Posted by Jeff Shieh on Tue, Aug 03, 2010 @ 10:41 AM
I had the honor of speaking at the NAPP Annual Meeting recently.
My presentation focused on foreign filing best practices and ways to ensure that your US approach would not undermine your global patent opportunities. One attendee asked a question which I feel would be of interest to our blog subscribers.
A portion of my presentation discussed the strategy of introducing multiple dependent claims at the PCT national stage as a way of reducing excess claim fees in foreign countries. As you may know, in all countries except the US, multiple dependent claims are counted as only a single claim, and it’s possible to have nested multiple dependencies. Therefore, claims in multiple dependent form can sometimes be a useful tool in reducing claim fees while maintaining the scope of the claims.
The question that arose was why an applicant would choose to enter claims in multiple dependent form at the 30 or 31 month date rather than including them in the initial priority or PCT application.
In our experience, a decent proportion of US attorneys don’t even think about multiple dependent claims when drafting the initial application. Often, the client is not sure whether they want to enter the international arena anyway, so their attorneys tend to tailor the application with US filing and prosecution in mind.
Accordingly, I focused my presentation on the idea of amending claims to include multiple dependencies at national phase entry outside the US.
However, it’s definitely worth considering whether including multiple dependencies when initially filing the PCT application might reduce your client’s costs in the long run. If it’s likely the application will enter the national phase in several countries, it’s easier to start with multiple dependencies because you don’t need to then introduce them to each and every country (often at additional cost) during national phase entry or prosecution.
Even if you need to enter the national phase in the US, the cost of amending once to go back to single dependency form at US national phase entry is most likely outweighed by the savings in time and foreign attorneys’ fees in other countries that can use the multiple dependencies as filed with the PCT.
Of course, before you start taking this approach, you must be sure you understand how multiple dependencies work, including their advantages and disadvantages. In practical terms, sometimes it’s easier to start with a single dependency approach then add in multiple dependencies after the claims are drafted, but sometimes it works better the other way.
However, sensibly used in the right circumstances, multiple dependencies are a great way of increasing the scope-to-cost ratio.
Posted by Jeff Shieh on Tue, Jun 01, 2010 @ 09:30 AM
IT Improvements
On May 5, 2010, USPTO director David J. Kappos testified before the Senate Judiciary Committee to discuss the USPTO's operations, programs and initiatives. In line with the USPTO's goal of increasing efficiency and reducing the average pendency for a patent application, Director Kappos focused, in part, on expanding and improving the IT infrastructure currently in place at the patent office.
Specifically, Director Kappos proposed an end-to-end system for the electronic processing of patent and trademark applications. The proposal calls for a system that will function independently of the current outdated system, thus allowing its design to be driven by the needs of the stakeholders and the desire to reach an efficient end product. More details can be found on page 10 of the prepared statement of Director Kappos to the Senate Judiciary Committee.
Quid Pro Quo for Reducing Backlog
The USPTO also announced the expansion of its "Project Exchange" program, which should take effect in the coming weeks following its publication in the Federal Register. At present, the Project Exchange program allows small entity applicants to receive expedited examination of one application in exchange for the withdrawal of another unexamined application.
With hopes of reducing the immense backlog currently clogging the USPTO, the Project Exchange program will now be open to all applicants. Greater detail on the expanded Project Exchange program can be found in the USPTO's press release. How many applicants take advantage of this program, and how successful it is in reducing the pendency of applications, remains to be seen.
If you would like to bump up examination for a certain application in exchange for abandoning an unwanted application, our US agents would be happy to provide you with further information on the Project Exchange program - just let us know at mail@inoviaip.com.
Posted by Jeff Sweetman on Fri, Mar 26, 2010 @ 10:48 AM
In view of the high excess claims fees that apply to European applications, it's common for PCT applicants to reduce the number of claims on file at regional phase entry to Europe.
In the past, the EPO has taken a surprisingly (in my view) laissez faire approach to the format of such claim amendments. Simply submitting replacement pages with the regional phase entry documentation was generally sufficient.
It's always been desirable to show the nature and location of any amendments being made at regional phase entry. However, it's about to become compulsory to do this.
If the amendments are just claim deletions (presumably for the purpose of fee reduction) then it's acceptable to provide a marked-up copy showing the deletions and claim renumbering, along with a clean copy of the final version. For the marked-up version, most applicants use some form of "track changes" feature in their word-processing software, such that additions are underlined and deletions struck out.
If the features of certain claims are being combined, it will also be necessary to provide a summary of how the new claims relate to the old claims.
And finally, if subject matter from the description is being newly imported to the claims, it will be necessary to explicitly point out where the new claim language is supported in the detailed description.
A couple of other points to note:
The official fee for excess claims in Europe is €200 per claim after the 15th, and €500 per claim after the 50th. It therefore often makes sense to rationalize claims if there are many more than about 15 of them and costs are an issue.
It's worth remembering that the EPO allows multiple dependencies, and dependencies aren't counted for the purpose of claim calculations. No matter how many claims a particular claim refers to, it only incurs a single claim fee for the purposes of excess claims calculations.
As well as amending claims to reduce official fees, it may also be worth taking the opportunity to take into account the EPO's new approach to multiple claims in each claim category (we'll be posting more about this early next week).
Please feel free to contact us if you need more information about these (or any other) EPO rule changes.
Posted by Jeff Sweetman on Tue, Mar 09, 2010 @ 10:40 AM
We recently gave a brief summary of the impending 1 April 2010 changes to European rules.
New Rule 62A: Independent Claims
Today, we're going to go into a little more detail about the changes to management of independent claims in Europe under the new regime.
Current practice
Under current European practice, typically only one independent claim is allowed in each claim category (apparatus, method, etc).
However, there are some exceptions:
Inter-related items (for example, a plug and socket; gene, gene construct, host, protein, medicament; intermediate and final chemical product).
Multiple different inventive uses of a product or device (for example, different second or further medical uses).
Examples of alternative solutions to a problem (for example, groups of chemical compounds; two or more processes for manufacturing a compound).
At the moment, the EPO searches all claims, and then raises an objection during examination if it is considered there are too many independent claims in each category.
Under new Rule 62a:
The EPO will no longer search all independent claims in each category. Instead, the new procedure will be to invite the applicant to select which claim in each category should be searched (and therefore examined).
The subject matter of the remaining independent claims may need to be made the subject of a divisional application if it cannot successfully be argued that an exception (such as one of those listed above) is appropriate.
If no claim is selected, the EPO will automatically search only the first claim in each category.
Which applications are affected?
For various technical reasons, the new rules will only affect cases where the International Search Report was not prepared by the EPO.
The rule applies to all applications where the European search report issues after 1 April 2010.
What needs to be done?
For PCT applicants entering the regional phase in Europe, there is an opportunity to amend the European claims either at regional phase entry, or following issuance of a rule 161 communication (we'll post about that soon). This is the last opportunity to get the most appropriate claims on file before the search process begins.
Need more information?
Our European agents, Kilburn & Strode, have prepared briefing papers summarising the main impending changes to European practice. The papers can be downloaded from their website.
Posted by Jeff Sweetman on Mon, Feb 08, 2010 @ 03:27 PM
As you may know, the EPO generally implements fee and procedural changes on 1 April each year. I like to think of it as their way of making sure everyone has a little fun every April Fools' Day.
This year there are a number of important procedural changes that will apply to PCT applications entering the European regional phase from 1 April 2010.
We will soon provide greater detail about the changes, but in the meantime, important points to note include:
If the EPO was the International Search Authority (ISA), it will be compulsory for applicants to submit a response addressing the ISR and written opinion. The deadline for doing this is typically only a few weeks after regional phase entry, so applicants will need to act quickly.
We'll soon be posting in detail about these points, but please let us know if you have any specific questions in the meantime.