New Incentive Towards Fewer Claims

In a move to cut down on “voluminous” European patent applications, the EPO has increased the excess claim fee from EU 45 per claim to EU 200. The number of “free” claims is increased from 10 to 15. The change came in on 1 April 2008, and we have experienced a rush of filings ahead of the increase. We now enter a new regime of a high incentive to keep down claim numbers, or trim them down on European regional phase processing of PCT applications.

As our chart shows, the change represents a lower cost for applications with 16 claims or less, but a much higher cost for applications with more.

For applicants using the PCT route, the claims fees do not have to be paid immediately. There is a period of at least one month for amending the claims following entry into the European phase and for paying excess claims fees on the claims as amended. We envisage that it will become routine to use that time to file a preliminary amendment.

Deleted claims can be reintroduced later, except that:

i) if there are more claims at the time of grant than were paid for at the time of filing, the difference in claims fees must be paid at that time;

ii) unsearched claims must be deleted and can only proceed in a divisional application.

This latter point came in with the EPC 2000 (see the Autumn 2007 edition of this newsletter). Applicants used to be invited to pay a further search fee for unsearched claims. That is no longer an option.

Multiple dependent claims

One way of saving on claim numbers without compromising claim scope is to use multiple dependencies. There is no penalty against a claim that is, for example, dependent from “any one of the preceding claims”, even where it depends from a similar claim. If care is taken to ensure that the multiple combinations created by multiple dependencies are unequivocally contemplated by the original disclosure, multiple dependencies can be introduced on European regional phase entry and no objection need arise under Article 123(2) EPC. If amendments are extensive, it is wise to give the examiner a marked-up set of claims or a list of where the new claims come from. But ask the question “are these claims really worth EU 200 each?” If you get article 123(2) wrong it can be a nuisance unwinding the work and, worse, can create ammunition for an opponent.

At the same time as reducing the claims, applicants can take the opportunity to forestall objections against multiple independent claims in the same category under Rule 43 EPC 2000 (old Rule 29 – see the Spring 2002 edition of this newsletter).

Prepare PCT applications with the EPC in mind

In the future we expect to see PCT applications prepared with a much closer eye on the EPC. Cases with more than 15 claims will be the exception, and more specifications will be drafted and filed with multiple dependent claims from the outset. It is much easier to amend the claims for US compliance by stripping out the multiple dependencies than to amend them for EPO fee saving by collapsing down lengthy claim sets using multiple dependencies while complying with Art 123(2).

Large numbers of claims are not the only way of creating fall-back positions in a patent application. It has been traditional in Europe to have “consistory clauses” in the specification (historically to provide unequivocal support for the claims) setting out, in claim-like language, “preferred” or “optional” features of the invention. We advise applicants should make more use of such clauses so that, if necessary, they can be introduced into the claims during prosecution or after grant (using the new post-grant amendment provisions of the EPC 2000) or (where permitted) before national courts.

European patent applications with large numbers of trivial claims that do no more than introduce features known in the prior art will become much less common. The late Mr. Justice Pumfrey (as he then was) criticized such claims in Research in Motion v. Inpro Licensing [2006] R.P.C. 20 para. 32, saying: “I cannot conceive how these claims could be supposed to survive a successful obviousness attack on claims 1 and 2”.