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[George White]

I have filed a half dozen PCT applications based on US applications that I have written and have taken the one day WIPO PCT "Advanced seminar". So far I have not made very many changes between the US and PCT filings in the process.

I'd like to get some practice tips and am looking for articles, books or even PP presentations. My initial specific issue is making the PCT something that will look familiar to an EPO examiner. I'd like to identify the closest reference and describe the differences between it and the claimed invention. However, I do not want to have that used in any US setting. Any suggestions?

thanks,

George White

[Wiscagent]

I'd like to identify the closest reference and describe the differences between it and the claimed invention. However, I do not want to have that used in any US setting. Any suggestions?

That would be difficult to accomplish. 

If you are aware of related prior art, you probably should disclose that in an IDS in the US application.  Even if you believe that the prior art is not "material", you'd hate to be in a position to have to make that argument at some later date.

Also, if the US application is filed as a national-stage application, you would have to redact the prior art discussion from the US national-stage application.  That's probably not worth the trouble, because the discussion of the prior art would already be a matter of public record.

[NJ Patent1]

George:  From time to time, this "rock-and-a-hard-place situation" concerns me too.  I've taken two approaches to deal with it, neither 100% ideal.

1. File two applications on the same day, one US regular with a limited, if any, discussion of the PA; and a PCT with more detailed discussion of the state of the art to try to set-up the problem / solution the way I see it.  Obviously there are extra costs, and occasionally an EPO Examiner finds art of which I was not aware and characterizes the problem / solution differently.  So much for my grand plan. 

2. File a PCT without much discussion of the state of the art, and amend the spec in the EPO regional stage to include it (the art already on a US IDS).  In fact the EPO will require you to do this if the discussion of the state of the art is deemed inadequate.  The down-side is that the EPO is a stickler when it comes to "new matter" and although estoppel is attenuated, I have to be careful not to make totally inconsistent statements wrt the PA. 

[George White]

If I do not plan on entering the US via a national stage from the PCT and I do not make any contradictory remarks might it be moderately safe to have more prior art discussion in the PCT than in a corresponding US appl?

--George

[bartmans]

George,

there are a few points that need extra attention in order to guard yourself to future problems.
One of these future problems is the strict requirement in Europe that na matter may be added. If your invention contains several features which each may comprise various embodiments please be sure that you list all combinations. One of the most simple ways to do this (but which is unnatural for a US patent agent or attorney) is to write the claims with multiple dependencies.

Another problem causing item is the use of 'incoprorated by reference' which is not allowed in Europe. If, for whatever reason, you need to refer to an earlier document this referral becomes no part of the application unless it is specifically and unambiguously indicated, e.g. 'The compound used in this process may be any of the compounds listed in Table X on page nnn of reference X'.

Of course there are more points of attention, but these two cause the most problems and are the most easy to solve when specifically writing an application for Europe (or any non-US country). Also, the style of writing and claiming will depend on the field of technology.

Regards.

[NJ Patent1]

If I do not plan on entering the US via a national stage from the PCT and I do not make any contradictory remarks might it be moderately safe to have more prior art discussion in the PCT than in a corresponding US appl?    George, Yes, that's the gist of my approach 1. 

[George White]

thanks much

--George

[Evil In House Counsel]

Eh, I just toss reference numerals into my claims and the abstract, make my claims have multiple dependencies, cut my number of claims down to 15, and call it a day. Saying something potentially damaging to your US case, in the hope it will help your EP case, is pretty shortsighted for most industries where the US is the likely venue you'd use for enforcement. (on the other hand, if someone is only likely to infringe in europe, then i'd suggest euro-izing your case more. i'd discuss all close prior art, discuss the problems faced by prior art, how your invention solves those problems, etc).

The biggest thing you can do to help your chances of getting an EP patent is to hire an EP attorney to assist with prosecution. This is so much more important than anything you can do to euro-ize your app. EP prosecution tends to be a lot more predictable than US prosecution, so having an experienced EP attorney who can say "this won't work" or "this is likely to work" is very valuable. Also, sometimes there are some arguments that can be made that US attorneys just don't think of, because the involve the intricacies of EP law.