IP: Effective priority application drafting for international prosecution

Consider literal support, number of claims and dependency to avoid trouble abroad

When preparing an initial patent application, a drafter often does not consider the impact that the initial application might have on subsequently filed applications, especially applications filed outside of the drafter’s jurisdiction. While some requirements of the desired countries can run counter to one another, the drafter should attempt to have an overall protection strategy when preparing the application. Factors that the drafter should consider include jurisdiction-dependent requirements regarding literal support, number of claims and claim dependency.

 

Literal support

Many countries follow a much stricter approach to supporting claim features than the U.S. Patent and Trademark Office (PTO). For example, European Patent Organization (EPO) patent applications can be rejected under article 123(2) EPC for new subject matter if the EPO considers that the application does not use appropriate terminology based on the description. In China, if a claim is filed seeking broader coverage than that provided by the initial claims, the claim may well be rejected under Article 33 of the Chinese Patent Law, which proscribes claims that are not supported by the original disclosure. Problems such as these often can be prevented by preparing claims at the beginning of the drafting process that avoid using terms that are different from those in the description. Additionally, the drafter should consider writing a broad claim and including it within the description. The broad claim should be accompanied by references to other features that could be combined with the subject matter of the single broad claim.

 

Number of claims and dependency

When drafting an initial application, the number of claims to be filed is often overlooked. While many countries, such as Canada, do not charge for excess claims, other countries impose heavy fees when the number of claims exceeds a certain threshold. For example, if more than 15 claims are filed in an EPO patent application, a fee of €200 per claim will be charged for claims 16 to 50, and a fee of €500  for every claim after 50.

Given the high cost of claims, it is important to structure the claims effectively in preparing the application. The drafter can create claims that use multiple dependent claims in the initial application if it is an international patent application, or an alternative set of multiple dependent claims can be drafted in parallel with the preparation of the initial application. It is also possible at the PTO to file an initial claim set and file a preliminary amendment to remove multiple dependent claims and limit the claims to 20 or fewer. Additionally, in order to minimize the number of claims, it is possible to structure the claims such that an apparatus claim, for example, incorporates features from a method claim set without unnecessarily repeating the method claims.

Other strategies to eliminate repetition of claims should also be considered, such as having a more generic dependent claim at the end of series of dependent claims so that it can be dependent upon the preceding dependent claims. As these few examples demonstrate, it is important to be mindful of the fee structures of prospective jurisdictions when preparing claims, and to have a strategy that will ultimately facilitate filing in multiple jurisdictions.

 

Conclusion

When preparing an application, be sure to consider the regions or countries in which the application will eventually be filed and prosecuted. It is important to account for literal support, claim number and claim dependency. If appropriate considerations are made during the drafting of the initial application, prosecution of subsequently filed applications will go much more smoothly. 

Contributing Author

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Andrew Weaver

Andrew Z. Weaver is a partner at Novak Druce + Quigg where his practice is focused on the prosecution and reexaminations of patents. He can be reached...

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