Abstract–European Patent Office (EPO) practice, guided by the European Patent Convention (EPC) is in many aspects very similar to Europe’s national patent practice, such as the German patent law. In this article, the US practitioner is briefly reminded of some of the considerable differences between US Patent and Trademark Office (USPTO) patent prosecution practice and its European counterparts, primarily the EPO. The utility model is highlighted and discussed using the patent laws of Germany as a case study for comparison. Additionally, this paper examines the potential benefits of utility model protection in the US, as well as what changes would be required in order to minimize any negative impact of the introduction of such a new intellectual property (IP) right to the existing US legal system.
USPTO and EPO patent prosecution practices differ in several respects. For example, a patent application to the EPO goes through a centralized application and prosecution phase, and, if granted by the EPO, this patent has the same effect as a national patent granted by all contracting states. Therefore a European patent (EP) is subject not only to the national law of the individual member states but also to the provisions of the EPC. During centralized prosecution at the EPO, patent claims are generally amended more easily than in the US, and without significant negative consequence. Finally, one of the more notable differences is that an EP application may be subject also to a centralized inter-parties opposition process at the EPO in which it may be granted in either its original or amended form or revoked.
Another important difference is that the USPTO has a “first to invent” system whereas the EPO is a “first to file” system. Thus, the earliest applicant may obtain an EP even if the invention was first invented or conceived of by another party. Also, an inventor has the right to be named on an EP application, but–in contrast to the US–the inventor on an EP application has the right to decline being named as an inventor on the patent application. In addition, and most importantly, incorrect naming of the inventor will not jeopardize the validity of the EP.
Also in contrast to US patent law, EP applications are required to have “absolute novelty.” For the purposes of the EP application, if the invention was known, described in a printed publication, or publicly used anywhere prior to the priority date of the EP application, novelty of the invention is destroyed. Thus the concept of a grace period is not known in Europe, generally, with the exception of a six-month grace period in extremely rare cases related to certain exhibitions or instances of evident abuse. Novelty of an EP application is destroyed also if the invention has been described in another EP application with an earlier priority date–even if it was not published before the priority date of the application under examination. However, even where such “special” prior art does carry an earlier priority date, it cannot be used for evaluating non-obviousness (inventive step) in the prosecution of an EP application.
The hurdle to demonstrate inventive step is often higher in EP practice. EPO examiners have never been under an obligation to demonstrate a prima facie case, for example, and they are able to base their arguments on what is generally known to one skilled in the art more than their US counterparts. Another key difference is that it is expected that inventive step in EPO practice will be argued on the basis of the “problem solution approach”, which consists of determining (1) the closest prior art, (2) the technical problem which the claimed invention addresses and solves in light of the closest prior art (the objective technical problem), and (3) examining whether the claimed solution to the objective technical problem is obvious to the skilled person in view of the state of the art in general. [i]
Furthermore, there is no requirement to specifically disclose a “best mode” in an EP application; an enabling mode is sufficient. Also, applicants for an EP are not under any requirement to disclose known prior art or evidence relevant to the patentability of an application to the EPO together with the application or later during its prosecution.
It is worth noting, finally, that European prosecution history estoppel has been a matter for national law rather than one for the EPO. With fairly limited exceptions, prosecution history estoppel does not exist in the member states of the EPO.
Dr. Hans-Peter Brack [a1]