Differences between US and European patents

Currently, for ICT-related inventions the two most important areas to obtain patent protection are probably the United States and West-European countries. Twenty European countries are currently member to the European Patent Convention, and it is possible to obtain patent protection in those countries through a single procedure before the European Patent Office.

While quite a few aspects of patent law have been harmonized internationally (not in the least due to treaties like the Patent Cooperation Treaty or TRIPS), there still are many important differences between the two systems. This article discusses several of them.

First to file versus first to invent

When two people apply for a patent on the same invention, the first person to have filed his application will get the patent (assuming the invention is patentable, of course). This holds even if the second person did in fact come up with the invention first. The only thing that counts is the filing date.

In the USA, a slightly different approach was used until March 2013. In case of two applications for the same invention (a so-called interference), a determination is made who invented it first. This usually involves examining laboratory logbooks, establishing dates for prototypes, and so on. If the person who filed later is found to have invented earlier, he may be awarded the patent.

In March 2013 the Leahy-Smith America Invents Act came into effect. This law switched the US to a first-to-file system.

Grace period

If the invention has become publicly available in any way before the patent application was filed, the application will be rejected (Article 54 EPC). "Publicly available" includes selling the invention, giving a lecture about it, showing it to an investor without a non-disclosure agreement (NDA), publishing it in a magazine, and so on. It does not make a difference whether the person making it publicly available is the inventor, one of the inventors, or an independent third party.

The USA has a one-year grace period (35 US Code section 102). This means that the inventor can freely publish his invention without losing patent rights. However, this only applies for the USA. If an inventor does so, he automatically loses all potential patent rights in Europe (as well as many other countries in the world).

With the Leahy-Smith America Invents Act, this grace period effectively is limited to publications by the inventor himself or someone who directly obtained the information from the inventor. A third-party publication would destroy the novelty of the invention. (This is debated though; a court decision may be necessary to settle the point.)

Best mode requirement

US patent law requires the inventor to include the best way to practice the invention in the patent application (35 US Code section 112). This way, the inventor cannot get a patent and still keep some essential or advantageous aspect a secret. Until the Leahy-Smith America Invents Act, failing to include the best mode could invalidate the patent. With this Act, there is no sanction anymore although formally it must still be included.

In contrast, European patent law has no such requirement. At least one way of practicing the invention must be included in the application (Article 83 EPC), but there is nothing that states this way must be the best way, or even a good way.

Publication of patent applications

Until 2001, US patents were only published after grant. This has been changed, and now in the US patent applications are published 18 months after their filing date, unless they have been withdrawn or they are filed with a non-publication request, stating that the application is US only.

This is very similar (except for the request) to the European situation, where all patent applications are published 18 months after their filing date, unless they have been withdrawn. If the novelty search has been completed by that time, the search report is included with the publication.

The publication of a patent application is not an indication of the patentability of the invention in any way. It only means that the application is 18 months old. In the past, people used to the US system of publishing only granted patents could incorrectly assume that anything published by the EPO was a granted patent.

You can tell the difference between an application and a granted patent in two ways. First, the number in the top-right corner has an "A" when the publication is an application, and a "B" when it is a patent. Second, granted European patents do not have an abstract on the front cover.

Rights conferred by a granted patent

A US patent is a property right which is enforceable in the whole territory of the USA. It allows the patent holder to prevent anyone from making, using or selling in the USA the patented invention. This is because the US patent law (35 US Code) is a federal statute.

In contrast, the European Patent Convention is a treaty signed by twenty-seven European countries, namely

Austria, Belgium, Bulgaria, Switzerland, Cyprus, the Czech Republic, Germany, Denmark, Estonia, Spain, Finland, France, Greece, Hungary, Ireland, Italy, Liechtenstein, Luxembourg, Monaco, the Netherlands, Portugal, Romania, Slovenia, Slovakia, Sweden, Turkey and the United Kingdom. Patents under the EPC are granted by the European Patent Office (EPO) in Munich.

A granted European patent under the EPC confers to its owner the same right as a national patent in those EPC countries he elected in the application. So, essentially, a European patent changes into a "bundle" of national patents. This means that, once granted, a European patent can only be annulled by separate proceedings in each elected country. However, during the first nine months after the grant of the patent, anyone can start an opposition procedure at the EPO to annul the patent in all these countries at once.

Opposition after grant

Within nine months after the grant of a European patent, anyone can file an opposition with the EPO, stating why this patent should not have been granted (of course with arguments and evidence). The patent holder and the opponent can then debate with each other. Finally, the EPO will take a decision based on facts and arguments presented by both sides.

Usually, after the parties presented their case to the EPO (by exchanging numerous letters with each other), the patent holder and the opponent present their case during Oral Proceedings at the EPO in Munich. After these proceedings, usually a final decision is made by the EPO, although sometimes the proceedings are then continued again in writing. Both parties can appeal the decision, which once again results in an exchange of letters followed by Oral Proceedings.

While the USA has a reexamination procedure, it does not work the same as an opposition. In a reexamination, anyone can present reasons and evidence to the USPTO to challenge the validity of a granted patent. However, it is then the patent holder who engages in a discussion with the USPTO examiner to establish the validity of the reasons. The challenger is not a part of these proceedings.

The Leahy-Smith America Invents Act introduced an "inter partes" examination, in which the challenger himself participates. It is unclear how exactly this examination will play out.

Inventive step

The two most important requirements in European patent law are that, to be patentable, an invention must be novel and involve an inventive step (Article 52 EPC). This is comparable to the US requirement that the invention must be novel and must not be obvious (35 US Code sections 102 and 103). In fact, the Patent Cooperation Treaty, which streamlines the filing process in its member country, also requires that an invention be novel and involve an inventive step, but states that being non-obvious is sufficient to involve an inventive step.

However, the EPO has a more strict interpretation of this term. A European patent application involves an inventive step if it solves a technical problem in a non-obvious way. Note that this introduces two extra requirements: it must solve a problem (no problem solved means no inventive step), and that problem must be technical (solving economic problems means no inventive step).

To determine the technical problem, one operates as follows. First, a determination is made whether the invention is novel. If it is, then the prior art document that shares the most features with the invention (or most closely resembles the invention in some other way) is chosen as the closest prior art. The differences are then compared to determine a problem that is solved by the invention.

For example, if the invention relates to a bike with a reflector, and the closest prior art is a bike with no lights at all, the technical problem is to enhance the visibility of the driver during dark weather conditions. This problem is solved by adding a reflector to the bike, since the reflector allows other road participants to see the driver on his bike in the dark due to the light reflecting on it.

The next question is whether the solution would be obvious when solving the technical problem. In the above example, the common solution for cars, airplanes and other objects like signal towers would be to add a headlight to signal the presence of the object. Following the common approach, a skilled person would add a headlight to the bike. This would make the solution non-obvious, so that the invention involves an inventive step.

It should perhaps be pointed out that "skilled person" and "obvious" do not mean the same in patent law as they do in real life.

Of particular importance is that the technical problem is not determined with hindsight. Often, when confronted with an invention, the immediate reaction is that it is obvious, because the solution appears so natural. This would not do justice to the effort needed to arrive at the invention. If everyone was satisfied with the suboptimal solution (e.g. a bike with a headlight, which requires a dynamo that must be charged by human effort), then the insight that a different approach might be better, could very well constitute an invention.

Two-part claims

European patents and applications typically (virtually always) contain so-called two-part claims. That is, a claim lists some features, then contains the phrase "characterized in that" or "with an improvement comprising", and then one or more further features. Those latter features are what constitutes the invention (and so are often called the characterizing features). The former features are found in the prior art.

If an application is filed with one-part claims, the first thing that will happen is that the Examiner identifies the closest prior art (the document that shares the most features with the invention, or most closely resembles the invention in some other way) and requests that the claim be delimited therefrom.

In contrast, US patent applications (and patents) will almost always have one-part claims. If you see a two-part claim in a US patent, chances are the patent is owned by a European firm. In the US, if you use two-part claims (also called "Jepson claims", after the first patent attorney to use them), anything before the characterizing portion is regarded to be prior art by definition. If the applicant by accident put a novel feature in the precharacterizing portion, it's regarded as prior art and may damage the patentability.

In Europe, if the applicant puts a feature in the precharacterizing portion of a claim which does not, in fact, occur in the closest prior art, he is simply asked to move that feature to the characterizing portion. This happens frequently, as often the applicant starts out with a document he found himself as closest prior art, but during the examination another document is regarded as closer prior art, and then the claim needs to be adjusted. However, this does not affect the patentability directly.