What Should US Applicants Consider When Preparing A Patent Application For A Global Portfolio?

When drafting a patent specification, it is crucial to consider where it may eventually be filed and prosecuted globally. Claim types that are allowable in one territory may not be allowable in others. Additionally, passages of the description that may serve as valid basis for an amendment in some countries may be objected to in others.

Without careful thought, important subject matter can be lost during prosecution resulting in claims of restricted scope and of limited commercial use. Furthermore, longer prosecution time required to gain patent protection can lead to increased costs. This article aims to highlight some of the issues that may arise in prosecution outside the US and how they can be mitigated through careful drafting of an application.