17 November 2012

Differing Examination Practices


One of the biggest challenges faced by a practitioner is to prepare founding patent documents that are suitable for applications filed in a number of different countries. For example, the rules concerning amendments of patent specifications can vary between major jurisdictions. European law sets out that an amendment must remain strictly within the scope of the specification as filed. This means that even a departure from the wording of the specification as filed can result in an application for amendment being rejected. Both Australia and the United States are more lenient. As a result, we have to prepare patent specifications with a view to what might happen during prosecution. That means we have to do our best to provide enough information in the specification in case we need to make an amendment. A typical response to an objection to a patent application by an examiner would involve some form of amendment of the claims, for example, to narrow the scope to avoid prior art. The strict application of the European patent office (EPO) to the exclusion of "new matter" is also followed by the Chinese patent office (SIPO). Inadequate disclosure could result in an application being ultimately rejected.

Another difference is the approach taken to divisional applications. In some cases, an applicant might wish to seek protection for a different aspect of the invention to that covered by the pending application. In a number of jurisdictions, including that of Europe, the United States and Australia, it is possible to file what we call a divisional application (in the US, a "continuation application"). However, again in Europe, the specification for the divisional must be contained wholly within the specification as filed in support of the pending application. The exclusion rule is as strict as that for amendment. In the United States and in Australia, it is possible to file divisional applications that introduce new matter. If that new matter is covered by one or more claims then those claims will have a priority date that is the date of filing the divisional applications. In the United States, such an application is referred to as a "continuation-in-part application".

It is important to bear in mind that an international application is effectively an application in all the countries automatically designated by the international application. It follows that the specification filed with the international application should, as far as possible, comply with the "best practice" requirements of those countries that take the strictest approach. Here is a link to a list of countries that are members of the Patent Cooperation Treaty (PCT) in terms of which an international application is filed: http://www.wipo.int/pct/guide/en/gdvol1/annexes/annexa/ax_a.pdf.

So the lesson is to provide your patent attorney with as much information as possible as early as possible. You must always bear in mind the golden rule that it is possible to remove material after the application is filed but it is not possible to add material of any significance after filing in the major jurisdictions.


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