Which Nations to Select for Global Patent Filing in the 2020s

Welcome to Keefe IP’s Global Patent Filing Blog!  This webpage provides an international filing order analysis to assist applicants in selecting nations for global patent filing, as well as articles providing tips for drafting and prosecuting patents worldwide.  Please contact Keefe IP using the firm’s contact page links above to obtain the complete 2020 patent filing hierarchy list for use in executing your enterprise’s global patent strategy.  In addition to the complete nominal filing list covering 70 nations for patent filing, Keefe IP provides details regarding the analysis supporting the nominal list to firm clients. 

An excerpt from the nominal filing list and an analysis summary are provided below, along with further articles providing tips for international patent filing and prosecution.  Thank you for your interest!

Deciding Where to File Patents Internationally in the 2020s

By Stephen L. Keefe, Esq.

     The complexity of today's globalized economic landscape can turn selecting nations for patent filing into a guessing game.  With so many factors for stakeholders to consider, many applicants resort to a standing list of go-to nations for patent filing often created in a vacuum without much supporting in-depth analysis.  Using go-to lists that often reflect an outdated world order may deprive patentees the opportunity to employ more precise methods to optimize patent portfolio effectiveness.

        With global trends so turbulent and complex, clinging to old filing choices seems at least understandable.  National economic fortunes appear to rise and fall rapidly, established regional unions crack, patent offices churn out endless data streams, and stock exchanges alternate between rocket ascents and tail spinning crashes, all complicating the picture.  Because picking filing nations for the next 20 years amounts to a complicated exercise, staying tethered to old filing strategies can soothe the cognitive dissonance created by a rapidly changing world.  But applicants should resist the Siren song of the old standby strategies to optimally adapt their patent portfolios to a world in economic and political flux.       

Using a nominal filing list to put business decisions into context

     Stakeholders recognize that business goals can plausibly make enterprises choose Slovenia over the Netherlands or Singapore over Japan for patent filing.  But applicants should still endeavor to put those business goals into context against global statistics affecting the value of intellectual property.  Applicants should try to construct a nominal filing list before turning to the business goals that drive such a large part of portfolio creation and management.  The nominal filing list should provide a global filing hierarchy prepared in view of macro factors such as economic and patent strength and general filing considerations, before important business considerations enter into the analysis.  This nominal framework provides a template for the enterprise to use in considering its business goals, to put business factors into as much context as possible in view of global economic and patenting realities.         

     Some nominal macro factors matter more than others.  Applicants should consider looking first to national economic strength and patent system strength as key nominal criteria.  Putting these twin factors on a sliding scale and generating a hierarchy of national rankings can provide a first rough draft to bring filing order to a chaotic commercial globe.  Data such as gross domestic product, urban population, and per capita income can inform economic standing, while patent data covering filings, grants, and patents in force can provide at least a sense of the strength of a nation's patent system.  Additional important criteria involving regional filing regimes, language considerations, and general industry type also affect nominal filing rankings prior to applying business goals to the analysis.  The discussion below will illustrate at least some of the interplay between these factors.

     Applicants can ultimately dismiss some would-be factors as red herrings.  Although patent filing fees and annuities create significant costs overall for patentees, these substantial costs offer little help when choosing between different filing nations.  Almost all nations have patent maintenance and filing fees, nearly all of those annuities and fees generate significant costs, and nearly all of these costs balloon seemingly exponentially toward the end of a patent's term.  Although some nations offer slightly lower annuity and filing costs, such differences pale in comparison to the other factors given above.  Applicants can safely generalize that high costs accompany every national filing choice, with the exception of Japan, which has extremely high costs.  But even with Japan, the weight of the other factors mentioned above relegates filing fees and annuities as factors for deciding between nations to insignificance.  Filing and annuity costs serve primarily to remind applicants to limit the overall number of filing nations to only those markets required for effective global protection.      

Creating an Ordered Nominal Filing List

     Purely tiered approaches tend to fail in capturing the complexity of international patent filing.  The above factors, hopelessly intertwined especially as applicants drop further down the patent filing food chain, defy simple grouping.  Patentees can, though, use this ordered nominal filing list to work with marketing and R&D colleagues to apply critical business factors such as locations of applicant and competitor sales and manufacturing as well as locations prone to infringement.  This nominal listing of filing nations helps to apply some order to the world so that the applicant can better analyze business issues impacting filing.  This exercise may help applicants to make well-reasoned international filing decisions, as opposed to just blindly cutting the Gordian knot with an old list of standby selections just before the PCT 30 month due date.

Nominal ranking        

     For nations at the top of the nominal filing hierarchy, the filing presumption favors filing.  So the United States, which macroeconomic and patent statistics squarely place as the top nominal filing choice, enjoys a powerful presumption favoring filing.  No filing choice gives a greater return on investment for IP value on filing, prosecution, and maintenance costs than the United States.  For inventions warranting global protection, applicants should file with the USPTO unless compelling business reasons militate against that decision.  If any doubt exists, file in the United States.   

     Recent global data makes the next choice on the patent power rankings equally clear.  China’s steadily increasing patent grants to cover that new economic powerhouse outweighs persisting legal uncertainty regarding treatment of foreigners in its patent system.  China now stands as the second nominal filing selection, with patenting and economic statistics at least nominally placing it clearly above Europe.    

     In third place after the U.S. and China comes Europe.  Though overtaken by China in terms of patenting and economic statistics and still reeling from BREXIT, Europe maintains a huge lead over the remaining filing choices.  The international filer should consider the nominal bundle of Germany, France, and the United Kingdom, still apparently integrated into Europe’s patent system, as the third choice for global filing before business goals come into play.  Europe's robust but tangled and expensive patent system presents an attractive filing option when looking at both that continent’s large market and proven patent system strength. 

     Accordingly, global Applicants should nominally pick the U.S., China, and Europe unless good business reasons exist to skip them.

     Next down the nominal filing hierarchy comes Japan, which still possesses enough economic and patenting clout to rise above the remaining nations of the world as the applicant's fourth filing choice.  Despite recent economic doldrums and high government patent fees, Japan still enjoys a favorable filing presumption.  Applicants should consider filing in Japan as a fourth option unless business factors give no cause to go to the JPO.

     At this point the nominal filing presumption reverses, with the patentee choosing additional nations only if good business reasons justify those filings.  In fact, many portfolio managers may favor a deterrence approach for much of their portfolio, pursuing larger numbers of smaller patent families, banking that covering the big players above will thwart potential infringers from going through the trouble of copying if a few key patents would block them from the major markets.  Regardless of a given applicant's portfolio philosophy, many patentees might agree that only a fraction of their estates should expand significantly past the large markets above.  But for the inventions promising exciting commercial potential or strategic importance, the nominal hierarchy continues.

     Not only does the filing presumption change at this point in the nominal hierarchy, but the number of factors impacting the decision rises, adding additional layers of complexity to the analysis.  Based on patenting, economic, and other global statistics, applicants in 2020 should consider nominal filing following an order of South Korea, Italy, Canada, Russia,* and Australia as respective choices five through nine, subsequent to the U.S., China, and Europe (Germany, the United Kingdom, and France). (*In view of recent events, Russia has become untethered from the global patent system and is no longer a reliable filing choice.) 

The 2020 nominal filing hierarchy mentioned above at the top of this page continues on with this analysis to provide a recommended nominal filing order for 60 additional nations. Please contact Keefe IP directly using the firm contact links above to learn more.    

Conclusion

     With all the factors affecting decisions on international patent filing, applicants should consider focusing on the factors discussed above to optimize national selections for acquiring patent protection.  Although business factors weigh most heavily in deciding where to file, innovators should strive to put a global framework into place to provide a starting point to evaluate business plans, goals, and industry competitive intelligence affecting IP decision-making.  Constructing a nominal filing hierarchy addressing the above factors can help put business goals into context in the complex global marketplace, helping business leaders better craft their intellectual property strategy to achieve success in their respective industries

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

Rival Global Views On Patent Disclosures

Published in Law360

By Stephen L. Keefe, Esq.

When it comes to patent disclosure requirements, terminology varies widely across the world. But the general concept remains relatively universal: How much, and just how precisely, must applicants describe their claimed inventions? U.S. patent attorneys draft applications to pass muster for doctrines like enablement and written description, while their neighbors to the north use phrases like "standard of disclosure" to describe their requirements. Europe often refers to its threshold for describing inventions as "sufficiency of disclosure," with China, apparently by no coincidence, similarly categorizing its own rules as a "sufficient disclosure requirement."

Despite the wide diversity nations use to give labels to similar concepts, the major national patent players seem to break down into two chief opposing views on just how much support patent claims and amendments require in originally filed applications. The first group, led by the United States and Japan, maintains user-friendly rules that go fairly easily on applicants striving to support claims amended during prosecution with specifications and drawings. Europe and China seem to guide the second, more exacting type of national jurisprudence, imposing stricter rules on applicants daring to make those same amendments before European and Chinese patent authorities.

This article takes a closer look at these rival standards and weighs their apparent effect on patent law throughout the rest of the world, eventually finding the Sino-European approach to carry more weight on the global stage, and perhaps by a large margin. Finding themselves relegated to a minority view while the Chinese and Europeans guide the tiller on global patent drafting standards may initially surprise U.S. patent attorneys reared in a Pax Americana now drifting back into history. So rather than staying too fixated on the latest decisions coming out of the Patent Trial and Appeal Board just outside the nation's capital, U.S. attorneys drafting global patent applications may instead pivot slightly to also look abroad and keep tabs on influential standards brewing up worldwide.

Opposing Camps

Japan polices its patent disclosure standards using Article 36 of its patent law, similar to how Americans use 35 U.S.C. § 112(a) to guard against new matter.[1][2] Korea, another key player in the global patent system, has analogously employed its Article 42(3) to regulate disclosure standards to support claimed inventions.[3] Practitioners on both sides of the Pacific have viewed the United States, Japan and Korea as forming a group of nations having relatively forgiving standards regarding new matter.[4] These nations tend to allow applicants to amend claims as long as those amendments ground themselves at least implicitly in an originally filed disclosure, giving applicants far more leeway in amending claims than competing standards requiring literal support. Such American, Japanese and Korean legal underpinning grants applicants in these nations the practical benefit of a looser standard to help push through amended claims during prosecution and to defend the validity of those patent claims following issue. Accordingly, applicants in these nations may get more mileage out of problematic or thin specifications to conjure up claim amendments to sidestep unforeseen prior art.

Rounding out the much-celebrated IP5 (the five IP offices), Europe and China apparently stand starkly opposed to the U.S., Japan and Korea when it comes to calling applicants' bluffs on claim support. Europe's influential requirements flow out of sources such as Articles 83 and 84 EPC and nightmarish legal interplays like the “inescapable trap” of Article 123 (2) and (3) EPC.[5][6][7] Many practitioners coordinating global prosecution would probably agree that European standards for supporting claim amendments stand out as some of the toughest worldwide, and applicants need to look no further than the European Patent Office's own guidelines to see the threats facing would-be amendments.[8]

Europe's stringent amendment standard manifests itself around the world through its sweeping global influence. China's amendment standards seem to resemble Europe's, both in practice and in difficulty.[9] The final balance within the IP5, then, seems to pit relatively relaxed American, Japanese and Korean standards against more demanding European and Chinese requirements for showing support for claim amendments in originally filed applications.[10]

The IP5 likely shows where the ball is right now on drafting original patent disclosures to support claim amendments globally. But more importantly, relying on an old sports adage by metaphor, looking outside of the IP5 may hint at where the ball is heading next for global prosecution.

The World Outside of the IP5

Though maybe lacking the sheer market size to parlay the IP5 into an "IP7," the strong patent regimes of Australia and Canada merit consideration when it comes to drafting a patent application for global filing. With its "raising the bar" mantra of recent years, Australia has signaled at least an intent to move toward stricter European standards for supporting claim amendments.[11] For example, by supplanting its lenient "fair basis" requirement with apparently more European-style rules for supporting claim amendments in applications filed post-2013, Australia seems to have steered toward the Sino-European approach regarding support in specifications. Although Canada's trends on claim support seem less clear than Australia's, its recent case law on standard of disclosure at least suggests Canada as diverging away from the easier standards for finding support for amended claims practiced by its neighbor to the south.[12][13][14]

The rest of the Western Hemisphere often looks back across the Atlantic to the old colonial masters in Europe for cues on patent law, further reinforcing a recent U.S. admission to the Organization of American States pronouncing the Monroe Doctrine dead.[15] Many patent practitioners can probably recall an instance in which a Latin American associate firm likened its nation's patent law to the European system. Brazilian patent law, for example, apparently bears more than a passing resemblance to the European patent regime.[16] Mexico, the next largest Latin American economy, also favors the European Union over American El Norte to guide its patenting principles.[17] In line with the strong economic ties between the two regions, governments of Mexico and Europe have actively cooperated on patent matters for decades.[18] With a background of so much European influence, Applicants should likely expect Brazilian and Mexican patent examiners to scrutinize claim support of applications sent to their offices with a mindset similar to their peers at the EPO.

European influence on Latin American patent systems extends beyond Brazil and Mexico. When the Andean Community (the trade bloc including Bolivia, Colombia, Ecuador and Peru) endeavored to hammer out a harmonized regional patent law under the tutelage of the World Intellectual Property Organization, both the EPO and the European-aligned Mexican Institute of Industrial Property played instrumental roles.[19] Asserting that all of the Western Hemisphere save the United States at least tends toward strict European-style requirements for supporting claim amendments might not overstate the current state of national laws in the Americas.

Before leaving the New World, taking a quick glimpse at featherweight Panama may help to further divine the future of global patent drafting. Panama already punches above its class economically, and when an expanded Panama Canal goes operational next year the Central American nation may experience a commercial windfall rivaled only by a trade nexus like Singapore. The expansion will push capacity well past the current "Panamax" class of shipping vessels, giving the Panama Canal a lion's share of global shipping that may have otherwise drifted off to different lanes using the Suez or other passages.[20] In the end, patent strength and filings in Panama could rise commensurate with commercial success, as Singapore's did. Despite political ties and proximity to the U.S., Panama's patent system and disclosure requirements could inevitably tilt toward Europe like so much of Latin America has already.

Many other future players currently wait in the wings of the global stage, commentators already abuzz over whether their economic potential will boom or bust. India's Narendra Modi and Indonesia's Joko Widodo, who both endured poverty early in life, seem intent on putting their respective nations on the economic fast track. Some experts predict an economic flourishing of Africa in the coming years reminiscent of Asia's rise over the last few decades.[21] Predicting whether these burgeoning players will tend toward American or European patent standards at this early stage of their evolving legal traditions remains elusive. In another tough sphere for prediction, Russia's recent bad behavior has made the patenting crystal ball there quite cloudy (in view of recent events, Russia has become untethered from the global patent system and is no longer a reliable filing choice). But based on overall trends for supporting claim amendments around the world, it seems the Sino-European camp has outstripped its American competition by a sizable margin.

The Final Balance and the Practical Takeaway for Patent Drafters

European views on patent disclosure requirements have apparently proliferated, along with the rest of Europe's views on patenting, throughout Asia, Oceania and Latin America. That China adopted exacting European-type standards for supporting claim amendments, particularly, stands out as a bellwether of things to come for global patent drafting. The happier but laxer American standard deeming claim amendments supported implicitly by a disclosure apparently only gets traction in a few regimes such as Japan and Korea. With the Sino-European view evidently gaining momentum, more rising players outside of the IP5 could easily gravitate toward the European camp.

Few commentators would dispute the continued success of the United States, which remains excellently poised to maintain its premier economic importance globally. However, Europe and China may now arguably possess greater influence than the U.S. on aspects of the international patent system, including ratcheting up standards on sufficiency of disclosure worldwide. Accordingly, when drafting original applications for an international patent portfolio, American patent attorneys should probably expect an uphill battle in supporting claim amendments in most foreign nations, at least relative to American standards. Legal thought emanating from Sino-European sources will probably impact patent applications filed globally significantly more than 35 U.S.C. § 112(a) interpretations by U.S. courts and tribunals such as the PTAB moving forward. U.S. patent attorneys drafting for worldwide filing should at least consider abiding by the emerging global view on sufficiency of disclosure led by Europe and China.

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] Japanese Patent Law Sect. 36(4): Description, Enablement (Guidelines Part VII, Chap. 2, 1.1.2.1), http://www.wipo.int/wipolex/en/text.jsp?file_id=188310#LinkTarget_1697

[2] Japanese Patent Law Sect. 36(6): Clarity of Claims (Guidelines Part VII, Chap. 2, 1.1.1), http://www.wipo.int/wipolex/en/text.jsp?file_id=188310#LinkTarget_1697

[3] Article 42(3) of the Industrial Property Laws of the Republic of Korea,
http://www.kipo.go.kr/upload/en/download/INDUSTRIAL_PROPERTY_LAWS_OF_THE_REPUBLIC_KOREA.PDF

[4] AIGI Intellectual Property Law Firm, "Japanese Practice Regarding 'New Matter' and Comparison with Other Countries," Sep. 21, 2012,http://en.aigipat.com/patent/articles/detail_139.html

[5] The European Patent Convention, Article 83, http://www.epo.org/law-practice/legal-texts/html/epc/2013/e/ar83.html

[6] The European Patent Convention, Article 84, http://www.epo.org/law-practice/legal-texts/html/epc/2013/e/ar84.html

[7] Thomas Musmann and Dr. Simon Klopschinski, "Will the 'Inescapable Trap' of Article 123 (2) and (3) EPC Catch German Parts of European Patents?," Feb. 5, 2015,http://kluwerpatentblog.com/2015/02/05/will-the-inescapable-trap-of-article-123-2-and-3-epc-catch-german-parts-of-european-patents/

[8] Guidelines for Examination in the European Patent Office, H-V, 3.2.1, http://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_v_3_2_1.htm

[9] Zhiyun Feng, "Eye on Amendments That Go beyond Original Disclosure," Aug. 13, 2009

[10] AIGI Intellectual Property Law Firm, "Japanese Practice Regarding 'New Matter' and Comparison with Other Countries," Sep. 21, 2012,http://en.aigipat.com/patent/articles/detail_139.html

[11] David Perkins, "Raising the Bar on patent claim support requirements in Australia," Lexology, Oct. 3, 2013, http://www.lexology.com/library/detail.aspx?g=a3dd68c2-5e4b-4a52-92b7-fe5297138b96

[12] Santosh Chari and Ainslie Little, "Supreme Court of Canada upholds standard of disclosure," Lexology, Nov. 27, 2012, http://www.lexology.com/library/detail.aspx?g=4b7252f2-fdc5-4220-8d1a-b4ad4af6e873

[13] Jonathan Mesiano-Crookston, "Pfizer ruling raises standard of disclosure," The Lawyers Weekly, Jan. 18, 2013, http://www.crookston.ca/wp/wp-content/uploads/2013/01/2013-01-18-Mesiano-Crookston-Pfizer-ruling-raises-standard-of-disclosure-Lawyers-Weekly.pdf

[14] Emma Macfarlane Ph.D., "Sound prediction: insights from recent Patent Appeal Board decisions," Lexology, Sep. 10, 2012,http://www.lexology.com/library/detail.aspx?g=ad6dedd1-7b49-4006-aa7e-64748ac3b155

[15] Keith Johnson, "Kerry Makes It Official: 'Era of Monroe Doctrine Is Over,'" The Wall Street Journal (Washington Wire Blog), November 18, 2013,http://blogs.wsj.com/washwire/2013/11/18/kerry-makes-it-official-era-of-monroe-doctrine-is-over/

[16] Rana Gosain, "Brazil’s paradoxical patent regime," 2009,http://www.daniel.adv.br/eng/articlesPublications/ranaGosain/Rana_Gosain_Brazils_Paradoxical_Patent_Regime_dezembro_2009.pdf

[17] Victor Garrido and Karla Islas, "Mexican and European Filing Compared," Managing Intellectual Property, Sep. 1, 2013,http://www.managingip.com/Article/3263203/Mexican-and-European-filing-compared.html

[18] European Patent Office, "Europe and Mexico intensify co-operation on patents," Feb. 3, 2014, http://www.epo.org/news-issues/news/2014/20140203.html

[19] "A Common Patent Processing Manual for the Andean Region," WIPO Magazine, Mar. 2005, http://www.wipo.int/wipo_magazine/en/2005/02/article_0008.html

[20] Karl Vick, "The Grander Canal," TIME, May 25, 2015

[21] Alex Perry, "Africa Rising," TIME, Dec. 3, 2012lds.

Tips On Disclosing Embodiments In Patent Apps Overseas

Published in Law360

By Stephen L. Keefe, Esq.

When compared with its counterparts around the world, U.S. patent jurisprudence provides applicants with relatively flexible rules for amending claims during patent prosecution. Applicants in the United States benefit from generally tolerant judicial views regarding claim support, allowing them to get away with claim amendments that probably make patent attorneys in other jurisdictions burn with envy.

But such liberal practices for amending claims in the U.S., including pulling features out of various disclosed embodiments to dodge prior art, can turn against American patent attorneys when they send their applications abroad. Getting too used to permissive rules for claim amendment support before the U.S. Patent and Trademark Office can catch up with American patent attorneys as they prosecute and enforce intellectual property rights abroad.

For example, creating Frankenstein-like claims drawing a mix of features out of separately disclosed embodiments can make the global patent gods reach for their thunderbolts when prosecution begins overseas. Many U.S. attorneys probably feel more concerned about nailing down the specification and drawings prior to filing applications to avoid new matter rejections, while later relying on relatively low-hassle claim amending norms afforded by the USPTO to tweak claims during examination. But during prosecution around the globe, foreign examiners may grant little or no quarter to applicants expecting to creatively conjure up amended claims reciting combinations of features cherry-picked from various embodiments and having only tenuous direct support in the specification.

World Tribunals Expect to See Numerous Embodiments

Most patent practitioners would probably agree that applicants sending disclosures having only limited figures and few embodiments worldwide likely stack the odds of global patent success against themselves. The United States, Europe, China, Japan, South Korea, Canada and Australia, arguably comprising the most important patenting jurisdictions in the world, seem to generally frown on applications having only limited disclosed embodiments.

In response to recent case law and changes tightening up Australian patent laws governing claim support, patent commentators in that nation have warned applicants to include at least several specific embodiments to flesh out claimed inventions.[1][2] Korean patent practitioners have pointed out that applicants should disclose numerous embodiments in the disclosure, particularly when using functional claim language.[3] Characterizing description requirements in their nation as rather strict, some Japanese patent professionals advise applicants prosecuting in Japan to disclose as many embodiments as possible in as much detail as possible.[4]

In the rapidly evolving and somewhat enigmatic world of European patent law, strict claim support requirements seem to make providing numerous embodiments of a given invention into a necessity. Additionally, complex legal concepts governing relationships between embodiments and claim amendments such as intermediate generalization and individualization appear to further highlight the importance of disclosing numerous embodiments in Europe.[5] Involved legal doctrines governing embodiments also lurk in Canadian patent law, including a potentially troublesome rule that may apparently invalidate claims encompassing embodiments lacking utility.[6].

Chinese patent experts seem to also recommend that applicants include numerous detailed embodiments in applications filed with the State Intellectual Property Office.[7] Rounding out trends of the major patent players, recent case law in the United States seems to point applicants in the direction of providing numerous embodiments to increase claim scope in view of the written description requirement.[8]

Drawing on these views held around the world, the consensus seems to point toward maximizing the number of embodiments directed to an invention's novelty in drafting globally oriented applications. But when faced with inevitable time and budgetary constraints, trying to disclose all possible embodiments covering every combination of inventive features typically proves difficult if not impossible. The drafter must wade through the arduous exercise of picking an optimal array of embodiments to disclose and providing description telling one of ordinary skill how to combine various features of the disclosed embodiments. Unfortunately, proclaiming universal combination of every feature between all embodiments disclosed in a specification will probably not fly in some or maybe all jurisdictions.

The Potential Difficulties with Generalization

Similar to the protagonist Ursula Todd suffering a myriad of different deaths in the novel "Life After Life," a host of alternate bad endings may befall a patent application and its disclosed embodiments after landing in patent offices around the world.[9] Even for the detailed application endowed with numerous well-disclosed embodiments, pitfalls in amending claims based on those embodiments still await. The most worrisome traps revolving around disclosing embodiments likely lay in Europe, which probably makes the European Patent Office as good of a starting point as any to plan disclosing embodiments for international filing.

For American patent drafters having acquired somewhat sloppy habits for supporting claim amendments, the EPO may raise up the barricades in the guise of the concept of intermediate generalization to keep claims from reaching grant. In contrast to their more permissive American colleagues, European patent examiners do not appear to have much tolerance for applicants who try to beat the prior art by picking individual features from separate embodiments to create an amended claim.[10] Intermediate generalization may therefore stop the ill-prepared applicant from cobbling together an amended claim out of different embodiments.

Without delving too deeply into a complex European legal concept best left to European patent experts to explain, intermediate generalization basically boils down to trying to claim a group of elements that the specification does not explicitly disclose as a combination. The EPO Boards of Appeal has called an intermediate generalization "an undisclosed combination of selected features lying somewhere between an originally broad disclosure and a more limited specific disclosure."[11] As a simplified example of intermediate generalization, an applicant explicitly discloses only the combinations A/B/C, A1/B1/C1/D1, and A2/B2/C2, but then later tries to mix and match embodiments and claim A/B/C1 and A2/B/C.

Trying to explicitly claim every technically feasible combination in an original disclosure will likely bust the drafting budget. Even worse, disclosing every combination may also backfire, with patent examiners discounting expansive listings of combinations.[12] Alternatively, trying to persuade an EPO examiner not to treat claiming an undisclosed combination as an intermediate generalization seems difficult.[13] So what options remain for the patent prosecution attorney?

The most manageable approach to prepare for problems abroad like intermediate generalization may come down to simply thinking about the invention and known prior art and making best efforts ahead of time during drafting to plan the best fallback combinations of claim features. Drafters can add additional disclosure to their applications aimed at avoiding intermediate generalization. Even just a paragraph or two, using the best fallback features to explicitly disclose the best fallback combinations, may suffice.

Because concepts like intermediate generalization seem to police primarily undisclosed combinations, drafters may effectively sidestep the entire issue by explicitly disclosing the best fallback combinations at filing. Prior to filing, patent drafters can look at their disclosed embodiments and their top fallback claim features not already included in independent claims, and explicitly disclose combinations using those fallback features along with features drawn from the various disclosed embodiments. Essentially, the application drafter can lean on the description of features in already-disclosed embodiments to efficiently articulate some additional combinations within the original specification that may later provide direct explicit support for potential, future amended claims.

To push unbridled optimism for smooth prosecution even further, Applicants may include the best fallback features as ready-to-go dependent claims, already resting on explicitly disclosed fallback combinations in the specification for support. If necessary, patent prosecutors can just plug the top dependent claims into the independent claims during prosecution to produce amended claims reciting combinations explicitly supported by the specification. One can at least dream of global prosecution actually going that smoothly, and escaping a fate almost as bleak as one of Ursula Todd's unhappy endings. Such preparations during drafting may at least mitigate difficult issues in working with different embodiments like those that can occur in the EPO with intermediate generalization.

Because the most potential for trouble in relating different embodiments to each other seems to reside in Europe, an application drafted for Europe will probably fare at least as well or better in other jurisdictions. China seems to have similar rules against intermediate generalization as Europe.[14] Based on recent changes in Australian law, that nation's patent system appears to have started transitioning toward stricter claim support similar to European standards.[15] Similar to the United States, requirements for basing amendments on features drawn from a mixture of disclosed embodiments in South Korea, Canada and Japan do not seem more draconian than in Europe and China.

Conclusion: Breaking Bad Habits

This fairly ominous warning from the European Patent Office may at least partially sum up the clutch of potential challenges waiting in the global wings against using multiple embodiments to amend claims: "[T]he content of the application as filed must not be considered to be a reservoir from which individual features pertaining to separate embodiments can be combined in order to artificially create a particular combination."[16] Although disclosing as many detailed embodiments as possible and having fallback claim amendments already identified may put applicants at an overall advantage, the additional disclosure mentioned above may help further to avoid traps abroad involving multiple embodiments such as intermediate generalization.

Applicants may avoid even the perception of mixing and matching between different embodiments while amending claims during global prosecution by articulating fallback combinations at filing. Explicitly disclosing how a novel fallback claim feature from a given embodiment combines with other disclosed embodiments, or how several features drawn from various disclosed embodiments combine to form a new combination, may dodge quagmires like intermediate generalization altogether.

By having the best combinations of features drawn from multiple embodiments already disclosed in a few paragraphs in the original specification, applicants may avoid the uncomfortable position of having to rely on arguments aimed at propping up undisclosed combinations. Having dependent claims already set up to fall in on independent claims, underpinned by fallback combinations disclosed in the specification, may further aid applicants in side-stepping problems overseas. Putting a little extra disclosure into a given original specification, which goes beyond American requirements and meets tougher standards for combining features between embodiments as in Europe and China, may pay dividends later when examiners and tribunals around the world eventually take a closer look at that application.

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] David Perkins, "Raising the Bar on patent claim support requirements in Australia," AIPLA Newsstand, Oct. 3, 2013, http://www.lexology.com/library/detail.aspx?g=a3dd68c2-5e4b-4a52-92b7-fe5297138b96

[2] Dr. Jim Y. Onishi, Dr. Victoria M. Longshaw, and Dr. Elizabeth E. Houlihan, "Balancing generic disclosures with specific examples when drafting Australian Patent Specifications," AIPLA Newsstand, Jan. 13, 2014, http://www.lexology.com/library/detail.aspx?g=bbf9e799-05ba-4e61-affc-4f24f52e1f1d

[3] Korea IP Law Blog, "Functional Language in Claim," Mar. 17, 2014, http://koreaniplaw.blogspot.com/2014/03/functional-language-in-claim.html

[4] Masahiro Genda, "Requirements for description and claims," Sep. 18, 2013, http://www.lexology.com/library/detail.aspx?g=62ffe488-9db9-4321-9b07-31fabf4a5eae

[5] The Guidelines for Examination in the European Patent Office, H-V, 3.2.1, http://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_v_3_2_1.htm

[6] Merck & Co Inc. v. Apotex Inc., 2010 FC 1265, [2011] 2 F.C.R. D-4, http://decisions.fct-cf.gc.ca/fc-cf/decisions/en/item/58865/index.do

[7] Chunhui Li, "Comparing the US and China on Patent Disclosure," Managing Intellectual Property, Mar. 1, 2013, http://www.managingip.com/Article/3181535/Comparing-the-US-and-China-on-patent-disclosure.html

[8] Ariad Pharmaceuticals et al. v. Eli Lilly and Company, 598 F.3d 1336 (Fed. Cir. 2010) (en banc).

[9] Kate Atkinson, Life After Life (New York: Reagan Arthur Books, 2013).

[10] The Guidelines for Examination in the European Patent Office, H-V, 3.2.1, http://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_v_3_2_1.htm

[11] EPO Case Number T 1408/04, http://www.epo.org/law-practice/case-law-appeals/recent/t041408eu1.html

[12] Thorsten Bausch, "Individualization – Where does it end?," May 18, 2012, http://kluwerpatentblog.com/2012/05/18/individualization-%e2%80%93-where-does-it-end-2/

[13] Case Law of the Boards of Appeal, 1.2. Intermediate generalisation - non-disclosed combinations, http://www.epo.org/law-practice/legal-texts/html/caselaw/2013/e/clr_ii_e_1_2.htm

[14] Zhiyun Feng, "Eye on Amendments That Go beyond Original Disclosure," August 13, 2009, http://www.lungtin.com/content/2013/08-09/135630929.html

[15] Dr. Paul Warden-Hutton and Dr. Elizabeth E. Houlihan, "Calling all Australian patent applicants: amendments to a specification to now conform to Article 123(2) of the European Patent Convention," July 22, 2013, http://www.lexology.com/library/detail.aspx?g=79ea62e3-d040-4c5d-91ae-83a98b25a88e

[16] The Guidelines for Examination in the European Patent Office, H-V, 3.2.1, http://www.epo.org/law-practice/legal-texts/html/guidelines/e/h_v_3_2_1.htm

A Framework For Drafting Global Patent Applications

Published in Law360

By Stephen L. Keefe, Esq.

Beginning in law school, practitioners come under an incessant barrage of advice and warnings to always think globally when drafting patent applications. Conventional wisdom commands the patent attorney to draft his or her patent applications with an eye toward worldwide enforcement, though nailing down just what must go into such a globally oriented patent application quickly turns into a daunting task.

To try to tackle the difficulty of worldwide patent prosecution, some multinational corporations develop laundry lists of bullet-point guidance, cobbled from competing national requirements and lessons learned. To try to guide their clients, some lawyers have developed tiered lists to prioritize patenting on a nation-by-nation basis, replete with footnotes on economic data and other market-based criteria. Naturally, a client's business goals rightfully rank prominently in any attempt to streamline international patent prosecution. So, in attempting to formulate his or her global approach to patent drafting, the practitioner faces a tsunami of information and well-meaning advice.

But deciding on a solid global approach to patent drafting inherently depends on selecting, at least generally, a manageable group of target national patent laws to consider and to monitor. The safest but least realistic answer amounts to: keep in mind every single Patent Cooperation Treaty (PCT) nation in the world ... and don't forget Taiwan.[1] But such a vague, sweeping answer offers little concrete help to the attorney attempting to maximize patent portfolio value by drafting truly globally oriented applications, while also failing to meaningfully address the economic and legal realities clients currently face in the global economy.

This article strives to develop a framework for deciding on a manageable list of nations to focus on in drafting globally focused patent applications. This framework will yield many of the usual suspects for patent jurisprudence worldwide, while also proposing to focus less on some large nations. Of course, business goals and strategy always take precedence in any framework for patent drafting strategies, and will trump any suggestions made here.

A Sliding Scale Between Economic Strength and Patent Strength

In his world history work, Civilization: The West and the Rest, the somewhat controversial historian Niall Ferguson listed consumption and property as two of the chief dynamics behind the meteoric rise of Western civilization over the past five hundred years.[2] Into consumption Ferguson lumped concepts such as free trade and economic strength, while into property he incorporated legal traditions such as strong patent laws. Concentrating on various aspects of these two areas, economic strength and patent strength, seems to make sense for developing a framework for drafting globally oriented patents.

The task of evaluating economic strength suffers from no shortage of metrics and data. Sources such as the CIA World Factbook give detailed economic indicators for about every nation, from gross domestic product to urban population.[3] Without having to put a litany of economic statistics on parade, most practitioners and clients probably agree on a general hierarchy of countries having the established or promising markets on which patent value thrives.

But patent system strength arguably ranks just as highly as economic strength, at least when it comes to considering nations for patent drafting.

Without the developed legal traditions, strong patent enforcement, and robust numbers of patents-in-force that mark nations with strong patent regimes, a patent's value may not exceed the value of the paper on which it's printed. Evaluating patent strength requires a realistic inquiry into a given nation's patent track record, whether reflected in World Intellectual Property Organization (WIPO) statistics or the U.S. Trade Representative's Watch List. Political developments can also indicate the trajectory of a nation's patent regime strength, though with patent terms in the decades the patent professional must take a long view as opposed to reading too much into this week's headlines.

Putting market strength and patent strength on a sliding scale (similar to the one the Federal Circuit does not allow for inequitable conduct in the U.S.[4]), and using strength in one area to prop up weakness in the other area, the two criteria can form a framework to help optimize globally oriented patent drafting. Because clients often tend toward bigger economies to maximize patent value, starting with large nations and working down toward smaller ones probably makes sense to determine a good set of patent laws to keep in mind during drafting.

The Easy Ones

The first proposed batch of large and medium-sized nations offering plenty of economic strength and robust patent system strength likely causes little surprise: the United States (starting with the U.S. Constitution), Japan (since the Meiji era), Germany (at least since Bismarck), the United Kingdom (the mother country of the U.S.), France (middle of Europe), South Korea (for decades a patent leader), Canada (like the U.S., a U.K. spinoff), and Australia (another U.K. spinoff). These nations have strong economies, while also possessing solid traditions in patent law, whether formally memorialized as in the U.S. Constitution or acquired deliberately as during Japan's Meiji era. These nations thus possess all of the criteria for patent value, and the globally  oriented patent application should bend toward the requirements of their patent laws.

Must Include China ... Because of Economic Strength, If Not for Patent Strength

China more or less headlines the U.S. Trade Representative's Watch List for intellectual property, and not in a good way.[5] Even the most upbeat observers of the Middle Kingdom must concede that serious unevenness permeates throughout China's patent regime, particularly in the treatment of foreigners. Most probably agree that the strength of China's patent regime teeters between barely satisfactory and poor, depending on a given commentator's agenda on globalization. But for the patent attorney preparing applications, all that perceived weakness ultimately does not matter.

China's present economic strength and future potential make up for the present weaknesses in its patent regime. Patent practitioners simply must keep developing Chinese patent law in mind when preparing patent applications.

Keeping it Manageable

At this point (optimistically lumping Europe's law together), patent prosecutors have seven bodies of patent law to watch: American, Japanese, European, Chinese, South Korean, Canadian and Australian. Though similarities between the various systems alleviate some of the difficulty, they still amount to a lot of cats to herd into one patent application. To those who can make time to closely track even more patent laws around the world, your colleagues can tip their hats. But for mere mortals, checking in on seven bodies of law in addition to remaining proficient with the Patent Cooperation Treaty should be enough to generally produce solid patent disclosures for global patent prosecution.

Many large nations did not make the cut proposed above. Brazil, Russia* and India of course have large economies. But they don't possess quite the magnitude of economic power that propels China into serious consideration in view of patent system flaws. Patent law has largely Western roots, and Western-style law does indeed know some boundaries for attaining more than superficial acceptance in Brazil, Russia* and India. (*In view of recent events, Russia has become untethered from the global patent system and is no longer a reliable filing choice.) For patent strength, WIPO numbers paint a somewhat dismal picture of the size and strength of these large nations' patent systems.[6] Also, the U.S. Trade Representative regularly dings these players for disrespecting aspects of intellectual property. Slightly smaller countries such as Mexico suffer from similar issues.

This picture may change moving forward. Prime Minister Narendra Modi, now working the levers of national power in India for the foreseeable future, promoted patenting when he helmed the Indian state of Gujarat.[7] Brazilian President Dilma Rousseff has at least apparently entertained proposals by Brazilian and American business interests to strengthen the commitment of her nation to the global patent system.[8] Although Brazil remains on the U.S. Trade Representative's "Watch List" for intellectual property, that office has also indicated that Brazil exhibits "a generally positive trajectory" regarding patenting trends.[9] Likely moving in an opposite direction, Vladimir Putin's general pushback against Western influence in Eurasia may further weaken Russia's patent system in the coming years (recent events have shown this prediction to be true as noted above).

Notwithstanding general trends, nations like Brazil and India of course remain perfectly acceptable patent laws to consider in depth when it makes sense in light of a given client's business strategy. But practitioners probably do not need to regularly draft applications with these other national patent laws in mind, unless specific client business strategies require it.

Practitioners can probably similarly omit relatively small countries having strong patent systems from their general patent drafting practices. Small non-European nations like Israel and Singapore, for example, possess solid patent systems, but probably lack the economic clout to warrant considering their patent laws in standard drafting practices. Of course, business strategies of certain clients may warrant considering the patent laws of select target small countries.

The Final Cut and Conclusion

Based on the above proposed framework, focusing on American, Japanese, European, Chinese, South Korean, Canadian and Australian patent law, in tandem with the PCT, should produce reasonably global patent applications while managing demands on patent practitioners. Although this suggestion provides merely a starting point, it at least points the patent prosecutor toward specific goals in developing global patent portfolios.

The next and more challenging step comprises digging into the competing substantive requirements of the seven bodies of patent law identified above. Scratching just at the tip of the iceberg of considerations for drafting a globally oriented application, recent American patent law seems to urge applicants toward including numerous embodiments of an invention to broaden claim scope.[10] Similarly in China, including multiple embodiments may also help applicants avoid rejection under Article 26.4 of Chinese Patent Law, which in some ways serves as a gatekeeper similar to 35 U.S.C. § 112(a).[11]

European patent examiners have gained a reputation for requiring literal support in the specification for claim amendments, though recent decisions by the Boards of Appeal of the European Patent Office may provide some relief from this strict interpretation to applicants in the near future.[12] Even with recent changes to the Australian patent system poised to apparently make it more similar to U.S. patent law overall, applications will still probably come under more scrutiny in that former corner of the British Empire for restriction requirements (unity of invention objections in Australia) as compared to U.S. examination.[13]

To the north of the United States, the Supreme Court of Canada recently invalidated a patent because a drafter attempted to "game the system" regarding adequately identifying an invention and how that invention worked, thereby failing to respect the "patent bargain" alluded to in Canadian case law.[14] Although the term "advantageous effect" may sound like patent profanity to U.S. practitioners, Japanese patent examiners seem to give arguments describing such effects weight so long as one of ordinary skill in the art can derive an "advantageous effect" from the patent application.[15] The concept of "advantageous effect" also seems to play an important role in determining inventive step to overcome obviousness in Korean patent law.[16]

American, Japanese, European, Chinese, South Korean, Canadian and Australian patent attorneys constantly provide users of the global patent system with updates on major developments in their respective patent laws through a myriad of media outlets. Taking a little time to listen to experts from at least this group of nations can go a long way toward providing patent drafters with the legal authority to lean on in representing his or her patent applications as truly globally oriented. And in today's globalized markets, a truly globally oriented patent portfolio makes for a more valuable patent portfolio.

This article is for general information purposes and is not intended to be and should not be taken as legal advice.

[1] "Taiwan: Intellectual Property Rights Arrangements - International Aspects," The Intellectual Property Office, http://www.ipo.gov.uk/policy-notices-taiwaninter.htm

[2] Niall Ferguson, Civilization: The West and the Rest (New York: Penguin Books, 2011).

[3] Central Intelligence Agency, The World Factbook (2013-2014), https://www.cia.gov/library/publications/the-world-factbook/

[4] Therasense, Inc. v. Becton, Dickinson and Co., 649 F.3d 1276, 1290 (Fed. Cir. 2011) (en banc).

[5] Office of the United States Trade Representative, 2014 Special 301 Report, http://www.ustr.gov/sites/default/files/USTR%202014%20Special%20301%20Report%20to%20Congress%20FINAL.pdf

[6] World Intellectual Property Organization, 2013 World Intellectual Property Indicators, Tables P1 and P2, http://www.wipo.int/export/sites/www/freepublications/en/intproperty/941/wipo_pub_941_2013.pdf

[7] "Narendra Modi Announces Patent Unit for SMEs in Gujarat," The Economic Times, Jan. 12, 2013, http://articles.economictimes.indiatimes.com/2013-01-12/news/36296251_1_gujarat-sme-sector-vibrant-gujarat-summit-growth-engine

[8] "Donohue Welcomes Secretary Clinton and Brazilian President Dilma Rousseff," U.S. Chamber of Commerce, Apr. 8, 2012, https://www.uschamber.com/press-release/donohue-welcomes-secretary-clinton-and-brazilian-president-dilma-rousseff

[9] Office of the United States Trade Representative, 2014 Special 301 Report, page 48, http://www.ustr.gov/sites/default/files/USTR%202014%20Special%20301%20Report%20to%20Congress%20FINAL.pdf

[10] Ariad Pharmaceuticals et al. v. Eli Lilly and Company, 598 F.3d 1336 (Fed. Cir. 2010) (en banc).

[11] Chunhui Li, "Comparing the US and China on Patent Disclosure," Managing Intellectual Property, Mar. 1, 2013, http://www.managingip.com/Article/3181535/Comparing-the-US-and-China-on-patent-disclosure.html

[12] EPO Case Numbers T 667/08 and T 2619/11.

[13] Thor North, "5 Things ... US Attorneys Should Know About the Australian Patent System," AIPLA Newsstand, Feb. 8, 2013, available at: http://www.freehillspatents.com/resource?id=138

[14] Teva Canada Ltd. v. Pfizer Canada Inc., 2012 SCC 60, [2012] 3 SCR 625.

[15] "How to Prepare Descriptions for Patent Applications (to be Applied after January 1, 2009)," Japan Patent Office, http://www.jpo.go.jp/cgi/linke.cgi?url=/tetuzuki_e/t_tokkyo_e/howto_patentappli_e.htm?url=/tetuzuki_e/t_tokkyo_e/howto_patentappli_e.htm

[16] Amanda Carmany-Rampey, Tatsuo Takeshige, Hyung-Geun Ji, and Sirimas Rianrungrueng, "Non Obviousness and Inventive Step Requirements in the United States, Europe, Japan, Korea, and Thailand (for Combination Inventions)," University of Washington School of Law, Center for Advanced Study & Research on Intellectual Property Newsletter - Summer 2008, Volume 15, Issue 2, http://www.law.washington.edu/Casrip/Newsletter/default.aspx?year=2008&article=newsv15i2InvReq