USA Patent Law vs European Patent Law

Have you wondered what the difference is between patent law across borders? International Treaties which have harmonised some aspects of patent law between areas of the world, like the Patent Cooperation Treaty.  The Leahy-Smith America Invents Act (AIA) took a small step closer to harmony with Europe, by switching the USA to a first-to-file system. However, there are still significant differences between USA and European Patent Law. The differences start before a patent application is even filed. For example, public disclosure before application. If such disclosure is made by the inventor himself or information is obtained by a third party directly from the inventor, it does not bar the inventor from filing for a patent application, provided it is filed within 1 year from such disclosure. This 1-year grace period applies only to the USA and the inventor automatically loses all potential patent rights in Europe.

Entity sizes

The USA has a concept of entity sizes, which affords those who meet the requirements to receive discounts:

Small Entity = any small business concern as defined under section 3 of the Small Business Act and to any independent inventor or non-profit organization as defined in regulations issued by the Director.

Micro Entity = any small entity that the inventor has been named as the inventor on more than four previously filed patent applications. (Not including applications filed in other countries or international applications.)

Large Entity = any other business, inventor and/or applicant who does not meet the above requirements.

One-part or two-part claims

The most notable discounts are in relation to claims. A fee is payable for each independent claim of more than three and each claim in excess of 20. In Europe, excess claims fees are payable for any claim over 15 and an application will have one independent claim. These are claims that contain two-part claims, e.g. ‘characterised in that, ‘with an improvement comprising’ and then mentions a further feature.

USA applications contain one-part claims. If there are two-part claims, anything before the characterising portion is regarded to be prior art and may damage patentability. If the same happens in Europe, the applicant will be asked to move the feature to the characterising portion of the claim.

Novel and inventive steps

In European patent law, the important requirement for an invention is that it must be novel and involve an inventive step, this is comparable to the US requirement that an invention must be novel and not be obvious.  However, Europe applies a stricter interpretation of these requirements. An application involves an inventive step if it solves a technical problem in a non-obvious way; meaning it must solve a problem, the problem must be technical and this cannot be determined in hindsight.

Finally, the European Patent is open to the opposition after grant by any third party within 9 months after grant. The procedure is essentially a debate between the applicant and the opposing third party. The USA has a re-examination procedure where anyone can present reasons, evidence and until the AIA on the applicant was party to the proceedings, but the Act introduced a change to it being an ‘inter partes’ re-examination but it is still not on par with oppositions.

While the AIA has in some ways harmonised patent law closer to European law, there are still major differences. A patent drafted for USA will inevitably need adjusting to meet the strict requirements of the European patent office. This could be during prosecution or by amending the USA application prior to filing the application in other jurisdictions, such as filing a PCT.