IP: Sufficiency of disclosure and the great divide between the U.S. and Europe

A few approaches to harmonizing disparate disclosure requirements in the United States and Europe

The United States patent system has undergone significant change within the last few years. In particular, it has transitioned from a first to invent system to a first to file system. Some commentators have suggested that such change is an attempt to further “harmonize” the U.S. patent system with other patent systems of the world, such as the one in Europe.

However, a close analysis of the disparate disclosure requirements in the United States and Europe demonstrates that such harmonization is incomplete. Indeed, a number of patent practitioners regularly must plan for and address the significant “sufficiency of disclosure” differences that exist between these two systems when drafting and prosecuting patent applications, and enforcing patents. This is especially problematic for patent families in which such cases are prosecuted in the United States and Europe with the same or similar specification and claims.

European practice, on the other hand, does not allow for the use of expansive terms like “about” because a definitive “metes and bounds” to a claim cannot be ascertained. Further, European practice does not allow for the use of incorporation by reference to information from another patent application. Europe’s patent application style embodies a “show me page, show me line” type approach. Finally, actual examples with supportive results are preferred, if not inherently required, in Europe. Prophetic examples can be included, but are typically viewed with a negative eye by European examiners.

Because the drafting goals differ greatly, many U.S. and European practitioners are faced with difficult decisions when attempting to draft a “global” or “harmonized” parent patent application (either as a national application or a Patent Cooperation Treaty (PCT) application). To these commentators, the solution to such issues may be to consider the development of both systems over time, then utilize different drafting styles. Clearly, both the United States and Europe favor disclosure, preferably expansive and fully supportive disclosure. As a result, there are a few different description and claim drafting options to consider.

Contributing Author

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Troy Groetken

Troy Groetken (tgroetken@mcandrews-ip.com) is a shareholder at McAndrews. Troy has more than 15 years of experience in patent litigation and advanced prosecution matters in...

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Contributing Author

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Scott McBride

Scott McBride (smcbride@mcandrews-ip.com) is a shareholder at McAndrews, Held & Malloy. Scott has more than 15 years of experience in patent litigation and...

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