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.