Excess claim fees are not new and are used in many patent offices worldwide. For example, the European Patent Office varies their claim fees for the 16th to the 50th claim and then, again for the 51st and each subsequent claim; when filing a request for examination, the Japanese Patent Office fee is directly proportional to the number of claims; and the Chinese Patent Office charges for claims in excess of ten. Here in the U.S., the basic filing fee includes three independent claims and a total of twenty claims. Today in our post-grant proceeding world, do we need to rethink the number of claims we use to cover an invention?
A day does not go by without some aspect of a post-grant proceeding flashing in the legal headlines – institution rates, limited ability to amend the claims, district court stays, and PTAB estoppel. Despite all of this noise, prosecution continues to be the frontline defense for the patentee. But, a simple, yet sometimes overlooked prosecution tool can be as rudimentary as the number of claims covering an invention.
One can easily get lulled into prosecuting an application with a total of twenty claims and having three independent claims, i.e., paying the basic filing fee. In some instances, that may well be sufficient to aptly cover an invention, but today in this post-grant proceeding world, can the number of claims, and the varied way in which the claims cover the invention, be approaches worth considering.
For example, having a wider selection of claims of varied scope may force a would-be-challenger, i.e., petitioner, to rely on not only combinations of references but also different combinations of references, thereby reducing the chances of institution. At the same time, a wider selection of claims may increase the chances of survival of some claims or at least one claim to cover the invention, and importantly, the commercial product. Dependent claims are also tools. Dependent claims can be used to further refine the novel aspects of the invention by scope and aspect. Often times, the dependent claims merely recite additional elements already known in the prior art.
In drafting and prosecuting claims, considering the technology itself, the prior art landscape, the value of the application, and the scope and coverage of related applications are at least some factors driving the decision as to how many claims should cover the invention. Walking through those considerations now, avoid or minimize issues in the long term. Think about it: How many claims?