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February 12, 2012


But what is "new subject matter"? Does it not mean one thing to a European readership and something else altogether to a readership in the USA?

Would it help Americans reading this European decision if they keep in mind that the EPC's prohibition on adding "subject matter" during prosecution incorporates into the EPC the American requirement that the app shall contain, not later than the filing date, a "written description" of what is claimed, at issue, as the invention?

This is more than an invitation to include "as much informed speculation as possible of variations that might be effective."

It's an invitation to pack your description with long lists of species and sub-genera, within every genus your invention encompasses. Claiming a method of treating a metal? Better name them all (in the alternative), just in case somebody treated gadolinium in that manner back in 1948.

U.S. examiners, propped up by MPEP 2173.05(i), can be similarly (and unfortunately) inflexible when it comes to adding negative limitations.

The other practice point to take home is to know the prior art as well as you can, before you draft an application, so you don't end up trying to conjure negative limitations out of thin air.

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