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 Claims in mega applications 
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Joined: 2012-01-03 23:03:44
Posts: 85
As counsel is drafting our main technology in a PCT, I have to figure out what to do with the remaining technologies that will need to be posted online in the coming year. It is over 100 embodiments and 100 claims, but the claims are not written yet; only 3d drawings and decent descriptions in many provisionals.

The goal is to make the 30+ technologies available for foreign licensing, and my understand is that if they are all dumped into a mega PCT, they would need very accurate claims that are strongly supported in the spec, in order to have a chance at the national offices. Not sure I have time for this, so are there other options?


2012-02-20 21:05:22
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Joined: 2012-01-08 23:06:37
Posts: 35
fb2 wrote:
As counsel is drafting our main technology in a PCT, I have to figure out what to do with the remaining technologies that will need to be posted online in the coming year. It is over 100 embodiments and 100 claims, but the claims are not written yet; only 3d drawings and decent descriptions in many provisionals.

The goal is to make the 30+ technologies available for foreign licensing, and my understand is that if they are all dumped into a mega PCT, they would need very accurate claims that are strongly supported in the spec, in order to have a chance at the national offices. Not sure I have time for this, so are there other options?



I'm not sure what your question is. But to me, the quality of the claims , the quality of the specification, and the quality of the figures needed to get a quality patent are the same, regardless of the number of claims, the number of pages of the specification, and the number of figures. Claims can always be amended, as long as they are fully supported by the specification. But if you're trying to zip out an application on the quick and cheap, you will likely find out that the specification does not support the claims that's needed to protect your invention when the time comes to amend the claims to what they should be (especially so in the EPO). I've inherited several applications such as you describe, and they've been a nightmare to sort out and rescue.

With respect to a "mega PCT" , be sure to check out the costs. There are fees for excess pages. Also, you'll likely get sticker shock when you receive your "Invitation to Pay Additional Fees" during the international search phase. With so many claims, you're bound to get an N-fold unity of invention objection, and you will be invited to pay (N-1) additional search fees.


2012-02-25 07:25:53
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Joined: 2012-01-03 23:03:44
Posts: 85
"the specification does not support the claims that's needed to protect your invention when the time comes to amend"

Well the potential for protection is greater than donating it to the public domain, which is what will happen once the users/customers see the core invention. They will be posting their spinoffs,variations and improvements within days (they are already trying to figure out what the core is). Several have almost figured out the core invention on their own; just a few more minutes thinking about it and they would have gotten it. I know since I went through the same steps last year.

It took me about 8 months to come up with 100+ embodiments of the the 30+ spinoffs,variations and improvements, thinking about it full time night and day. Once the core is posted online, about 30,000 people will start the same thinking process, and probably within a few weeks they will have posted everything online that it took me 8 months to get. Whatever I did not already file will be gone.


2012-02-25 13:15:36
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