The legal requirements for drafting/writing patents are different for EPO as compared to the USPTO. While drafting a patent application for the EPO, if certain things are paid attention to, the same optimizes the prosecution in EU as well as globally. Doing the same will also be cost-effective.
While drafting the claim one needs to bear in mind that the all technical aspects of the invention are covered in the same. There is no room for designing around and in case if the validity is challenged in a court of law, or is opposed, the validity should be upheld. One of the crucial distinction of the claim drafting in the EPO with respect to the other jurisdictions Is the fact that only a single independent claims per category are allowed. The rule 43(2) and 62 (a) of the European Patent Convention iterate the same. However, independent claims that belong to separate categories as that of the apparatus and processes are allowed in EPO in one application. One should bear In mind that nonetheless, the concept of the unity of invention is applicable. While drafting the claims, another key aspect is to ensure that the first independent claim is broad enough to cover the features of the invention and the rest of the claims, as this will be the subject to a search.
While drafting the claims for European or German practice, one essential aspect is to cover all the instances of the invention. For instance, solar cells, a panel including solar cells, etc. A distinguishing feature, with respect to Claim drafting with the EPO as against the USPTO, is that there is no doctrine of equivalents, therefore the all the features of the invention should be broadly mentioned in the independent claim. Another key aspect is keeping the claims to a total of 15 since the EPO fees are high. Keeping the claims to a limited number will be cost effective. It is of utmost importance that the claims to be submitted to the EPO are in a two-part format. Rule 43 (1) of the EPC states the same. In order to do so, start with presumably the closest prior art are written in the first part and the distinguishing features in the characterizing portion.
As far as claim interpretation is concerned, it is to be noted that the claims are interpreted quite literally however when in need of clarification the description is referred to. The means plus function claim is not limiting when it comes to the EPO and encompasses anything that can carry out the specific function. Thus, including such language, while drafting the claims may be helpful, while drafting for the EPO.
It is good practice to identify the prior art in the background. However, there is no duty to disclose as that of the USPTO and the Examiner suo moto will identify the closest prior art. Therefore the background can be kept brief. This may significantly lower the translation costs while getting the granted European patent validated in the various countries of the European Union. Therefore, an unnecessary recounting of the prior art can be avoided. The EPO follows a problem-solution approach while drafting the patents. Therefore, the problem requires being identified in such a manner that it is not obvious for the invention to solve.
As far as describing the technical effects are concerned, the technical effects are to be linked to the advantages of the features. Both the technical effects and the advantages need to be included to be able to argue the inventive step. This is important with respect to the computer-implemented inventions to be able to show that the problem identified has been solved by the present invention. The interpretation becomes important during litigation and during oppositions. Since language included in the description of the technical advantages may lead to narrower claim interpretation during litigation, it is important to not tie specific technical effects to specific advantages. It is better to use non-binding language while drafting the patent.
Art 123(2) of EPC need to consider while drafting the detailed description of the patent and can be close to the language to that of the claims. It is important to be clear as to what is essential and what is not while drafting a patent application for the EPO. The EPO generally takes the Claim 1 or the statement of the invention as the invention.
As far as the figures are concerned, it is generally more difficult in the EPO, to take features for claim amendments from the figures and is more restrictive than the German case law. Though the figures are important they are not the primary focus while drafting a European patent application.
We at OutsourceIP are proficient with the rules and the procedures of the EPO and we keep ourselves abreast of the latest decisions of the oppositions EPO which potentially may affect the patent writing/drafting strategies. Thus, the team is capable of supporting you in claim drafting and specification drafting along with Illustrations of the drawings.