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When preparing a new US application for clients who have indicated that they are considering pursuing patents in particular foreign countries, our firm strives to write initial US applications that satisfies most, if not all, of the patent formalities of those particular countries. We have found that this approach not only helps clients save money downstream, but results in better patents.
Several factors should be considered when preparing a US application that might turn into a foreign application. Let’s have a look:
Length
In most cases, the written description in the specification should be limited to between fifteen and twenty pages, thereby minimizing translation costs. Longer specifications can be shortened by removing extensive prior art discussions and duplicative passages and by considering the inclusion of additional drawings that can take the place of wordy narrative descriptions.
Number of Claims
The number of claims should also be limited by keeping to two or three independent claims and no more than twenty total claims. This not only reduces translation costs, but also avoids unity of invention objections that may lead to the eventual cancellation of claims or the division of claims into separate applications.
Verbatim Support
Another must when writing US applications that might be filed in foreign countries is to provide verbatim support. Many foreign patent offices, especially in Europe, require literal support for claims.
Each claim should having a corresponding narrative description and illustration in the drawings. The breadth of such support can be enhanced by describing claimed features using a spectrum of terms, from broad, outcome-orientated language (for example, “a surface temperature sufficient to vaporize the reactant”) to specific, quantified expressions of those features (for example, “greater than 80°C, preferably between 80°C and 120°C”).
Terminologies
When drafting a patent application, one should also be careful to avoid terms that give a narrowing construction to claimed features, like “critical,” “essential,” “necessary,” “need,” “most,” “always,” “never”, “none,” “any,” and “all.” Instead a patent application should utilize words like “preferred” and “desirable” to express claimed features. The term “can” should be used in favor of “may” because “may” implies uncertainty and lack of substantiation, and could be considered merely predicative rather than something actually established.
Units of Measure
Finally, patent applications entering the foreign patent process should use SI (metric) units for all their labeled measurements. This avoids the time and expense of having to insert them later to satisfy foreign filing requirements.
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