Author: Marco Conti

This article first appeared in Intellectual Property Focus Europe 2014 published by Managing Intellectual Property

Patent law is territorial in scope. However, it is commonly accepted that the extent of protection conferred by a granted patent is determined by the claims, with the aim of combining a fair protection for the patent proprietor with a reasonable degree of legal certainty for the third parties.
For each territory, the relevant patent office has the right and the burden to grant patents, and thus to achieve the balance between protection for the inventor and the rights of third parties.

In the examination proceedings of a patent office, there are many factors which have a direct impact on the actual outcome of balancing patent rights. Among these factors are the extent of prior art searches, the approach adopted for assessing inventive step and the criterion for admitting the amendments submitted by the applicant (for example, in response to the objections raised by the examiners).
This is true for all patent offices that carry out a substantive patent examination based on a prior art search. However, the standards for these factors and the relevant criteria may vary significantly among the patent offices, in particular major patent offices like the EPO, the USPTO (United States Patent and Trademark Office), the CPO (China Patent Office), the JPO (Japan Patent Office), and the KIPO (Korean Intellectual Property Office).
Each one of these factors may be seen as favouring either the inventor/applicant, or the third parties, depending on the practice of the particular patent office, its procedural rules, and its patent and case law.

As regards the prior art search, we may consider the likelihood of additional searches carried out by the examiner in reaction to amendments submitted by the applicant. A low likelihood would be in favour of the applicant; a high likelihood would be in favour to the third parties.
When considering the skilled person referred to for assessing inventive step, a high level of motivation required for combining prior art documents and a low level of creativity in the modification of the known solutions would be in favour of the applicant. Conversely, a low level of motivation required and high level of creativity would be in favour of the third parties.

In coming to the decision on the admittance of amendments submitted by the applicant, a loose criterion for evaluating the addition of new subject matter would be in favour of the applicant, whereas a strict criterion would be in favour of the third parties.
Every patent office reaches its own strategy in dealing with the different factors, and faces the common problem of balancing protection for the inventor and the rights of the third parties, which tends to differ to other patent offices.

Patent office practices: balancing rights
In the light of the above, we can analyse the strategies used by some of the major patent offices to secure a balance between protection of the inventor and rights of third parties.

It appears that the EPO and the USPTO adopt opposing strategies, whereas the approach of the other major patent offices are closer to either one of the EPO or the USPTO, or between the two.

Let us consider the likelihood of additional searches carried out by the examiner in reaction to amendments submitted by the applicant. Such additional searches are infrequent in prosecution before the EPO, whereas they are standard practice before the USPTO. In this respect, it can be observed that the European examiner, according to the EPO Guidelines, should cover the whole subject matter of the application (claims and description) within the search carried out for the European Extended Search Report, and could raise a clarity (inconsistency of third specie) objection if part of the subject matter of the description is not covered by the claims. Therefore, it could be assumed, at least in principle, that the European examiner does not actually need to carry out further searches in addition to the first one, only in exceptional situations. In this way, it could be argued that the EPO favours the applicant more than the USPTO.
Let us consider the assessment of inventive step, with particular regard to the role of the skilled person. In EPO practice, the amount of motivation required to combine documents is traditionally higher than in USPTO practice. On the one hand, the could-would approach, teaching-away and hindsight arguments in favour of the presence of inventive step appear to be stronger before the EPO than before the USPTO, and on the other hand, lead-product analysis is a strong argument against motivation before the USPTO. The level of creativity of the skilled person is generally higher in USPTO practice than in EPO practice (especially after the KSR v Teleflex decision). Further, it is observed that the typically European problem and solution approach, still codified in the Guidelines and embedded in rule 42 of the European Patent Convention (although European examiners have seemed less prone to stick to it) provides a strong tool for arguing the presence of inventive step. Therefore, with respect to inventive step assessment, it could be argued that said approach of the EPO favours the applicant more than one of the the USPTO does.
Other factors, besides the three mentioned above, tend to bias European patent systems (and national courts for assessing patent infringement and validity) in favour of the patent applicant or proprietor. This is apparent in: the absence of a requirement corresponding to the American duty of candor; the fact that the doctrine of equivalents does generally apply also to the features introduced in the claims as amendments during prosecution; and, the fact that, normally, the arguments put forward for inventive step during examination before the EPO do not provide an estoppel for arguments in litigation before national courts.

Another aspect to consider is the freedom accorded to the applicant in amending claims. Contrary to the other factors discussed above, it is quite evident that the approach of the EPO is much more strict than that of the USPTO. The criterion adopted by the EPO for evaluating the addition of new subject matter is the so-called disclosure test, which is more severe than former criteria, such as the novelty test. For example, the disclosure test tends to prevent any (intermediate) generalisation of any feature and inhibits a tuning of the claim. Such a strict requirement for justifying the amendments also provides a synergic effect to the requirements of clarity and inventive step, with possible dramatic consequences for the applicant.

Therefore, with respect to the approach to allowing amendments, the EPO is certainly more in favour to third parties than the USPTO.
The reasons adduced by the EPO for the adoption of the strict criterion for the evaluation of adding new subject matter are focused on the need to secure the rights of the third parties, assuming that a looser criterion would unacceptably affect said rights.

In this respect, an initial question arises: are we sure that a loosening of the criterion for evaluating the addition of new subject matter would necessarily affect the rights of the third parties? A larger freedom to amend the claims and to facilitate their fine-tuning could be used by the examiners to force the applicant to add limitations to the claims, which currently cannot be added without infringing article 123(2) EPC (which rules the addition of new subject matter). In such a way, the EPO could, for example, achieve a more efficient enforcement of the clarity provisions (the patent applications that get to the Board of Appeal of the EPO from the examination proceedings very often reveal clarity problems; this happens even though the European examiners are very familiar with their guidelines and generally have a high level of preparation).

It appears to the author that the harshness in the criterion for evaluating the addition of new subject matter adopted by the EPO makes its equilibrium configuration as a whole quite rigid. For example, the EPO may desire to make the assessment of inventive step more severe (the EPO’s raising the bar programme may be recalled here) or to incentivize the examiners to carry out further searches. However, it may prove difficult to take such measures; an approach to searches and inventive step, which is generally favourable for the applicant, actually serves to compensate the harshness in the criterion for evaluating the addition of new subject matter.

What is the approach to the evaluation of new subject matter addition adopted by other major patent offices? Korea, Canada and Australia appear to be closer to the USPTO than to the EPO; Japan may be located somewhere in between. The CPO has traditionally adopted a European‑ style approach; however, recent Chinese case law seems to take a step towards a loosening of said criterion.
Therefore, in sticking to an approach for evaluating the addition of new subject matter that seems to get stricter and stricter, the EPO appears to be putting itself in a somewhat isolated position, when compared to other major patent offices around the world.

Need for harmonisation
The question of substantive and legal harmonisation of patent systems around the world is a familiar issue and widely discussed. Some steps in this direction have already been taken, such as the institution of the Patent Prosecution Highway and the Cooperative Patent Classification programme.
The US, with the implementation of the America Invents Act, took a significant step towards becoming more in harmony with other patent offices. However, the EPO has not done the same with the issue of grace period for patent applications.
In light of the above, one may wonder whether it is finally time for the EPO to take a step towards harmonisation. This could be done, advantageously in the opinion of the author, by amending the criterion for assessing the addition of new subject matter, to make it more flexible.

Many patent practitioners and applicants outside Europe bemoan the approach of the EPO, with regard to the freedom awarded to applicants in demonstrate that some important patent filers, especially in Japan, have recently started to take the national route (filing patent applications directly in Germany, UIC, France, Italy, the Netherlands, and so on) instead of using the EPO, to protect their innovai:10ns in Europe. This may seem strange, especially if we think about the unitary patent and Unitary Patent Court projects, out it is a trend to be carefully monitored.

Maintaining the equilibrium
Every patent office seeks to combine fair protection for the inventor with the need to secure the right of third parties. For this purpose, an equilibrium configuration must be reached among various factors controlled by the office affecting the text of the granted patent claims. The equilibrium is delicate: a too strict approach towards one factor may affect the others, with a possible unexpected negative impact on the applicants and on patent office itself.