How to better adapt your patent application document to European patent law and practice
date: 2020-09-02 Danhong Zhang Read by:

    With growth of demand for Chinese products more and more Chinese enterprises are seeking patent protection in Europe. The majority of Chinese enterprises choose to seek protection via the European route, in which a single procedure confers protection in all the designated EPC contracting states. Applicants have two choices of filing a European patent application, namely, filing a direct European application or a Euro-PCT application. Most Chinese enterprises choose to file European patent applications by claiming the priority of an earlier Chinese patent or patent application, or file a PCT application and then file a European regional phase entry request for the PCT application.

    Under both European routes applicants have a number of opportunities to amend the application document when or after applying. Since there are a number of differences between Chinese and European patent law and practice, it’s usually advisable to take advantage of these amendment opportunities to better adapt an application to fit the European system before the search at the EPO is carried out. We advise our clients to use these amendment opportunities to correct any formal deficiencies (term inconsistency, typing errors etc.) and further improve the clarity of the claims. This method is much more time and cost efficient as it can reduce the number of objections/rejections raised against an application.

    When applying for an EU patent there are a number of adjustments you should consider making to increase an application’s chance of success, broadly speaking they fall into three categories: meeting formal requirements, remedying formal deficiencies and reducing additional fees and improving the efficiency of the search.

(1) Meeting formal requirements

(1.1) Features of independent claims not known from the prior art should be arranged after the clause “characterized by/characterized in that”, and we advise that applicants remove this phrase in dependent claims.

(1.2) In accordance with European Patent Law (EPC) each section in the drawings should be identified by a reference number. As such you should refer specifically to the relevant reference numbers in the description and the claims.

(1.3) We generally advise statements that could be misinterpreted be removed from the description, since they may render the extent of the invention uncertain. Usually the Examiner will ask applicants to remove such statements during prosecution.

(2) Remedying formal deficiencies and perfecting the application document

(2.1) It is not necessary to explicitly admit that a feature is prior art, so we advise clients to remove any such references.

(2.2) It’s best to be consistent with the terminology used in an application to avoid misinterpretation and/or rejection for lack of antecedent basis. Therefore, we advise clients to check for inconsistent use of terminology and revise accordingly.

(2.3) Since the EPC allows for a claim to be dependent upon a number of multi-dependent claims. As this is not allowed in Chinese Patent Law we suggest clients to check whether the description supports adopting a broader dependency for each dependent claim and to amend accordingly.

(2.4) Since computer program product claims and computer readable medium/data carrier claims are accepted by the EPO, we generally suggest that our clients consider adding such claims if appropriate.

(3) Reducing additional fees and ensuring a more efficient and pertinent search

(3.1) In order to avoid excess claim fees we suggest applicants using the following strategies:

Using multiple dependencies,

Combining dependent claims reciting alternatives using the connective “OR”,

Combining dependent claims and/or cancelling less significant claims..

(3.2) If multiple inventions are likely to present, e.g., when there are multiple independent claims which are not so linked as to form a single general inventive concept, a partial supplementary search report to the first invention may be expected. Since in most cases the EPO automatically searches for the first invention, we suggest you reorder your claims prior to search to make sure that the most important invention is mentioned first.

(3.3) If search results for the earlier Chinese patent or patent application, or for the PCT application are available, we suggest that you evaluate the patentability of the claims based on the references cited in the search result and amend the claims accordingly if the claims are obviously lack of novelty.

    It is important to note that all amendments made above must have basis in the original application (Article 123(2) EPC). These amendments should be made prior to an EPO search as the amendments after the search need to be restricted to the subject-matter searched.