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I would like to seek advice on a matter. For a patent to be protected in multiple countries (such as the IP5 countries), a common strategy involves submitting a PCT application based on the priority of the original application and then entering the national phase in various countries.

During the national phase, responses to Office Actions (OA) are necessary. Given the varying scope of authorization in different countries, it is uncertain whether the responses to these OAs can influence the patent rights of the original application. If they do, could an increase in the number of countries where the family patent is applied lead to more adverse OA responses (such as the addition of different claim features required by the specific authorization demands of each country, excluding situations where new comparative documents are discovered in searches), potentially diminishing the value of the original patent?

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The U.S. requires that it be notified all of the references cited against your application in the course of pursuing rights elsewhere. Also other places like the EPO provide mechanisms with wider time windows for third parties to make formal “observations”. Anything newly cited in an observation will also need to be provided to the USPTO.

Another issue that would not usually come up during prosecution but could affect any enforcement action are statements you make in other jurisdictions that might not accord with positions you have taken with the USPTO.

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  • Thank you for your reply. Are you referring to the IDS obligation in U.S. patent applications? Sorry if I was unclear. I'm concerned whether OA responses to family patents in other countries might affect the value of a granted patent. For example, in an infringement case, could a defense attorney use these OA responses from other countries (such as added claim features or a narrowed scope) to influence the patent infringement decision?
    – Jam
    Commented Jun 10 at 16:29
  • That is what I address in the second paragraph. Admitted prior art and arguments about the meaning of terms, etc. could be used against you in court when you attempt to enforce.
    – George White
    Commented 2 days ago

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