IP Quick Tip: How to maximize the scope of a European CII application

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It is a common scenario that a European patent application claims priority of an application that was first been filed in the Unites States. Often, however, the U.S. priority application does not contain the disclosure necessary to achieve the broadest possible scope in European patent applications.

So, keep these two tips in mind when drafting a U.S. application that might later be prosecuted in Europe:

First: In contrast to the US rules, the EPO allows claims directed to a computer program – without mentioning a storage medium in the claim language.

Therefore, ensure that at least the specification discloses that the invention may be implemented in software – without referring to a storage medium. This allows including a broad computer program claim in the European application later: Such a claim then covers software which is only offered for downloading in a European country.

Second: U.S.-style device claims typically refer to specific hardware components such as processors and memory. However, in Europe, a so-called means-plus-function claim typically provides the broadest possible scope.

Therefore, you should append such a claim to your US application. A European patent attorney may then use this claim instead of the narrower U.S.-style device claim.