Originally published May 17, 2010
This July, Benoît Battistelli will take charge as the next president of the European Patent Office (EPO). Mr. Battistelli comes to the EPO from the French Institute for Industrial Property, where he served as director general for the past six years. He will succeed the current EPO president, Alison Brimelow. U.S. applicants should watch closely. As Ms. Brimelow's tenure has shown, a new EPO president can mean big changes in prosecuting patents abroad.
For many years, it had been common practice, at least among U.S. companies, to amend the claims of their European applications to mirror those of their U.S. counterparts. The motivating philosophy was often to capitalize on the results of U.S. prosecution, which usually was well advanced by the time European prosecution had begun.
Policy changes brought by Alison Brimelow changed this practice. Applicants have increasingly found that the EPO refuses to enter claim amendments that are perfectly acceptable under U.S. practice. This did not result from changes in the European Patent Convention (EPC) laws, but instead came from the EPO leadership's drive for "higher quality" patents.
At the time Ms. Brimelow took the high office at the EPO, many complained about the increasing number of patents invalidated in post-grant oppositions and in litigation. Ms. Brimelow saw increased diligence during examination as a way to remedy the problem. In 2005–2006, she led a campaign to "raise the bar" on patent quality. Among other measures taken to accomplish this goal, Ms. Brimelow enforced a stricter interpretation of EPC law, including a more rigorous application of the existing prohibition against new matter. Whatever her motivation, Ms. Brimelow's change in enforcement policy required many U.S.-based applicants to reassess their European strategy.
To achieve desired claim coverage today, applicants should think through their...