One of the biggest issues faced by PCT patent applications entering Europe is the structure of the patent application claims. The EPO is strict about the requirement of unity of invention and also the conciseness of the independent claims.
Perhaps the most problematic claim structure to deal with in Europe comprises the use of multiple independent claims of overlapping scope. It is claim sets of this kind that can incur unexpected complexity and prosecution costs in Europe.
Plurality of independent claims
The EPO requirement of conciseness often arises as an objection against a plurality of independent claims in each category (product, process, method, use). For example, it is permissible to have an independent claim for a product and corresponding independent claims for a method of manufacturing the product and/or using the product in a single European patent application. However, it is not possible to have two independent product claims except under very specific exceptions, such as inter-related products (e.g. a plug and socket; transmitter and receiver; intermediate(s) and final chemical product; or gene, gene construct, host, protein and medicament).
Unity of invention
The requirement for unity of invention in Europe means that every independent claim must share the same special technical features that distinguish the invention over the prior art. If the EPO believes that any independent claims lack unity when they are searched, only the first presented invention will be searched. The order of the claims, particularly the independent claims, is therefore important to ensure the correct claims are definitely searched by the EPO.
Whilst the EPO will give the option of paying additional search fees for any unsearched claims, a single patent will only be granted by the EPO for a single invention. If a valid unity objection is raised, the applicant will ultimately need to select a single invention to remain in the application. The claims relating to any other inventions can only be pursued by filing one or more divisional patent applications. Due to the relatively high official fees charged by the EPO, filing divisional patent applications to obtain protection for independent claims of overlapping scope can be an expensive endeavour.
The EPO's strict approach to assessment of added-matter when filing amendments, means that it can be problematic to remove features from an independent claim.
It is typically not essential to amend the claims at the time of entry into the European regional phase to conform with these requirements, since such amendments can be made later, within a 6-month period notified by the EPO. Most applicants make such amendments to the claims at the same time as reducing the number of claims to avoid excess claims fees. However, it would often be beneficial to consider these matters prior to entering Europe so that the applicant is aware of a realistic claim set that can be achieved before incurring the cost of a European patent application.
Now you know how to get your patent application claim ready for Europe, find out how much the process will cost you using our pct2ep cost estimator.
14th December 2020
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