As a Patent Attorney you know your client’s invention inside and out. You’ve crafted solid claims, and secured a granted US patent. So when it’s time to file in Europe, it’s tempting to think: copy, paste, done. But here’s the problem:
What works in the US often doesn’t fly with the EPO.
At the USPTO, you have much more flexibility to amend claims, draw on the figures, and make adjustments. The EPO plays by different rules. Amendments require a literal basis in the original application. If it’s not in the spec, you can’t add it.
Another common issue is claim dependency. US claims are usually singly dependent, while Europe allows multiple dependency, enabling more flexible combinations. Copying US claims directly into an EP application can limit fallback positions or even result in non-compliant claims. Adapting the structure upfront avoids problems later in prosecution.
This mismatch can lead to unnecessary office actions, delays, and lost scope. Worse, it puts your client’s protection at risk.
The fix isn’t complex, it’s collaboration. A short check-in with your European counterpart before filing the US patent application can save months of work later on. Aligning early means fewer surprises, stronger protection, and smoother prosecution.
I’ll be at INTA in San Diego, May 17–21. Always happy to talk patent strategy, EPO practice, or explore collaboration.
