Differences in US and European Patent Law: Obviousness and Intermediate Generalization

The United States is one of the largest non-European filers at the European Patent Office, with around a quarter of its total applications in 2024. That means semiconductor companies need to consider European patent rules and procedures as part of their filing strategy. On this episode, Elizabeth and Nathaniel were joined by Phil Sanger from Grey Wolf IP in the United Kingdom to learn about some issues in European patent practice that come up when trying to coordinate prosecution from the US. First, they discussed the standard for obviousness, including the number of references that can be cited in Europe, starting from the closest prior art reference, and the importance of technical effects. Then they discussed Europe’s (dreaded) intermediate generalization and strategies to avoid adding undesired features in a claim amendment. Drafting the specification in a way that the desired feature is optional or is not necessarily only linked to other features can help in this situation, but that requires activity well before the patent application is filed in Europe.