There is a subtle difference between the EPO and other patent systems in terms of the flexibility when amending the claims during prosecution. Our Patent Attorney Bastian Best explains how to bridge the gap.
Here’s a quick tip for Non-European patent applicants, to maximize your chances of success at the European Patent Office.
A very common scenario is that the first patent filing is made, for example, in the US, and then one year later the same application is also filed at the European Patent Office.
Now it is very important to know that at the EPO the flexibility you have when amending your claims during prosecution is quite limited.
In particular, it is hardly impossible to generalize from the specific concrete wording in your patent application, to put that wording – generalized wording – into the claims.
So, what you need to have in your European patent application is, on the one hand, broad claims to start with, secondly specific embodiments of the invention and thirdly, that’s important, a hierarchy of abstraction layers in-between, so that we can then move in a controlled manner down from the broad claim step by step through the abstraction pyramid.
If we don’t have those abstraction layers and the broad claim, the broad initial claim, doesn’t fly, we would immediately fall down onto the specific embodiment, and this will then result in a patent claim that is very narrow in scope.
So how can you accomplish this?
Well, one strategy is to send the draft of the initial filing over to the European Patent attorney before filing.
In this way, we can then beef up the application with EPO-specific additional fallback positions before it is filed at the country of first filing.
Now, I’m perfectly aware that this involves some additional effort upfront, but our experience has shown that the initial investment pays off very well in the future.
I hope you found this hopeful. If you want to know more, follow the hashtag #IPQuickTip for more videos like this in the near future.