The world is becoming more and more globalized and especially in the area of digital inventions, where software based solutions can easily be sold worldwide, companies are increasingly forced to deal with the peculiarities of different markets. And this does not only apply to the business aspects, but also to the particularities of the jurisdictions, where they file for patents to protect their digital solutions. Here, especially the differences between the EPO and the USPTO regarding the patenting of software are a prominent example, which should be considered by companies operating in the US and Europe. How to optimize the scope of protection and grant rates for US companies in Europe was the topic of the LinkedIn Live talk with Stefan Müller on January 17, whose key points are summarized below.
Many digital US based companies are very active in the European markets and therefore want to profit from the same patent protection they acquired in the US to protect their products against competitors. Nevertheless, they often experience, that both their grant rates are lower and the scope of protection is narrower, when filing patents in Europe. One explanation for this are the different patentability criteria of the USPTO and EPO regarding software. Nevertheless, patent attorneys with multijurisdictional experience can consider the requirements of both jurisdictions, when drafting the patent, which can improve grant rates and scope of protection. For US and European companies such peculiarities should be taken into account, when deciding on their international filing strategy. Relevant peculiarities and topics such as divided infringement, method steps performed by users, mixing application and training of AI, the usage of product names or trademarks in claims, method features in apparatus claims and external parameters used for defining claim features will be explained in detail with examples provided by Stefan Müller in a follow-up article.
For the improvement of filing strategies companies take a variety of approaches, but one prominent way is to actively connect the patent attorneys from the various target markets and jurisdictions to find ways to draft patents, which are valuable in all relevant jurisdictions. Nevertheless, many companies are lacking the awareness and knowledge of this topic, often because they were focused on few markets known to them in the past and have not dealt with international filings yet, and are losing the optimal international protection. Additionally, the patent quality can not only be improved by increasing the scope of protection, but also by improving the enforceability in the case of an international infringement. Therefore, each company looking for patent protection should also be aware of the potential infringement scenarios, which it wants to be protected against, and optimize the patent with their attorney to create the needed specific sphere of protection.
More details on this topic can be found in the recording of the Live Talk from 17.01.2024 with Stefan Müller, expert on the international optimization of the scope of protection and grant rates for software patents: