Achieving Broader Patent Scope in Asia

By Michael Lin
August 11, 2014

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.

Functional Language

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.”

 

The Author

Michael Lin

Michael Lin

Warning & Disclaimer: The pages, articles and comments on IPWatchdog.com do not constitute legal advice, nor do they create any attorney-client relationship. The articles published express the personal opinion and views of the author and should not be attributed to the author’s employer, clients or the sponsors of IPWatchdog.com. Read more.

Discuss this

There are currently 31 Comments comments.

  1. MaxDrei August 12, 2014 3:44 am

    This article complements the recent one from Gene himself, on how to draft patent applications.

    I just think it is a shame that the title suggests that the drafting skills are somehow peculiar to Asia. In fact, they are the skills you need, everywhere in the world except the USA. I think they are better described as “First to File” drafting skills. Now that the USA also has First to File, they are needed also in the USA (but it will take a generation of US court decisions to reveal it).

    That’s the thing about drafting. You only find out 10+ years later, whether it was any good or not. Me, I think drafting skills are under-rated, in the USA.

  2. New Anon August 12, 2014 7:32 am

    Good article! One needs only look at the average Japanese application to see how well exemplified it is. The major Asian offices (SIPO, JPO, KIPO) will do their darndest to push you back to the scope covered by the examples or something very close to it.

  3. Anon August 12, 2014 8:59 am

    I agree with you MaxDrei regarding how under rated drafting skills are here in the US. Client education is an ongoing effort, and that includes my number one pet peeve of the tug between cost and well drafted applications.

    Implicated in this tug of war are provisional applications (claimless and unexamined). Perhaps it is time to re-evaluate even having this mechanism. The concept was introduced (at least in part**) as a method to provide “insurance” to applicants for quicker sharing with the patent office. You are not quite “done” with your invention, but want to proceed with some public aspects? Here, file a provisional and proceed – you have a year to fine tune your “real” application.

    Now that we have switched closer to a full first to file, is that same impetus there, or is that impetus subsumed into the change in law for all filers?

    I do not ask this question lightly – given as the “low cost” of provisional applications are a boon to my clients. It is only that I see that the “low cost” tail wags the dog of the patent process. Far too much effort is needed to continually remind clients that “low cost” is not the best driver for their protection: skimping (in order to meet that low cost today) carries a price – a price that is only paid down the road when – or more correctly if – your “bet” is a winner. But that future price for winners is – or can be – extremely expensive.

    Clients though often only see costs to the next reporting event horizon. That is the nature of the short term view. I understand that. However, the short term view can be a trap for the unwary, and “playing it safe” in the short term is often the opposite of what is needed for the long term. Students of innovation can readily recognize this in the concept of disruptive innovation, a concept that actually acknowledges that often a step back is needed to be able to take those quicker two steps ahead. Short term focus will stymie disruptive innovation and will build a culture adverse to the one that better supports the types of innovation that are aligned with patent systems.

    Those keyed to understanding innovation can more readily deduce this in the politics of the day.

    Those politics have given us the AIA, Perhaps it is time to take that AIA path and truly streamline the US system and eliminate the provisional filing altogether. Such a natural fit would indeed support me in my client education efforts that whatever is submitted to the Office should be of high quality – and should not be afraid of carrying the concomitant cost of that quality up front.

    I am reminded of the old Fram oil filter commercials: https://www.youtube.com/watch?v=OHug0AIhVoQ

    **I recognize that another aspect of the introduction of the provisional application was international patent term equalization, so some mechanism for that aspect should be evaluated, but that can be separated from the discussion for the time being.

  4. MaxDrei August 12, 2014 10:07 am

    Anon, nobody filing a pro is forced to make it skimpy. You can and should write it fit for its purpose, namely, fixing a priority date. To suggest that it serves no useful purpose or that it does more harm than good strikes me as preposterous, borne of ignorance and inexperience, and definitely not helping your clients.

    It is banal and routine outside the USA that the Paris year is an opportunity to develop an invention first filed one year earlier. Suppose you have invented the Crash Helmet. You file a pro, with drawings of three embodiments, each to protect the head in a specific situation (at work, on the sportfield, in particular hobby activity). You explain in your pro how i) what is the irreducible minimum of features that characterizes your “Crash helmet” Invention AND you report on the specific further design features in each drawing enhance head protection in that specific dangerous situation. After one year, you file PCT with ten such illustrated embodiments.

    If the search draws a blank on Crash Helmets, you don’t need the 7 extra embodiments.

    But if Crash Helmets per se turn out to be known. What have you got left? It could be just one of those 3 pro embodiments or just one of your further 7 PCT designs. That is, if it is novel and inventive over the the prior art.

    So don’t knock the pro. It is a vital part of getting protection for deserving Inventors, protection commensurate with their contribution to the art. its early filing date could turn out to be absolutely decisive to whether you get something or nothing.

    Have I made my point?

  5. Dharmender August 12, 2014 10:40 am

    The Indian Patent law has been praised by numerous international organizations including US based organizations and newspapers. The reality is that many see the US patent law as “fixed” by industry lobby groups where tricks are routinely used to extend the life of a patent. It is time India went on offense rather than perpetual defense, articulate its position, declare that US patent laws are flawed and begin its own efforts to revamp US patent laws to get them in line with India’s.

  6. techywacky August 12, 2014 10:52 am

    Difference between Indian & US Patent System
    Provision related to the patentable subject matter in US Patent Act is illustrative in nature in the sense that it defines what is patentable in US. While, on the other hand, Indian Patents Act defines what is not patentable subject matter.

    US patent act allows a discovery of process, machine, manufacture or composition of matter to be patented if it satisfies the criteria of novelty, utility and non-obviousness. While under Indian Patent Act, the mere discovery of a new and useful process or product is not patentable.

    US Patent Act does not speak specifically about patentability of computer programs, while under Indian Patent Act, computer programs per se are not patentable.
    Indian patent system works on “first to file” scheme while US works on “first to invent” scheme. Though this has been changed by America Invents Act, 2011, Patents filed after March 16, 2013 will be granted on a first to file basis.

    In US only post grant opposition to the patent is allowed while in India both pre grant and post grant opposition are allowed.

    US patent laws allow the grant of patent to anyone who invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof. Indian Patent Laws does not allow new and useful process or product by mere discovery to be patented.

    Interference proceedings in US Patent system considering the inventor ship issues. No interference proceedings in Indian patent system.
    Plant are patentable in us where as plant are not patentable in India.
    Business methods are not patentable in India whereas they are patentable in US
    Patent agent of other countries (Canadian patent agent) also can practice as US patent agent. But this is not possible in India, where a patent agent must have Indian nationality.
    Patent Term adjustment is there in US, while there is no provision for patent erm adjustment in India.

  7. Gerard August 12, 2014 11:37 am

    Thanks very much for the article! I have struggled with this issue in a number of applications, so it’s good to have these guidelines going forward.

  8. Anon August 12, 2014 12:30 pm

    MaxDre @ 4.

    How many provisionals do you file with the USPTO?

    Your comment smacks of a lack of being in touch with clients operating in the US system – and it is the clients who make the choice to file or not.

    Oh, do not get me wrong: I advocate to my client NOT to file skimpy (you seem to also miss the point of my post regarding the cost trade-off, so let me be more clear: higher cost is directly related to NOT being skimpy). But do you know how many times I receive a call and the direction to file skimpy because of some impending conference and “oops – we just now decided that we want the subject matter in a provisional.” Far, far, far too many times. And skimpy is better than none. But the triage induced by having the cheap and easy path is – and this is the point I was trying to make – a trap for the unwary. Perhaps it is time to simply remove that trap. Force the applicants to treat ALL applications as serious business requiring serious investment – immediately – and not fall to the trap of quick and dirty filings that lack the non-skimpy work required of proper drafting. You seem oblivious to the reality that quick filing and poor drafting are often aligned – that many practitioners are perfectly willing to sacrifice quality of drafting – on a routine basis in order to maximize either quick turnaround or to be able to charge lower rates to clients.

    Yes, I recognize this is counter-intuitive to what many advocates in the field would believe is in the “best interests” of their clients. I posit that this is so because – like businesses – many advocates may also fall into the trap of thinking merely in the short term.

    And your point about scaling back is a false point. You only get the prior filing date for what you disclosed at that filing – if you meet all of the requirements (i.e. enablement). To achieve those requires the SAME careful drafting as what would be done with a non-provisional rather than a provisional. You really do not “save” much – and that is the point you seem to be missing. A year later search that eliminates 3 embodiments SHOULD provide that same guidance as a year prior search eliminating those 3 embodiments. If ANY part of your application was not “good to go” a year earlier, that part would be beyond the scope of protection regardless of the presence or absence of the provisional.

    Please don’t take this in the wrong manner, but I actually welcome your far too easily provoked – and far too negative – response. It tells me that I am on the right path.

    Finally, to return full circle to my first question in this post, how many US provisionals have you filed? I would gladly match my experience here in the states to yours – as well as the results that I have achieved for my clients, but respecting the anonymity factor, that is beyond the reach of the discussion. However, you can share whether you even are licensed to practice in this country without compromising your anonymity. Do you have a USPTO registration number?

  9. MaxDrei August 12, 2014 3:16 pm

    Anon, sadly, the more you write, the more you reveal your inability to grasp what is fundamental about First to File, and distinguish from what is ephemeral. For example, you seem to have no appreciation that a search at the start of the Paris year cannot find all the art that will be published in the next 12 months, before filing PCT, which publications enjoy a filing date earlier than your priority date and are therefore prior art, even to your priority filing but which are published for the first time only after your priority date.

    For another example, you seem to have no appreciation how cheap it is to draft and file a First to File effective priority document. No claims needed. Enablement? First to Invent demands absurd levels of verbiage. Spend some time studying what you need for sufficiency of disclosure in ROW and compare it with the First to Invent USA, where drafters spend forever preparing patent applications for filing. Under First to File, there simply isn’t the time to do this, and ROW drafting style reveals it, vividly. First to Fuile Courts take this business imperative into account, just as US courts have become innured to drafting that is exhaustive, repetitive, lowest common denominator banal, and verbose to boot.

    A provisional is a no more than a tool in the toolbox. The more tools in the box, the better you and the client can tailor the job to the client’s specific business need. Choosing the right tool is part of the skills of the job. Another skill is communicating effectively to the client which tool works best. Brief the client properly and the client will then choose the way forward that is optimal for its business need. A bad workman blames his tools. No workman worth his salt would wish for fewer tools in the box. I still fail to see the need for Daddy Anon to abolish provisionals, to protect the children from coming to any harm.

    How many provisionals have I filed? Ballpark, about 200. What difference does it make, if they are filed in Europe or at the USPTO, when the client who is paying for my drafting skills is a US corporation and the named inventor is its employee? I had better do a good job, hadn’t I?

  10. Anon August 12, 2014 3:39 pm

    Since the conversation has not been about practice in the EPO, MaxDrei, your criticism falls flat right from the start. Perhaps you were always talking about the EP style of First to File, but that is not what this conversation has been about.

    I notice that you do not answer me directly about your status to practice under US law. You do ask a good question though: What difference does it make?

    The answer is that it makes a huge difference, given as you are attempting – to put it bluntly – to blow smoke and talk about a subject you really know nothing about from personal experience, merely trying to “extend” your own European experience into US practice. You really do not know anything at all about direct US practice, do you?

    It shows.

  11. Anon August 12, 2014 3:43 pm

    And by the way, US lawyers (largely) do not even practice from State to State – as each State has its own set of laws and passing the bar in the State you wish to practice is required**

    That you want to “practice” in the US as if your EPO training is sufficient is telling of your own lack of professionalism. Before you go out of your way to criticize me, I suggest that you get your own house in order.

    It makes me wonder if you are even an attorney…

    **generally – there are limited exceptions

  12. Anon August 12, 2014 3:46 pm

    As to the condescending “Daddy Anon” – please read my posts again. I do NOT direct an edict that they MUST be abolished. I posted the thought that perhaps they should be abolished, and provided some reasoning.

    Buggy whip handle tighteners are tools as well, but have no place in a modern tool box.

    Your combativeness is not only undeserved – it is out of place.

  13. MaxDrei August 12, 2014 4:02 pm

    My posts here in this thread are to wake American readers up, to the fundamentals, the reality, of a First to File regime. Any First to File regime. That is, including the one very recently installed in the USA. There’s no going back now to First to Invent, is there now?

    So, you’d better wise up, how to draft, under such a regime. Any such regime. Anybody, that is, who has real live clients to serve.

  14. Anon August 12, 2014 4:09 pm

    Wake up? Sure, but please know what you are talking about. This blog’s story itself focuses on the fact that laws per country are different – and yet, you want to act otherwise.

    A word of advice: be less quick to advice on things that you don’t know about. It will lessen the amount of crow you need to eat when caught doing so.

  15. MaxDrei August 12, 2014 4:18 pm

    Time to repeat my Comment # 1, I think:

    “I just think it is a shame that the title suggests that the drafting skills are somehow peculiar to Asia. In fact, they are the skills you need, everywhere in the world except the USA. I think they are better described as “First to File” drafting skills. Now that the USA also has First to File, they are needed also in the USA (but it will take a generation of US court decisions to reveal it).

    That’s the thing about drafting. You only find out 10+ years later, whether it was any good or not. Me, I think drafting skills are under-rated, in the USA.”

    I comment on First to File, not First to Invent. I do know something about First to File patent regimes.

    There are two patent drafting styles in operation in the world today. The one is dictated by the jurisprudence of the courts of the USA, The other is the one that operates everywhere in the world except the USA. That will now change, I say again. Seriously, if you have clients, Anon, mark my words well.

  16. Anon August 12, 2014 5:15 pm

    MaxDrei,

    Since you are going to repeat your first post, let me repeat my first post:

    I agree with you MaxDrei regarding how under rated drafting skills are here in the US. Client education is an ongoing effort, and that includes my number one pet peeve of the tug between cost and well drafted applications.

    Mark my words as well: you went into the weeds, not with your first post, but in your misplayed replies to my post, attempting to speak on a subject that you lacked direct experience on: handling US clients under US patent law.

    So let me also repeat my advice to you: be less quick to [give] advice on things that you don’t know about. It will lessen the amount of crow you need to eat when caught doing so.

  17. MaxDrei August 12, 2014 5:58 pm

    Things I don’t know about, is it, Anon? Well, it is not just me. I’m sure nobody knows with any degree of reasonable certainty how the jurisprudence of the USA is going to develop over the 20 year lifetime of patents drafted now, under the First to File AIA.

    But based on my experience with US clients, extending through 5 decades, and of how First to File has evolved during that time, I think I can legitimately suggest damage limitation strategies for that drafting job you have to do tomorrow, for that treasured client of yours that you are ever so busy “handling”.

  18. Anon August 12, 2014 6:19 pm

    Thanks MaxDrei, and I will gladly listen to those things that you do know.

    The things that you do not – but pretend to – those things I too will listen to – but for different effect.

  19. J August 12, 2014 8:21 pm

    MaxDrei-

    I think one thing you underestimate in the United States is that we are a peripheral claiming system. Forgive me if I say things you might already know, but in the United States the claim language has a much larger impact on patent rights. Depending on my language, a patentee can claim more or less than what was given in the specification. Europe patent descriptions need only describe the invention in precise terms. So long as the drafter does that, he gets protection for his contribution to the art (and nothing more). This is, and will continue to be, the biggest difference between the two systems. First to file will have no impact on this. Patent attorneys will continue to be much more careful, and broader, in writing patent applications, because there is incentive to do so that is not present in the European system. So I disagree with you when you say drafting skills are needed everywhere but the United States… there is just a different emphasis on a different set of skills.

    Anon-
    Just a direct question to get your opinion… why did we go to first to file? I hear two rationales amongst my colleagues: a) make the United States more like in-tune with the rest of the world, and/or b) administratively easy. I can see your displeasure with provisional applications and the need to get rid of it if you side with (a), but if you agree with (b), do you see the issue with doing away with provisional applications?

  20. MaxDrei August 13, 2014 3:47 am

    Donald Rumsfeld knew very well that were things unknown to him. Funny Little Billy here, on the other hand, has not a doubt in the world, that he knows what it is that MaxDrei knows, and what MaxDrei doesn’t know.

    Readers, in the law, we attorneys try to serve (as opposed to “handle”) our clients, making the best estimate we can, based on our knowledge and experience, what advice to give our clients, given the known unknowns and the unknown unknowns of the law. This thread sees me trying my best to give you readers additional food for thought, further angles to take into account, as you and your patent attorney struggle to draft something that, ten or fifteen years into the unknown future, will deliver in court the protection you both are working so hard to secure. One does the best one can, and is answerable in the end to the client for the quality of the drafting one did at the outset, whether back then one took into account all the considerations that any competent patent attorney ought to have taken into account.

    That’s all.

  21. Anon August 13, 2014 9:31 am

    Sorry MaxDrei, but you do not get to take the high road.
    Look at our exchange. You first posted something.
    I posted a reply – agreeing with you (regarding drafting competence) and posting a follow on topic for discussion.
    It was your indecent reply (the second round of your posts) that I found fault with – and when I posted a question that revealed your lack of actual knowledge on the second subject, you apparently “went postal” in a manner that is more befitting the free-for-all of Patently-O. It took me a moment to recognize the “Billy” reference, and I see that you still want to persist with confusing me with your Patently-O nemesis lower case “a” anon, even though we have had a discussion on the differences in the past.
    I find it revealing that you are the one descending into ad hominem here, bringing out your baggage, while my post which dealt with US practice, something you have zero experience with. Your reply to my last post concerning an attorney’s recognition of where he can practice in the States is met with a non-sequitur, generalized reply from you that is non responsive to our conversation. That you seek to play a pedantic game with words such as “handle” instead of addressing points of actual discussion show – like our last exchange, you are more interested in playing games than talking law. Your tactic of suggesting that I “know what MaxDrei knows” is a gimmick. I asked a direct question to ascertain what you know. Your reply told me all I needed to know. You asked, “does it matter?” when you should have known that the answer to that question is yes, it very much does matter.
    Somehow, you want to ignore the fact that I am perfectly willing to listen to you on those things that you have actual experience with.
    Your “high road” tactic simply does not address the conversation that we are having. Does it pain you that much to admit that you lack the actual experience in the topic that I put forward for discussion? Or does it pain you because, much like lower case anon often does to you at Patently-O, your behavior in our conversation here and now is shown to be unacceptable? When you want to have a discussion, please feel free to behave accordingly. If you merely want to play games and pretend that your advice is germane in aspects of US law that you have zero experience with, I suggest that you take that game playing to Patently-O where the treatment you receive there is appropriate to your gamesmanship.

    And that is all.

  22. MaxDrei August 13, 2014 1:41 pm

    Dear J, thanks for the effort you have expended, to teach me about peripheral claiming. You make it sound as if the Rest of The World does not require claims, or understand their function, to define the invention and to delineate what is protected from what is not. I don’t know how you have got hold of the idea that ROW doesn’t do peripheral claiming. It does.

    Of course, every patent system has provisions to limit Applicants to a scope that corresponds to what is new, not obvious, useful AND enabled. If you claim more than you enable, your claim is bad. All over the world, drafters strive to capture in the claim the full scope of what is enabled. Patent Offices round the world vary, however, in their zeal to enforce this provision. Sometimes the worked Examples you include turn out to be the totality of what you have enabled. Usually not though. Usually you get more. How much more depends on the skill of your drafter.

  23. J August 13, 2014 2:43 pm

    I think you should reconsider what you know about the United States patent system. In many places in the world, including Europe, the invention defines the scope of the grant. The more you define, the more you get. That’s central claiming. In the United States, the language of the claim defines the grant. The broader you are in your claim, the more you get. That is peripheral claiming.

    To say that you can’t claim more than you enable in the United States is just plain wrong.

  24. J August 13, 2014 3:18 pm

    MaxDrei,

    Here is some citations for you: Takenaka, Interpreting Patent Claims, 17 IIC Studies 3 (“The central definition theory requires that the scope of the patent protection be determined by defining the principle forming the inventive idea or solution underlying the claim language. Courts use the wording of the claim as a guideline to determine the scope of protection, but are not strictly bound by the claim limitations.”; Cohen, Article 69 and European Patent Integration, 92 Nw. U. L. Rev. 1082, 1111 (asserting that under German central claiming, “the scope of protection of a patent is determined by the scope of the inventive idea”);

    Compare that with Moy’s Walker on Patents section 4.8 (“Peripheral claim theory would interpret … language to cover all the various structures that fall within the lingual definition of the generic term, including those beyond the embodiment illustrated… Peripheral and central claiming thus involve two very different levels of reliance on the precise words employed in the claim. Depending on which words the patent applicant has chosen to employ, the scope of a peripherally interpreted claim can change sharply.”)

    So I challenge you on your first post in which you asserted, “In fact, [drafting skilss are] the skills you need, everywhere in the world except the USA.” I think they are more important in the United States than anywhere else, actually.

  25. MaxDrei August 13, 2014 4:16 pm

    Dear J, I’m revising every day what I know of the patent System of the USA. Every patent attorney should do that. Meanwhile, have a look at this:

    http://www.ipwatchdog.com/2014/08/12/rules-of-patent-drafting-the-disclosure-revolution/id=50753/

    And, do you seriously suppose that Europe today goes in for “central claiming”? Or are you just trolling?

    Of course one “can” claim more than one enables. People do it all the time. The question is, will such a claim survive all attacks on its validity.

  26. MaxDrei August 13, 2014 4:38 pm

    Dear J, on re-reading, I’m beginning to suspect that you and I have a different understanding what is meant by “central claiming”. Interesting. Until now, I had supposed that every patent attorney understands the notion in the same way that I do. Are you familiar with the Protocol on the Interpretation of Article 69 EPC:

    http://www.epo.org/law-practice/legal-texts/html/epc/2013/e/ma2a.html

    that reconciles the pre-1978 central (Germany) and (UK) peripheral claiming notions?

    And are you up to date with how courts in Europe construe claims, these days?

  27. J August 14, 2014 12:43 am

    You sent responses 25 and 26 before my post in 24 was posted. I’d like to respond to my post in 24, if you would be so kind.

    I will add more to respond to 25 and 26 directly… Mr. Root is entitled to his very learned opinion, but as he said himself, claims start with the language. I would also say, they end with the language. I think Mr. Root makes some excellent points, but the name of the game is still disclose as little as possible without invalidating the patent.

    I never meant to correct you on what Europeans do, but you must have some misunderstanding about what Americans do. As I said before, patent drafting might be more important in the US than other countries because how the courts interpret the claim is very language sensitive. This is contrary to what you have said earlier. Furthermore, you are wrong to say that one cannot claim more than is enabled. Yes, in the United States there is a test to prevent overbreadth, but that is policed in the utility requirement in 101, not the written description requirement in the first paragraph of 112. Please read my citation to Moy’s Walker on Patents treatise back at 24… and also his treatise in section 4.66:

    “One might assume that the rules law for enforcing such a correlation [between the disclosure and the claim] would be a part of United States law for dealing with the adequacy of the disclosure, under the first paragraph of section 112… Instead, United States patent law polices the overbreadth of product protection in connection with the utility requirement of section 101.”

    It is way more than I want to explain from now. I can do it if you like, or maybe someone else. But I have no doubt that you are wrong in your statement that one cannot successfully claim more than they enable. That is the art of patent drafting in the United States.

    I find your link in 26 to support my position. The extent of the protection conferred by a European patent is not defined by the strict, literal meaning of the wording used in the claims. The descriptions and drawings shall not be reduced to mere clarification of the terms in the claim. There is a tricky comma placement in there, am I reading it wrong?

    And since I think it is relevant in this thread, and you ask me if I am a troll, here is my response. A troll (in the discussion board sense) is someone who posts only to incite responses, and usually does so by saying things that get people angry. I promise that is never my aim. I actually give five or ten minutes before I post and reread so to screen my tone. The reason I do this is because I actually want people’s level-headed opinion on things. I’m way to busy to fight with strangers, I am long past the days of considering this stuff as a contest on who is smarter. On too many patent threads, it is a “bile-throwing” contest… so many people have their tail up ready to snap at each other. I think this is mandatory watching for people who want to use social media… (language warning.) https://www.youtube.com/watch?v=c18h-Eh1xXw

  28. MaxDrei August 14, 2014 2:57 am

    Wow J, what a treat, to discuss with a person who puts so much thought and effort and clarity into his posts. It now seems that I (when i seek to provoke) am more of a troll than your good self. Yes, your #24 appeared belatedly. How that happened, I’ve no idea. That was a pity.

    There might be a misunderstanding. My central point is that when we draft today, it should be for efeectiveness in the courts 10 or 15 years into the future. How Americans have drafted up to now is not necessarily optimal, going forward. I think there is change in the air and that priority competitions at the USPTO under the FtF AIA, when they come, will focus minds and change practice..

    In any patent system there will be a mechanism to encourage Applicants to make an adequate disclosure. For every client (in my experience) demands maximum scope of protection for minimum disclosure of that which actually makes the Invention work. It is the Govt that offers the quid pro quo, exclusive rights in return for disclosure. For it to hand out the rights without giving teeth to the disclosure requirement is to betray its public.

    To the EPC Protocol. Yes, it is a political “fix” to mediate between central and peripheral claiming. But the mandatory balance between legal certainty and a fair scope of exclusive rights strikes me as a fine principle. Of course, in polyglot Europe, where everybody is working with English as a foreign language, judges have no patience with lawyers playing the sort of word games that lawyers enjoy. But Globish is the language of Business People today, all over the world. It is increasingly the language in which patent disputes are resolved, globally. In the past the US market was worth multiples more than any other market. But that today is increasingly not the case. Ask manufacturers in Germany which single market is worth the most to them. Today, very few will say it is the USA. It used to be that the patent litigation in the USA towed the rest of the world along in its wake. Not so much any more.

    I post on these boards to learn how American attorneys think. It helps me in my day job, advising them on European patent law. As i say, it is refreshing, reading your posts.

    No more time now. Your post deserves more, (not least the comma in the Protocol) so I hope you will not be upset by this minimal response.

  29. Anon August 14, 2014 9:13 am

    J @ 19,

    I must give you a lawyer’s answer to your direct question of why did we go to first to file?: There are multiple (and perhaps even conflicting) reasons why our Congress took a large step to the rest of the world’s First to File methodology (a step, mind you, not a full alignment) as the major (but not only) change in the AIA. Some of the reasons do not survive closer scrutiny, but do fall in line with what the well-paying sponsors of the legislation want (or eventually want). Some of the reasons may align with other aspects of the bill (and yes, there are both steps toward alignment with the rest of the world and steps to make administration easier).

    But both reasons of their own accord are insufficient and both have desired results that are not met, certainly not in the short term. Since we do not actually use the same First to File as ROW, we still have differences in the law to account for in our work. Since we have a sizable backlog that (largely) must be processed under the pre-AIA laws, we have made nothing simpler. We may have attempted to add a simplified new set of laws that may (eventually) make things simpler, but I would posit that the effort will be deemed a failure in the eyes of history, since the writing of the new law contains many new and ambiguous phrases, and creates just as many – if not more – problems than it sought to correct.

    As far as administration ease and the elimination of the provisional application system, I must admit that I am not catching your point. Of course the provisional application system is easy to administer, there is no examination (and claims are purely optional) with provisionals. As I have mentioned previously on these boards, I am in near-constant client education mode because clients want to believe that this lack of examination, coupled with low filing costs justify a “quick and dirty” approach to the work product submitted. I fully recognize that one may file just about anything under a provisional, and choose to “worry about it later.” And for reasons already posted, I view this as a trap. To the extent that administration ease supports this trap, I think administration ease is a culprit, not a justification. I am of the view that often changes contemplated to make the government’s job “easier” are not aligned with why that job exists in the first place. Review, for example, the government’s report on software in the late 60’s timeframe as referenced in the Benson decision. Any new wave of innovation will have the “shortcomings” and difficulties for examination identified therein (notably a lack of prior art) – to elevate that reason as a reason not to allow patenting in the burgeoning field of innovation – for administrative ease – is anathema to why we have the patent system in the first place. Innovation can be – and often should be – messy that way.

    Good luck with your attempted communications with MaxDrie. I think that your identification of him as a troll (in a discussion board sense) is dead on, seeing as even he admits that he posts “seek[ing] to provoke,” yet not having any actual experience under US law, nor willingness to either admit such (even though it is evident) nor to even admit that patent law does differ from sovereign to sovereign (as is a major point of this thread). It is one thing to seek to invigorate a conversation, yet altogether another thing to antagonize and pretend to know something about a legal point under discussion when you have no experience of that point (and to pretend that patent law is somehow “universal” when it is clearly not), and even more of another thing to proselytize an untenable point such as the presence of universal patent law concerning a US legal point that I added to the conversation.

    I have found that trying to hold a conversation with him is largely fruitless, as he refuses to stop the types of gamesmanship often found on the free-for-all of Patently-O. He may be more polite than others that play games, but his games are a needless distraction from conversations and impede rather than promote them. His posts here on this thread are examplers. Here, for example I clearly agreed with him on the importance of drafting well, and yet he took issue with my added point on US practice. His attempts (?) at conversation consisted of baiting taunts, avoidance of clarifying questions, and rather smarmy replies that he simply has not established any legal superiority to support in his rather nonresponsive attempted “high road” position. This is not the first time, and he has a pattern of not engaging when his “position” is “threatened” or even questioned. Yes, he likes to “provoke,” but he does not want to have any part of any ensuing discussion on the merits that shows that he has not thought things through sufficiently to preserve his “ideal state” of universal law fashioned after EPO law.

  30. MaxDrei August 14, 2014 9:37 am

    Anon, I think J at # 19, with his “administratively easy” alludes to getting away from interference proceedings and sorting out priority between rival independently conceiving inventors on the basis of their respective PTO filing dates and their respective disclosures on those dates.

    Many American Bloggers seem to be excessively anxious about “Derivation” but in my experience it seldom Plays a role in These priority contests.

    Conversely, such priority contests are not uncommon, because rival corporate filers invent similar subject matter at similar times, all in an effort to deliver what the market craves.

    Indeed, I predict that these priority contests, which from now on will be far more frequent than ful-blown interferences, will, over the next generation, colour drafting practice within the USA jurisdiction.

    Do I “know” it? No, of course not. It is just a hunch.

  31. Michael Lin August 14, 2014 10:45 pm

    All: Thanks for the comments and the far-ranging discussion. I think in our current world to be competitive and provide better service to our clients, we need to be aware of the global requirements in terms of laws as well as real, everyday practice.

    I’m reminded of something I forgot to add to the article – As we know, it’s difficult to get data, especially useful data, out of inventors in time for the filings. However, “data” does not always have to be something which is precisely measured and accurate to 10 digits. I’ve seen very useful data which simply indicates “it worked”, “it worked well” and “it didn’t work” in many applications. As New Anon (#2) may recognize, the Japanese sometimes use triangles for great data, circles for good data, and “x” for bad data. See, for example, JP 3717412 B2. While it may not be the hardest, most scientific data, this type of data does help! And sometimes it’s all that we, as drafters, may have in front of us when the filing deadline is tomorrow…or in 3 hours!