This post takes us down a road we don’t frequently travel here at the IP Stone. So, to those who don’t consider themselves patent geeks (excluding closet patent geeks who refuse to acknowledge their true nature), my apologies in advance. But one of those overly-minutiae-oriented patent strategies that patent attorneys love to argue about seems like it could pay off. So, I just had to stir the pot a bit.
One of the things I used to really like about patent law was that it never really changed much, and neither did the rules of practice before the Patent Office. This wasn’t limited to just the USPTO, but around the world, the rules of practice in various offices were pretty static. I used to feel sorry for friends who practiced tax law because they had to learn new law and rules every year. I’m starting to feel like a tax lawyer these days.
Literal Language Requirement
A change that frequently frustrates me and others I talk to is how examiners in the European Patent Office (EPO) have become so demanding in their requirement for literal support in the specification for any proposed claim amendments. (China presents similar challenges, plus you have a translation to deal with as well.) For the non-geeks that decided to stick this post out, this means that any change in language of the claims to get around prior art must be supported by essentially identical language in the specification, or the change to the claim will not be permitted. In the USPTO, you can still support claim language by reference to things shown in the drawings or things that the mythical person having ordinary skill in the art (the “POSITA”) would understand from the application. Not in the EPO – while the EPO Examination Guidelines appear to indicate otherwise, in practice it’s pretty much the literal words or nothing.
While this might sound like a reasonable requirement in the abstract, when you start to consider the challenges of writing a patent application that will be examined in five or ten different patent offices around the world with different rules of practice, often three to five years after it was originally written, the literal language requirement presents quite a challenge. Even if you think you know what the prior art is based on your preliminary/novelty search, you have no idea what art the European or Chinese examiner might later apply or even how he or she will apply the art you do know of. So even if your invention is well described, you have no idea if the words you chose then will be the words you need later to distinguish the prior art as applied by the examiner. Add to that challenge the fact that many foreign offices charge much steeper excess claims fees than the USPTO, resulting in significant cost pressure to reduce the number of claims in international (PCT) applications.
Irregular Fees Create Soaring Costs
One typical tactic used to contain costs in foreign applications is to file your PCT application with a reduced claim set. For example, the excess claims fee for a US application with 168 total claims and 10 independent claims would be about $4600 for a small entity, whereas filing the same claims in the EPO would draw an excess claims fee of over $90,000 (yes, ninety thousand is correct). Cutting the claim number back to 15 total when you enter the national stage eliminates that $90K charge. So why not just put a lot of claims in the PCT application and then cut them back when you enter the national stage in Europe? Good idea, unless you are filing in China too. China calculates its national stage filing fees based NOT on the number of claims actually examined in China, but on the number of claims in your PCT application, regardless of how many you ask the Chinese examiner to examine. So in China, those same 168 US claims would draw an extra $5000-6000 in filing fees (including per claim charges by your Chinese patent agent) if you put them in your PCT application – still steep, but a bargain compared to Europe!
Reducing Claims Causes Issues Down the Road
Reducing claims to reduce filing fees often leads to difficult support issues later in prosecution for the simple reason that you have fewer words to rely on for literal support. Try, however, convincing a client to spend an extra $5000 today because of the hypothetical possibility that you might need dependent claim 88 to overcome a rejection in Europe four years from now.
To try to combat this dilemma, a couple years ago in cases where the US application has a large number of embodiments and claims, but the PCT claims were reduced to a much lower number for cost savings and smoother sailing under foreign practice rules, I started to insert the complete US claim set at the end of the description just before the claims. I added the claims, essentially word for word, as alternative embodiments of the invention. This is somewhat like what many practitioners often do in the summary section, but instead it includes not the claims of the PCT application in which it is included, but rather the claims of the US application on which it is based. And the added language includes all dependent claims from the US application, not just the independent claims. I have also not changed the words for smooth reading as much as I would in the US – in part because most of the foreign applications I see don’t read very smoothly. It just doesn’t seem worth the time changing the literal language, especially since I might want to rely on it later. Also, given that the application will often be translated , with the loss of certain precision in the language, and that enforcement is not going to be via a jury trial, the need for the same clarity of writing is not there to the same extent in foreign practice.
Sure, that can look a little odd, but now, finally, my approach may be paying off. In an EPO case now under examination, we have an examiner who has agreed in an interview that an added limitation would make the case allowable – with the ominous caveat ”if you can support it properly.” While the limitation is supported by the drawings, which would be sufficient in the USPTO, as mentioned above, this alone would probably not be sufficient for the EPO. However, one of the dependent claims from the US application – about the 70th claim there – which was copied into the end of the PCT application with all the rest, provides the precise literal language needed to support the claim amendment we want to make now.
We are not out of the woods yet because I’ve seen EPO examiners slice the baloney exceptionally thin on support issues, but at least we have literal language on which to pin the amendment.
I’ll keep you posted, because, if you got this far, I know you will have a hard time sleeping until we get the next examination report.