Posted on Tuesday, June 1, 2010
Today, companies with strong, active patent and R&D divisions develop their patent strategies with a global perspective, often filing for patents in both the United States and in Europe.
To encourage and improve the inter-office "compatibility" of US and European Patent applications, both the United States Patent Office (USPTO) and European Patent Office (EPO) have introduced programs such as the Patent Prosecution Highway Programme. However, despite these efforts, the two systems remain fundamentally different, and without proper planning and consideration of each office's specific rules and procedures, an applicant risks losing valuable rights in the application process.
One Invention – Two Systems: An example
One potential landmine is the US Continuation-in-Part (CIP) Application. Companies often first file a patent in the US, then a corresponding application in Europe claiming priority to the US patent. Later, due to rapid market changes or previously unseen application of the technology, a company sees the opportunity to extend the subject matter in its application and does so though the USPTO's CIP application.
Does the applicant have a similar option for the corresponding EPO application? How does this affect the EPO application? First, a quick look at the US CIP application:
The USPTO Continuation-in-Part Application
The USPTO provides that an applicant/inventor may add new subject matter to an existing non-provisional application, provided that the new subject matter has not previously been disclosed and that the nonprovisional application is still "alive". In addition, the new application will repeat some or all of the substantial subject matter of the already existing non-provisional application.
This new application is known as a Continuation-in-Part Application.
An advantage of a CIP is that priority from the earlier non-provisional application may be claimed. Provided that the earlier application has not been patented, abandoned or terminated on the date that the CIP is filed, such CIP will receive the same filing date as the earlier application.
(To learn more about CIP applications, please see USPTO MPEP: 201.08 Continuation-in-Part Application [R-3])
At the European Patent Office
The first thing to know is that the EPO does not provide for Continuation-in-Part Applications. The EPO does have a few options that may seem similar to the CIP, but they cannot be utilized in the same way.
The options are limited, but available....
1. Divisional Applications:
Divisional Applications are used to overcome Unity of Invention problems – in other words, to overcome the objections of claiming more than one invention in one application. Thus, when filing a Divisional Application with the EPO, the subject matter disclosed in the Divisional Application must be directly derived from the parent application as filed.
The EPO provides for Divisional Applications to be filed "only in respect of subject matter which does not extend beyond the content of an earlier application as filed..." – EPC ~ Article 76(1)
When dealing with a USPTO CIP application, it is indeed NEW subject matter which is added to the earlier nonprovisional application. Unless the new subject matter, which is disclosed in the CIP application, is already disclosed in the earlier EPO application, it will not be possible to apply for a Divisional Application.
It is thus advised to disclose and claim as broad as possible when submitting your first application. Therefore, should the examiner object to the application on the grounds of unity of invention, the applicant would be in a position to claim divisional applications from the "parent" application. However, it should be noted that the EPO has introduced a time limit of 2 years from the first communication from the EPO regarding unity of invention for claiming a divisional application.
Amendments are similar to Divisional Applications in that no new subject matter is allowed to be added to the application. However, if the subject matter disclosed by the CIP application has been disclosed in the earlier EPO application, amendments may be applied for if such amendment will not give rise to any other objections (such as Unity of Invention).
EPC 123(2) – clearly states that no amendment to an EPO application may add new subject matter which extends beyond the contents of the application as filed.
Thus, it might be advantageous for the applicant in the EPO to file his/her application as close as possible to the expiry of the 12month priority period – claiming priority from the earlier US-application. In doing so, the applicant will have ample time to foresee and amend his/her EPO application to overcome disclosure of new subject matter (EPC –Article 87 ~ 89).
3. Filing a New Application with the EPO:
The last resort is filing a new EPO Application for the new subject matter disclosed in the CIP application.
Note that the new EPO application will be entitled to claim priority from the CIP only if filed within the 12 months priority period granted since filing of the CIP application. Also note that the priority date is the filing date of the CIP, not the filing of the date of the CIP's parent application
While this method is not ideal, it does provide a stronger measure of protection than a completely new EPO application.
As this example on USPTO CIP applications and EPO applications clearly shows, inventors and applicants of patents in multiple patent systems must be aware of the various subtle yet significant differences between the requirements of the various patent offices. Contact your patent agent or legal firm and plan ambitiously. You always scale down later.