How to Tailor Patent Claims for Different Countries

Last time, I discussed recent developments in the international IP system that motivate patent applicants to tailor the claim structures of their patent applications more specifically for their various destination countries around the world. But being a problem identifier is not enough—it’s the problem solver who gets the worm.

The first step is reconsider the strategy of having narrower dependent claims—they are insurance against the possibility that the broader independent claims may have validity issues with the prior art. In that case, the narrowing additional features required by the dependent claims are hoped to be less obvious but still blocking or likely to be infringed.

While patent attorneys understand that, inventors tend to think of dependent claims as a place to list the important technical features of specific versions of their inventions. The patent attorney ought to discuss the dependent claims with the inventor to focus on the improved validity consideration rather than the tendency towards a technical listing. But such discussions can be difficult for a number of reasons. (I won’t digress into those reasons here). Often, the easy way is to please the inventor by using the dependent claims as that listing of the technical features. But because of the painful new excess claim fees discussed in the previous article, patent attorneys need to more strongly control a limited number of dependent claims that really do have non-obvious details.

And not only do the number of dependent claims need to be tightly controlled, so do the number of independent claims. Sometimes a patent application describes multiple patentable inventions. The old way to handle this was to draft full sets of claims for each such different invention and include them all when the application was filed. But that approach can be foolish in light of the new excess claim fees. A better approach is to fully claim the first invention to be prosecuted, and provide single placeholder independent claims for later prosecution of the other inventions, perhaps with placeholder language in the summary and detailed descriptions for full sets of dependent claims for the placeholders.

Finally, in view of more compact claim structures, it makes sense to further optimize each set of claims for each jurisdiction. Fine tune the US claims (only) to deal with all the US-specific issues regarding section 101 (subject matter) and 112 (form/definiteness). And fine tune the European claims for them, dealing with their restrictions on medical treatments, computer software, and business methods; dressing up the claims into Jepson/reference number form, and exploiting their flexibility on multiple dependencies. And for other countries, put the pedal to the metal on the claims and go for the “best” claim language and coverage without compromising on the US/EP specific issues.

Hey, this is fun stuff! Even better than Rumpelstiltskin, we don’t even need straw, patents spin nothing more than new ideas into gold.

Need to Tailor Patent Claims for Different Countries

Back in the far distant past, say five years ago, it took almost no effort to prepare a Patent Cooperation Treaty (PCT) international patent application from an existing US patent application: Just open the US application in Word and select “Save As.” The claims in the PCT application were rarely changed from the US claims. But no more. The combination of major substantive developments and painful new fee structures have created powerful incentives to devote some time and effort to the PCT claims in their own right.

In the US, changes in the fee structures for “excess” claims now can result in many thousands of dollars in filing fees. In Europe, a basic filing fee now covers only the first 15 claims, with a 200 Euro fee for each additional claim between 16 and 50, increasing to 500 Euros for each claim beyond 50. A moderately large number of patent claims in Europe now equates to tens of thousands of dollars in punitive fees. But at least the European claim fees can be minimized by amending the PCT application when entering the regional phase in Europe to reduce the number of claims. Unfortunately, excess claim fees in China are calculated based on the claims present in the originally filed application, and the fees cannot be minimized after filing.

And, notwithstanding the policy of harmonization, major substantive changes have also developed in the US and other countries. In the US, there has been a recent long chain of major case law decisions altering and reducing the scope of patents and their subject matter. And there are more entrenched substantive differences between the US and many other countries: no business methods, no medical treatment methods, and in Europe, no computer software as such and major limitations based on the “original scope” of the claims.

So both within the US and outside, there are strong new incentives for limiting the total number of patent claims filed. That leaves the question of how to adapt to these circumstances. Coming up next time.