Posts Tagged ‘Dependent Claims’

Patents can be an expensive business. However, there are a number of ways you can reduce the fees for a new application.

Today: claims fees.

Many national patent offices punitively price excess claims fees to make their jobs easier during examination. It is fairly easy to be caught out by this practice and see your official fees double for fairly little return.

Stack of Euros with thanks to Andres Rueda

Stack of Euros with thanks to Andres Rueda

In Europe excess claims fees are due for all claims over 15.  The 16th to 50th claims have fees of 210 euros each. Each  claim over 50 has a fee of 525 euros. (Correct as of 6 August 2010 – see here for current fee schedule).

In the US excess claims fees are due for all claims over 20. Each claim over 20 has a fee of 52 dollars.  Independent claims in excess of 3 have a fee of 220 dollars. Multiple dependent claims get hit with a 390 dollar fee. (US fees are reduced by half for a small entity – correct as of 6 August 2010 – see here for current fee schedule).

If you are thinking about filing a patent application in Europe or the US, and the issue has not been raised, ask your patent attorney about whether there are any claims fees payable on your application. If there are you may wish to reduce the number of claims within your claim set, remove multiple dependencies or reduce the number of independent claims. Often dependent claims of limited value can be cut (e.g. claims of the form: “and the result is displayed on a display device…”).

If possible aim for a maximum of 15 claims in Europe and a maximum of 20 in US.

If further possible aim for no multiple dependencies and a maximum of 3 independent claims in the US.

In the last few months I’ve noticed a change in practice among some EPO Examiners when it comes to unity and dependent claims.

The objection runs as follows: object to the independent claim for lacking novelty/inventive step; decide that each dependent claim comprises a different technical feature; conclude that the claim set lacks unity a posteriori. This is often combined with the fact that only the first dependent claim is deemed to be searched, leaving the only apparent option to be the filing of a divisional application.

HMS Unity

While possibly technically correct, something about the literal and inflexible approach taken by these Examiners grates against common sense and the rights of the applicant (e.g. to amend under Art. 123(1) EPC). The Applicant cannot accurately predict what prior art will be raised nor what specific features end up distinguishing the invention from this art. It is also worth remembering that inventive step is often evaluated differently under national laws in national proceedings; dependent claims to specific embodiments may be useful in these proceeding.

C-III 7.8 states the following about the unity of dependent claims:

“If, however, the independent claim appears not to be patentable, then the question whether there is still an inventive link between all the claims dependent on that claim needs to be carefully considered [non-unity “a posteriori”]. It may be that the “special technical features” of one claim dependent on this non-patentable independent claim are not present in the same or corresponding form in another claim dependent on that claim.”

This, however, must be balanced with the guidance in the previous section (C-III 7.7):

Although lack of unity may arise a posteriori as well as a priori, it should be remembered that lack of unity is not a ground of revocation in later proceedings. Therefore, although the objection should certainly be made and amendment insisted upon in clear cases, it should neither be raised nor persisted in on the basis of a narrow, literal or academic approach.This is particularly so where the possible lack of unity does not necessitate a further search. There should be a broad, practical consideration of the degree of interdependence of the alternatives presented, in relation to the state of the art as revealed by the search report. If the common matter of the independent claims is well-known, and the remaining subject-matter of each claim differs from that of the others without there being any unifying novel concept common to all, then clearly there is lack of unity. If, on the other hand, there is a common concept or principle which is novel and inventive, then objection of lack of unity does not arise.

For determining what is allowable between these two extremes, rigid rules cannot be given and each case should be considered on its merits, the benefit of any doubt being given to the applicant.

In certain recent cases, possibly due to revised internal practice at the EPO in advance of the changes to Rules 62a and 63, this balance has fallen out of line.

Legal Balance

T 1394/04, which is cited in C-VI 5.2, is useful case to cite in responses to redress this balance:

As a general principle it was held in T 708/00 that “a subsequent amendment to limit the subject-matter of the main claim by additional features disclosed in the application as filed does not generally affect the notion of unity of invention under either Rule 86 (4) or Rule 46 (1) EPC” and that “it is normal for an applicant to make such an amendment in respect of an objection to the patentability of the subject-matter in unlimited form” (T 708/00, headnote III). [Reasons – 3.]

In T 274/03 it was however made clear that certain conditions have to be satisfied for an amendment not to generally affect the notion of unity of invention. Thus, this
notion is not affected, and therefore no post-search switching of subject-matter is involved by the amendment, if for instance features are added from the description to further define an element that was already a feature of the original main claim (see [T 274/03]), to further specify an essential aspect of the original main claim. [Reasons – 3.]

In fact, as decision T 274/03 clearly demonstrates, if it is assumed, as is usually the case, that the original main claim contains at least in very broad terms the general inventive concept of the invention as set out further in the dependent claims, if any, and in the description, then it is certainly possible to determine whether later amendments form part of said general inventive concept, quite independently of the question whether the subject-matter of the main claim lacks novelty. [Reasons – 6.]

The example under point 5 elucidates that situations may actually occur where the amendment of the main claim, whose subject-matter lacks novelty, based on features supported exclusively by the description, may affect the notion of unity of the invention. Although such situations occur very rarely in practice, as already noted above, in such cases Rule 86 (4) EPC would have to be applied in order to avoid a possible circumvention of Article 82 EPC. [Reasons 6.]

In the present case however it is clear that, much the same way as in the decision T 274/03…the introduced amendment…merely constitutes a further specification of original features of the claim which are essential to the invention… as it appears particularly from the published patent application, column 1, lines 15-18 and lines 31-42. Consequently, [the features of the amendment] are to be regarded as being part of the constructional measures which are necessary to implement [the originally claimed features]. [Reasons – 7]

I believe it is also worth reminding the Examiner(s) that the dependent claims necessarily contain all the features of the independent claim(s) on which it depends. In certain unity objections, the features of the dependent claims are taken in isolation, contrary to the teachings of T 1394/04 above.

If anyone has had similar experiences or has found useful arguments or case-law to keep the EPO on track please “share with the group”.