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.