Mission Impossible? How to Effectively Draft the Background Section of a Patent Specification in Compliance with Both USPTO and EPO Practice

By Enrica Bruno
March 9, 2019

“A more careful look at Rule 42 of the European Patent Convention (EPC)—the legal basis of EPO background section practice—reveals that extremes are really not necessary.”

https://depositphotos.com/86141172/stock-photo-european-patent-office.htmlPreparation of the background section of a specification that complies with the requirements of both U.S. Patent and Trademark Office (USPTO) and European Patent Office (EPO) requirements is a classic conundrum for patent drafters seeking to file an application in both jurisdictions via the Patent Cooperation Treaty (PCT) or direct filings.

In U.S. patent applications, statements made in the background section can be considered an admission of prior art, regardless of whether the admitted prior art would otherwise qualify under 35 U.S.C. 102  and regardless of any disclaimer made.

Additionally, statements made in the background section of an issued U.S. patent can not only be used against expert testimony that describes the prior art differently and during claim construction, but also can have a limiting effect on claim interpretation.

As a consequence, discussion of deficiencies in the prior art can be interpreted as a disclaimer of the related features and therefore can severely (and often inadvertently) limit the interpretation of the claims.

In contrast, statements made in the background section of EPO applications that discuss deficiencies and technical problems present in the prior art are expected to be included in order to enable the reader to understand the technical contribution to the art made by the invention as claimed.

In particular, according to EPO practice, the applicant is expected to discuss the technical problem solved not just in view of the closest prior art at filing (subjective technical problem), but also, more importantly, in view of the prior art cited during prosecution in the context of the problem-and-solution approach (objective technical problem).

Accordingly, applicants drafting applications to be filed at the EPO tend to provide a heavy background section with discussions of cited documents, related deficiencies and problem solved and later adjust it in view of the objective technical problem in view of the objective technical problem arising during prosecution.

On the other hand, in view of the serious and often inadvertent consequences of lengthy backgrounds, many U.S. practitioners limit the background to a bare minimum or, in some cases, completely omit the inclusion of any background section in their application, based on an interpretation of the law that suggests that presence of such background section is optional (see Chisum on Patents/37 CFR 1.77).

Determining Best Practices

What constitutes best practice in this scenario and how the two practices can be harmonized is controversial.

One thing is certain: for U.S. applicants or for foreign applicants having interest in the U.S., any best practice must respect the requirements of the U.S. system while avoiding any draconian solutions, such as that of preparing two different applications for the two jurisdictions.

A more careful look at Rule 42 of the European Patent Convention (EPC)—the legal basis of EPO background section practice—reveals that extremes are really not necessary. Rule 42 says:

The description shall: ..

(b) indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art…

This language limits the background reference to art “useful to understand the invention” and defines the citation of documents as something applicants should “preferably” do.

In line with such interpretation, in EPO T 2321/08 of 11.5.2009 the Boards of Appeal of the EPO have indicated that Rule 42 EPC “does not put a stringent obligation on the Applicant to acknowledge prior art known to him, and to cite documents known to him reflecting this prior art, already at the time of filing the application”.

Therefore, an applicant drafting for both U.S. and EPO jurisdictions can prepare a background section in compliance with the U.S. practice and then wait for the end of the EPO prosecution to make any statements concerning documents cited in connection with the objective technical problem, thereby using the EPO practice related to the objective technical problem to their advantage.

Additionally, when discussing the closest prior art, the applicant has the option to limit the statements to only what is “regarded as useful to understand the invention” which, in practice, results in not needing to make a lengthy discussion on the deficiencies of the document.

Accordingly, while the drafting strategy should be always tailored to the specific needs of the applicant and the specifics of the innovation at hand, the above suggested approach should not jeopardize the EPO prosecution and should protect the applicant and the innovation in the United States according to current best practice.

 

The Author

Enrica Bruno

Enrica Bruno is the founder and managing partner of Steinfl + Bruno LLP. Enrica is an EPO-qualified U.S. Patent Attorney, Past Co-Chair of the AIPLA IP Practice in Europe Committee, member of the AIPLA Harmonization committee and CEIPI tutor. Enrica has extensive professional experience in Europe and the U.S. managing worldwide patent portfolios, developing intellectual property strategies for protecting companies’ technology, preparing and prosecuting national and PCT patent applications before the U.S. and European Patent Offices, prosecuting patents in other countries, due diligence, litigation support, and drafting agreements relating to various areas of intellectual property. Enrica earned both a Laurea Specialistica (Masters Equivalent) degree in Biology and the equivalent of a Juris Doctorate both issued by the Italian University System (Università degli Studi di Palermo). Enrica has both lectured on and participated in panel discussions involving patents, both for CEIPI courses and for various institutions, including American Intellectual Property Law Association (AIPLA), American Bar Association (ABA), the American Chamber of Commerce (ACC), the State Bar of California Intellectual Property Law Section, Ordine dei Consulenti in Proprieta’ Industriale, the Association of Patent & Trademark Attorneys in the Italian Industry and various Universities including the Academia Sinica in Taiwan and the California Institute of Technology. Enrica is admitted to the State Bar of California, U.S. Patent and Trademark Office, and the Italian Patent and Trademark Office. She has been admitted to practice law in Italy and has passed the European Qualifying Examination to practice before Enrica is admitted to the State Bar of California, U.S. Patent and Trademark Office, and the Italian Patent and Trademark Office. She has been admitted to practice law in Italy and has passed the European Qualifying Examination to practice before the European Patent Office.

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Discuss this

There are currently 9 Comments comments.

  1. Douglas Foreman March 10, 2019 1:44 pm

    I didn’t understand very much of this article I’m an inventor not a lawyer would be interested in hearing this what is intended in layman’s terms

  2. Daniel Hanson March 11, 2019 8:45 pm

    Douglas Foreman: Enrica may have some thoughts, but here is my take.

    Lay inventors often want to be very detailed in the Background section. It’s okay to go into detail as needed, but don’t do it in the Background section. If you’re going to do it, do it in the Detailed Description section, where the inventive concepts are explained. Keep the Background section very short (one to two paragraphs are usually enough) and very general. The reader should not be able to discern or guess at the invention from reading the Background, but the reader should be able to get a general idea about the technical field of the claimed subject matter (e.g., automotive, medical, phone).

    I’ve found that European examiners really look for those parts of the patent application in which the applicant points out the differences or distinguishing features of the claimed subject matter in relation to what has been done before, as well as the technical needs that the claims address. Sometimes this can be done by describing some potential advantages. In my experience, European examiners don’t insist that such discussions appear in the Background section, and in most cases, such discussions find a better “fit” in the Detailed Description section.

  3. Enrica Bruno March 12, 2019 12:22 pm

    Hi Douglas, Daniel- thank you for your comments.

    In essence the suggestion is that you focus on describing the features of the invention rather than the shortcomings of the prior art. In other words, you should be framing the description in positive terms (what the invention does) rather than negative terms (what the prior art does not do).

    This means including plenty of structural features and the related functions in the detailed description. That should help not only in the US (where discussing the prior art can have negative implications later on) but also during examination in Europe (when new prior art will be cited and the solution to the objective technical problem will have to be provided). At that time, a good description of structural features and corresponding functions of the invention will help more than any highlighted deficiencies of the prior art.

  4. Enrica Bruno March 12, 2019 2:43 pm

    Hi Douglas, Daniel. Thank you for your comments.

    In essence the approach suggests that you focus on describing the features of the invention (what the invention does) rather than the shortcomings of the prior art (what the prior art does not do).

    This means including plenty of structural features and the related functions in detailed description and examples/drawings.

    Doing that should help not only in the US (where discussing the prior art can have negative implications later on) but also during examination in Europe.
    This is because, at that time, the Applicant will typically face prior art unknown at filing and the features of the invention providing the technical contribution over this new prior art (solution to the objective technical problem) may be different from the features providing the technical contribution over the prior art known at filing (solution to the subjective technical problem).

    This fact in combination with the current criteria used by the EPO to evaluate added matter under Article 123(2) EPC, will put the Applicant in a tough spot.

    Therefore, focusing on providing a complete description of the structural features and corresponding functions, rather than a complete description of the shortcomings of the prior art, should help the Applicant later on also during prosecution before the EPO.

  5. Lost in Norway March 13, 2019 6:16 am

    Thank you for your article Enrica. This is exactly what I do when wanting to enter both jurisdictions. I normally go through the EPO first and enter the US second (PCT or directly). When I write the EPO application, I am skimpy on the background and make the examiner force me to add a discussion of prior art.

    In EPO practice you can often avoid having to make amendments to the description until a claim set is agreed upon. By that time, the application is usually already in the United States and fully complies with best practice.

    Now if only I could convince my collegues of this practice.

  6. K. David Crockett March 13, 2019 2:48 pm

    I think you also have to keep in mind that, no matter when you add characterizations of the prior art to the EP specification, the statements could be limiting in the US case, when litigated, because they can be “admissions against interest.” That is not as powerful as an admission of prior art that might arise from the same text in the US specification, but could still be problematic, so the background statements in the EP case still need to be carefully crafted.

  7. Enrica Bruno March 13, 2019 10:21 pm

    Good point Lost in Norway.

    I believe that many EP drafters focus too much on describing the subjective technical problem.

    Doing that can have negative consequences if the application is also pursued in the US, for the reasons stated in the article.

    Additionally, an excessive focus in the application on the subjective technical problem, can also have, in my view, negative consequences before the EPO.

    This is because, the EPO will focus their examination on whether the invention solves the objective technical problem and whether it provides a technical contribution over a prior art that might be (and will usually be) unknown to the application drafter at filing. The description of the solution of the subjective technical problem might not be sufficient to support a claim directed to the solution of the objective technical problem.

    This inherent feature of the EP system should push the drafter to focus their efforts on describing, in the application, the invention rather than the problem. This means providing a complete description of all the structural and functional features of the invention and the related inner workings. In this way, a drafter can also minimize added matter issues should amendments be required, in view of the current rather strict interpretation of A 123(2)EPC.

  8. Ramón Urteaga May 31, 2019 9:49 am

    Hi Enrica. Interesting article. You mention the need to avoid “draconian solutions,” such as that of preparing two different applications for the two jurisdictions. I actually support that approach in certain cases (e.g., for innovations that may be labeled as very important to a company) – with the additional costs of doing it that way being more than justified when compared to those incurred in US litigation when addressing a weakness in a US patent caused by a European-drafted background or even admission in the detailed description. But I must admit that whenever I have searched the internet for articles discussing that approach, I get zero results. Are you aware of global corporations that follow such “draconian” approach as a strategic choice?

  9. Enrica Bruno June 10, 2019 1:21 pm

    Hi Ramon thank you for you comment.
    As you correctly noted, in my view, the need to avoid the “draconian solution” is rooted in its costs. Even if they pale compared to the costs of US litigation (if one follows a case-by-case approach) it is my experience that, at filing ,applicants look at the volume of all the applications they plan to file.
    This is because, at that time, applicants typically do not know which application in the pack will be key to their strategy in multiple jurisdictions.
    With that said, it is my experience that companies which follow the “draconian solution” (and/or ask their EP counsel to review US applications before filing as an intermediate solution) are large companies that have applications they already know will be important for their business strategy in foreign countries and have a budget allowing them to shoulder the added costs.
    This is in stark contrast with smaller applicants who often have to cut on their foreign filings because they cannot afford even the base costs of such filings.
    The hope is that the progress of harmonization among the various patent systems will attenuate the drawbacks of single filings and provide applicants with more options.