The landscape of patent litigation is markedly different between the United States (US) and other jurisdictions, especially the territory that is covered by the Unified Patent Court (UPC), which is dubbed as "UPC Land" because of its unique features when it comes to pursuing innovative products that can be protected by patents in the territory of the UPC.
These differences between "US" and "non-US" prosecution and litigation in court often pose challenges for patent drafters aiming to secure robust, litigation-grade patents across multiple jurisdictions. The advent of AI-assisted patent drafting robots presents a novel solution, offering insights into reconciling these disparate standards.
The Divergence in Prosecution and Litigation Standards
The United States and UPC jurisdictions adhere to distinct patent drafting, and litigation paradigms. Key differences in patent drafting include how generalized terms in patent claims are matched with specific terms in the description of the drawings, the necessity of disclosing "advantageous effects," and the structuring of detailed descriptions. The US allows for a certain degree of flexibility that the UPC, with its more stringent requirements for technicality and adding subject matter after the filing date of a patent, does not. While the concept of "combination inventions" is commonly known and used by applicants both under US and non-US jurisdictions, the concept of "selection inventions" is known and used only in non-US jurisdictions. Common Law jurisdictions, such as in the UK and in Singapore, are caught halfway between US practice and the more observant Continental/Civil Law jurisdictions: Common Law court decisions often have more gray area compared to those under Continental/Civil Law. This difference makes the Common Law jurisdictions seem more individual and, therefore, fairer. However, it also makes Common Law court proceedings less predictable.
Those different principles are not only applied in court, when it comes to validity and potential revocation of patents, but also when prosecuting patent applications before the respective patent offices.
Example 1: Mentioning Advantages and Technical Effects
While it is a requirement for a Unitary Patent (UP) that is UPC litigation-grade to describe the claimed invention in such terms that the technical problem and its solution can be understood and to state advantageous effects of the invention, even with reference to the background art, this practice is frowned upon under US patent practice. This is because of potential disadvantages on the side of a plaintiff who tries to assert the patent. An easy and often-heard defense of patent infringers is that their device does not have these advantages and, therefore, cannot be infringing the patent.
Example 2: Generating Added Subject Matter by Intermediate Generalizations
It is entirely normal and possible to combine arbitrary features of a patent application when wording claims during patent prosecution, and also to add new terms into a patent application. This is not the case in non-US jurisdictions. Just to take the UP prosecution practice as an example, extracting a specific feature in isolation from an originally disclosed combination of features and using it to delimit claimed subject-matter is only allowed if there is no structural and functional relationship between the features or the combination of features. Take a claim 1 as originally filed that discusses a water-dispersible and flushable absorbent item with two fibrous parts and if the revised version of claim 1 explains that both the first and second fibrous parts are "wet-laid tissues", while the original patent application only mentioned the first fibrous part as a tissue and this along with additional characteristics: being perforated, having fibrils, or being sufficiently porous. Since the application initially described only the first fibrous part as a wet-laid tissue with these extra features, which the amended claim 1 does not include, the changes are seen as broadening the original technical information, therefore not being allowed.
Example 3: Added Subject Matter by Combination of Embodiments
The patent claim 1 as originally filed says: Device with Elements A and B", the embodiment 1 in the drawings shows elements A, B, and C, while the embodiment 2 in the drawings shows elements A, B, and D. The specification has a boilerplate paragraph: In particular, although illustrated with certain configurations comprising certain elements, it should be understood that any of the embodiments depicted may have these elements in any combination." The applicant wants to limit claim 1 to elements A, B, C, D during examination but this is not possible because the combination (A, B, C, D) is considered as added subject matter" over the filed application.
AI to the Rescue
AI-assisted patent drafting tools have the potential to navigate the complex landscape of patent drafting requirements across jurisdictions. If litigation-grade patents are required that can withstand scrutiny in both the US and UPC systems then AI tools can programmatically adjust US-style patent applications to meet UPC standards by ensuring consistent terminology, generating patent specifications that provide "advantageous effects" and conforming to the other UPC requirements. This process involves a deep analysis of the invention's technical field, the meticulous drafting of a detailed description, and the preparation of claims that anticipate litigation scenarios in both jurisdictions.
The Importance of Litigation-Grade Patents
In the era of the UPC, the value of litigation-grade patents cannot be overstated. These patents must offer clear fallback positions, be prepared for UPC law's two-step approach to inventiveness, and overcome hurdles such as selection inventions and intermediate generalizations. AI-assisted drafting tools empower patent professionals to achieve these standards efficiently, within hours and days, and not within weeks or months as in the times before AI.
As we move towards a more unified approach to patent litigation across the US and UPC territories, the role of AI in patent drafting becomes increasingly critical. By harnessing the power of AI, patent applicants can navigate the complexities of multinational patent protection with unprecedented ease and precision.
Conclusion
The differences in litigation standards between the US and UPC have long presented challenges for international patent protection. However, the advent of AI-assisted patent drafting offers a promising path forward. By understanding and addressing the nuances of both jurisdictions, AI tools enable the drafting of patents that are robust, defensible, and capable of supporting global innovation strategies.
Martin "Robot Patent Drafting" Schweiger
IP Lawyer Tools by Martin Schweiger
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.