Canadian patent agents are regularly called upon to file patent applications in at least three jurisdictions - namely Canada, the United States and Europe. Given the recent inflammatory case law issuing from the United States, the strict European Patent Office (EPO) rules and Canadian practice being dictated more by guidelines than by actual rules and laws, they are often faced with a dilemma. The varied jurisdictions and their requirements have made drafting a balancing act.
A doctrine is emerging from the US IP profession along the lines of “less is more”. The Patent Resources Group (PRG) has been championing a drastic approach to drafting patent applications. The PRG refers to “low-profile, common denominator techniques”, which include various methods used to minimise damage that could be caused to the patentee when the claims are later interpreted in a court of law. Examples of these techniques include:
- performing an exhaustive search of the prior art (in order to have a broad range of interchangeable equivalents for disclosure in the specification);
- filing numerous claims of widely varying scope; and
- ignoring the US Patent and Trademark Office’s Manual of Patent Examining Procedure-based request for a preferred stylised specification format.
European practice is largely based on a problem-solving approach. Inventions must be defined as a solution to a given problem. Without this, the EPO is reluctant to acknowledge that an invention has been provided.
The greatest challenge to European patent practice is in providing a disclosure that will allow the practitioner some latitude with respect to claim amendments. An EPO examiner will rarely allow an amendment to the claims that diverges in any way from what was originally described as the “invention”.
Canada hangs in a permanent state of limbo with respect to practice requirements. The laws and rules are drafted so broadly that they can be interpreted only by the courts. However, there are many fields of practice (eg, software and business methods) for which very little jurisprudence exists. Due to the general absence of case law in these fields, examiners have a certain freedom in their interpretation of the statutes.
This absence of case law and clear regulations also leads to inconsistencies at the Patent Office. Canadian examiners are asked to make more judgement calls than their US or European patent colleagues, leading to discrepancies in the results.
Three different specifications?
It is clear that a practitioner cannot adhere strictly to the guidelines recommended by the PRG for US practice and still meet the requirements of Canadian and European patent practice. Failure to include a field of the invention and a background results in an objection in both Canada and Europe. Experience has also shown that prosecuting applications in Canada and in Europe in a fashion similar to that proposed by the PRG for the United States will not work. Canadian and EU examiners do not respond favourably to attacks against rejections that do not address the claims or the invention at hand.
However, some of the techniques encouraged by the PRG are simply common sense and will lead to better patent applications, regardless of the filing jurisdiction. These include:
- a thorough search of the prior art;
- avoidance of terms such as “preferably”, “important” and “essential”;
- description of multiple embodiments;
- inclusion of the advantages related to each additional feature of an embodiment in the detailed description; and
- description of any secondary features that may be relied on for patentability, in combination with the broadest definition of the invention.
So what’s the answer?
While the ideal situation would be to draft and file three separate and distinct specifications, in reality this is unfeasible. The balancing act described above relates not only to the jurisdictions requested by the client, but also to the client’s budget. There will always be a trade-off between quality and costs - between what is best for the client in the future and what is best for the client right now. The patent agent’s aim is always to give the client the best possible protection available. In Canada, agents must recognise the constraints faced by Canadian companies competing in the global market.
By playing it smart, a patent agent can minimise the client’s risks and still file a single specification in the three major jurisdictions. Patent agents can familiarise themselves with the differences between the jurisdictions and forge an approach that will accommodate all the requirements, while minimising any potential future damage. This melting-pot approach will allow patent agents to deal with the realities of the Canadian market - and to master the balancing act required to do so.