By Michael Lin of Marks & Clerk
It can be difficult and frustrating prosecuting a patent application in Asia which contains broad, especially functional, claims. Asian examiners highly prefer to grant claims containing specific structures, rather than merely functional elements. US Attorneys/Agents are typically unsatisfied with their narrow Asian claims - oftentimes limited to just what the examples describe - when the corresponding US claims are so much broader.
So the question arises: Why is there such a disconnect?
I have been prosecuting patents in Asia for 17+ years, and in my view, achieving a broader Asian patent scope is possible. It is not easy. It requires additional effort, additional understanding, and additional technical explanation. But such a broader claim scope is possible.
Different Laws & Practice
Some sophisticated and experienced filers in Asia know the risks, and have made a conscious decision to write applications in a certain way because the US application is the most important and there is great concern over the balance between patent protection and trade secret protection. Such filers are probably content with their current Asian claim scope. However, for those who wish their Asian (granted) claim scope to be broader, then please consider the below.
Very few would argue that achieving broader scope is easier in Asia than in the US, at least traditionally. Not surprisingly, this is because...