Our Top 5 Added Matter Drafting Tips

Last week, we hosted a webinar discussing strategies for drafting chemical and life science patent applications to aid prosecution and enforcement in the US and Europe. A link to the webinar can be found here.

We’ve summarized below our “top tips” for minimizing future added matter issues at the EPO when drafting, while avoiding patent profanity at the USPTO:

1. At the EPO, amendments that create “new” combinations are a particular problem. Consider filing with multiply dependent claims or include a “numbered embodiments” section to provide basis for combinations in the future. 

2. At the EPO, the term “comprising” may not provide basis for “consisting of”. Consider including embodiments with both terms e.g. “a pharmaceutical formulation comprising X, Y, Z” and “a pharmaceutical formulation consisting of X, Y, Z”.

3. It is difficult to rely on the Examples or Figures as basis for amendments at the EPO, particularly if you wish to extract one feature in isolation. Consider adding falls backs to the key features of the Examples and Figures in the description.

4. At the EPO, basis for amendments must derive from the application as originally filed. This excludes the abstract and the priority document. Information that has been “incorporated by reference” can only be relied upon as basis for amendments in very limited circumstances. 

5. Use consistent terminology when drafting. For example, the terms “pharmaceutical formulation” and “pharmaceutical composition” could easily be used interchangeably when drafting, but an EPO Examiner may not allow embodiments relating to the formulation to be combined with embodiments relating to the composition as these are (arguably) different things. 

For further advice, please contact your European representative.