Please remember that someone, the applicant, has to pay for our time when we prepare responses. We should not have to hold your hand EVERY time an amendment is made. Sometimes that is just a waste of an applicant’s money. Also, remember that patent law extends beyond prosecution in the USPTO and practitioners have to be mindful of this fact, in addition to how we spend an applicant’s money.

Sorry for your frustration.

Nice topic. Seriously, just point out all the support every time and don’t make me have to call you because it doesn’t exist.

This distinction in PCT/USPTO new matter practice has a potential for serious blow-back. Michael’s suggestions may have even more importance in non-US prosecution.

We file app disclosing and claiming X in US. 9 months later we file PCT disclosing and claiming X + Y. Y was not disclosed in the original app. 6 months after that we file identical national phase apps in US and EPO for X + Y. We abandon the original US app for X.

My understanding is that in the national prosecutions, the US will segregate X claims from Y claims with respect to the priority dates and apply the early priority date on a claim by claim basis. But the EPO will ignore the original US filing date for all claims — so all the early priority to X is lost in the EPO but not the USPTO. Not a problem unless, as you say, there is intervening art.

But toss the patent highway into the mix. In those cases starting in the US, the US is going to allow claims from X that other countries would reject because of intervening art. And yet the US allowance, presumably, factors heavily at the other end of the highway.

The PCT as CIP tactic was one response to the proposed USPTO continuation rules. I don’t know that there would be any advantage if those rules never surface again.

I feel the US claim by claim analysis of new matter is a lot more difficult for everybody, but a lot fairer.

Not sure I see your EPO/US distinction in the definition of new matter.

Is “does not find support” different from “not directly and unambiguously derivable by PHOSITA?” I believe there is US case law using the derivable language.

As for the problematic issue, in US litigation, improper new matter does not defeat the whole patent, it is analyzed on a claim by claim basis. So new matter would be problematic as opposed to fatal.

The US lacks the clean EPC Art 138 patent revocation language, but it seems to me that re-examination accomplishes the same goal. I don’t know whether on re-examination a whole patent can get deep-6′d on the basis of verbotten new matter in the original application.

During the new rules scare someone suggested that one could file a PCT derived from a US application and add new matter to the PCT. The new matter in the PCT would not be entitled to the original US filing date but would not be forbidden. Use a PCT as a continuation-in-part, essentially. I presume that PCT would be valid going into the EPO national phase even if it contains matter not in the parent US application.