A Comparison of the Evaluation of Claim Amendments at the EPO and the USPTO

Abstract

Many practitioners who have attempted to shepherd patent applications through the rigors of prosecution are aware of the different ways that applications are assessed on opposite sides of the Atlantic. The difference in assessment is perhaps most visible with regard to claim amendments. While starting from virtually the same roots and having more similarities than might be initially apparent, the EPO and the USPTO approach changes to claims in patent documents very differently. Although the EPO might be accused of being biased against applicants when assessing amendments, particularly in comparison to their American counterpart, the approach of the USPTO seems to defy clear explanation.

Keywords: patent, claim, amendment, European, United States, EPO, USPTO, written description, directly, unambiguously