Napp Presentation July 2016 international...Napp Presentation July 2016.pptx Author Mavis Gallenson...
Transcript of Napp Presentation July 2016 international...Napp Presentation July 2016.pptx Author Mavis Gallenson...
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…