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Industry Trilateral Group and the “Global Patent Application” Project

    By Christopher P. Singer —

Globe_east
On November 7, 2007, the Industry Trilateral Group, which includes the Intellectual Property Owners Association (IPO), the American Intellectual Property Law Association (AIPLA), Business Europe, the Japan Intellectual Property Association (JIPA), and practitioner groups the European Patent Institute (epi) and the Japan Patent Attorneys Association (JPAA), published a report that outlined several suggested rule and statutory changes as part of a "Global Patent Application" project.  The report cites to data from the Trilateral Offices (USPTO, EPO, and JPO) that was used to estimate that the annual costs associated with modifying patent applications as they are filed in patent offices across the world approach $300 million.

The group identifies five changes it believes would have the most pronounced effect on reducing these costs, and create progress toward some harmonization.  These changes include:

  • Removing National Legends (US) – This refers to the requirement in the U.S. that applications must contain sections such as "Cross-Reference to Related Applications" and "Statements of Federal Sponsored Research."  Since these sections are particular to the U.S. and need to be removed upon filing in Europe and Japan (and must be added to original EP and JP applications when filed in the US), these sections would not be required in the filed patent specification.
  • Including Reference Numerals in Abstract & Claims (US) – This relates to a suggested change in the U.S. that would require that reference numerals appearing in the abstract or claims could not be used to limit claim scope.
  • Removing Requirement of Conformance of Specification & Claims (EP) – This proposed change addresses the requirement in Europe that the specification contains language that conforms with the language of the allowed claims.
  • Requiring Amendment of the Specification to cite Prior Art (EP) – This proposed change would preclude the EPO from requiring that a description of the prior art applied during prosecution be inserted into the specification.
  • Citation of Prior Art (JP) – This proposal would change current Japanese practice of citing specific prior art references in the specification, and allow for the citations to be made in a separate paper.
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2 responses to “Industry Trilateral Group and the “Global Patent Application” Project”

  1. Bob Lelkes Avatar
    Bob Lelkes

    According to non-U.S. patent practice, claims having multiple dependency are generally only counted once when calculating the excess claims fees. Where that is the case, multiple dependency is often used to minimize the total number of excess claims in order to reduce the total cost for non-U.S. patent applications.
    The fees charged for claims having multiple dependency are different in the U.S. When a U.S. patent application contains multiple dependent claims, each multiple dependency is counted as a separate dependent claim. In addition, there is an extra fee charged for submitting a set of claims containing multiple dependent claims. The U.S. rules therefore favor filing patent applications with claims that do not have multiple dependency.
    Due to this discrepency, either substantial time is spent converting between the U.S. and non-U.S. systems to minimize excess claim fee costs in patent applications filed globally or the applicant pays unnecessarily high excess claim fees in one or the other jurisdiction if the applicant wishes to maintain a given array of fallback positions in its dependent claims. In either case, costs or loss of fallback positions are frequently generated due to this difference in fee structures.
    In my view, examination of a relatively small number of claims having multiple dependency is more efficient than examination of a relatively large number of dependent claims repeated several times to make each claim dependent from different prior claims.
    In both the U.S. and non-U.S. systems, the patentability of the dependent claims is generally accepted when the independent claims are amended to comply with patent law requirements. Since examiners and applicants generally focus on whether or not the independent claims comply with the relevant patent law requirements, claims having multiple dependency should not cause any delay or inefficiency during examination. They may in fact streamline review of the claims due to their inherent conciseness for a given array of fallback positions.
    Harmonization of the U.S. claim fee structure with that of the EPO, for example, should result in substantial cost savings for applications filed in the U.S. PTO and the Patent Office of another trilateral group member. Implementation of this approach should not harm the interests of U.S. patent applicants and should not interfere with the U.S. PTO goal to reduce its backlog.
    Comments? Suggestions?

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  2. Chris Singer Avatar
    Chris Singer

    Bob-
    I tend to agree with your opinion about the advantages that multiply dependent claims offer in streamlining a claim set in any given application. I imagine, however, that there is a very low likelihood of the USPTO reducing or eliminating the surcharge for presenting multiply dependent claims. I also doubt that the USPTO would change its current view that each multiple dependency is treated as a separate claim.
    Given that each of the trilateral offices allow for multiply dependent claims, it may be that the group in charge of this study considered the different ways in which the US and EP/JP Offices treat multiply dependent claims to be merely a choice of applicant preference and filing cost considerations. The five points highlighted in the report all appear to relate to substantive differences in what one of the Offices requires in an application (or how case law interprets it).
    Nevertheless, if your suggestion was adopted by the USPTO it would be nice…fewer 25 page claim sets. Thanks for the comment.

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