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European vs. American Patent Drafting

Although patent writing has centuries of traditions, it has always been different in the old continent and the United States. Those differences originated because of number of reasons. Some of them being quite obvious,while others - more sophisticated.

For proper understanding and interpretation of the different drafting styles it is important to understand that intellectual property systems in Europe and US are (at least until now) quite different from the ground up.

1. Americans still have their "first to file" system versus the European "first to file". This is planned to change in the nearest future;

2. US applicants can be only natural persons (inventors), while in Europe  - inventor is not necessarily an applicant;

3. The definition of prior art is different: in US there is a grace period of 12 months, during which the inventor can publish scientific or commercial articles, as long as within 12 months from the first public disclosure he is able to file a patent application. In counterpart, in Europe no prior publications are allowed and the applicant is forced to file an application at the very first priority.

4. According to the patent law, in both continents, priority patent application has to be filed in written and include description of the embodiments. Just in the US it is required providing description of 'enablement' and 'Best Mode', while in Europe there is a requirement for sufficient disclosure, so that a person skilled-in-the-art could reproduce the invention without additional explanations from the inventor. However, this is often not met by European patent drafters. As a result, extra know-how transfer is often needed in addition to a patent license.

In general, patent specifications and claims of US and EU styles are quite similar in logic, therefore easily adaptable to each other. But the chapter titles and legal expressions used in claims are different. Key elements (chapter titles) of the US-type description are (sequence kept):

  1. Title (less than 500 characters)
  2. Abstract (on a separate sheet, under the heading “Abstract” or “Abstract of the Disclosure"; less than 150 words; dedicated to determine quickly from a cursory inspection the nature and gist of the technical disclosure)
  3. Summary of the invention (brief summary indicating nature and substance of the invention)
  4. Detailed description
  5. Reference to drawings (when there are drawings, there shall be a brief description of the drawings)
  6. Claims (claims have to be substantially different one from another and describe different feature of invention; terms and phrases have to be the same as in the detailed description)
  7. Application data sheet (voluntarily provided by the inventor in a form as specified by the USPTO; includes following positions: bibliographic data, applicant information, correspondence information, application information, representative information, domestic priority information, foreign priority information, assignee information)
In Europe,national patent drafting rules are more or less aligned with the requirements of the European patent, which contains following key elements:
  1. a request for the grant of a European patent;
  2. a description of the invention;
  3. one or more claims;
  4. any drawings referred to in the description or the claims;
  5. an abstract.

As you see, the key elements are quite similar and one can easily find corresponding parts. Requirements for Abstract, description of drawings and drawings themselves are almost identical. Now the major differences lay in the description part and the claims. We will have separate posts to discuss these topics.