a handful of drafting AI tools and so she's gonna do a comparison across 'em. So if we can get you a copy of that, we will, oh, that's noisy. Pass that along. It's, yeah, it sounded interesting. I think it's taking her a little more effort than she expected, but it's kind of a, a cool pet project, so we'll let you know.
Good
Will: stuff.
Dave: Yeah. Thanks, will. It was really, uh, informative. Uh, it's so complicated, the European landscape, so thank you for helping us, uh, navigate [01:20:00] it.
Will: I tell you what, I was slightly panicked at one point that I was, I was sort of scrolling through my, my, uh, prepared bits and pieces and my, my page count tracker got stuck.
So I, I thought as we were getting towards like. Half, six, quarter seven here, suddenly, oh, I'm only halfway through this whole thing saying I'm on page five and five of 11. What, what, what's happening? I'm gonna be speaking till it, till it's midnight here. It ran to pretty much the time I was expecting in the end.
Good, good. Right. Um, I'm, I'm gonna sign off there then and actually sort of go and go and find my tea. I think. Sounds perfect. Yeah. Good stuff. But, but good to see you all and, um, yeah, ca catch you again soon.
Kristen: Thank
Will: you. You as well. Thanks. Thank you will. You too. Bye guys.
Josh: Alright, that's all for today, folks.
Thanks for listening, and remember to check us out@aurorapatents.com for more great podcasts, blogs and videos covering all things patents strategy. [01:21:00] And if you're an agent or attorney and would like to be part of the discussion or an inventor with a topic you'd like to hear discussed, email us at podcast@aurorapatents.com.
Do remember that this podcast does not constitute legal advice and until next time, keep calm and patent on.
