Can Coauthored Published Paper Be Prior Art to a Patent Application?

"Fifty-fifty without asserting patents, U.South. and European patents with coordinated strategies increase the value of the patent portfolio. Appropriately, knowledge of both patent systems is critical."

Ane ingredient that distinguishes a skilful patent portfolio from a great patent portfolio tin can exist the synergistic strength of its U.S. and European patent family members. To develop this strength, information technology is not enough to have a U.S. chaser and a European attorney just coordinate the procedural strategy for filing an awarding; rather, the drafter and manager of the application should analyze important problems upfront and ready a patent awarding that accounts for the substantive differences between U.S. examination, U.S. courts, European examination, and national courts in Europe.

As background, the United states Patent and Trademark Role (USPTO) examines and grants patents. Merely the USPTO does not determine whether a U.South. patent is infringed. The owner of a U.Due south. patent can enforce the patent against infringers by filing a civil case in U.S. federal courtroom for patent infringement. Similar to the USPTO, the European Patent Part (EPO) examines and grants European patents, and also like to USPTO, the EPO does not determine whether an EP patent is infringed. Rather, an owner of a European patent can "validate" the European patent in individual European countries, creating a patent recognized by the respective European country where information technology tin be enforced through the respective national courtroom. For example, an possessor tin can validate a European patent in Deutschland to become a German language patent. If the possessor of such a validated patent wants to enforce the patent, they must use a national court (i.e., where the European patent is validated) for infringement proceedings. To that stop, the possessor of a European patent that was validated in France can enforce the French patent in French courts. Thus, a European patent gives a patent owner enforcement options in national European courts (e.one thousand., German, French, and/or British) as long equally the owner validated the European patent in that respective country.

Coordinating Strategies Beyond Jurisdictions

U.S. and European patents make a nice pairing when developing a litigation strategy because at that place can be many natural synergies. For case, U.S. litigation tin can exist expensive and dull equally compared to German litigation, only there are benefits to be gained in the United States. It is oftentimes helpful for a U.S. plaintiff to file litigation in the United States early to gain access to more internal documents through the U.S. discovery procedure, so file litigation and apply the speed of the German courts to bulldoze settlement or increase force per unit area on the defendant. The German courts are too reasonably pro-plaintiff in granting preliminary injunctions, further increasing the potential force per unit area on the accused. Also notable for national courts in Europe is that France has some of the strongest search and seizure laws for patent holders. Given these different jurisdictional options and tools, a plaintiff with patent family members in multiple jurisdictions can take advantage of different jurisdictional rules and procedures to reach its overall goals; at the same fourth dimension, a defendant should be aware of how to defend itself or prevent plaintiffs from applying pressure in multiple jurisdictions.

Further, in the adjacent few years, the Unified Patent Court (UPC), an international courtroom in Europe that decides on the infringement and validity of unitary patents—which can be based on EP patents (i.e., those granted past the EPO) without the need for nation-specific litigation—is expected to open. Plaintiffs interested in such central enforcement at the UPC will desire to have strong European patent family members established.

Even without asserting patents, U.S. and European patents with coordinated strategies increase the value of the patent portfolio. Accordingly, knowledge of both patent systems is critical to achieve not only the goal of establishing a strong patent family in each, but too the goal of opening the door to pursue all available options, up to and including individual state-specific national patents.

While there are many means to implement a successful strategy for establishing U.S. and European patent family members and working in concert with both systems, nosotros will focus on three in detail: Part I of the article analyzes intervening prior art, Role Ii analyzes software patents, and Role III and so analyzes the importance of, and strategies for, examiner interviews in both the United States and Europe. These articles will be useful for patent portfolio managers, patent attorneys, and others (including litigators) advising on patent strategy in the United States and Europe.

• Strategy for Intervening Prior Art in the United States and Europe

This department of the article discusses how patent portfolio managers should be careful when generating visitor-endemic prior art or reviewing competitor prior art, and how a patent litigation or licensing campaign can exist significantly hamstrung based on how the The states and Europe consider intervening prior art.

As background, intervening prior fine art is a patent application that is filed before and published after the filing date of the patent or the patent awarding being prosecuted—for this reason, information technology is sometimes referred to as "secret prior art" because it is non known to the public at the fourth dimension the prosecuted application is filed.  Even though intervening prior art is published after the filing date of the application being prosecuted, the EPO, national courts in Europe, the USPTO, and U.Due south. federal courts tin can still use information technology to turn down a claim in a pending patent application or to invalidate a claim in an issued patent as explained below in this commodity.

Patent awarding drafting and litigation ofttimes starts with reviewing the prior art, only it is non common for drafters and litigators to think about intervening prior art early in the process. For instance, intervening prior art nether Art. 54(iii) of the European Patent Convention (EPC) in Europe is considered weak because it can just be used to judge novelty, notwithstanding the same prior art can be considered very strong in the Us under 35 United states of americaC. § 102(a)(2) because it applies to judging both novelty and obviousness in the U.s.a.. For reference, Art. 54(three) EPC prior fine art is a European patent awarding (or Patent Cooperation Treaty [Percent] application that meets the requirements of Rule 165 of the EPC) that was filed prior to the filing engagement of the claim but published later on the filing date of the merits. European patent applications that are citable under Article 54(three) EPC are citable for novelty simply and not for inventive step.

Intervening prior fine art in Europe is complicated because the EPO, the national European patent offices, and the national courts of European countries all consider it differently. Specifically, the EPO does not consider national patent applications (e.g., German, French, United Kingdom applications) to exist intervening prior art. Rather, to qualify every bit intervening prior art, the intervening applications must be a European patent application. Therefore, during prosecution or during opposition procedures in front of the EPO, only EP patent applications tin can be used as intervening prior art. In contrast, in procedures related to an EP patent in front of an private national court in Europe (due east.1000., in German Federal Court in a nullity proceeding), the plaintiff may use national patent applications equally intervening prior art against the EP patent.

Even though the EPO or a national court in Europe will consider intervening patent applications to be prior art, the EPO or national court will only consider intervening prior art for judging novelty (i.e., anticipation). This is ofttimes surprising to U.S. practitioners because intervening prior art is used for judging both anticipation and obviousness by the USPTO and U.S. courts.

Table 1 below shows a summary of how intervening prior art can be used at the EPO, USPTO/U.S. courts, and national patent offices/courts in Europe. The left column indicates the type of intervening prior art. The top row indicates the function or courtroom that is reviewing the intervening prior art.

Table ane: Employ of Intervening Prior Art by Type and Venue

To complicate matters further, U.Southward. courts, the EPO, and national courts in Europe differ in how they treat PCT applications as intervening prior art. To exist considered valid intervening prior fine art in the The states, a PCT application must designate the United states. Considering all Pct applications automatically designate the Us upon filing, the PCT application becomes intervening prior fine art as soon equally the PCT application publishes. Thus, under the America Invents Act (AIA), World Intellectual Belongings Office (WIPO) publications of Per centum applications are treated every bit U.S. patent application publications for prior art purposes, regardless of the international filing appointment, whether they are published in English, or whether the Pct awarding ever enters the national stage in the United States. And, most importantly, under U.South. patent police, the PCT application can be used to gauge anticipation and obviousness.

In that location are even more requirements than those in the United states for a PCT awarding to be considered valid intervening prior art at the EPO. Specifically, a Percentage application must accept its EPO filing fee paid, the PCT application must exist translated into i of the EPO languages (i.e., French, German, or English language), and information technology must be published. With the additional requirements for intervening prior art to exist considered by the EPO, applicants, litigators, and in-house attorneys should exist careful when making strategic decisions (east.g., where to file, whether to start an opposition at the EPO or file an inter partes review at the USPTO) if it involves intervening prior art.

Also, each land in Europe applies dissimilar national law regarding whether the Percentage application can be considered prior art, just in full general this is no stricter than EPO constabulary. Specifically, if the PCT application designates a European country, after the relevant filing fee is paid and a translation into a national language of that European land is filed, then the PCT application can also exist considered intervening prior fine art in that land. Some countries require even less effort. Yet, fifty-fifty if the Per centum application is considered intervening prior art, again, it can only be used to judge novelty and non inventive step in national courts in Europe.

These differences in the treatment of intervening prior art can impact how practitioners approach prosecution and litigation strategies in the United states of america and Europe in a myriad of dissimilar ways. First, the treatment impacts how companies should think most generating prior art to preclude competitors from obtaining patents. As part of a comprehensive prior art strategy, if companies desire to ensure they generate prior art based on PCT applications for EPO examiners, they should first make certain they pay the European national stage entry filing fee; translate the awarding into French, High german, or English (if necessary); and wait until the WIPO publishes the application before abandoning it. If they do not pay the filing fee, the Pct application is not considered prior art at the EPO, which means competitors can potentially enter the European marketplace without having to address the prior fine art. Note also that the filing fee for a PCT awarding entering Europe is but 125 EUR. Appropriately, at a minimum, any company—especially U.Due south. companies looking to defensively publish in Europe—should pay the European national stage entry filing fee for a Pct application.

Second, when because attacking a competitor's patent, companies should be conscientious almost the differences in how prior fine art is used at the EPO, national courts, and the USPTO/U.S. courts. For EPO proceedings (e.g., oppositions or 3rd-political party observations), companies tin can cite intervening EP patent applications, but again, these applications are relevant just for judging novelty. For national court proceedings, companies can cite intervening national applications for the state but must likewise enquiry on a country-level basis whether EP patent applications are citable as intervening prior art.

Third, companies should be careful when reviewing intervening prior art where the same inventor is involved for U.S. patents and where the inventor was under an obligation to assign the buying of the invention to the same person or the same entity for the pending awarding. This may be natural for U.S. applicants to bank check, but it is not common for applicants with a European background. Specifically, fifty-fifty if an application qualifies as intervening prior art, i must be careful to cheque the inventors' names to determine if the same inventors are involved and the 1-year grace catamenia regarding public disclosure tin employ. If this grace flow applies, the intervening prior art will not authorize every bit prior art in the United states of america. if the person who made the public disclosure obtained the subject matter direct or indirectly from the inventor or joint inventor (including if the inventor is the one disclosing). Further, in that location are as well exceptions when the intervening disclosure and claimed invention are endemic by the same person, but this is difficult to verify without public disclosure in the USPTO assignment database. U.S. companies may exist familiar with the one-year public disclosure grace period in the U.s.. and what is required to assert it in court and at the USPTO; however, European companies can besides consider preparing for intervening prior art in the United States (due east.g., a company's own awarding) by asking for an affidavit from the inventor regarding a public disclosure of the invention during the grace period or from the person responsible for the disclosure during the grace period (east.yard., from a academy who had permission from the inventor to publish the invention prior to the filing date of an application for the invention in the United States).

Fourth, as noted, European patent attorneys may be able to avert Fine art. 54(3) EPC prior art because information technology is considered weak (due east.g., purely for novelty purposes), but that may not exist the instance in the United States. For instance, if a Euro-PCT application (i.e., a PCT application that enters the EP national phase) is considered Art. 54(3) EPC prior art, that same prior art in the United States can be considered for novelty and obviousness in the Us. So, the European company should non assume that prior art weaknesses in Europe translate to similar weakness in the U.s.a..

Function II of this series will build on Part I to focus on software patents with U.Southward. and EP family members.

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Source: https://www.ipwatchdog.com/2021/09/02/building-high-quality-patent-portfolios-united-states-europe-part-i-intervening-prior-art/id=137260/

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