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Author Topic: Addition of New examples to PCT in National Phase  (Read 1136 times)

prashant

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Addition of New examples to PCT in National Phase
« on: 10-07-04 at 01:23 am »

Dear All
I have a query
As to can we add new examples to a already filed PCT application when we enter the National Phase?  
with the proviso that
"The said Examples are supposed to be covered under the claim 1 of the PCT but are not specifically disclosed or specifically claimed in the application"  
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JimIvey

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Re: Addition of New examples to PCT in National Ph
« Reply #1 on: 10-07-04 at 12:07 pm »

The first question that comes to mind is, in what country?  At the national phase, you are bound by the laws of each individual country.

Here, in the US, I'm inclined to say "No."  Although, it may be possible to file your US national application as a continuation-in-part (CIP) in which part of the application claims priority of the PCT application and part doesn't.  CIPs don't exist in all jurisdictions.

Aside from US's CIP practice, the US tends to allow more modifications without losing priority than do many other jurisdictions, such as the EPO, for example.  But they won't allow additional description of entirely new variations after the priority date.

My inclination would be to broaden the claims to cover the additional embodiments without including the additional descriptive material in the US, to the extent you can do that legitimately.  As long as you met the requirements of enablement and best mode as of your priority date, you're not required to update those.  And, unlike some other jurisdictions, the US allows you to broaden claims during prosecution.

And, for what it's worth, I wouldn't say what's described and/or claimed in a prior application and what isn't.  The description and claims should speak for themselves, in my opinion.

I hope that helps.

Regards.
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James D. Ivey
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