Drafting a Patent Application for Multiple Jurisdictions: Keeping up with Globalization

In this era of globalisation, it is more crucial than ever to submit patent applications with a worldwide view. It gives the invention a single priority date and lowers additional costs associated with drafting a patent application. However, due to variations in national patent systems and prosecution procedures, creating a common application may be a little ambitious and risky at the same time. But if various standards are carefully satisfied in a single patent application, the work is not completely difficult.

Key Factors in Drafting a Patent Application for Multiple Jurisdictions

The drafter must be aware of all the various requirements that must be included in the patent application in order to create a single patent application for use in several jurisdictions.

1. Claims-related regulations: Let's start with the legislation that relate to claims in various countries. The quantity and nature of claims varies depending on the jurisdiction. For instance, the United States Patent and Trademark Office (USPTO) allows 20 claims without any additional fees, whereas the European Patent Office (EPO) only allows 15 claims without any additional fees. Additionally, there is an additional upfront fee of USD 820 (subject to change) for adding multiple-dependent claims, which the US patent system counts as individual claims.

The EPO, in contrast, counts multiple-dependent claims as a single claim and does not charge an upfront fee for doing so. As a result, for EPO patent applications, IP experts advise creating claim sets with multiple-dependent claims. The applicant should eliminate several dependencies from the dependent claims before filing a patent application with the USPTO. Additionally, a patent applicant in the USA is permitted three separate claims. This makes it possible for greater levels of security.

The multiple-dependent claims will, however, give the subsequent EPO applications priority if the application originates under the Patent Cooperation Treaty (PCT) if it is a US-originating application. To avoid any subject matter being added in the EPO applications, specialist patent drafters advise incorporating the portions you want should claim in the EPO to be included in the full description word-for-word.

2. Grace Period Provisions: Let's now discuss the grace period clause, which is the second element to consider when developing a patent application for several jurisdictions. The invention or patent application should ideally be submitted before the invention has been made public. To prevent the disclosure from becoming "prior art," this is done. When assessing novelty and inventive step, the examiner will take into account any information that was made public before the patent application was filed.

To make things more tolerant, nations provide innovators a "grace period." Let's use an example to better grasp this. Imagine that an applicant submits a patent application after making the invention public within a certain amount of time by publication or disclosure. In that instance, the previous disclosure is not taken into account for determining the validity of the patent application. The grace period is one year prior to the effective filing date in the US and South Korea. This keeps the claimed invention's novelty or obviousness. The grace period rule is relatively severe in China, nevertheless.

China allows for a six-month grace period prior to the filing date. Additionally, the Chinese government scrutinises this grace period and only permits its use in certain situations. The grace period is also subject to additional restrictions set by the EPO. The applicant can only disclose the inventions at certain authorised exhibitions and after receiving a supporting certificate to back the claims, despite the EPO's six-month grace period. In conclusion, China and the EPO offer a grace period that is half as long as those offered by the US and South Korea. Therefore, if the applicant wants their patent application to be fully protected, they must make sure that the invention is not exposed to the public or through any other methods.

3. Guidelines for composing the parts undersigned: Technically, the background may restrict the claims' applicability and cause the examiner to reject them outright. In the US, patent applications often have thin backgrounds because the more space the examiners have to work with, the more likely it is that they will reject an application. The EPO, however, employs the problem-solution strategy,....

To know more, read the entire article about Drafting a Patent Application.