Introduction

“We conducted a patentability search in Europe and concluded that the prospects for grant are good. We’re now planning to also file in the United States — can we simply reuse the patentability search results?”

This is a question frequently asked by enterprises with international filing strategies. The answer is — you cannot simply reuse them, because patent examination standards and practices differ significantly from country to country. An invention may be considered to have an inventive step in Europe, yet be rejected as “obvious” in the United States (or vice versa).

Understanding these differences is critical for formulating a global patent filing strategy and accurately assessing the prospects of grant across multiple jurisdictions. A global patentability search should therefore account for the target jurisdictions from the beginning, rather than treating one country’s result as universally reusable. This article examines the core differences in examination standards relevant to patentability searches among the four major patent systems: Europe (EPO), the United States (USPTO), China (CNIPA), and Japan (JPO).

Why Do Global Patentability Search Standards Differ Across Countries?

The fundamental reason is that patent law is territorial. Although patent systems worldwide have converged through international treaties such as the TRIPS Agreement, substantive differences persist in actual examination practice, primarily reflected in:

• The scope of the prior art definition (absolute novelty vs. relative novelty)
• The standard for assessing inventive step (the specific threshold for “non-obviousness”)
• The assumed capabilities of the “person skilled in the art”
• The degree of acceptance of secondary considerations
• Differences in search practices (different classification systems, document coverage). Tools such as PatSnap Analytics can help teams compare global patent data and monitor jurisdiction-specific patent activity.

Comparison of Examination Standards Across the Four Major Patent Systems

1. Europe (EPO)

Prior Art Definition: Adopts the absolute novelty standard. Under EPC Art. 54, the prior art comprises everything made available to the public by any means before the filing date (“everything made available to the public”).

Inventive Step Assessment: Adopts the Problem-Solution Approach:

1. Determine the closest prior art
2. Determine the objective technical problem to be solved
3. Starting from the closest prior art and the objective technical problem, assess whether the claimed invention would have been obvious (the “could-would approach” — whether the prior art not only “could” but “would” have led the person skilled in the art to the invention)

Characteristics:

• EPO examination is renowned for its rigor and high quality, representing the “gold standard” of international patentability searching
• The inventive step assessment emphasizes “technical character” — purely non-technical improvements (e.g., business method improvements) are not considered inventive contributions
• Europe imposes relatively strict “technical character” requirements on the patentability of software inventions
• The EPO’s search quality and examination reports rank among the best globally and carry extremely high reference value

2. United States (USPTO)

Prior Art Definition: The United States transitioned from a “first-to-invent” to a “first-inventor-to-file” system in 2013 (the AIA). Prior art refers to technology disclosed before the effective filing date. Notably, the United States provides a one-year “grace period” — an inventor’s own disclosures made within one year before the filing date do not destroy novelty. This differs from the strict absolute novelty applied in China, Europe, and Japan.

Inventive Step Assessment: The standard term is non-obviousness. The assessment method is similar to China’s three-step approach but is based on the four factors established by the U.S. Supreme Court in Graham:

1. Determine the scope and content of the prior art
2. Determine the differences between the prior art and the claims
3. Determine the level of ordinary skill in the pertinent art
4. Evaluate secondary considerations (commercial success, long-felt but unresolved needs, failure of others, etc.)

Key Differences from the EPO:

Practical Impact on Patentability Searching: In the United States, you need to be more vigilant about secondary considerations (for example, proactively searching in the patentability search for literature demonstrating a “long-felt but unresolved need”). Additionally, the United States is relatively more favorable toward software patents — if your invention involves AI or software, the “clearance rate” in a U.S. patentability search may be higher than at the EPO.

3. China (CNIPA)

Prior Art Definition: Adopts the absolute novelty standard. Prior art refers to technology known to the public both domestically and abroad before the filing date (or the priority date, where priority is claimed).

Inventive Step Assessment: Adopts the dual criteria of “prominent substantive features” and “notable progress.” The three-step approach (closest prior art → distinguishing features → whether obvious) is the core assessment method, but “notable progress” (beneficial technical effect) is a second requirement independent of “non-obviousness.”

Characteristics:

• Examination practice places relatively strong emphasis on the articulation of technical effects
• “Unexpected technical effect” carries substantial persuasive weight in inventive step arguments
• The inventive step threshold for utility model patents is lower (“substantive features” and “progress,” rather than “prominent” and “notable”)
• Conflicting application regime: similar to the EPC, a conflicting application is used only to assess novelty and cannot be used to assess inventive step (although EPC Art. 54(3) in its wording refers to conflicting applications as “part of the state of the art,” they are likewise limited to novelty assessment only)

Practical Impact on Patentability Searching: If your target market includes China, the patentability search must pay special attention to the treatment of conflicting applications (used only for novelty assessment) and the differentiated inventive step standard for utility models.

4. Japan (JPO)

Prior Art Definition: Absolute novelty standard. Article 29 of the Japanese Patent Act provides that an invention publicly known anywhere in the world lacks novelty.

Inventive Step Assessment: The inventive step threshold in Japan was historically considered relatively low, but it has risen significantly in recent years. The JPO primarily assesses based on the following considerations:

• Whether the invention can be easily derived from the cited invention and the common general knowledge in the art
• Whether it is merely a simple improvement over the prior art
• Whether a person of ordinary skill in the art would have had a motivation to do so in solving the technical problem

Characteristics:

• The JPO has a unique FI / F-Term classification system that is more granular than IPC / CPC, potentially enabling higher search precision
• Japanese examiners are typically very detail-oriented, and office actions are often extremely thorough
• The emphasis on experimental data and effects is no less significant than in China

Overview of Patentability Search Strategy Differences by Country

Patentability Search Strategy for Multi-Jurisdictional Patent Filing

If you plan to seek patent protection for the same invention in multiple countries/regions, the following patentability search strategy is recommended:

Step 1: Use the “Strictest” Jurisdiction as the Search Baseline

Use the EPO Problem-Solution Approach as the search baseline. EPO examination is renowned for its rigor and high quality, and its “technical character” requirement is the most systematic inventive step assessment standard globally. If an invention can satisfy the EPO’s inventive step standard, it will generally not encounter major problems in other major jurisdictions (though the reverse may not hold true). This makes the EPO approach a useful anchor for a global patentability search.

Step 2: When Searching, Cover Literature in the Official Languages of All Target Markets

If filing in the United States, do not search only Chinese patent literature. English keyword searching is indispensable. Similarly, if entering the Japanese market, FI / F-Term classification codes and Japanese keyword searching must not be overlooked.

Step 3: Leverage the PCT International Search Report as a High-Value “First-Round Patentability Search”

The international search under the PCT (Patent Cooperation Treaty) is conducted by senior examiners from major patent offices (such as China’s CNIPA, Europe’s EPO, etc.), and the quality of the search report is generally high (the search fee is included in the PCT filing fee). After receiving the international search report, it can serve as the starting point for a second-round, more in-depth patentability search. For multi-market filing, this can make the global patentability search more efficient.

Step 4: Different Strategies for Different Markets

Based on the patentability search results, you can adopt different claiming strategies in different countries:

• Seek broad scope of protection in markets where novelty/inventive step is strong
• Adopt narrower but more robust claims in markets where more prior art exists

Real-World Case: Divergent Patentability Search Conclusions Between Europe and the United States

Scenario: A SaaS company developed an AI-based “automatic classification method for enterprise knowledge bases.” The core innovation lay in using a large language model (LLM) to automatically identify document topics and establish a multi-dimensional classification tag system.

European Patentability Search Conclusion (EPO standard): Novelty was satisfied. However, EPO examination practice analysis suggested that such business-method-related knowledge management solutions might encounter challenges under the “technical character” requirement, necessitating arguments demonstrating that the invention possessed a technical contribution going beyond “a computer program as such.”

U.S. Patentability Search Conclusion: Novelty was satisfied. In the United States, software patents were tightened after Alice, but if the technical solution included “non-generic technical improvements,” it could still pass subject matter eligibility examination. The patentability search recommended emphasizing in the claims the specific technical improvements in classification accuracy achieved by the LLM.

Actual Outcome: The invention was filed in both Europe and the United States. The U.S. patent was ultimately granted (with claims focused on technical implementation details rather than the classification logic itself), while the European application encountered challenges at the subject matter eligibility stage — the examiner considered that the classification logic itself did not constitute a technical contribution.

Lesson: Patentability searching must consider not only novelty and inventive step but also the subject matter eligibility policies of the target country. The patentability thresholds for software / AI inventions vary enormously across jurisdictions.

Key Takeaways

1. Patentability search conclusions cannot simply be reused across jurisdictions: Substantive differences exist in examination standards and practices among countries.
2. Use the “strictest” standard as the baseline for a global patentability search, especially if the target market includes Europe. For teams managing global patent portfolios, PatSnap Analytics can support broader patent landscape review and monitoring.
3. The PCT International Search Report is a valuable, high-quality patentability search resource (the search fee is included in the PCT filing fee) — make good use of it.
4. Adopt different claiming strategies for different countries, flexibly adjusting based on the examination practices of each jurisdiction.
5. Beyond novelty and inventive step, pay attention to subject matter eligibility policies, particularly for inventions involving software / AI.

Next Steps

Having understood the differences in patentability searching across countries, we will next delve into the core methodology of patentability searching — the five-step process from theory to practice. Please continue reading the next article: “Five Major Steps of Patentability Searching: From Theory to Practice.”

Key Takeaways: Although Europe, the United States, China, and Japan all adopt the absolute novelty standard, significant differences exist in inventive step assessment, the assumed capabilities of the person skilled in the art, the application of secondary considerations, and other aspects. A global patentability search should use the EPO’s Problem-Solution Approach as its baseline, cover literature in all target market languages, and leverage the PCT International Search Report as a free resource.