International:

Making Your Work Count Globally

By Thomas A. Miller - March 20, 2014

Most patent owners would agree that more protection is better than less protection when it comes to their invention.

For example, owning related patents in several countries is generally better than owning a single patent in a single country. The extent to which the additional protection benefits the patent owner depends upon a number of factors such as locations of manufacture and use, locations of markets, routes of importation, and so on. In many cases, it can therefore be seen that there is at least a moderate benefit to pursuing protection in multiple countries or regions.

However, due to time and budgetary constraints, it is not always possible to draft an individualized patent application for each country of interest. Typically, a patent application that was or will be filed in a first country, e.g., the U.S., is later nationalized essentially unchanged in other countries of interest (either by filing directly in a foreign patent office with one year, or perhaps indirectly by way of the Patent Cooperation Treaty (PCT)). The U.S., Europe and Japan, for example, have made significant strides toward uniform practices, but there remain significant differences even between these countries and others that can complicate the effort to draft a one-size-fits-all application.

For example, while the U.S. requires an enabling disclosure, the U.S. and Europe take differing views with respect to written description support. Europe in particular often requires an almost verbatim basis for the claims in the specification and all priority applications. As such, if an application is to provide priority to one or more applications in one or more other countries, it is generally a good idea for your US attorney to “globalize” the application as much as possible, both in the specification and the claims. This will lead to fewer modifications (and few or no substantive modifications) when foreign protection is sought.

For example, the background of the invention section should be minimal for purposes of avoiding AAPA (Applicant’s Admitted Prior Art) in the U.S., and the application should include a brief description of the drawings, detailed description of embodiments, claims and an abstract as needed or permissible in all countries. In addition, for U.S. purposes the application should also meet the best mode and §112 requirements at the date of filing. Any needed external references or information should be bodily incorporated as well, rather than incorporated by reference, since the incorporation by reference practice is not accepted in certain regions/countries, e.g., Europe and Japan.

If drafting a U.S. priority application, the first several claims may be drafted to comply with European requirements, although they should not be drafted in the European two-part format. While the leading claims may include means-plus-function language and multiple dependencies, any additional claims can be more tailored for U.S. practice in this example, i.e., employing several independent claims and little or no reliance on functional language. Since reference numerals are not advisable for claims in the U.S., it may be desirable to pare the U.S. claims down from a “global” set that includes the reference numerals.

Finally, while all of the foregoing is beneficial in terms of stream-lining the foreign filing process and saving costs in the process, please understand that we by necessity, and recommendation, work with attorneys in each foreign jurisdiction to file a given application. The “globalized” application we prepare as US attorneys, and transmit to foreign attorneys for filing in their countries, will go a long way toward meeting the requirements of that country, but ultimately, we rely on the counsel of local attorneys to best massage the claims and otherwise amend the application to meet their respective requirements.

While this approach is not perfect in every case, it is perfectly suited to cases where budget or time constraints would otherwise cause the patentee to forego foreign protection. The professionals at Miller, Matthias & Hull LLP continuously strive to protect our clients’ intellectual property to the fullest extent possible, while being cost-effective and budget conscious at the same time. For more information on how we can help with your IP needs, please contact us at (312)977-9902.