How To Draft PCT International Application From The Perspective Of European & US Requirements

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(Author: Jiang Zhou; Source: Kangxin Partners, P.C.)

In recent years, the number of PCT international applications submitted in China has been on the rise. According to statistics, in 2011, PCT international applications in China soared to 164 mil,  an increase of 33.4% over the same period of year 2010, the fastest growth rate. In accordance with the company demand, these PCT international applications will eventually enter different counties. However, different patent right protection requirements in different countries, US and Europe in particular- the center for patent rights, mean that there are different requirements on protection type and categories in the two places. As such, drafting a PCT international application complying with European and US requirements is becoming a critical issue. In this article, the writer intends to, on the basis of practical cases, illustrate how to draft PCT international application catering to patent protection requirements of China, US and Europe.

1. US patent application requirements and coping measures thereof for the PCT international application

1) Number of claims

According to the US Patent Law, if a US patent application comprises of over 20 Claims, each additional Claim needs to pay a surcharge of $80 (for small entities, the surcharge is $40); in addition, should the number of independent claims be above 3 in a US application, each additional independent claim needs to pay a surcharge of $420 (for small entities, the surcharge is $210).

In order to save application fees, if not under very special circumstances, the total number of the claims applied in PCT international application submitted in China should be within 20, while the number of independent claims applied for within 3. In the meantime, if there are other technical solutions to be protected for the PCT international application besides of the technical solutions already claimed in the claims, the description of such other technical solutions is recommended to be recorded in the specification, so that in the following procedures, such technical solutions can be supplemented to the claims based on the described scope of the specification.

Undoubtedly, more than 20 claims or more than 3 independent claims can be provided in the PCT international application. Nevertheless, it is recommended to mark the relevant importance of the claims in the paper file or the electrical file of the application, so that when the PCT international application enters into US nation phase, the number of the claims can be reduced according to the technology development progress and the budget of the applicants, achieving balance in both protection scope and budget control.

2) Citing relationship of claims

According to US Patent Law, a multiple-citing claim will not be permitted, wherein the multiple-citing claim refers to a claim citing multiple previous claims. If a multiple-citing claim exists in an US patent application, the US examiner will rewrite such multiple-citing claim to multiple claims each of which cites one of the multiple previous claims and charge a fee of $780 (for small entities, the fee is $390).

With regard to the above provisions, the writer recommends that the applicant or the patent attorney can ignore the USPatent Law requirements on the multiple-citing claims when drafting the PCT international application, and rewrite the multiple-citing claims in the PCT international application when the PCT international application enters into US national phase. It should be noted that the examiner in US determines whether to charge additional fees based on the number of rewritten claims, and thus in the case that the number of the rewritten claims exceeds 20, the patent attorney should communicate with the applicant on whether to delete certain unimportant claims based on practical demand.

For example, PCT international application comprises 20 claims including the following:

1. A method of transmitting data, comprising:

– receiving a request message by a base station from a mobile terminal;

– allocating transmission parameters in response to the request message by the base station;

– transmitting the transmission parameters by the base station to the mobile terminal.

2. According to the method of the Claim 1, wherein after the base station transmits the transmission parameters to the mobile terminal, the method comprises:

– receiving by the mobile terminal the transmission parameters transmitted by the base station;

– transmitting data to the base station by the mobile terminal according to the transmission parameters.

3. According to the method of the Claim 1 or Claim 2, wherein the transmission parameters comprises a uplink control power.

As claim 3 is a multiple-citing claim, Claim 3 is required to be rewritten when the PCT international application enters into US national phase. When claim 3 is rewritten to two claims which cite claim 1 and claim 2 respectively, which are as follows:

3. According to the method of the Claim 1, wherein the transmission parameters comprises a uplink control power.

4. According to the method of the Claim 2, wherein the transmission parameters comprises a uplink control power.

The total number of rewritten claims is 21. Based on technological analysis and functions during responding to the office action in US, the protection scope of the technical solution claimed in rewritten claim 4 is the same as the protection scope of the combination of the technical solutions in rewritten Claim 1-3, and thus applicants are recommended to delete the rewritten claim 4 so as to save application costs.

3) Protection category of claims

Article 101 of US Patent Law 35 U.S.C states “Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefore, subject to the conditions and requirements of this title”.

According to above Article 101 of US Patent Law 35 U.S.C, the statutory subject matters under US Patent Law include the following:

1. (process)

2. (machine)

3. (manufacture)

4. (composition of matter)

The above mentioned statutory subject matters are roughly the same with those of the Chinese Patent Law, however, divergences do exist in terms of protection of computer software. To be more specific, the US Patent Law does not protect solutions on computer programs and data stream, but solutions on computer readable storage medium, computer program products and manufacture are permitted, while Chinese Patent Law does not protect any of the above solutions.

As such, for inventions related to computer software, a set of or multiple sets of technical solution about computer software, for example, technical solutions about computer readable storage medium, computer program products and manufacture, can be stated in the specification of the PCT international application submitted in China, such that when the PCT international application enters into US national phase, above technical solutions about computer software can be supplemented into claims based on the described scope of the specification, allowing more sufficient protection of the technical solutions in US.

In addition, article 112 of the US Patent Law 35 U.S.C states “The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor of carrying out his invention.”

In above provisions, the requirements on “clear and concise” is generally consistent with the requirements on “clear and concise” in article 26.4 of the Chinese Patent Law, i.e. the description, such as “specifically” and “specially”, which makes the protection scope unclear is not allowed. In addition, it should be noted that if a claim involves English abbreviations, the following methods should be adopted: full name of the English abbreviations (English abbreviations), e.g. Internet Protocol (IP).

2. EU requirements on patent application

1) Number of claims

According to the European Patent Convention (EPC), as per a European patent application comprises over 15 claims, each additional Claim with No.16-50 needs to pay a surcharge of 225 Euro, while each additional Claim from Claim 51 needs to pay a surcharge of 555 Euro.

In order to save application fees, if not under very special circumstances, the total number of claims applied in PCT international application submitted in China should be within 15. In the meantime, if there are other technical solutions to be protected for the PCT international application besides of the technical solutions already claimed in the claims, the description of such other technical solutions is recommended to be recorded in the specification, so that in the following procedures, such technical solutions can be supplemented to the claims based on the described scope of the specification.

Undoubtedly, more than 15 claims can be provided in the PCT international application, nevertheless, it is recommended to mark the relevant importance of the claims in the paper file or the electrical file of the application, so that when the PCT international application enters into EU nation phase, the number of the claims can be reduced according to the technology development progress and the budget of the applicants, achieving balance in both protection scope and budget control.

2) Citing relationship of claims

According to European Patent Convention (EPC), multiple-citing claim will be permitted, wherein the multiple-citing claim refers to a claim citing multiple previous claims, e.g. the following claim is permitted:

3. According to the method of the Claim 1 or Claim 2, characterized by further comprising:

Naturally, as a strategy to limit the number of rights applications, if the number of claims in PCT international application exceeds 15, some of the claims can be combined when the PCT international application enters into EU national phase, so that the total number of the claims can be limited within 15 in order to cut costs for the application while the protection scope is not affected.

3) Protection category of claims

The protection category required under EPC is roughly the same with that of the Chinese Patent Law, however, divergences do exist in terms of protection of computer software. To be more specific, the EPC does not protect proposals on manufacture, but proposals on computer program, computer readable storage medium, computer program products and data stream are permitted under EPC, while Chinese Patent Law does not protect any of the above categories.

As such, for inventions related to computer software, a set of or multiple sets of technical solution about computer software, for example, technical solutions about computer readable storage medium, computer program products and manufacture, can be stated in the specification of the PCT international application submitted in China, such that when the PCT international application enters into EU national phase, above technical solutions about computer software can be supplemented into claims based on the described scope of the specification, allowing more sufficient protection of the technical solutions in EU.

For example, with regard to computer program products, the following technical solution can be carried in the specification: “A computer program product comprising program code, when executed on a data-processing apparatus, adapted to perform the method steps of initializing…”.

In the above, the computer program product, computer program or data stream allowed under EPC should be related with the hardware, i.e. in describing technical solutions about the computer program products, the computer programs or the data stream, statements like “when executed on a data-processing apparatus” is indispensible, otherwise the problem on ambiguous protection scope may be pointed out in later substantial examination stage.

The European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.

In addition, EPC and Chinese Patent Law are different on the requirements of unity. According to Article 82 of EPC “The European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept”, only one independent claim is allowed for one category of claims, wherein categories mentioned in EPC include: Entities(apparatus and device) and Actions(method and use). It should be noted that in EPC that the basis of whether a claim is an independent claim or a dependent claim mainly lies in the citing relationship among the claims, if the category of one claim is the same with that of another claim on which the one claim depends, the one claim is dependent claim. For example:

1. A method of lining a sewer pipe, …..,

2. A method according to claim 1

3. A method according to claim 1 or 2

4. Tubular film for lining a pipe,…,

5. Sewer pipe lined with a tubular film according to 4, …,

The above claim 1 and 4 are independent claims, claim 2-3 are dependent claims of independent claim 1, while claim 5 is a dependent claim of independent claim 4.

According to requirements on unity by EPC, the following scenarios are not consistent with the requirements on unity by EPC:

1. A method of setting up a database, characterized by comprising:

5. A method of using a database, characterized by comprising:

Even though claim 1 & 5 both comprises same distinguishing technical features, they fail to meet the requirement on unity by EPC, the resulting consequence is: supplementary European search report will only make a search and an examination for claim 1-4, while ignoring the claim 5. If the applicant requires the examiner to examine claim 5, a divisional application should be filed (refer to EPC Rule 164).

Undoubtedly, there are several exceptions to the requirement of “only 1 independent claim is allowed in similar type of claims” provided in the EPC (refer to EPC Rule 43.(2)):

1) a plurality of interrelated products, such as:

Plug & socket;
Transmitter & receiver;

2) Different uses of a product or apparatus, such as

Usage A & B for drugs;

3) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim, for example:

Sequence of method: Step A,B,C,D,E and sequence of method: Step A,D,C,B,E

As such, in drafting a PCT international application, the requirements on unity by the EPC should be taken into account to minimize the possibility of deleting claims or filing a divisional application for one or more set of claims when the PCT international application enters into EU national phase and thus avoid damages on the interests of the applicant.

Naturally, as a revising or drafting strategy, the exception in EPC Rule 43.(2) can be applied to protect multiple independent claims in similar type of claims. For example, the following 2 claims are stated in PCT international application:

7. A user equipment, comprising:
a receiving module, configured to…; and
a sending module, configured to….

9. A protocol configuration options transmission system, comprising a mobility management entity and a user equipment, characterized in that

the mobility management entity is configured to send … to the use equipment; and

the user equipment is configured to ….

The following amendments are recommended to claim 9 when PCT international application enters into EU national phase so that the exception in EPC Rule 43.(2) can be satisfied:

9.A protocol configuration options transmission system, comprising a mobility management entity and a user equipment, characterized in that

the mobility management entity is configured to send … to the a use equipment; and

the user equipment is configured to ….

4. Conclusion

In drafting PCT international application, not only the requirements of Chinese Patent Law, but also those of the US Patent Law and EPC on the number of claims, the citing relationship of claims, the protection category of claims, and the unity should be taken into full account, in order avoid unnecessary deletions and revisions or failure to obtain appropriate protection in the region, after the PCT international application enters into nation phase in the US or EU.

(Courtesy: Kangxin Partners, http://kangxin.com/)

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