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[dbmax]

The spec of a PCT application describes a novel input device used in an embodiment communicating with a device performing a known Function A.

The app claims the features of the novel input device, plus means for transmitting the signal from the device to a remote processor, enabling the processor to perform Function A.

All claims will likely be amended on entry to the EPO.

On the presumption that the signal enables the remote processor to perform any function that it is programmed to perform, how likely is it that EPO and asian offices would allow amendment to add a claim eliminating the reference to Function A?

db

[bleedingpen]

Good luck with the EPO.  That sounds like the EPO version of new matter.
 

[bartmans]

First of all, it is possible to amend the claims when entering the European regional phase from a PCT application.
That being said, there are two major no-no's:
1) an amendment that has no basis in the application as filed is seen as 'added subject matter' thereby violating Art. 123(2) of the EPC. The EPO and its Boards of Appeal are very strict with regard to this requirement, the adagium being that the subject matter should be 'clearly and unambiguously derivable from the application as filed'. Thus, if there is no literal, word-for-word basis in the application, you are on thin ice.
2) claims (subject matter) that has not been searched in the international phase will not be allowed in a regional phase application, but should be prosecuted in a divisional application. This means that amendments are usually OK if they result in dependent claims (where the independent claim has being searched), but adding new independent claims, or broadening the independent claim can be a problem. Of course this will depend on the factual situation.

Regards.

[dbmax]

Thus, if there is no literal, word-for-word basis in the application, you are on thin ice.

Hi Bartmans,

Thanks.

There is a literal word-for-word description in the spec for the claimed input device, but in each embodiment shown, the input device is connected to a single purpose device.

For example imagine a mouse described as an input device for a PC having a GUI.

Initial claims are for a mouse as an input device for a PC having a GUI, and for the system including the mouse,  pc,  and gui.

What if the claims are amended to add a claim for the mouse without reference to the PC.

My tortured reading of EPO decisions is not encouraging. Any thoughts?

db

[NJ Patent1]

dbmax:  I have to chime-in with the other repondents.  In my experience, the EPO can take an expansive view of what is "new matter". True, you have disclosed the device per se, but only described  its use in connecyion with something else.  The claim is probably toast. But if the clien thas the euros to try ...  PS, I too sometimes have trouble extracting the rational from EPO board decisions.

[bleedingpen]

Don't waste your money even trying it.  The number one rule to follow when filing applications in the EPO is that the EPO sucks (ok, that might be a bit harsh).

[bartmans]

Hi dbmax,

it will depend on the exact wording of the spec and the examples therein whether the EPO would find a claim to the single device as added matter or not. It is hard to say without having the details. Further, it may also depend on your specific field of technology: would the skilled person understand that the device in itself would be an invention and would he understand and read the spec to such an extent? Since I am not familiar with your field of technology, it is hard for me to say anything about that.
Another possibility is that inserting such a claim will trigger a lack of unity objection, which means you would be forced to file a divsional for the single device.