Entering Europe Through PCT: Ensuring Perfect Patent Claims
The structure of patent application claims in the PCT application for Europe sometimes requires strict adherence to the rules. The EPO is strict towards having the requirement of unity of inventions and also with the conciseness of independent claims. These issues are often faced by various applicants who enter the Europe with PCT route. Various issues arise in the claims which have several repercussions such as using the multiple independent claims of overlapping scope. Such complexity faced by the applicant must have refrained at the early stage during the claim structuring.
In one of the previous pieces, the author discussed the claims structuring and definiteness. The primary purpose of the requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes an infringement of the patent. A secondary purpose is to provide a clear measure of what the inventor or a joint inventor regards as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability. It is of utmost importance that patents issue with definite claims that clearly and precisely inform persons skilled in the art with the boundaries of the protected subject matter.
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The EPO often requires the conciseness of the claims and objects to the plurality of the independent claims either in process, product, method, use, etc. For example, to understand this plurality, there can be an independent claim for the product and another independent claim for the method of manufacturing the product. This independent claim can be used in the single European Patent Application. But on the other side, there cannot be two independent product claims except if there are inter-related products or a final chemical product or gene, gene construct, host, plug and socket, etc.
Unity of invention
Such unity is also very important for the claim construction while filing for EPO. For such unity of invention, it is important to understand that the independent claims, each such claim must denote some technical features which must distinguish the invention over the prior art. Such claims must not lack unity and if in case, the claims lack unity, the first presented invention will be searched. Such a requirement is needed since it ensured that the correct claims are searched by EPO. The applicant also has the option at the EPO to pay any extra fees for the unsearched claims, still, for a single invention, a single patent will only be granted. In case, if any objection with respect to the unity of claims is raised, the applicant will ultimately choose a single invention to remain in the application. In case, the applicant needs to pursue any other inventions, it can only be done by filing one or more divisional patent application, but the fees for the divisional patent application is relatively high, making it a costly endeavor.
EPO follows a stricter approach for assessing the added matter when filing the amendments, making it problematic to remove features from an independent claim. At the starting stage of entering the European regional phase, such amendment is not essential which can be done at a later stage of 6-month period notified by EPO. The applicant uses to amend the claim for avoiding the excess claim fees. All such matters must be considered before entering Europe which helps to ensure that the independent claims must be in consonance with that of the invention.
The qualified team at GPF has helped various clients to ensure a better experience and has helped clients in drafting their claims of the PCT application entering the Europe regional phase.
Author: Saransh Chaturvedi (an advocate) currently pursuing LLM from Rajiv Gandhi School of Intellectual Property Law (IIT Kharagpur). In case of any queries please contact/write back Global Patent Filing us at firstname.lastname@example.org.