Keep Patent Infringement Risky Business—Some Reflections on the Proposed Patent Reform Bill (S23 February 2011).

A long time ago in a galaxy far far away, the Federal Circuit was presented with a case of careless and reckless infringement.  Based upon its facts, the Federal Circuit decided that it was appropriate in many circumstances to charge an infringer with willfulness, to multiply the actual damages, and to charge interest on the deferred actual damages.

 Now that’s a lawsuit.

 That case, Underwater Devices, was one of the foundations for opinion and infringement analysis work for the better part of two decades.  Admittedly, it knocked over a few unintended dominoes such as an implication of willfulness derived from a failure to produce an opinion.  This in turn tended to mitigate the public policy benefits of the attorney-client privilege.

Nevertheless, Underwater Devices made it clear that patent infringement was measurably risky.

For now, initial drafts of S23 attempt to mitigate the risks of willful infringement (e.g., proposed Section 4 on Damages).

Should we be concerned, however, with a reduced risk of willful infringement?  Does good public policy call for reducing risk to a point where patent infringement does not matter, or matters very little?

Prior to Underwater Devices and prior to the Federal Circuit, it was a well established patent law practicality that certain circuits rarely if ever enforced patents.  Typically, the defeat would be assigned to obviousness which is, of course, the most subjective aspect of patentability.

(The “second derivative” of obviousness—i.e., whether a particular inventor or practitioner should have subjectively cited any particular reference in the subjective obviousness context—deserves a world of comment all by itself).

Furthermore, in many pre-CAFC cases because infringement and willfulness were not subject to adequate remedies, the price of patent infringement generally turned out to be the same as a license.

This presented the infringer with two possible outcomes, both of which were low risk. 

Under the first low risk outcome, the infringer litigated and won.  Thus, the cost of infringement was limited to the cost of the lawsuit.  In turn, the cost of a lawsuit may be proportionally acceptable to the potential risk that was mitigated.  If the cost of the lawsuit represented only a few percentage points of the potential risk, then the outcome was highly favorable to the infringer.

Under the second low risk outcome the infringer litigated and lost.  Nevertheless, because courts rarely found willfulness or granted prejudgment interest, the eventual remedy was the total of the cost of a license plus the cost of litigation.  Because licensing calculations have always assumed that the licensee is entitled to make a profit, the resulting cost to the infringer remained potentially minimal.

Accordingly, the disincentive to avoid infringement—was minimal.

Unless patent infringement carries a relatively steep risk, the value of individual patents and the associated innovation will necessarily be reduced.  IP practitioners and their clients have long recognized that jurisdictions in which the risk of infringement is minimal or nonexistent are jurisdictions in which innovation is correspondingly stunted, minimized, or simply nonexistent.

Therefore, I would encourage practitioners to raise their voices to make sure that the new patent act (if there ever is one) keeps patent infringement a risky business.

Filing US Patent Applications—The Application Data Sheet

By Phil Summa

As a practice pointer, if you are planning to file a patent application in United States either from an individual country or under the PCT (or even directly as the priority case), the information that your US associate will (1) need eventually and (2) find helpful immediately, can be located on a US Patent Office (“USPTO”) form known as an Application Data Sheet.

The Application Data Sheet is designed by the USPTO to provide the relevant inventorship, assignee, and related information associated with the new patent application.  As a “best practice” in the United States, an Application Data Sheet is typically filed with all new applications.

If you are a practitioner outside of the United States, you can easily access the Application Data Sheet at the USPTO website (www.uspto.gov) and in particular at this link (http://www.uspto.gov/forms/sb0014_fill.pdf).  If you can provide your US associate with all of the information requested in the Application Data Sheet, you will enhance the initial filing of the application, smooth the prosecution, and reduce or eliminate follow on charges that are often required to provide the information after the application has been filed.

Mirror Image Patent Prosecution

Recently, I have had the interesting experiences of acting as an expert witness in a patent infringement lawsuit and learning that a patent that I drafted and prosecuted has entered litigation.

These experiences raise the question for me that I would raise with management (potentially including in-house counsel) in charge of litigation and patent prosecution:  are the criteria that you request for new patent applications congruent with—the mirror image of—the criteria that you use to select patents for enforcement?

History demonstrates that patents are successfully enforced on the basis of claim coverage, relevant prior art, and prosecution history.

In contrast, however, recent trends indicate that clients draft and prosecute patent applications based on factors such as fixed fees, low cost prosecution, and other internal metrics.

Internal metrics are academically fine and they undoubtedly improve snapshot balance sheets, but they are often fundamentally unrelated to the litigation or licensing value of a patent.  If a patent is prosecuted with the goal of minimizing cost, then such prosecution may be risking the patent’s value in the enforcement or licensing context.

Stated differently, does anyone select a patent to be enforced—or does anyone pay to license a patent—because it cost the least to write and prosecute?  Probably not.

Thus, clients who are serious about potentially enforcing their patents should draft and prosecute their applications with a philosophy that is the mirror image of eventual enforcement:  obtain the best possible claim coverage, find and deal with the relevant prior art; and produce a prosecution history that enhances, rather than minimizes, the value of the issued claims.

Frankly, this need not increase overall costs.  Instead it should helpfully direct the costs to meet the desired enforcement goal.  It appears, however that clients can be tempted by certain selected cost metrics; i.e., two patent applications drafted and prosecuted for $X,000 are automatically “worth” more than a single patent application drafted and prosecuted for the same fee.

This is not to blame in-house counsel.  Often, other management views legal services (inside and outside) as a necessary, but generally undesired, cost that ought to be minimized whenever possible.  This can encourage a goal of getting more items (patents, depositions, whatever) for less cost, but without keeping the true objective (litigate the patent; win using the deposition) in mind.

The numerical goal of getting more items has been referred to as the “pile of coal” theory; i.e., if you gather enough individual lumps of coal, the weight and time will eventually produce a diamond.  Using a different starting material, this is also known as the “pony in there somewhere” school of thought.  Enjoy Christmas morning.

US Government Employee Inventors–Brief Comments

  As a starting point, 37 C.F.R. § 501.6 provides that “The Government shall obtain, except as herein otherwise provided, the entire right, title and interest in and to any invention made by any Government employee.”  In other words, generally, where the sole inventor is an employee of the Federal government, the Federal government will retain title in the invention.

We are unaware of any general authorization for Federal agencies to assign the title of an invention of a Federal employee.  However, under limited circumstances Federal agencies are permitted under 15 U.S.C. § 3710a to assign title pursuant to a Cooperative Research and Development Agreement (CRADA).  CRADAs allow Federal agencies to share facilities and employee, but not funds with non-Federal parties in conducting research.

Moreover, when a Federal agency obtains title in an invention, 35 U.S.C. § 207 permits the agency to grant exclusive, nonexclusive, or partially exclusive licenses, albeit subject to the limitations defined in 35 U.S.C. § 209.  Obtaining an exclusive license could provide rights comparable to those from an assignment of title.

If an employee of a non-US government entity is an inventor, then achieving ownership of the invention is a bit easier.

Under the Bayh-Dole Act, which is codified in 35 U.S.C. §§ 201–212, nonprofit organizations and small businesses may elect to retain title in inventions conceived or reduced to practice in the performance of work under a funding agreement.  There are, however, a number of exceptions to the right of contractors to retain title in their inventions defined in 35 U.S.C. § 202, including that the funding agreement may provide otherwise “when the contractor is not located in the United States or does not have a place of business located in the Unites States or is subject to the control of a foreign government.”  When a Federal employee is a coinventor of an invention made with a nonprofit organization, small business firm, or non-Federal employee, the Bayh-Dole Act authorizes Federal agencies to either (i) license or assign its rights in the invention or (ii) acquire rights in the invention from the nonprofit organization, small business firm, or non Federal employee.  Although not found in the Bayh-Dole Act, Executive Order 12591 effectively extended the application of the Bayh Dole Act to all contractors regardless of size “to the extent permitted by law.”

Did you get fries with that patent application?

By Phil Summa

I have followed some discussions recently on social media about the cost of intellectual property protection.  In the Internet age, a ridiculously low bidder will pop up.

Recently, LegalZoom has offered to file provisional patent applications for $309; i.e. Uncle Sam’s $110 filing fee and their charge of $199 for slapping the cover sheet on it and filing it for you.

Of course, LegalZoom sends you a printout in a nice folder that says LegalZoom on the front and that’s equivalent to the folders you can buy at Staples for the price of a nice birthday card.  And, LegalZoom is kind enough to remind you in the small print that if you really need a lawyer, you’d better hire one.

Do you want fries with that?

I believe the general consensus demonstrates that a worthwhile patent application–which is essentially the first document in a lawsuit (a quote not original with me)–should take a minimum of 20-40 hours to complete, and those of experience in complex fields of chemistry, electronics, and biotechnology will certainly recognize that well prepared applications in those fields can and will require even more time.

As experienced practitioners further recognize, if you ever license or enforce your patent, the quality and contents of the initial application–including a provisional–will be carefully scrutinized in the US and Europe.  In many cases, if the provisional falls, the US or EPO application (or eventual patent) will fall with it.

A $199 fee for 20 hours worth of work is, of course, ten dollars per hour; which represents a mere $2.75 over the current federal minimum wage.  This raises the following question:  why would an individual with an undergraduate degree in science or engineering, potentially a graduate degree in the same or related fields, an expensive law degree, and the overhead of operating a law practice write a patent application for the same wage as could be earned selling fast food?

Answer:  there’s NO reason to draft a patent application for $10 (or less) an hour and in reality, no patent lawyer drafts applications for that fee to make a living.  LegalZoom and equivalent services merely upload your content to the Patent Office, and then overcharge you for the privilege.

Law practice is demanding and difficult and carries a fair amount of responsibility and overhead, including the professional responsibility of handling another person’s (or corporation’s) significant IP resource in front of the US Patent Office and then potentially the Federal courts of the United States.  Because of that, a certain portion of a professional fee is required simply to “break even” or “keep the lights on” or however you want to phrase it.  Those costs exist even for small practitioners that leverage technology to reduce more conventional overhead.  No reason exists for highly trained professionals to stick their necks out on your behalf for a fee that simply cannot be recouped.

Nobody needs to overpay for anything if they spend a little time investigating.  Nevertheless, a patent application–even a provisional patent application–ought to be well drafted and carefully handled, and a serious inventor should be prepared and willing to pay for appropriate services.

Thus, if you get a patent application written for $199 dollars, make sure you get fries.

Common Sense and Obviousness: Substantive Requirements

By McCord Rayburn

In May of 2007, the patent world was humming with discussion of the Supreme Court decision in KSR International Co. v. Teleflex Inc., 550 U.S. 398 (2007).  The discussions and CLE programs about the KSR decision were ominous.  The Supreme Court held that the Federal Circuit’s relatively straightforward “teaching-suggestion-motivation” (TSM) test for obviousness was too rigid.  Instead, the Supreme Court stated that an obviousness analysis must not “deny factfinders recourse to common sense.”  KSR at 421.  Indeed, Justice Kennedy’s opinion refers to “common sense” five times.  Naturally, many patent attorneys feared they would be seeing the words “common sense” in every office action they received from the USPTO.  Three years of Federal Circuit case law, however, have allayed many of these fears by adding substantive requirements for obviousness findings relying upon “common sense.”

One such case, TriMed, Inc. v. Stryker Corp., 2010 U.S. App. LEXIS 11700 (Fed. Cir. 2010), was decided on June 9, 2010.  In 2006, TriMed initiated an infringement action against Stryker, asserting that one of Stryker’s wrist fixation devices infringed certain claims of TriMed’s U.S. Patent No. 5,931,839.  The ‘839 patent covers an implantable device used to set bone fractures. After discovery, the district court granted Stryker’s motion for summary judgment of noninfringement by signing Stryker’s Statement of Uncontroverted Facts and Conclusions of Law.  On appeal in TriMed, Inc. v. Stryker Corp., 514 F.3d 1256 (Fed. Cir. 2008) (referred to as TriMed I), the Federal Circuit reversed and remanded because the district court had improperly construed a claim term as being subject to 35 U.S.C. § 112, paragraph 6.

On remand, Stryker moved for summary judgment of invalidity on the grounds that the asserted claims of the ‘839 patent were anticipated by and obviousness in light of three prior art references.  Stryker’s obviousness arguments asserted that the claims of the ‘839 patent were a combination of known elements from the references combined using a “logical, commonsense solution.”  In response, TriMed contested the alleged teachings of the prior art, the proposed combination of references, and the assertion that invention was a “logical, commonsense solution.”  TriMed also presented evidence of secondary considerations of nonobviousness.  The district court, again, granted Stryker’s motion by signing Stryker’s Statement of Uncontroverted Facts and Conclusions of Law, but crossed out the section on anticipation.

On appeal before the Federal Circuit for the second time in TriMed, Inc. v. Stryker Corp., 2010 U.S. App. LEXIS 11700 (Fed. Cir. 2010) (referred to as TriMed II), TriMed argued that the district court improperly resolved genuine issues of material fact in favor of Stryker.  Stryker argued, among other things, that, based upon known advantages and disadvantages of known methods, common sense and logic would have led one of ordinary skill in the art to manipulate the known elements to arrive at the claimed device.  Stryker further argued that because TriMed did not dispute that the methods were known at the time of the invention, there were no genuine issues of material fact.  The court, after discussing the legal standards for obviousness, found that there were factual disputes about the content of the prior art and whether the claimed invention achieves predictable results by using prior art elements according to their established functions.

More importantly, however, with respect to Stryker’s “common sense” argument, the court states “Stryker attempts to circumvent these genuine issues of material fact by suggesting that the claimed subject matter would have been obvious because it is, at least in part, a commonsense solution.”  Summarily dismissing Stryker’s argument, the court states:

Although reliance on common sense does not require a specific evidentiary basis, “on summary judgment, to invoke ‘common sense’ or any other basis for extrapolating from prior art to a conclusion of obviousness, a district court must articulate its reasoning with sufficient clarity for review.”

TriMed II (quoting Perfect Web Technologies, Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1330 (Fed. Cir. 2009)).  The court further states “Merely saying that an invention is a logical, commonsense solution to a known problem does not make it so.”  Id. The court then reverses the grant of summary judgment because genuine issues of material fact were unresolved and the record failed to provide a reasoned basis to support summary judgment.

TriMed II gives patent attorneys one more tool for rebutting obviousness rejections asserting that the claimed invention is merely a combination of known elements that provide a common sense solution to a known problem.  If such a rejection is only supported by a conclusory statement, the attorney can cite TriMed II and point out the failure to provide some articulated reasoning that supports the finding of obviousness.  Moreover, patent attorneys can breath a sigh of relief after cases like TriMed II because the Federal Circuit continues to provide structure to the broad, sweeping statements in Justice Kennedy’s KSR opinion.

Bilski, Babbitt and Baloney

(In which Phil Summa uses one of his favorite movies to comment on §101 subject matter)

In attempting to develop a layman’s explanation of Bilski subject matter, it occurred to me that a mental process might be qualified as “something that Raymond Babbitt could do in his head.”  I refer; of course, to the 1988 movie “Rain Man” in which Dustin Hoffman won an Academy Award playing Tom Cruise’s brilliant autistic older brother.

Thus:  if a patent claim could be carried out by Raymond in his head, it by definition would fall under the “mental process” exception to Bilski’s (§ 101) four categories of statutory subject matter.

Using the Rain Man analogy, let’s assume that the patent covers the steps of deciding whether to take another card (i.e., “hit” or “stand”) in a blackjack game.  In the movie, Charlie Babbitt teaches Raymond how to count cards in order to take advantage of Raymond’s extraordinary capacity to recall numbers.  So, let’s call Charlie the patentee.  Thus, when Raymond makes decisions at the blackjack table we assume he does so by using Charlie’s patented technology.  Nevertheless, Raymond (or anyone else) could make the same decision for some other reason. 

For example, a player unfamiliar with card counting techniques (or unable or unwilling to attempt them) may hit or stand using a more primitive count, for emotional reasons, or by just guessing.  If the card selected happens to be the same card selected according to Charlie’s patent, would the player be infringing?  I would argue that no objective proof could be provided because no objective method would exist for determining whether or not the player had followed the steps in Charlie’s patent to make the choice. 

In other words, how would you prove infringement?  i.e., if a person can carry out an invention entirely in his or her head, how would you prove that they had infringed?

One answer might be that the infringer would need to carry out some physical step or task that would demonstrate that they had infringed in their head.  This seems to take us back to the “machine or transformation” test.  In other words, by following the steps I carried out with some physical object you could prove that I had infringed in my head.

I assume, however, that the physical object would have to be something more than a computer (or equivalent).  In other words at some point something other than (1) an individual’s internal thought processes and (2) calculations on a device would be required to demonstrate that infringement was taking place.  If such proof is required for infringement, perhaps it should be required for patentability.

I believe this is entirely consistent with § 112 requirements.  In one sense, § 112 obligates the inventor to make sure that the public can determine, “without undue experimentation,” whether or not the public’s activity infringes the inventor’s patent.  At the Federal Circuit, the Bilski dissenters touched on this point; i.e., that in some cases the “mental process” inquiry is best addressed under § 112 rather than under § 101.

As the Rain Man analogy illustrates, even manipulating a physical object (a playing card, a computer, pencil and paper) doesn’t necessarily prove that a particular mental process has been carried out. 

The § 112 quid pro quo should certainly apply to a Bilski-type inventor; i.e., if you want patent protection, please define the activities that objectively would infringe your patent.  If I can infringe your patent merely by thinking about it, or if the objective steps I carry out could result from infringing or noningfringing activity, then the patent claim fails to provide enough information for me to know whether or not or which of my activities other than thinking would infringe the patent.  On that basis, from a public policy standpoint, it would be unfair to the public to allow such a claim to be enforced.  If the claim can’t be enforced, it shouldn’t issue in the first place.

Bilski—By the Numbers

By Phil Summa

There are four (4) categories of patentable subject matter (§ 101):

Processes	Machines
Manufactures	Compositions of Matter

 There are three (3) exceptions (Case Law Precedent):

Laws of Nature

Physical Phenomena

Abstract Ideas

 

Thre are three (3) further requirements for patentability:

Novelty (§ 102)

Nonobviousness (§ 103)

A full and particular description (§ 112)

The Registered Community Design (RCD) of the European Union

Guest Blogger Cathal Lane is a partner at Tomkins, one of Ireland’s longest established Intellectual Property law specialists.  Cathal is a registered European Patent Attorney and serves as a Council member of EPI (the institute which governs European Patent Attorney matters).  Cathal is the former Chairperson of the Patent Laws Committee of the Irish Association of Patent and Trade Mark Attorneys.

The European Union introduced an under-utilised but convenient European Union-wide Community Design registration system in April 2003. It is known by various names but the correct name for a design registered under this system is “RCD” (Registered Community Design).  The RCD has some great benefits which are summarised below:

1.  One application covers all 27 EU member countries: Austria, Belgium,
Bulgaria, Cyprus, Czech Republic, Denmark, Estonia, Finland, France,
Germany, Greece, Hungary, Ireland, Italy, Latvia, Lithuania, Luxembourg,
Malta, the Netherlands, Poland, Portugal, Romania, Slovakia, Slovenia,
Spain, Sweden, the UK.

2.     The cost is akin to that of a single application in one country, and the savings are even greater where there are multiple designs;

3.     Ease and speed of obtaining registration-there is no search or substantive examination problems to deal with;

4.     The design is seen as something apart from the article to which it is applied, so potentially the same design applied to a different article infringes the registration;

5.     Fits very neatly with trademark protection – novel product shapes and graphic symbols will be protectable as RCDs, whereas previously design protection may not have been available for such designs under design registration systems or by trade mark application

6.     Potential for protection of up to 100 designs within a single design registration;

7.     The designs in a multiple application do not need to relate to the same design, they only need to be in the same classification code (as set out under the Locarno system for designs);

8.     A valid design registration can be obtained in certain circumstances even if the design has been disclosed, as the test for novelty of the design is not the “absolute” test;

9.     A grace period of 12 month exists for filing a valid application for registration after disclosure of the design by the designer (or his/her successor in title,) or as a result of action taken by designer (or his/her successor in title)

10.  The total term of protection is 25 years (renewal required every 5 years);

11.  The system was specifically designed with the makers of large volume fast-changing consumer items in mind including clothing, footwear, sports equipment in mind; and

12.  A flexible approach to a representation of the design – up to seven views can be presented.

Recent Changes to European Patent Practice

By Nigel Tucker–Guest Blogger Nigel Tucker is a partner at Boult Wade Tennant  in the United Kingdom.  Nigel holds a PhD in Surface Science and an undergraduate degree in Physics.  Nigel is a Chartered Patent Attorney and a European Patent Attorney and is an author of  Concise European Patent Law

 Recent years have seen regular changes to European patent law that affects how applications are prosecuted before the European Patent Office, and further changes came into force on 1 April 2010.  These changes attempt to force applicants to put claims into a “European” format early on in prosecution, and so will have particular significance in the USA where differences in patent law produces substantial differences in both drafting and prosecution practice.  Care must be taken when amending (and also when deciding not to amend), as it may lead to a reduction in the scope for manoeuvre later on during examination.  Hence, more thought and more work is now required at the time of filing European patent applications, and the counsel of your European patent attorney will be more valuable than ever.

 Exactly how examiners will apply the new rules remains unclear, although we expect experience over the next few months will provide some clarification.  This blog puts the spotlight on some of the changes and our experiences with how the EPO is applying the new rules, and how we recommend adapting practices to make the most of the changes.  No comments are offered on the rights or wrongs of the changes!  Necessarily, some issues and subtleties are not covered here, and so we would always advise you seek your European attorney’s counsel on all specific cases.

 
Divisional applications

 The opportunity to file divisional applications late in prosecution has been curtailed.  The new rules require all divisionals to be filed:

 from a pending patent application

• within two years of the first communication from the Examining Division to issue on the earliest patent application (i.e. for cascading divisionals, you have to work your way up to the top of the chain to determine the deadline).

 In addition, a new two-year period is set when the Examining Division raises a particular disunity objection for the first time.  While this appears to offer a way of opening a new window for filing divisionals, examiners have ways to prevent this.  For example, search examiners can now require applicants to elect a single independent claim in each category for searching – meaning that unelected claims may not reach substantive examination and so will not trigger a new disunity objection and the associated new divisional deadline.  Any attempt to add new independent claims after search to provoke a disunity objection may be rejected by the examiner (another rule change means voluntary amendments after search are admissible only at the discretion of the examiner).

 The new rules regarding divisionals also apply to applications pending as of 1 April 2010.  A grace period sets a deadline of 1 October 2010 for still-pending applications where the two-year calculations above indicate an earlier date.

 Moving away from divisionals, most rule changes affect how applications are to be filed and prosecuted in the following months.  The rules apply differently depending upon the history of the applications, as follows.

 
Ex-PCT where EPO acted as International Searching Authority (ISA)

 The EPO acting as ISA will have provided a search and a written opinion on patentability.  As before, the EPO will not issue a further search report during the regional phase but, shortly after regional phase entry, will issue a communication inviting amendment of the application within a period of only one month.  However, the communication will now also set the same period for filing a formal response to the written opinion and failure to respond sees the application deemed withdrawn.  After a response is filed, the application progresses to substantive examination as normal.

 We are encouraging applicants to file amendments and/or comments in response upon regional phase entry.  We are not yet sure to what extent any such amendment/comments are considered to be the necessary response that would result in the mandatory invitation to respond being suppressed.  For example, is a comment to say that the objections previously raised are without merit enough to satisfy the requirement for a “response”?  Informal comments from examiners suggest the new requirement will be applied generously, although we do not suggest putting this to the test until we have seen hard evidence to support this view.  If anything, the reverse appears to be true: even after filing amendments and a full response upon regional phase entry, we are seeing communications issue with the usual language inviting a response, and with no acknowledgement of our previous response.

Ex-PCT where EPO did not act as ISA

 Where the EPO did not act as ISA, they will issue a search report accompanied by a search opinion.  Before beginning the search, the EPO will issue the usual communication inviting amendment of the application.  Response to this invitation is not mandatory.  Search will then begin, although with an initial inspection of the claims.

 Where there are multiple independent claims in the same category, the search examiner will normally require election of one of the claims to be searched.  Unfortunately for applicants, the unelected claims become unsearched subject matter and must subsequently be deleted without the opportunity to reintroduce them later (the unsearched claims may be pursued only by filing one or more divisional applications, with the associated expense).

 Where the claims do not allow a meaningful search to be carried out (usually because they relate to a business method), the search examiner will require a statement of the subject matter to be searched.  During examination, the claims must be amended to conform to any subject matter that has been searched.

 Eventually, the supplementary search report will issue (accompanied by a search opinion).  Around a month or so later, the EPO will issue the usual communication inviting the applicant to indicate their intention to continue with the application within a period of six months.  However, the reply must be accompanied by a formal response to the search opinion, otherwise the application is deemed abandoned.

 To avoid unelected claims being deemed unsearched subject matter, we suggest bringing forward a review of the PCT claims such that amendments may be filed to forestall any invitation to elect.  In particular, we recommend removing multiple independent claims in the same category (and moving the subject matter of those claims to the description in the hope it may be available for later amendments), or reducing the chance of an objection by indicating why the claims conform to one of the exceptions that allow multiple independent claims in the same category.

Convention applications (non-PCT)

 Convention applications must be searched by the EPO and, consequently, are handled similarly to ex-PCT applications where the EPO was not the ISA and so the procedure is very similar to what has been described above.  There is no communication inviting amendment of the application but, as described above, the search examiner’s first act is to review the claims.  For multiple independent claims in the same category, an election of one of these claims will be required and unelected claims must be subsequently deleted and may not be reintroduced later (divisionals are required).  A statement of the subject matter to be searched will be required where claims do not allow a meaningful search to be carried out.

 Eventually, an extended search report will issue that includes a search opinion.  Publication of the search report sets a six-month period for requesting examination.  However, the applicant’s request for examination must be accompanied by a formal response to the search opinion, otherwise the application is deemed abandoned.

 Due to the similarity with ex-PCT applications where the EPO did not act as ISA, we recommend handling convention filings in a similar manner.  That is, we are encouraging early review and amendment of the claims to be filed to ensure total room for manoeuvre (subject only to ensuring continued entitlement to priority where it is intended to claim it).

Requirement to indicate basis for amendments

 There is now a formal requirement to indicate all amendments made along with the basis for those amendments.  Failure to comply leads to a communication setting a one month term in which to indicate amendments and basis.  However, it is not yet clear how strictly the EPO is enforcing this rule, i.e. will any indication of basis be sufficient no matter how vague.  Informal discussions with examiners suggest the provision will be applied reasonably generously, although we recommend providing detailed descriptions of basis wherever possible.

 We advise consulting your European patent attorney regarding amendments well in advance of any deadlines.  The EPO treats addition of subject matter strictly, and many of the issues are generally not well understood outside of Europe.  This is one area of practice where European attorneys’ counsel is invaluable.