2 responses to “Industry Trilateral Group and the “Global Patent Application” Project”

1. 

   Bob Lelkes

   November 8, 2007

   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

   November 8, 2007

   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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