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Not All Patent Offices are the Same

Patent Offices are Different

Patent Offices around the world will likely have different rules of practice.  In other words, how you obtain your Patent can require different legal procedures and strategies.

Patent Office Characteristics

Types of Patent Applications

The Scenario

Our Louisville company filed original Patent Applications for the “gadget” in the USPTO, the CIPO, the EPO and other Patent Offices around the globe. After filing the Patent Applications, our engineering department invented our new and improved “gadget” that was similar to but slightly different than the original “gadget.”  Management decided to file additional Patent Applications claiming the improved “gadget.”

Potential Patent Offices’ Strategies

United States – USPTO

In the United States, your company could file any of the above Patent Applications for the improved “gadget.”

According to 37 C.F.R. 1.53, “a continuation, divisional, or continuation-in-part application, may be filed under the conditions specified in 35 U.S.C. 120, 121, 365(c) or 386(c).”

European Union – EPO

The only potential option in the EPO is to file a Divisional Patent Application.  However, your improved “gadget” claims would only be allowed by the EPO if you can meet the conditions of EPO Rule 3.1.

EPO Rule 3.1 – Replacement or Removal of Features from a Claim 

“The requirements of Art. 123(2) are only met if the replacement or removal of a feature lies within the limits of what a skilled person would derive directly and unambiguously, using common general knowledge and seen objectively and relative to the date of filing (or the date of priority according to Art. 89, from the whole of the application documents G 3/89, G 11/91 and G 2/10).

Art. 123(2)

If the amendment by replacing or removing a feature from a claim fails to pass the following test by at least one criterion, it necessarily contravenes the requirements of Art. 123(2):

(i)      the replaced or removed feature was not explained as essential in the originally filed disclosure;

(ii)     the skilled person would directly and unambiguously recognize that the feature is not, as such, indispensable for the function of the invention in the light of the technical problem the invention serves to solve (in this context special care needs to be taken in cases where the technical problem is reformulated during the proceedings, see H-V, 2.4 and G-VII, 11); and

(iii)    the skilled person would recognize that the replacement or removal requires no modification of one or more features to compensate for the change (it does not in itself alter the invention).”

Thus, in the EPO, it is unlikely than an Applicant can meet the strict conditions of Art. 123(2) for an allowable amendment to the claims of a European Divisional Patent Application.

Need Help With Your Patent Application?

If your company needs assistance with filing Patent Applications in United States and foreign jurisdictions, please contact Business Patent Law, PLLC.

If you or your business are located in the greater Cincinnati, Indianapolis, Lexington, or Louisville standard metropolitan statistical areas and you have a topic or question you would like Business Patent Law, PLLC to address in the blog, please send us an email.

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