28 September 2009

Words, Words & Foreign Patent Applications

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I have recently been involved in the prosecution of a Chinese patent application. The complete specification was prepared in Australia a number of years ago and has found itself translated and in the Chinese patent office. The Chinese patent examiner has rejected the application. According to him, the broad description in claim 1 reads on to the prior art. The specification only has the broad terminology and a specific example. I tried to amend the claim to introduce a feature that is narrower than the broad terminology, but broader than the words used for the specific example. I don't want to use the specific example, because client would have a unacceptably narrow scope of protection. This tactic can work in Australia, the US and even Europe provided the terminology chosen is clearly a generic of the specific example. Not so in China, though. The examiner wants to force me to choose the specific example. So I'm looking at the possibility of a divisional application. Any tips would be appreciated!

My colleagues in Europe advise me that I have to be very careful with amendments and divisional applications in their jurisdiction, as there is a strict policy against adding new material.  Apparently, even the use of different words describing effectively the same thing can land you in trouble.

The problem is that here in Australia the patent office is very flexible when it comes to amendments and divisional applications. So its easy for us to develop bad habits. I've developed the hopefully good habit of using varying terminology in the specifications I prepare. One has to be careful not to be confusing though, because you could end up with a patent having validity problems. The technique I use is to incorporate as many generics and "sub-generics" as possible in the specification. For example, I might use the phrase "the planks are fastened together with a connector in the form of a threaded connector such as a coach bolt". So, I end up with three different terms for the same thing without losing clarity. If I need to amend in China I can amend from "connector" to "threaded connector" without having to end up with "coach bolt" which could be too narrow.  Also, I try to put that terminology in the description of the drawings as opposed to the summary, because some jurisdictions don't regard the summary as part of the description.

Hopefully I can work something out with the Chinese examiner...

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