Understanding the Impact of Local Patent Laws on Claim Drafting: Key Considerations for Global Patent Applications.

Introduction: 

Nowadays, innovation knows no boundaries because an innovation developed in India could well be patentable in Europe or anywhere else. Nevertheless, patents are definitely not universal. A patent jurisdiction refers to the country or geographical borders within which a patent is registered and where it is legally enforceable. The legal frameworks and eligibility vary for each jurisdiction, and therefore, a claim that is eligible according to the eligibility criteria of USPTO may fail to meet the requirements of the Indian Patent Law. There are certain reasons for that because, in practice, the laws of each particular jurisdiction differ greatly. Thus, for practitioners, knowing the peculiarities of each patent jurisdiction is crucial in order to draft patent claims properly.

This blog aims at analysing the role of patent jurisdictions in determining claim scope and language.

The Architecture of Patent Claims

Patent claims delimit the extent or scope of coverage for the invention claimed. Claims are neither a detailed description of the invention nor are they used to describe what the invention comprises but rather the scope of protection to show where the line of the invention's monopoly ends.

Claims have hierarchical nature wherein independent claims delimit the highest protection scope; dependent claims provide increasingly more specific fallback position claims; multiple dependent claims delimit all versions of the invention in question without having to formulate a separate claim for each one of them. Effective drafting of claim hierarchy involves maximizing the coverage at its broadest scope possible while at the same time providing narrower claims to fall back on if the broadest scope claim fails.

The problem with claims stems from the following dilemma: narrow claims are easy to circumvent; broad claims are not proportionate to the teaching provided in the application. Historically speaking, doctrines of enablement and written description served the role of such tasks.

Yet patent protection has generally stopped at national borders and patent laws that initially emerged as territorial concerns have since developed into an important subject of international scrutiny. The laws, the exam system, and the approach to cases will be different for each jurisdiction, such that a claim prepared for just one jurisdiction will not work for all other jurisdictions.

Patent Claims in various Jurisdictions

USA:

US claim drafting is governed primarily by 35 U.S.C. Sec- 112, requiring claims to be enabled and supported by written description sufficient for a skilled person to reproduce the invention without undue experimentation. Specific terminology carries significant drafting risk. Terms like "the present invention is" and "a very important feature of the present invention is" have been held limiting in US claim construction litigation. In Chewy v. IBM, the Federal Circuit construed the claim term "selectively storing advertising objects" to require pre-fetching, because the written description consistently and uniformly described pre-fetching as a feature of the invention as a whole. In biotech, Amgen v. Sanofi invalidated broad functional genus claims for lack of enablement. further while Ariad v. Eli Lilly confirmed written description and enablement as distinct hurdles. Hence, avoid universalising specification language; use "in one embodiment" consistently to prevent unintended self-limitation during claim construction.

Europe:

Under the European Patent Convention, claim drafting is governed by a tightly interlocking framework. Article 84 imposes three cumulative requirements: claims must be clear, concise, and supported by the description failure on any limb invites examination objections. Article 83 further demands that the invention be disclosed sufficiently to enable a skilled person to carry it out. Article 69 establishes that claims determine the extent of protection, with the description and drawings serving only an interpretive function.

Rule 43 operationalises these requirements, mandating that claims define the invention in terms of technical features and prescribing the two-part format of preamble and characterising portion. Amendment is constrained by Article 123(2), which prohibits subject-matter extending beyond the application as filed, and Article 123(3), which prohibits any extension of protection post-grant together that makes original drafting decisions irreversible.

T 2488/22 established that description-aided claim interpretation does not permit narrowing claim scope to avoid an added subject-matter objection under Article 123(2) EPC.

In T1628/21 (Nike v. Adidas), the EPO Board held that where a claim is clear on its face, the description cannot be used to restrict its scope. The Board's "primacy of claims" principle produced the opposite result from US practice.

Hence, building explicit fallback positions into the original filing Article 123's double-bind makes post-filing corrections largely impossible.

India:

Drafting patent claims for India demands heightened vigilance across multiple fronts.

The requirements for patent claims in India are set out principally in Section 10(4) and Section 10(5) of the Patents Act, 1970 Section 10(4)(c) requires that the complete specification end with a claim or claims defining the scope of the invention for which protection is claimed. Section 10(5) requires that the claims be clear and succinct and be fairly based on the matter disclosed in the specification.

Section 59(1) limits amendments to disclaimers, corrections, or explanations of actual fact, and bars any amendment that broadens claim scope beyond, or adds matter not substantially disclosed in, the original specification, though limiting or clarificatory amendments, are allowed as permitted in AGC Flat Glass Europe v. Anand Mahajan, remain permissible. Subject-matter exclusions under Section 3(d) and 3(k) add further drafting pressure in pharmaceutical and software applications respectively, demanding that claim language affirmatively address efficacy enhancement and technical effect beyond the programme perse.

Hence, front-load efficacy language for pharma claims and technical effect language for software claims India's narrow amendment regime offers little room to correct this later.

China:

The Patent Law of China puts into place a very strict procedure for claim drafting. As per article 26, claims depend on the description while clearly defining their scope. According to article 33, any amendment exceeding the initial disclosure is not allowed. Finally, article 64 brings all these together by declaring that whatever protection is afforded to the invention/utility model depends on the claims alone.

The difference between the open claim and the closed claim requires a consistent long-term strategy. In accordance with the Supreme People's Court’s decision, choosing to take closed claims precludes inclusion of the elements that are not included and does not allow the patentee to include them subsequently based on the doctrine of equivalents. As per Valeo Cleaning System v. Xiamen Lukasi case, if an element is structural or implies structural content, it is considered as non-functional even in case of its simultaneous involvement in the process of performing a particular task. From a drafting point of view, one can say that the structural language of claims is usually more reliable in China than the functional one.

It is simple: start from the presumption of an open claim unless there are compelling reasons to adopt a closed claim because the open/closed nature determined upon filing the patent application ultimately affects the scope of enforceability.

Key Drafting Considerations

United States

• Avoid universalising specification language like "the present invention is" as courts have held such phrases limiting during claim construction.
• Where functional genus claims are used, ensure the specification provides sufficient structural examples to enable the full scope claimed

Europe

• Include the fallback position explicitly in the original filing as the double bind of Article 123 makes post-grant amendment unlikely
• Cannot use descriptive language to fix imprecise claim language as per EPO primacy of claims approach, which means the solution must come from the claims

China

• Always use open claiming language unless the invention demands otherwise because once the open/closed choice is made, there are no going back for enforcement
• Basically, use structural rather than functional language in claiming because the Chinese court is reluctant to invoke the doctrine of equivalents in enforcement

India

• Use efficacy language in pharma claims and technical effect language in software claims given the restrictive nature of Section 59 in allowing post-filing amendments
• The India patent office, unlike other jurisdictions like EPO or USPTO, requires amended claims to be within the unamended claim scope, thereby setting limits

Each jurisdiction reflects a distinct legal philosophy, and scope decisions made at filing are overwhelmingly difficult to recover later. As Shanker and Koolwal observe, the IPAB has affirmed that a patentee obtains no monopoly unless it is claimed. Prosecution flexibility and continuation strategy are valuable tools, but poor substitutes for a well-constructed original application. Innovation may be borderless, but the claims that protect it are not.

Author :- Annika Tony, in case of any query, contact us at Global Patent Filing or write back us via email at support@globalpatentfiling.com.

References

1- Archana Shanker & Aastha Koolwal, Evaluating the Restrictive Nature of Amending Patent Claims in India, 292 MANAGING INTELL. PROP. 10 (2021).

2-H.E. Dunham, Drafting Patent Claims, 29 J. Pat. Off. Soc'y 318, 319 (1947)

3- Shahrokh Falati, Eviscerating Patent Scope, 21 UIC Rev. Intell. Prop. L. xi (2022).

4- Anthony D. Sabatelli, Impediments to Global Patent Law Harmonization, 22 N. Ky. L. Rev. 579, 579 (1995).

5- 35 U.S.C. § 112 (2018)

6- C.R. Bard, Inc. v. United States Surgical Corp., 388 F.3d 858 (Fed. Cir. 2004)

7- Inpro II Licensing, S.A.R.L. v. T-Mobile USA, Inc., 450 F.3d 1350 (Fed. Cir. 2006).

8- Chewy, Inc. v. Int'l Bus. Machs. Corp., No. 2022-1756 (Fed. Cir. Mar. 5, 2024)

9- Amgen Inc. v. Sanofi, 598 U.S. 594 (2023).

10- Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336 (Fed. Cir. 2010) (en banc).

11- Convention on the Grant of European Patents (European Patent Convention) art. 84, Oct. 5, 1973, 1065 U.N.T.S. 199 (as revised Nov. 29, 2000).

12- Implementing Regulations to the Convention on the Grant of European Patents r. 43, Oct. 5, 1973, as amended (European Patent Office 2020).

13- T 2488/22 (Eur. Pat. Off. Bd. App. Feb. 18, 2026), ¶¶ 20–21

14- T 1628/21, Technical Bd. App. 3.2.06, Eur. Pat. Off. (Feb. 6, 2024)

15- The Patents Act, No. 39 of 1970, (India)

16- AGC Flat Glass Europe SA v. Anand Mahajan, 2009 SCC OnLine Del 2826 (India).

17- Patent Law art. 26 (promulgated by the Standing Comm. Nat'l People's Cong., Mar. 12, 1984, effective Apr. 1, 1985) (China), https://www.wipo.int/wipolex/en/legislation/details/21881.

18- Shanxi Zhendong Taisheng Pharm. Co. v. Hu Xiaoquan, MTZ No. 10 (Sup. People's Ct. 2012).

19- Valeo Cleaning Sys. Co. v. Xiamen Lukasi Auto. Parts Co., Zuigao Renmin Fayuan Zhidao Anli (Sup. People's Ct. Guiding Case) No. 115 (Dec. 24, 2019).

20- Archana Shanker & Aastha Koolwal, Evaluating the Restrictive Nature of Amending Patent Claims in India, 292 Managing Intell. Prop. 10 (2021).