In this edition, we will compare claims format and claims number rules of the IP5 offices. The IP5 offices have very similar requirements as to the format of claims, as summarized in the first chart. The differences in claims format is discussed in further detail below.
The biggest difference in claims format between the IP5 offices is in the requirement for “one-part” versus “two-part” claims. The State Intellectual Property Office of the People's Republic of China (SIPO) is the only office that mandates “two-part” claims, while the European Patent Office (EPO) prefers a “two-part” claim form. A claim is considered to be in “two-part” form if it lists some elements, then contains the phrase “characterized in that” or “characterized by,” and then lists one or more further elements. The latter elements (or the “characterizing portion”) are considered to be the novel or inventive features of the claimed invention, while the former elements are deemed to be found in the prior art. A “one-part” claim, on the other hand, does not identify any features as belonging to the state of the art. “Two-part” claims are not required or encouraged by the other three IP5 offices. The EPO also encourages reference signs placed within parentheses in the claims. The reference signs relate to technical features identified in the drawings of the patent application. Under European Patent Convention (EPC) Rule 29(7), the reference signs are only used for increasing the intelligibility of the claims and are not construed as limiting the claims.
All of the IP5 offices permit multiple dependent claims. A claim is considered to be in multiple dependent form if it contains a reference to more than one claim previously set forth and then specifies a further limitation of the subject matter claimed. The Japan Patent Office (JPO) and the EPO are the only two offices that permit a multiple dependent claim to serve as a basis for another multiple dependent claim.
The U.S. Patent and Trademark Office (USPTO) is the only office that requires a surcharge for including multiple dependent claims in an application. See 37 C.F.R. § 1.16(j). For fee calculation purposes in the USPTO, a multiple dependent claim is considered to be that number of claims to which direct reference is made therein. Also, any claim depending from a multiple dependent claim is considered to be that number of claims to which direct reference is made in that multiple dependent claim. The USPTO is also the only IP5 office that requires the claims section to start on a new page of the submitted patent application.
Comparison of Claims Format
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The claims number rules of the IP5 offices are summarized in the chart below. None of the IP5 offices have a minimum or maximum number of claims. The USPTO, however, limits the total number of claims to thirty and the number of independent claims to four for a Track 1 application. The EPO permits more than one independent claim in the same category (product, process, apparatus, or use) only if the subject matter of the application involves one of the following: (1) a plurality of inter-related products; (2) different uses of a product or apparatus; or (3) alternative solutions to a particular problem, where it is not appropriate to cover these alternatives by a single claim. See EPC Rule 29(2). All of the IP5 offices require a surcharge per claim if the total claims exceed a certain number. The chart below summarizes the number of claims permitted without surcharge as well as the excess claim fee for each of the IP5 offices.
Comparison of Claims Number Rules
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