Various Countries, Various Claims Issues

Countries Various Claims IssuesThe types of claim amendments and additions that can be made vary radically from country to country.

For example, Korea is very restrictive about claim amendments, and you can assume that broadening claim amendments will be rejected. In Korea, it was necessary for our client (see prior blog post) to enter the national phase individually for each invention they wanted to keep alive.

Europe is restrictive in that new claims or amendments to claims will only be allowed if there is clear and unambiguous support for the claim language in the specification as filed. This often places limitations on broadening amendments and on introducing new claims that are broader than the specific embodiments disclosed. In this case, that meant the client needed to enter the national phase individually for each invention. However, if there had been more literal support for more than one of the sets of claims (ideally by way of multiple summaries of invention), it would have been possible to let the applications relating to the supported claims lapse. The supported claims could then have been introduced at a later date as a divisional or continuation application.

Some countries are less restrictive. Most NAPP members will be aware that the US, for example, is relatively easy-going about adding new claims supported by the specification by way of a continuation application.

Countries like India allow new claims that are reasonably supported by the specification, but are fussy about adding or deleting inventors to or from a particular application. In one of our client’s cases, this was an issue because there were six unique permutations of inventors, some being subsets of each other. It was therefore necessary to enter the national phase with six of the applications: one for each unique permutation of inventors.

China allows broadening amendments that are based on the specification, and has the advantage over India of allowing inventors to be added relatively easily.

Photo credit: lndhslf72


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