As a US Patent Attorney who has been working abroad in Asia for a while, I’m often the Asia interface with US companies and firms seeking to get their patents granted in Asia, especially China. US Attorneys/Agents always complain about the narrowness of Asian claims – oftentimes limited to just what the examples describe – when the corresponding US claims are so much broader. My 2 cents: broader Asian Patent scope is possible – not easy, but possible. This past week I’ve struggled with 2 applications which we’ll get granted, but with claims merely covering the examples in the spec. However, given a little forethought, we would have achieved a broader scope. So I’m putting down my thoughts in the hope of helping US practitioners a bit with their Asian prosecution.
Laws & Practice Are Different
If you are experienced in Asia practice, know the risks, and have made a conscious decision to write applications in a certain way (i.e., because your US application is the most important), then that’s fine. That’s your decision and I’m all for it. Stop reading now and don’t waste your time. I’m writing this for those who never made that conscious decision and assume that patent practice everywhere is the same as the US. Sorry, but it’s not the same.
Very few would argue that broader scope is easier in Asia than in the US. Not surprisingly, this is because the laws and practice are different. The US law entitles an inventor to a patent unless the USPTO carries the burden of showing that the claims lack novelty, are obvious, or lack utility. Generally, the inventor is entitled to a broad scope, unless the US Examiner can show that it doesn’t broadly work. Since the burden of proof is on the Examiner and since they typically will not be able to prove that the invention doesn’t work broadly, US patents usually get a broader scope, even with a limited examples/data/description.
Contrast this with Europe and Asia where the laws allow the patent offices to grant a patent if it is novel, inventive, and a technical improvement (sometimes a significant technical improvement). Some countries merely describe the qualities (novelty, inventive step, etc.) that a granted patent should/must have. But no patent laws in Asia are so strongly on the side of the inventor as compared to the US. So oftentimes the practice is that the burden of proof is on the inventor/applicant to show that they deserve a patent. Saying it another way, in the US it is your right to get a patent, while in Europe or Asia it is more like a privilege.
The reality is that Asian Examiners hate functional language. Very rarely will a purely functional claim get granted, especially recently. It’s much more likely that the claims will be rejected as lacking clarity and/or you will be asked to split the case into 22 divisional cases (Seriously. I received that actual objection 2 weeks ago). Therefore, go into prosecution hoping for the best, but also plan for the worst by adding in some backup positions which describe the functional language in terms of steps, structure, reactants, etc. for your preferred embodiments. Otherwise you will likely encounter endless (expensive) arguments with the Examiner and in the end, your ultimate chance of getting a broad functional claim granted is low.
Examples & Data
I usually suggest to provide more examples to justify the scope (especially in the bio/chemical/pharma field, but generally true across the board). Practice-wise, the key point for US practitioners is that in Asia, this information typically can not be added later. Data, examples, description, explanation – everything should to be in your priority document, or at the latest in your PCT application. There are no CIPs in Asia so if you add info, then you’ve lost your priority claim and the prior publication is likely prior art against you. So pls. include all key enabling and scope-related information before your applications enter the JPO, SIPO or KIPO.
I know all the issues: adding more examples, description, data, etc. can be a lot of work; oftentimes the inventors don’t spend extra time and effort to do it; the application needs to be filed tomorrow because of a test, publication, presentation, product launch; etc. I get that. I was in-house for 14 years. That’s fine – file your US provisional with 1 data point and maybe some prophetic/paper examples. As usual, drafters need to be careful how this is worded and the inventor has to have a good faith belief that it actually works. But generally paper examples are generally OK. But when the 1-year deadline comes up, please add more detail and real examples as best you can.
Another point is that virtually everywhere except the US requires that there be a technical benefit rather than the US utility requirement. Combine this with the fact that most Asia Examiners are technologists and not lawyers. So they really want to technically understand the invention, what it does, and why. So please, please, please show that the invention actually works and has some technical benefit over the prior art.
Back to excuses, I know all of the myriad reasons why US practitioners don’t put in additional info/data: there’s no time/it’s not ready yet, it’s too much effort/time/expense, you don’t want to give away too much info – there’s no real best mode requirement now anyways, you can always get it in later, fear of the old Rule 56 sanctions if you mis-place a decimal point or there is a typo, yadda, yadda, yadda. However, if you have great/key data/info that you don’t put into the PCT application at the latest, then you are pretty much out of luck in Asia. You may get the patent granted in the US, but is it worth the cost of getting little or no scope in Asia?
Importantly, Examiners in Asia may view this as an enablement issue; i.e., the Examiner may essentially object that “based on the description, one skilled in the art would not believe that the invention works”, and therefore you have not shown that at the time of filing that you have enabled a POSITA to practice an operative invention. I get this objection about 3 times a week from Chinese Examiners. And sometimes I say to myself, “Yeah, me neither…”. Generally in Asia, there is no US-style oath or declaration so that the patent office may simply not believe you if you generally say in the spec that the invention works or that it has one or more of this bunch of benefits. Think of it as an evidentiary issue – if you haven’t convinced the Examiner that it will work and that you deserve the claimed breadth, then the Applicant has not carried his/her burden of proof and therefore the patent office rejection wins.
Yeah, OK, But That’s It
In a perfect world I wouldn’t be writing this. A US colleague emailed recently, “OK, so I have 1 example and don’t have any other data ready in time. What should I do? Punt? Is that it?” This happens all the time – Here, I suggested to focus on the technical discussion about why the invention works and why the 1 example it is better than the prior art. Then, include a technical discussion to educate the Examiner as to why one skilled in the art would believe that the invention is broader than the single example. In this case, the spec said that other epitopes in the Markush Group all have a similar reactivity as the epitope in the example because they all have the conserved sequence of SEQ ID NO:1 so we emphasized this to the Examiner.
I assume everyone already puts in their backup positions for technically- and commercially-important embodiments. So explain why the POSITA would know that if it works with Example 1, then it would likely work with different conditions, reactants, mechanisms, etc. As the drafting attorney/agent, you need to really understand the invention and explain it well. Explain why the ranges are there, what is the common property of the Markush Group, why any particularly preferred backups are better, etc. otherwise you are doing a disservice to your client. Asian Examiners hate laundry lists of claim elements and many overlapping ranges with no explanation given. I mean, if it’s a technically- or commercially-important claim element, then it deserves the additional 2-3 sentences which may save you later on.
Understand and anticipate that in a chemical case, if you’re moving to a backup range due to the prior art, then the Examiner may want to know why that range is inventive over the prior art range. In a mechanical case, the Examiner may want to know why the addition of that cog is inventive. In both cases, your explanation during prosecution may be considered new matter if you haven’t talked about it somewhere in the spec.
In the US we are taught never to say anything which can be construed as categorically true or false. Fine. Go ahead and use your weasel-words, couching the theory, benefits and technical discussion in as many “without intending to be limited by theory”, “it is believed that this may”, and “in theory” clauses as you wish. I do the same thing.
Get it Done!
Sure, writing an application to international expectations is tough – but it’s the right thing to do for your clients and in the end it’s what you’re paid to do. You may need to add more backups, a better explanation, and understand the prior art better so as to anticipate the likely rejections. This is a good thing and your clients will thank you for it. I (or your foreign associates) will thank you for it too.
All I’m asking for is that you give me some type of technical argument that I can hang my hat on or argue with a straight face. It really ruins my day when I have to tell someone that “there’s nothing else I can do here.”