Insights

Q&A with Paul Whenman: European Patent Practice for Australian Practitioners

Written by Paul Whenman | May 18, 2026 12:06:54 AM
European patent practice continues to pose unique challenges for Australian practitioners, particularly as differences in legal standards, drafting approaches and prosecution strategies can materially affect outcomes. With Europe becoming an increasingly important filing jurisdiction, understanding these differences is now critical to securing robust and enforceable patent rights. In this Q&A, Paul Whenman, Consulting Partner at FB Rice, outlines the key distinctions between the Australian and European systems, highlights common traps for applicants, and provides practical guidance on aligning strategy with European requirements. Paul explores these issues in greater depth in the An Australian Perspective on European Patent Practice session.
 
1. What prompted the need for Australian practitioners to better understand European patent practice at this point in time?

In my experience, it is the jurisdiction, amongst the important jurisdictions, that presents the greatest difficulty in securing patent rights of an appropriate scope.

2. How does the Australia–EU Free Trade Agreement influence patent strategy for Australian applicants with European interests?

The FTA should be a trade enhancer. As such, Europe should increase in importance as a patent filing jurisdiction.

3. What are the most significant substantive differences between the Australian and European patent systems?

Novelty standards are quite different.

Inventive step standards are quite different.

Claim amendment is quite constrained in Europe because of the possibility that an amendment might be found to be added subject matter.

4. Where do Australian applicants most commonly encounter difficulties when entering the European system?

The specification and claims have been drafted with a strong Australian-US emphasis. See further below.

5. How do differences in legal requirements affect how applications should be drafted from the outset?

Because the EPO is focussed on identifying or creating the problem to be solved by the invention, applicants should ensure that initial drafting is similarly focussed.

6. What are some common traps for Australian practitioners or applicants when prosecuting patents in Europe?
 
  • No clear statement of problem to be solved and no clear disclosure of the technical solution. Nor are there back up problems or solutions clearly disclosed, which may be needed if new prior art requires claim amendment.
  • Priority claim based on an Australian provisional patent application is invalid as the provisional patent application is insufficient. Loss of priority.
  • Priority application not validly assigned to the EPO applicant. Loss of priority.
  • Europe does not have a 1 year grace period unlike Australia and the US. 
7. How does the European approach to inventive step and sufficiency differ from the Australian approach in practice?

The respective inventive step tests are fundamentally different.

The EPO has a highly structured approach that usually allows for a much broader range of prior art and general knowledge to be considered.

Australia has a somewhat narrow range of prior art which may only be considered with common general knowledge.

The manner in which the prior art is considered is also quite different.

In the EPO a problem/solution approach is used. The closest prior art to the purported inventive solution to the problem is identified. Then is the solution provided obvious over that prior art alone or in combination with other prior art or general knowledge.

In Australia, the question is whether a notional skilled person, aware of all relevant prior art and the facts about existing solutions, would have been directly led as a matter of course to try the claimed invention in the reasonable expectation that it might produce a useful or improved result. If yes, the invention is obvious.

By contrast, sufficiency seems to be broadly aligned with Australia approaching consistency with Europe.

8. What is the Unified Patent Court, and why is it important for Australian practitioners to understand its role?

A pan-European court in which parties may enforce and/or invalidate patent rights. It is not applicable in all European states as some countries have not acceded. It was established to allow a single court action, the results of which would apply to all European states that had acceded.

9. How does the Unified Patent Court change the enforcement and risk landscape for patents in Europe?

Primarily infringement and invalidity actions are easier and will be lower in cost because they will have wide European state reach. Previously, infringement actions had to be taken on a state-by-state basis.

10. Does the role of the UPC diminish the importance of the EPO Opposition procedure?

No. They are separate bodies with generally the EPO opposition procedure being available earlier and at lower cost to an Opponent. Although recently the UPC completely invalidated the patent for treatment of Covid using remdesivir whilst the same patent is under opposition before the EPO.

11. What practical advice would you give Australian practitioners looking to better align their strategy with European requirements?
 
  • Draft an Australian provisional application that is consistent with European standards.
  • Ensure that the applicant has a written assignment of inventors rights and third parties (if appropriate).
  • At the PCT stage, obtain a EPO search to gain a better insight into the prior art to be faced in European prosecution.

Paul explores these issues further in the workshop An Australian Perspective on European Patent Practice. on Thursday, 4 June 2026 

In this session you will focus on the following critical areas:

  • Effect of the free trade agreement
  • Understanding the fundamental differences
  • Comparing key legal requirements
  • Traps for Australian applicants
  • The Unified Patent Court

 

Paul Whenman, Consulting Partner, FB Rice

Paul Whenman is a consulting partner in our Sydney chemistry team. As a qualified patent attorney, Paul has had a distinguished career with the firm as managing partner for 10 years. Throughout his 40 years’ practice in FB Rice, he has gained significant experience in chemically related patents, including pharmaceuticals, animal health products, food technology, personal care products and alloys. Indeed, a significant component of Paul’s practice relates to the interplay between the regulation of pharmaceuticals and animal health products and patent systems. Of particular relevance is the patent term extension regime in Australia and foreign jurisdictions. Commensurate with his deep understanding of patent law and chemical technologies, Paul regularly publishes articles offering opinions and insights into a variety of topics. With a significant international reputation, Paul has been recognized as an IP Star/Notable Practitioner for patent prosecution in Managing Intellectual Property for many years, most recently in 2025. He is also listed by IAM as a Strategy 300 IP strategist 2022. As the importance of South East Asian markets have grown, Paul maintains a strong focus on IP developments in those countries as means of providing the best experience for clients. Within FB Rice, Paul has trained and mentored many attorneys. An important component of this training has been a focus on the ethical considerations relevant for attorneys and the conduct of an attorneys practice. The experience gained as managing partner and subsequently as life sciences practice group leader combined with the technical and legal foundations as a practicing attorney, have provided Paul with a significant depth of knowledge of relevance to all patent and trade mark attorneys.

 
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