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I am in the process of working with a team to author a NonProvisional Patent Application with the USPTO.

QUESTION

If I want to keep my options open for a EU Patent, what must I do / avoid?

  • Concerning priority, filing etc. or content like claims etc? – DonQuiKong Dec 24 '18 at 12:03
  • @DonQuiKong: all considerations that would affect eligibility from an EPO standpoint – gatorback Dec 24 '18 at 21:03
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Have you filed a provisional application?? before, if not file a provisional application, as a provisional application gives you an additional 12 months for you to file a Non provisional application and protects the priority date for your patent.

Regarding keeping an options open for EU I would suggest you to file a PCT application as EU and US both are WIPO member's this gives you additional time of 30 months from the priorty date eg: If you had filed Provisonal application on say Dec 24, 2018 in USPTO and before Dec 24, 2019 you had filed Non provisinal application in with PCT you have a time till Jun 24, 2021 to decide to file in Europe or any other PCT participating countries.

  • A provisional application has been filed with USPTO to mark the priority date. Please consider clarifying & adding a link to introduce the newbie (me and others) the PCT application. Thank you – gatorback Dec 24 '18 at 21:06
  • @gatorback PCT stands for patent cooperative treaty and is managed by WIPO currently 191 countries are members of it. During filing with PCT you can designate which countries you want to file and the application would be shared with designated countries, so you dont need to file a new application with every country patent office i.e., one application would be shared by all participating countries all to be done by you is to designate countries and pay examination fee at respective countries.For more reading please refer en.wikipedia.org/wiki/World_Intellectual_Property_Organization – RishiM Dec 25 '18 at 7:57
  • @RishiM_IPR Please don't use comments to respond to a request for clarifying the answer. You should simply edit the answer to include the new content. – Eric Shain Dec 25 '18 at 22:31
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Right now, your options are open. But, if you publish the invention they may close, as unlike the USA, the EPO has a very limited grace period for filing a patent application after publication.

The Paris convention says that if you file in one treaty country, like the USA, you have 1 year from the earliest such filing to file in another treaty country (like the EPO - european patent office). PCT is a way of extending the deadline.

However, you need to make sure that what is in your document is suitable for european practice. In particular, the EPO expects literal support of the claims in the specification of the application, and will not allow you to cherry pick from the specification to create new claims if needed; this is called inadmissible “intermediate generalization”. The EPO is just as strict when it considers the priority (provisional) document. This means that if you do go the provisional route, you should probably make sure to have the claims you will later want in europe, already drafted or risk not getting the priority date. If your existing provisional is not up to snuff, file a new one with added material, suitable claims and any desired fall back positions and file PCT or EPO within 1 year of the first provisional.

  • European Patent Office (EPO) also has a grace period according to Article 7 LP (Art. 55 EPC), an allowable disclosure must have happened within the 6 months previous to filing and may be allowed only if it was due to, or in consequence of: (a) An evident abuse in relation to the applicant or his legal predecessor, or (b) The fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognized, international exhibition – RishiM Dec 26 '18 at 5:49
  • correct! but option (a) does not apply if you publish and option (b) is very rare – tilnow Dec 26 '18 at 9:55
  • (b) is common as scientists from academic would present or display their inventions at conferences without knowing the patenting potential, which are considered as exhibition. – RishiM Dec 26 '18 at 10:11
  • @RishiM_IPR I think the list of exhibitions is quite limited. See epo.org/law-practice/legal-texts/official-journal/2016/etc/se4/… – tilnow Dec 26 '18 at 11:09
  • @RishiM_IPR conferences regularly do not classify. – DonQuiKong Dec 27 '18 at 11:15

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