inovia's Foreign Filing Blog

Various Countries, Various Claims Issues

The types of claim amendments and additions that can be made vary radically from country to country.

For example, Korea is very restrictive about claim amendments, and you can assume that broadening claim amendments will be rejected. In Korea, it was necessary for our client (see prior blog post) to enter the national phase individually for each invention they wanted to keep alive.

Europe is restrictive in that new claims or amendments to claims will only be allowed if there is clear and unambiguous support for the claim language in the specification as filed. This often places limitations on broadening amendments and on introducing new claims that are broader than the specific embodiments disclosed. In this case, that meant the client needed to enter the national phase individually for each invention. However, if there had been more literal support for more than one of the sets of claims (ideally by way of multiple summaries of invention), it would have been possible to let the applications relating to the supported claims lapse. The supported claims could then have been introduced at a later date as a divisional or continuation application.

Some countries are less restrictive. Most NAPP members will be aware that the US, for example, is relatively easy-going about adding new claims supported by the specification by way of a continuation application.

Countries like India allow new claims that are reasonably supported by the specification, but are fussy about adding or deleting inventors to or from a particular application. In one of our client's cases, this was an issue because there were six unique permutations of inventors, some being subsets of each other. It was therefore necessary to enter the national phase with six of the applications: one for each unique permutation of inventors.

China allows broadening amendments that are based on the specification, and has the advantage over India of allowing inventors to be added relatively easily.

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Saving Money With Co-Pending PCT Applications

Believe it or not, in some cases it can make good financial sense to let co-pending PCT applications lapse.

It must be remembered that a PCT application is actually a bundle of national applications. This means that all the advantages and disadvantages of individual countries' patent systems need to be taken into account when amending and adding claims, both during the international phase and when entering the national phase.

 

The Problem
A client recently approached us with 15 technologically related co-pending PCT applications. Money was temporarily tight, and they (like most applicants) wanted to maximise the coverage they could get in a number of countries. Even with the money we were able to save them per country, it was unrealistic for them to get coverage for all 15 inventions in all the countries they wanted.

Interestingly, due to a hurried filing by the client's previous attorney, the specification had an identical description, even down to the abstract and summary of invention. The only difference in each case was the claims.

It is at this point that an understanding of the different ways different countries treat the introduction of new claims (and the amendment of existing claims) comes in handy if you want to save some money right now.

 

The Solution
In some countries, it is possible to add new claims to an existing specification as long as the specification would have supported those claims in the first place. In such countries, it is feasible to enter the national phase with only one of the PCT applications, whilst adding the claims by way of amendment. Indeed, since amendments made at national phase entry in a particular country are essentially amendments made during the pendency of an existing patent application in that country, there is nothing special about the timing of those amendments. They can made at national phase entry (which is useful to ensure potential infringers are placed on notice), at a later date such as when requesting examination, or even left to form part of a divisional or continuation application after prosecution of the original claims is complete.

In this case, the client took specific advice from each of our agents as to the allowability of taking claims from one or more of the pending PCT applications and allowing those applications to lapse. The claims would then be added to one or more of the remaining PCT applications.

In the best of cases, this meant retaining only a single application and eventually adding all the other claimsets (either at national phase entry, or at some time in the future) during the remaining application's pendency. In the worst case, every PCT application for which protection wanted to be retained needed to enter the national phase.

See our next blog post with more details about various countries' claims issues.

Conclusion

The client was able to tailor a unique national phase filing strategy that took into account local law and practice for each country. In different countries, it took 1, 3, 6 or 15 applications to obtain protection for all the inventions, taking into account the level of support for various claims in the specification, the various combinations of inventors that existed, and the individual countries' laws. The result was far lower national phase costs at a time when funds for this client were particularly tight compared to what they are expected to be over the next year or two.

 

A Cautionary Comment
Of course, this article relates to a specific example, and not every set of co-pending PCT applications by a particular client will offer the ability to combine claims and reduce the number of national phase entries in this way. Indeed, where less than two or three cases are involved, the cost advantage is probably not great enough to make it worth pursuing.

It must also be said that in an ideal world (where money was no object!) it would almost always be preferable to keep all co-pending cases alive in all countries, unless there is specific, literal support in the specification for each and every claim you wish to introduce from a co-pending application. Unpredictable examiners and courts can all conspire to make those claims potentially less valid (or at least seem less valid) than if they'd been pursued via a national phase application from the original PCT application.

And finally, you obviously need to keep an eye on priorities. If the PCT applications have different priority documents, you need to ensure that there is adequate support in each application's priority document(s) for any claim you wish to add to that application.

Minimize Costs When Instructing Patent Attorneys

As providers of services on a time basis, patent attorneys and agents should know better than most (with the exception of their clients, of course!) that time is money.

So here it is: The Completely Obvious Guide to Minimizing Costs When Instructing a Patent Attorney

 

 1. As far as possible, send everything at once

There are few things more annoying than getting piecemeal chunks of information from a client (if there IS something worse, it's having to argue over invoices for your effort in asking for additional information).

 

2. When an attorney you have instructed asks you a question (or 10) or requests that you send a document, make sure you answer every point that is raised

Failing to deal with every point in a letter is time-consuming and frustrating for all concerned as additional correspondence whizzes back and forth filling in the gaps. And of course, "time-consuming = money consuming".

When replying to correspondence (especially long correspondence relating to many issues), it's a good idea to draft your reply and then read the initial correspondence carefully from start to finish. It's remarkably easy to miss a question buried in a paragraph because you jumped over it to answer a question to which you know a really good answer!

 

3. Take note of deadlines

I never cease to be amazed at the number of patent firms that don't get back to you when they should. Many attorneys add some form of urgency loading to discourage clients from instructing them unduly late; even if there is no explicit late charge, I suspect that more than the occasional attorney rounds up rather than down when estimating time on an urgent case.

 

4. Before asking a question, make sure you've read the correspondence to date

No-one minds if you ask a question for which the answer is buried twenty long letters ago - we're all human. However, if you ask something that was dealt with in the previous letter, it's tantamount to saying that you didn't read the letter - and obviously that's not going to look particularly professional.

 

Of course, all of these are simple ideas, but they all boil down to a little professional courtesy and respect. And of course, you might save your client a little bit of money and make the whole process just that little more enjoyable for yourself too.

Rule 7: Bring tasks in-house, or outsource!

Rule 7 of 7

When you look at organizations with larger portfolios a pattern emerges: IP functions begin to be taken in-house.

Given sufficient volume it often makes more financial sense to pay in-house paralegal or patent attorney salaries than to pay the hourly rates charged by patent firms.

However, a sense of balance needs to be maintained. There's little point employing an experienced patent attorney full time (they aren't cheap, as I'm sure you know!) if you don't have enough work to keep him or her completely employed.

Instead, you should look at the different parts of the patent process and determine which tasks you can (or should!) take in-house.

For example, taking patent drafting in-house may not be practical due to the intermittent nature of drafting work over the course of, say, a year. However, coordinating foreign filings may be possible with the help of a specialist service provider. Costs can be reduced whilst the level of control can be maintained - or even increased.

Of course, you should also remember that your patent attorney (depending on the country) may also be a lawyer in a more general sense. Your business may not have enough patent work to keep a patent attorney going fulltime, but could a patent attorney fulfill other legal services requirements you have on an ongoing basis?

Contract drafting and review, compliance, IP strategy and general legal advice are all areas where a patent attorney may be able to provide useful input. Indeed, some patent attorneys will revel in the opportunity to work in broader areas than just patent drafting and prosecution.

Photo credit: phalinn

Rule 6: Consolidate providers

Rule 6 of 7

Selecting only one or two providers to handle your patent work can sometimes increase your buying power, giving you more favorable rates. Asking those providers to use the same foreign attorneys (ideally with whom favorable rates have also been negotiated) for all your work can help too.

In general, if you are providing a significant amount of work, you should see whether your provider will agree to fix their charges in advance for certain actions. This will help with budgeting, which is a serious issue for many of the companies we speak with at the moment!

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Rule 5: Batch file to create economies of scale

Rule 5 of 7

If you have multiple filings due in a given month or quarter then do a batch filing to maximize efficiency and minimize costs. And don't be afraid to ask your patent attorney for a discount if you can instruct a significant number of cases simultaneously!

The same goes for external service providers: most foreign filings and annuities providers will offer discounts for significant volumes of work.

Photo credit: Cristian Mantovani

Rule 4: Choose a foreign filing service that’s on your side

Rule 4 of 7

Many patent applicants and attorneys don't realize that there is choice available as to who to use for the foreign-filing component of the patent process. The emergence of specialist foreign patent filing providers utilizing technology and purchasing power has created significant efficiencies that translate into cost and time savings for patent applicants.

Whilst much of the work associated with foreign filings is administrative, it's still worth checking that the organization you choose is run by patent attorneys. They can provide an extra level of oversight, identifying potential issues and helping smooth minor matters at the most cost effective time.

It's also important that they allow you to keep your local attorney in the loop. Your patent attorney drafted the patent application, and no-one knows your invention and business better than him or her. Any foreign filing service should encourage you to keep them involved.

There may be similar cost-saving opportunities in areas such as annuities and patent searching.

Photo credit: Leo Reynolds

Rule 3: Ace the patent application process

Rule 3 of 7

Sometimes it is not only what you do right but what you don't do wrong that counts!

Plan your decision-making and funding processes to ensure instructions are sent well ahead of deadlines. This will avoid translation urgency fees, and late fees for submitting executed powers of attorney and assignments (where required).

In some cases, translation surcharges can add 50-100% to the associates' fees for lodging an application, so it is really important to get instructions sent as early as feasible.

Similarly, review the application to determine whether significant savings can be made in particular countries. For example, Europe, the USA and some other countries have per claim fees for each claim above a certain number. Reducing the number of claims may save a significant amount of money, even if the foreign associate charges you to make the amendment (which may be the case if entering the national phase from a PCT application). Is every claim in your application important, or are some just "filler"?

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