〈日本知財学会誌〉Vol. 6 No. 2―2009 : 4 10-International IP Strategy and Patent
Attorneys
Thorsten Bausch（Patent Attorney & Partner, Hoﬀmann Eitle, Munich／London）
This article demonstrates the role of patent attorneys in devising international IP strategies at various levels. Due to theirtechnical and legal education and training, patent attorneys are enabled in a unique way to effectively advise and representclients in the field of patent drafting, prosecution, defence and litigation. Patent law is a very special field of its own. Boththe technological issues and the legal issues of patent law are often times of a highly complex nature, particularly in view ofthe fact that the legal systems throughout the world are anything but really harmonized. A lot of know-how and experienceis therefore needed and provided by patent attorneys to cope with these challenges on a global scale.

■ KEYWORDS

1.

Patent Attorneys, Intellectual Property, Strategy（hereinafter called Paris Convention）. That is, even

Introduction – The IP Universe

long before the United Nations were established, there
was already a multi-national agreement in place in the

In the modern globalized economy no serious player

field of Intellectual Property. Further notable milestoneson the market can afford not having a sound strategy inof international cooperation in the field of patent law

place that deals with intellectual property（IP）issues on

includean international scale. Indeed, almost all states of theworld have established a national or supranational legal

・the Patent Cooperation Treaty（PCT）of 1970,
which now covers 142 member statessystem providing protection for all categories of IP, i.e.

・the European Patent Convention（EPC）of 1973

technical inventions, designs, trademarks and copyright,

establishing the European Patent Office as a single

to name just the most important IP categories.

organisation granting a uniform patent for theth

It was recognized as early as in the 19 century thatentire territory of the 36 EPC member states, which

technical progress and innovation can be immensely

include all states of the European Union and nine

promoted and fostered by providing an incentive to the

non-EU states such as Switzerland, Turkey andcreators of innovations in the field of technology, i.e. the

Norway,inventors, by awarding them an exclusive right to theirinventions for a certain period of time. Such protection

・the subsequent establishment of supra-regional
patent offices in the Gulf states and in Africa,

can be and usually is provided in the form of a patent or・the Agreement on Trade Related Aspects ofa similar IP right（such as a utility model, a petty patentIntellectual Property Rights（TRIPS）of 1995 as aor the like）. It was also recognized as early as in the 19thpart of the WTO agreement,

century that the field of IP law requires international

・the Community Patent Convention（not yet officiallycooperation and standardization to a particularly highin force）and many EU directives and regulations

extent. The history of international agreements in thein Europe relating to certain aspects of IP law and,field of patent law started with the Paris Convention
for the Protection of Intellectual Property of 1883
4

finally,
・a plethora of bilateral agreements such as for
©

2009

IPAJ

ISSN 1349-421X
All rights reserved.

International IP Strategy and Patent Attorneys

example the Patent Prosecution Highways（PPH）

a description and drawings, if applicable. Drafting a

recently established between the patent offices ofpatent application and particularly drafting the claims

Japan, the United States and the EPO.

is anything but a simple, mechanical process. Drafting

Note that this list is by far not exhaustive. Skilledgood claims requires a high amount of technical andprofessionals are therefore needed to guide companies

legal skills and a thorough understanding of thethrough the complex ramifications of IP systems oninvention and the relevant market. A well-drafted patenta global scale and helping them to establish a soundapplication can be compared with a piece of art, and thisinternational IP strategy. Ideally, it should be ensured

applies particularly to the drafting of the patent claims.

that an invention made, for example, in Japan creates

The claims define the subject-matter of the patent

revenues through patent protection in all states whereapplication and later the scope of protection of thesuch invention is used either by the inventor himself or

patent. On the one hand, they should be broad enoughhis company or by authorized third parties who haveto cover the invention and obvious variations thereof to

taken a licence in the patent granted to this invention.

the fullest extent possible. On the other hand, however,

These professionals are patent attorneys on the one

the subject-matter of the claim as a whole must be

hand and specialized attorneys-at-law on the otherpatentable, i.e. everything covered by the claim must be

hand. Patent attorneys are of a particular importancenew, industrially applicable and involve an inventive step.

in this regard. This is because they are, by way of

These two requirements are often times contradictory,

their training and their technical and legal background,which means that a reasonable compromise must be

uniquely qualified to understand both the technicalfound. Drafting a claim that takes these conflicting

aspects of the invention and the legal implications ofrequirements into account is anything but trivial, andthe patent system. Patent attorneys therefore widely

the difficulty is further compounded by the fact that the

represent applicants（both big and small companies andpatent attorney drafting the application does not always

single inventors）before the respective patent offices inhave the complete state of the art at his disposal.

which they are admitted. In addition many countries also

Moreover, the patent application and the patentpermit patent attorneys the right of audience in court,

must disclose the claimed invention in a manner

if the case is an IP-related matter. Patent attorneys in

sufficiently clear and complete for it to be carried out

many states are therefore also heavily involved in patentby a skilled person, i.e. the patent must enable thelitigation.

invention to be carried out throughout its entire scope

How do patent attorneys help to devise and actually（enablement requirement）. A problem that frequently

shape international IP strategies? This question will beoccurs upon drafting, particularly in the fields ofaddressed in the following in more detail.

chemistry and biotech inventions, is that the patent

2. The Patent Application

attorney does not always know to which extent theexemplary embodiments provided by the inventor can begeneralized.

Once an invention has been made, the first step is that

Yet another layer of complexity comes into play whena patent application must be drafted in order to obtainconsidering the commercial objectives of the patent

an exclusive right, i.e. a patent, and to generate revenues

application. These commercial objectives have a strong

therefrom. This drafting process already includes a lot

impact on the strategy to be pursued by the individualof strategic considerations, both on a national and on apatent application. Generally speaking, there are narrowglobal level, as will be apparent from the following.

“defensive” patent applications and broad “offensive”

A patent application consists of one or several claims,

patent applications. Defensive patent applications serve5

〈日本知財学会誌〉Vol. 6 No. 2 ― 2009

in the first place the purpose of protecting the invention

a kind of pioneer invention rather than just a marginal

against direct copying by competitors and help to secure

improvement of existing technology. On the other hand,the patentee’s market exclusivity and freedom to operate.

even an legally unsuccessful broad application can

Conversely, broad and offensive patents mainly serve thesometimes be an economic success on a competitive scale

purpose to disturb or impede the activities of patentee’s

if it binds significantly more capacity of the opponents/

competitors and may in an extreme case block an entire

competitors than own capacities. A lot of skill andfield of research.

experience is necessary to devise the right IP strategy for

A well known example of a fairly offensive patent
strategy is Pfizer’s patent application covering its®

®

your invention at the very early stage of drafting.
An additional layer of complexity comes on top

Viagra pill. The active ingredient of Viagra is aof this when the invention is to be patented on ancompound having the International Non-Proprietaryinternational scale. This is because the patent laws

Name（INN）of Sildenafil. Sildenafil was a known

in the individual countries are currently not and will

compound and was used in clinical trials for angina

probably never be 100% the same, despite all attempts

and related cardiovascular diseases. The invention wasfor harmonisation. It would be naïve to assume thatbased on the observation that Sildenafil also caused

every invention or every patent claim that is considerederections and could thus be used as an agent against

patentable in Japan will also be considered patentable

impotence. However, the patent application drafted onin the United States, in Europe and/or in China and vice

the basis of this observation did not only cover the use

versa. As a matter of reality, this is not the case andof Sildenafil for the treatment of impotence, but indeed

serious differences still exist, particularly in the fieldclaimed the use of any inhibitor that worked via theof pharma inventions, where for example method ofsame mechanism of action as Sildenafil, without eventreatment claims are allowable in the USA, but not in

specifying the chemical structure of such inhibitors.

Europe or Japan, whereas use claims are not allowable in

Clearly, when a patent application is drafted as broadly

the USA but may be the appropriate format in Europe.

as this and is then prosecuted and granted by some

The requirements of disclosure, i.e. the amount of data

patent offices, then heavy litigation may be expected

and information that should be in a patent application

to ensue. This is indeed what happened in this case.

to enable a skilled person to reproduce the invention

In Europe, for example, the patent was opposed by noalso differs significantly from country to country. As aless than 13 opponents which ended with a complete

general rule, Japan and China require more data to be

revocation of the patent. In other countries such aspresent in the application for enablement and written

Australia, Pfizer was more successful. In Japan anddescription purposes than the USPTO or the EPO. The

China, the broadest claims never proceeded to grant. In

United States Patent Act requires that the best mode for

the United States a broad patent issued initially, but thecarrying out the invention known to the inventor at thematter has not been finally resolved there.

priority date must also be disclosed in the application.

This example goes to show that the patent attorney

This requirement does not exist in Japan or the EPO. It

drafting the individual application can exercise a decisive

is important, but at the same time also a challenge to takeinfluence on the（international）IP strategy to be pursued

all of these numerous and partly differing requirementsin this particular case. It goes without saying that the IP

into account when drafting a new patent application.

strategy should fit to the invention which it is supposed
to protect. Generally, a broad patent application will only

3. International Prosecution

be successful in the long run if the underlying invention
indeed is of a very broad applicability and represents
6

After the initial patent application has been drafted,

International IP Strategy and Patent Attorneys

with the above strategic considerations in mind, it will befor inventive step are also different from country to

filed, usually as a priority application with the domestic

country and sometimes even from examiner to examiner.

patent office of the inventor’s home country. Based

It requires a lot of experience to successfully steer youron the Paris Convention of 1883, which is still in force

way through inventive step objections on a global scale.

today, it is possible to file within one year further patent

You may have to amend your patent in one country andapplications directed to the same invention in any of theargue against the examiner in another country without

173 member states of the Paris Convention, claiming theamending the patent, but in the end you should always

priority of the first application. Therefore an appropriate

make sure that your argumentation is consistent andinternational filing strategy must be developed to meetthat contradictions are avoided. This is particularly

the applicant’s economic objective（s）.

important owing to the fact that certain patent offices,

This strategy usually includes a decision on themost notably the USPTO, require the applicant to prepare

countries in which protection is desired and on the bestan Information Disclosure Statement’（IDS）wherein all

way how to obtain protection in these countries. For

prior art references, search reports, office actions and any

many countries, there are several options or routes toother pre-published and post-published documents thatobtain a patent. For example, it is possible and quite

may be material to the patentability of the US patentpopular today to file an international patent application

application must be disclosed. Failure to do so mayunder the Patent Cooperation Treaty（PCT）coveringresult in unenforceability of the US patent and thus haveseveral countries with one application up to a certain

quite dramatic consequences.

stage of the examination process. Alternatively or in

For the same reason, consistency of argumentation

addition it is possible to directly file national or regional

is very important and it may be better at times notpatent applications in the desired states or territories

to compromise with the examiner in one country if（e.g. in the EPO）
. Patent attorneys will advise theirapplicant prosecutes a broader application in the USA

clients how to find the best prosecution strategy for theand believes that it has good chances to obtain a broader

individual invention and/or will help to establish suitablepatent there. Otherwise there is a risk that the USPTO

Standard Operating Procedures（SOPs）for larger

may take notice of applicant’s compromising in thatcompanies.

other country, which may prompt the US examiner toAs the next step, applicant’s domestic patent attorney
or in-house IP department will usually be entrustedwith coordinating the international prosecution of theraise similar objections.

4. Post-grant challenges to validity

application. This can be quite challenging at times. It
happens quite frequently that new prior art is found by

Assume that applicant has be en successful insome patent offices and/or that objections are raised byobtaining a patent to its invention in all desired states

one or several patent offices which require the applicationor territories. Can the patent attorney then be released

to be amended somehow. Some patent offices are morebecause he has done his job? Not necessarily! A patent

generous and some are less generous in allowing suchremains vulnerable and susceptible to invalidity attacks

amendments. The European Patent Office, for example,

during its entire lifetime. Many countries have a post-

is notoriously critical in allowing amendments unless

grant opposition or re-examination system in place,they are clearly and unambiguously based on thewhich allows third parties to challenge the validity of

application as originally filed. In practice this meansa patent. As per such proceedings, the patent officethat applicants need a more or less literal support for any

will reconsider the merits of the patent. Opposition

amendment that they try to introduce. The requirementsor reexamination proceedings can be quite lengthy
7

〈日本知財学会誌〉Vol. 6 No. 2 ― 2009

and challenging, and their outcome is uncertain. The

that you argue your case consistently, i.e. apply the same

European Patent Office, for example, revokes aboutlevel of common general knowledge and the same claim

one third of the opposed patents entirely and about one

interpretation world wide, even if some patent office orother third in part. Thus, the opponent has per se a good

local practice may suggest to you to follow a different

chance to prevail and there is no strong presumption ofcourse. Such decisions can sometimes be very difficult

validity in Europe. In the United States, the situation

to make, but the best person to make such decisions on

is similar in these days. In the USA, a request for re-

the basis of his or her technical and legal training andexamination can only be filed by a third party if a newexperience will be a patent attorney.

issue of patentability is raised, but this obstacle canbe overcome quite easily. It is even possible that the

5. Litigation

Director of the USPTO files a request for re-examination
ex officio, in which case the patent will be re-examined

Suppose a patent has successfully withstood allagain by the patent office. However, so far the Director

validity attacks in opposition or re-examination

has filed such requests only in really exceptional cases.

proceedings. Can patentee then consider its patent safe

For example he did so in the case of Pfizer’s Viagra

and release its patent attorney? Again, not necessarily !

patent which was initially granted with a very broad

In the end, most patentees do of course like to generate

scope by the USPTO but then revoked in reexaminationsome revenues from their patents. The patent attorney

proceedings（appeal pending）.

is ideally suited to help patentee with this as well.

Usually, it will be a patent attorney who will guide

Namely, if there is a commercial interest in the patented

the patent proprietor through such opposition orinvention, then patentee may be able to find a partner

reexamination proceedings, either on a local level

who is interested in taking a licence. His patent attorney,as patentee’s representative or on a global level as aand if necessary, a specialized attorney-at-law may help

coordinator. Both roles are equally important : Youpatentee to formulate the optimal licence agreement that

may not wish to win proceedings in one country withwill withstand the challenges of competition law on aan argument that is clearly deleterious to your case inglobal scale and serve the commercial interests of both

another important country. However, this can quite

parties in the long run.

easily be the case. Just consider the example that in

Other competitors may not be willing to take a licence

country A the examiner argues that the application isand instead try to copy patentee’s invention without its

too broad and does not contain sufficient data to enable

consent. And other competitors will perhaps slightly

the invention throughout its claimed scope. In such a

modify the patented invention such that it is no longer

case, applicant may feel tempted to argue that a skilled

literally covered by the patent claims. In such a caseperson had a good deal of common general knowledge

the patentee should again have a strategy in place and,

which would have certainly enabled him to close any

if his patent is infringed in more than one country, thisremaining gaps left in the patent specification. However,strategy should again be a global one. This is becausesuch an argument may hurt applicant badly in another

if and when it comes to litigation, many objections canjurisdiction where inventive step is challenged. In suchand usually will be raised against the patent in suit.

a country applicant may rather wish to argue that theIn addition there is usually an intense debate on whatlevel of skill and the common general knowledge ofthe terms used in the claim actually mean. If patentee

the skilled person was so low that the invention would

advocates for a broad construction so as to cover thehave been a big surprise to the skilled person and was

infringing embodiment, the o pponent and infringement

anything but obvious. Therefore, it is very important

defendant will often argue that the patent is invalid if

8

International IP Strategy and Patent Attorneys

such broad construction is applied, but not infringed

Coordinating IP ligation is of particular importance

if a narrow construction is applied. Thus the patentin Europe. One might think that this should not be

proprietor may find himself in a squeeze between

too difficult in the case of a uniform patent granted

invalidity and non-infringement through which he willby the EPO. The European Patent Convention indeed

have to find his ways. Again, a lot of technical, legal andprovides for a single European patent in all designatedforensic skills are required at this stage.

contracting states which should be adjudicated according

Other more legal objections which may be raised into the same principles : For validity, Art. 52-57 and 83

at least some countries and which need to be rebutted

EPC apply, stipulating that the invention underlying

in an infringement litigation include anticompetitive

the patent should be new, involve an inventive step,

behaviour, inequitable conduct, patent exhaustion, lackbe industrially applicable and be sufficiently disclosedof entitlement, laches, prior use and experimental use

so that it is enabled. The scope of the European

defences, if and where applicable. Patent infringement

patent is governed by Art. 69 EPC stipulating that thelitigation can be very complex, time consuming andclaims determine the scope of protection and that theexpensive, particularly if conducted in expensive

description and drawings are to be used to interpret thejurisdictions such as in the United States or the UK.

claims. Therefore, in principle the result of IP litigation

Therefore, patentee should better make sure that hein Europe should be the same in all EU states. But thishas adequate responses to all possible challenges

is just theory. In reality, infringement and nullity actions

against your patent in place before indulging in suchare dealt with on a country-by-country basis（Art. 64

expensive litigation. Requesting an expert opinion by（3）EPC）and it often turns out that different courts

an experienced patent attorney may be very helpful forcome to different results even though the underlying casethe proprietor to minimize his litigation risk and to getis the same. In addition, European courts move ahead

a better understanding of the chances of success, evenwith very different speeds and the courts involved have athough it will rarely be possible to provide a clear yesvery different degree of IP specialization and experience.

or no answer. Such an opinion can also be an important

The following table may help to gain a quick and roughtool to determine the best litigation strategy.

overview :Once litigation has started, the patent attorney will
typically be needed to prepare the necessary trial briefs

High

MediumLow

to the court and to draft the arguments in a way that a

Speed

UK, DE, ES

NL

IT, FR, AT

judge having no own technical background can easily

Costs

UK（very）

DE, FR, ES, NL

AT, IT

comprehend them. Employing good and experienced

IP Experience

DE, UK, NL

FR, AT

ES, IT

patent attorneys at this stage is key to success. When it
comes to litigation, problems of procedural law may also

In order to be successful it is vital that patentees

play an important role. For example, in some countries

take advice on where to best start litigation and wheresuch as Germany or Austria, invalidity and infringementnot. Moreover, they should carefully control theirquestions are handled separately and by different courts

various IP litigations in Europe and make sure that theor tribunals, whereas in other countries such as in thetechnical arguments are consistent. Many Japanese

UK infringement and validity are always heard andand US companies conducting multi-jurisdictional

adjudicated by the same judge. Both variants may havelitigation in Europe or planning to do so therefore

important tactical implications and may be factors to

appoint an experienced IP law firm of patent attorneys

consider when evaluating the question where to startand attorneys at law as a single communication andinfringement litigation.

coordination window into Europe. This has proved to9

〈日本知財学会誌〉Vol. 6 No. 2 ― 2009

be best practice and has been quite successful in many

view of the fact that the legal systems throughout the

instances.

world are anything but really harmonized. A lot of

6. Conclusion

know-how and experience is therefore needed to copewith these challenges on a global level. But thanks totheir comprehensive background, training and daily

Patent attorneys have both a technical and a legal

practice, patent attorneys are uniquely suited to tackle

background and education. This enables them in athese complexities and to successfully steer their clientsunique way to effectively advise and represent clients

through all IP challenges so as to help them to generate

in the field of patent drafting, prosecution, defence andrevenue from their inventions. Putting the international

litigation. Patent law is a very special field of its own,

IP strategy in the hands of capable and experienced

at the boundary between modern technology and law.

patent attorneys is the best advice that will help toBoth the technological issues and the legal issues are

ensure optimum protection for your IP.

often times of a highly complex nature, particularly in10