Snippets of Information to Consider When Filing Abroad
Carefully Craft Your Claims
ì A. Generally, the Applicant can’t broaden claims once they have been searched.
ì B. Func;onal language is o=en deemed inadequate when specific features could be claimed.
ì C. Claim language must be exactly supported in the specifica;on.
ì D. Mul;ple dependencies are allowed with no extra charge. ì E. Excess claim fees need to be considered both for
prosecu;on and grant. ì F. Claim 1 should be your most important claim. ì G. May not be able to add claims once examina;on has
begun.
How and When to Use the PPH
ì A. In most jurisdic;ons, using the PPH enhances the likelihood of grant by more than 50%.
ì B. Using US allowed claims for a PPH elsewhere is o=en not a good idea.
ì C. The EPO is not a good jurisdic;on to use the PPH. ì D. A PCT Search or IPRP report can provide a basis for using
the PPH in all jurisdic;ons including the US, to hasten prosecu;on and enhance the chance of allowance.
Name the Correct Applicant at Filing or Risk Losing Your Claim to Priority
ì A. Failure to name the correct Applicant at filing can cause you to lose your right to priority. Edwards Life Science AG v Cook Biotech Inc (2009).
ì B. Assignments must say that the inven;on is assigned. An agreement to assign is not an assignment. Stanford University v. Roche Molecular Systems, Inc., 563 US 776 (2011).
ì C. The majority of jurisdic;ons in the world do not recognize “nunc pro tunc” language.
PCT Searching Authorities and Why to File in the PCT
ì A. Delays the decision to file foreign, but beware of the PCT’s non inclusion of countries such as Taiwan and Argen;na.
ì B. Centralizes prosecu;on and saves thousands of dollars. ì C. A favorable PCT report enables the use of the PPH. ì D. The EPO is a least favored search and examina;on center unless
Applicant will only complete in the EPO. ì E. If you aren’t going to file in Asia, then Russia is a bargain place to
search, but technology for communica;on is an issue. ì F. If you are going to file in Asia, think Korea for the search, but not
for Chapter II Demand. ì G. The US is great for a search but then you are stuck with its exam
which means heavy handed obviousness rejec;ons. ì H. Applicants can’t appeal a bad PCT decision.
Thank you for listening…