Introduction
Patent claims are the rights granted to an inventor in respect of the invention in such a way that no other party will be allowed to use, sell, manufacture, or import such invention without the permission of the patent owner. The scope of such patents depends not on the entire patent application but only on the claims contained therein. These are the numbered paragraphs at the end of the patent application specification.
Any inventor looking to seek patent protection in many countries would soon realise that the same invention, as described using the same technical specification, results in claims of very differing scope depending upon which jurisdiction is being pursued. A claim that is broad at issue in the US can easily become narrow during prosecution before the EPO, and even further restricted or denied in India based upon its own statutory exceptions.
This article seeks to explore why this happens by considering how the patent regime differs between countries on three key fronts, namely (i) patentability criteria and statutory exceptions; (ii) principles of claim interpretation; and (iii) prosecution processes and examination practice. For the purpose of the analysis, the regimes of the United States, the European Patent Convention, and India are considered examples.
The Structure of a Patent Claim and Its Dependence on Its Jurisdiction
A patent claim includes a preamble stating the kind of invention, a phrase such as “comprising”, “consisting of”, and a body listing the necessary technical aspects of the invention. It should be understood that the scope created by such elements is not automatic, but is dependent on the interpretation principles of the particular jurisdiction where enforcement is sought.
The Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS) administered by the World Trade Organisation creates minimum requirements for patents on a global scale. Under Article 27 of the TRIPS, patents have to be available for inventions in all technological fields, provided they meet three criteria – novelty, an inventive step and an industrial applicability. Nevertheless, it is important to realise that, despite these minimum requirements, the TRIPS Agreement gives wide discretion to member-states with regard to exclusions under Article 27(2). Second, there is disagreement about the standards for determining patent eligibility and statutory exclusions. It is in this legislative grey area that the following discrepancies have occurred.
Different Standards of Patentability and Statutory Exceptions
A. Patents Subject Matter Eligibility
Every patent system begins with the question of whether the invention qualifies as eligible for patenting. There are, however, clear differences in how patent systems treat this issue. Under U.S. law, under Section 101 of the Patent Act, codified at 35 U.S.C., “whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter. “This has, however, been qualified by three judicial exceptions to this definition of patentable subject matter, namely laws of nature, natural phenomena, and abstract ideas. The current test of whether something qualifies as patentable was set out in Alice Corp. v. CLS Bank International (2014). In the Alice two-step test, the court must determine if the claim falls into one of the categories and if so, if it meets the further requirement that there is an ‘inventive concept’ which transforms the nature of the claim.
According to Article 52 of EPC, inter alia, discoveries, mathematical methods, mental acts, and programs for computers “as such” are excluded from being patented. The expression “as such” holds interpretive importance; in all cases, the EPO’s Technical Boards of Appeal have interpreted it in a way that any computer program, which has the capability to give rise to a “further technical effect,” aside from the usual interaction between the program and the machine where it is run, can be patented. It follows that the criterion of “technical character” requires software claims before the EPO to be characterised by both the technical problem and the technical solution.
Section 3 of the Indian Patent Act of 1970 states the list of inventions that shall not be considered inventions. In particular, Sections 3(d) and 3(k) should be highlighted. The former stipulates that new forms of known substances can only be patented if an improvement in efficacy is shown (as applied in the case Novartis AG v. Union of India (2013)). Section 3(k) provides that mathematical methods, business methods, algorithms, and computer programs as such cannot be patented. In the case of Novartis, the Supreme Court upheld that Section 3(d) operates separately from the novelty and inventive step considerations, thus providing another requirement for patentability in India, which is unique to the Indian system. Claims filed by applicants, especially pertaining to pharma products, will thus be required to satisfy the Section 3(d) provisions.
B. Inventive Step Test
Claims may further be crafted in light of the inventive step test that is undertaken during the process of patent examination. In the United States, a test of obviousness in accordance with 35 U.S.C. § 103 is undertaken, according to the ruling of the Supreme Court in KSR International Co. v. Teleflex Inc. (2007). KSR ruled against the traditional TSM (teaching, suggestion, or motivation) test and opted for an obviousness test, which was more flexible and intuitive as to whether a person skilled in the art would find it obvious to combine different prior art references.
The EPO uses a “problem and solution” method where the examiner determines the prior art closest to the patent, identifies the objective technical problem based on the difference between the patent claims and the prior art, and then considers if the skilled person would have arrived at the solution claimed in an obvious manner. The “problem and solution” method creates predictable results in examinations and can be viewed as more systematic than that of the US.
India adopts the problem and solution method in general; however, the Indian Patent Office (IPO) has been accused of applying this method inconsistently. It is important to note that under Section 2(1)(ja) of the Indian Patents Act, the definition of inventive step includes the concept of technical advance as compared to the existing knowledge or having economic significance or both, thereby adding economic considerations not found in either the US or European approaches.
Doctrines of Claim Construction
After a patent grant and once there are efforts to enforce the patent, the extent of the claims’ coverage can only be determined based on the claim construction procedure. In the context of patent law, the doctrine of claim construction entails the interpretative activity of courts concerning the claims’ wording. The doctrines involved in this regard vary immensely between jurisdictions.
A. United States: Infringement via Literal Interpretation of Claims and Doctrine of Equivalents
In US courts, claim construction can be undertaken as a matter of law before trials as part of a hearing procedure known as Markman hearings, conducted after the case of Markman v. Westview Instruments, Inc. (1996). Under this doctrine, claims must be interpreted in view of the patent specification and prosecution history, and terms in claims should be defined according to the ordinary meaning of a person having ordinary skill in the art. A patent owner can prove infringement either by literal interpretation of claims, implying that all elements in the claims cover the defendant’s product, or using the doctrine of equivalents, wherein a patent protects insubstantial modifications performing substantially similar function, in substantially similar way, and achieving substantially similar results.
B. Europe: The Protocol on Interpretation
Under Article 69 EPC, the scope of protection accorded by a European patent shall be determined according to its claims; however, the description and drawings should also be used for the interpretation of the claims. In accordance with the Protocol on the Interpretation of Article 69 EPC, the claims should neither be interpreted in such a way that the protection covers only what is literally expressed nor so widely as to be treated simply as pointers. The middle path is called the “fence” approach and aims at finding the right balance between ensuring sufficient protection for the patent owner and securing certainty for third parties. The doctrine of equivalents is acknowledged by the Protocol, but differently applied in different countries belonging to the EPC jurisdiction. For instance, in Germany, the equivalent doctrine is highly elaborated, and in others, the doctrine of equivalents has limited use.
C. India: An Emerging Doctrine
In India, there is no Markman procedure, and the principles of claim construction are not fully developed. The courts in India usually use the purposive method of claim construction based on the intentions of the inventor that can be inferred from the specification. In its decision on the case of Roche Products Inc. v. Cipla Ltd., 2012, the Delhi High Court explained the difference between substance claims and process claims, and recent decisions demonstrate increased interest in considering the specification when interpreting claims. The absence of the prosecution history estoppel principle in the practice of Indian patent law leads to less weight being given to the file wrapper evidence compared to the American approach and results in broader claim constructions.
Examination Procedures and Examination Culture
How the prosecution process leading up to the filing of the grant application is carried out is an important factor in shaping the extent of the claim. Procedural differences found in different jurisdictions include:
A. Patent Cooperation Treaty and Entering the National Stage
The Patent Cooperation Treaty (PCT) system is an international procedure that enables the filing of one single application for obtaining patents in over 150 contracting member states. Under this procedure, an international search takes place, and the International Searching Authority provides an international search report and an opinion on the same. Furthermore, upon request, an international preliminary examination of the patent application is done by the International Preliminary Examining Authority. The international claims that are submitted will have to be revised to meet the requirements of each jurisdiction.
B. Continuation Practice and Broadening of Claims in the USA
As far as the practice of filing patents in the United States is concerned, there is one more unique feature in this regard, which is known as continuation practice. Through this practice, an applicant can file his new applications with broader claims based on what he disclosed in his ongoing patent application till such time as the parent application remains pending. In other words, the applicant can make a narrower set of claims during the initial stage in order to get the grant as soon as possible, and then broaden the claims once he receives some information about competing products.
C. Requirement of Unity in Invention and Restrictions
Unity in the case of inventions is to be proven in applications filed for patents in both Europe and India, or else restrictions will apply. According to Rule 44 EPC, there cannot be two or more inventions that may be claimed in a single application in the EU. Unity of inventions is also needed in the Indian patent system, whereby each and every claim that is mentioned in the complete specifications pertains to just one invention. Each jurisdiction will have its own process in applying the method.
D. Opposition and Post-grant Amendments
The opposition to the European patent happened at the EPO on a centralized basis nine months after the grant, where the challenge is to the validity of the European patent. The usual result of such processes is a reduction in scope or nullification of the patent, and decisions of the Boards of Appeal of the EPO set the scope of claim grants. While India offers opposition before and after grant of patents through sections 25(1) and 25(2) of the Indian Patent Act, respectively, providing yet another way for any third party to dispute claims. PGR and IPR, introduced by the Leahy-Smith America Invents Act (AIA) in 2011, are frequently used to challenge claims granted in the fields of pharmaceuticals and technology.VI. Practical Implications for Claim Drafting and Prosecution Strategies These variations have specific implications for those involved in obtaining patent protection on a multi-jurisdictional basis.
First, claim drafting must account for the jurisdictional demands from the start. For a patent specification filed through the PCT route, it is important to draft the specification in such a way as to make possible broad US-style claims, even though dependent claims will need to be included to cover the stricter examination procedures likely to apply in the case of European and Indian patent application examinations. This will involve the use of various claim formats including method, system, and use claims for prosecuting a patent in those jurisdictions where some of these claim formats cannot be used.
Second, there will always be prosecution variations and the applicant will have to address them. Thus, when the EPO raises an objection pursuant to Article 52 of the patent statute in relation to a computer-implemented invention, the applicant will have to argue that the amendment involves technical aspects; similarly, while filing a patent in India, it would be necessary to counter any challenge under Section 3(k), stressing that the amended claim does not relate to a computer. Thirdly, the enforcement strategy should take into consideration the issue of construction of claims. Where a patent is enforced using the US Doctrine of Equivalents, the scope reached will be beyond what a literalist court in Europe can recognize. However, where an Indian court uses the purposive construction, it will be able to provide wider coverage than a strict literal construction of the claim will permit.
Conclusion
Variation between patent claim scope between different jurisdictions is by no means an oddity but rather an inevitable result of the territorial basis for intellectual property rights under a system of international minimum standards. TRIPS sets a minimum floor below which legislative and judicial actions regarding patent claims cannot fall, but above that there is room for different legislative and judicial approaches in relation to subject matter exemptions, inventive step requirements, claim interpretation methods and post-grant measures. This results in the diverse patent environments that innovators must deal with.
For an effective multinational patent strategy, therefore, more than a mere literal translation of claim language from one jurisdiction to another is required. It entails a subtle appreciation of how each jurisdiction’s patent system would handle its claims. With increasing globalization of technology-based industry sectors, a major professional competency in intellectual property would be designing a patent portfolio that takes into consideration the differences in each patent system. Efforts at harmonisation, whether through treaty negotiations or progressive uniformity in examination procedures, may eventually narrow down these differences, but until that happens, the prudent patent practitioner must consider each jurisdiction as a unique legal environment with its own rules.
Author: Atharva Pareek. In case of any queries please contact/write back to us via email to [email protected] or at IIPRD.
Endnotes:
1- Agreement on Trade-Related Aspects of Intellectual Property Rights (TRIPS Agreement), 15 April 1994, Marrakesh Agreement Establishing the World Trade Organization, Annex 1C, art 27.
2- 35 USC § 101 (2018); Alice Corp. v. CLS Bank International.
3- Convention on the Grant of European Patents (European Patent Convention) arts 52 and 69, 5 October 1973, as revised by the Act Revising the EPC of 29 November 2000.
4- The Patents Act, 1970 (India), ss 2(1)(ja), 3(d), 3(k), 25 and 104A.
5- Novartis AG v. Union of India.
6- KSR International Co. v. Teleflex Inc.; European Patent Office, Guidelines for Examination in the European Patent Office(2025 edn), Part G, Chapter VII.
7- Markman v. Westview Instruments, Inc.; Roche Products (India) Pvt Ltd v. Cipla Ltd.
8- Patent Cooperation Treaty, Washington, 19 June 1970, as amended on 3 October 2001; Leahy-Smith America Invents Act, Pub L No 112-29, 125 Stat 284 (2011).