Tips On Disclosing Embodiments In Patent Apps Overseas

Law360, New York (September 23, 2014, 10:21 AM EDT) -- When compared with its counterparts around the world, U.S. patent jurisprudence provides applicants with relatively flexible rules for amending claims during patent prosecution. Applicants in the United States benefit from generally tolerant judicial views regarding claim support, allowing them to get away with claim amendments that probably make patent attorneys in other jurisdictions burn with envy.

But such liberal practices for amending claims in the U.S., including pulling features out of various disclosed embodiments to dodge prior art, can turn against American patent attorneys when they send their applications abroad. Getting too used to permissive rules for claim amendment support before...

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