Patents with More Than 25 Claims

The newly finalized claim rules would practically limit most patent applications to twenty-five or fewer claims. To get some sense of how this rule would affect current practice, I ran three separate searches:

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  • Important Patents: Approximately 4400 of the patents issued between January 1, 2002 and August 1, 2007 have been involved with some type of patent litigation. 35% of these “important” patents have more than 25 claims.
  • Issued Patents: Approximately 3000 utility patents issued on Tuesday, August 21, 2007. 18% of those newly issued patents have more than 25 claims.
  • Published Patent Applications: Approximately 6600 patent applications were published on August 16, 2007. 27% of those newly published applications include more than 25 claims.

A troubling aspect of the new rules is their potential to have a disproportional impact on important patents.  (See “Valuable Patents” by Allison, Lemley, Moore, & Trunkey).

About Dennis Crouch

Law Professor at the University of Missouri School of Law. Co-director of the Center for Intellectual Property and Entrepreneurship.

72 thoughts on “Patents with More Than 25 Claims

  1. It’s rare that a petition to contest a restriction requirement is granted, and we can look forward to more examiner whimsy on that one. You’ll notice there was little discussion of the fundamental issues created by the new rules at the Webinar (basis for granting petitions, substance of arguments) except to refer practitioners to guidelines posted somewhere in the ether. That’s because they probably didn’t really want a discussion.

    Seems like there was opportunity for notice and comment about something, but what the proposed rules morphed into never got a real hearing.

  2. ESD = Elective Self-Destruction

    Note: for cases filed by my firm, the number over the 5/25 limit is probably above 75% because of the use of multiple claim formats (method, system, CRM, etc.).

  3. On their face, the numbers are low. They do not count number of applications that have common specification and filed on same day. These under the new rules (if I understand the gibberish) would count as one application. But they do not appear as contiuations. That is just for identical specs. Numerous other apps are similar enought to fall in the presumption.

  4. I can’t breathe. There isn’t enough aprazolam on this planet to unbunch my knickers.

    The stats used by the PTO were polluted by the past decade of corporate lust for “bundle of rights” portfolios. Quality doesn’t count — sheer number does.

    (It doesn’t matter that 90% of the patents are worthless, the sheer number in the portfolio will deter the little ones and force the competitors to license defensively!)

    Wall plaques, news releases, annual reports, all boasting of Whiz-bang, Inc.’s newest leapfrog over the laggard competition. Proof? Why the size of our corporate patent portfolio, of course!

    Hence, $2,000 to $4,000 caps for patents written in the US; bang-’em out, boys, 20-hours tops; no training for newbies – everyone is an expert in everything here; claim set capped at 3/10; get those claims issued at any cost, unless it’s over $2K, when it’s OK to abandon ’cause there are 5,000 more where that came from; we’re the best tech company because we file more. Rinse. Repeat.

    The USPTO is choked with examining 10^N micro-patent applications with 10^N*M nano-claims. Any wonder why Examiners are a bit cynical and filled with hindsight???

    So, sure, with all of the past decade’s millions of quick and dirty 3/10 applications filed for $5K or less, the stats WILL show that most apps have a limited number of independent claims and total claims.

    The stats crunchers & pols who arrived at 5/25 could never comprehend that what is being examined is mostly the third derivative of planarium dung – lots and lots of teeny, sub-5/25 piles of it.

    They will never comprehend how much all of the relentless politicizing, unschooled philosophizing, and half-baked economics that lead up to this steaming heap o’ rules will damage the essence of our nation’s economy – innovation.

    Small and mid-sized inventors and companies will feel this pain the most. The big guys win. If a big guy has something significant, the resources for an ESD are there.

    An ESD may double the cost of a patent, while simultaneously filling it with well-concealed frag grenades.

    I propose that, instead of “self-examination” via ESD, we just pay the USPTO a flat $5000 to allow each case on an honor system.

    Congress gets what it wants, USPTO gets funding without having those annoying personnel problems, and we can slip right in to a global village first-to-file patent registration system that’s good for society as a whole. Isn’t that the eventual end-game?

    Let’s thank the academic genii who decided to push the “bundle of rights”/”picket fence” approach to patents, at the expense of well-written disclosures with a wide variety of well-structured claims. Hmmm. Perhaps a review of the literature starting in the mid-90’s might be a good start to find some of the culprits.

    You know who you are, Profs. As my dear Grandmother from the old country would say – You know so much, you know nothing.

    An “Examination Support Document.” HAH! It ought to be an “ESTOPPEL Support Document.”

    Sheesh. After reading 129 pages of Federal Register and 109 PowerPoint slides, how do you THINK I’m going to react???

  5. Oh, the irony.
    One of the purposes of “patent reform” is to reduce the number of bad patents out there.
    Now, after this “reform” if I have used up my continuation/RCE quota, and I get cited prior art from a foreign office that is not in the file wrapper, I CANNOT file an RCE with an IDS.
    Instead, I must let the potentially invalid patent issue, and then go for re-issue.
    The new rules will INCREASE the number of potentially invalid patents that issue.
    This is ALL WORTH IT, though, because Dudas’ new job at the BSA will pay very well.

  6. “Which petitions for an “extra RCE/continuation” would be accepted and which would be rejected??? What are the criteria ?? Why are there NO EXAMPLES of acceptable petitions or unacceptable petition ???”

    No guidelines were given because PTO doesn’t expect to be granting any petitions for a third + continuating application. This was made crystal clear at the 2006 spring AIPLA meeting. PTO General Counsel Toupin stated during a meeting of the Chemical Practice Committee that he “could not at that time foresee a single fact situation that would justify filing a second continuation application or CIP”- at the time the proposed rules stopped the freebies at one continuation- apparently PTO felt that adding a continuation would placate some of the more vociferous complainants.

  7. “Excellent point. You can’t fight the market.”

    Well, you can certainly try at the taxpayer’s expense. And it is much easier to constrict the front-end than to try to fix the downstream problems, especially if you don’t have a background and experience in patent law.

  8. “In any event, it would seem that this would seriously INCREASE the burden on the USPTO.”

    No, no, no, no, no! (As my mother would say.) The USPTO isn’t going to be making any time-consuming claim scope analysis between applications. It will use a few dumbed-down rules (inventor, filing date, “overlap” in disclosure found by a text analysis program, etc.) to make a prima facie case and then shift the burden to the applicant.

    The applicant must then prove the negative as to why they are not indistinct, even when a simple reading by a first-year law student (or a paralegal) would tell anyone they are distinct. Of course, when the examiner sees the applicant’s time-consuming response to the unnecessary requirement, the examiner will “fold” so to speak. But by then the requirement has already served its purpose: it has raised the barrier to entry for an inventor to file two applications, and hence it will likely reduce the number of applications coming in to the USPTO.

    See? Shrewd? Constrict the front-end, and watch the problems in the rest of the downstream system get smaller. (Oops, so will the output and benefits of the system.)

    For one-way and two-way obviousness, see:

    link to oblon.com

  9. A FINAL COMMENT –
    even if you AGREE WITH the “new rules” (say your name is Malcom Mooney or you work for generic pharm or the BSA), there is NO EXCUSE IN THE WORLD for the PTO lack of clarity about the specific scope of the rules !!

    Which petitions for an “extra RCE/continuation” would be accepted and which would be rejected??? What are the criteria ?? Why are there NO EXAMPLES of acceptable petitions or unacceptable petition ???

  10. ANOTHER ISSUE:
    The other purpose of dependent claims (i.e. besides as a “fallback position”) is for claim differentiation and/or for defining a wide scope of the broarder claim.

    The USPTO is not clear in their rules – can I still filed lots’ of dpenednt claims and just cancel them on the filing date with a prelminary ammendemnt, or would the EXISTENCE OF >25 claims AT SOME TIME IN THE PROSECUTION irreversibly trigger the requirement for submitting a self-examination document.

    PLEASE HELP !!!

  11. Pardon my ignorance – I don’t have Margaret Peterlin’s deep knowledge of patent and trademark law (from her vast experience).
    How is the USPTO defining “patentably indistinct claims” vs. “patentably distinct claims”??? HAVE THEY SPECIFIED THIS ????!!!??

    If “patentably distinct claim” are claims that are different in scope (i.e. novel relative to each other), well, we need to have claims different in scope anyhow, and thus nothing would change with these rules (i.e. even without the rules I cannot repeat claims with the same scope). I just write my usual 45 claims, and stick 25 claims in one app and 20 claims in another app – each claim has a different scope and is “patentably distinct.”

    If they define “patentably distinct claims” in terms of non-obviousnness (i.e. claims in Application B must be nonobiouvs over Application A filed on the same day with the same inventor assignee), then this is STILL not clear.

    Must the claims in Application B be non-obvious over the CLAIMS in Applications A OR must the claims in Application B be non-obious over the SPECIIFCATION of Application A (i.e. the Applicant’s specification for Application B is used as a reference against claims of Application A for the 5/25 rule).

    Has the USPTO clarified this ????!!!????

    In any event, it would seem that this would seriously INCREASE the burden on the USPTO.

    Example – pre-rules, if claim 1 is allowable and claim 2 dependent from claim 1, there is no need for the Examiner to Examiner whetehr or not claim 2 is non-obvious over claim 1.

    UNDER THE NEW RULES – I put 25 claims in application A, and 25 claims in application B (which have different scope from the 25 claims in application A).

    Now the Examiner of Application A has to Examiner claims of Application B to determine whetehr or not each claim is non-obvious over the other disclosure (or claims). This is WORK for the Examiner.

    As an applicant, I will assert that the claims are NON-OBVIOUS over the other application – this is what I am asserting ANYHOW – this is whyh the dependenet claims are FALLBACK position. Execpt now I force the Examiner to work harder.

    BTW – if I disagree with the Examiner’s assertion of non-distinct, is this appealable or petitionable?? Does this stop the clock for Examination ??? Will I have a chance to fight for every claim possible in Application B as “patentably distinct” and then cancel those determined to be “patentably indistinct” or will I have a “take it or leave it situation”

    AM I SLOW OR IS THE USPTO BEING VERY VERY UNCLEAR WITH THESE NEW RULES ??????

    DENNIS, SOMEBODY – HELP !!!

  12. Pardon my ignorance – I don’t have Margaret Peterlin’s deep knowledge of patent and trademark law (from her vast experience).
    How is the USPTO defining “patentably indistinct claims” vs. “patentably distinct claims”??? HAVE THEY SPECIFIED THIS ????!!!??

    If “patentably distinct claim” are claims that are different in scope (i.e. novel relative to each other), well, we need to have claims different in scope anyhow, and thus nothing would change with these rules (i.e. even without the rules I cannot repeat claims with the same scope). I just write my usual 45 claims, and stick 25 claims in one app and 20 claims in another app – each claim has a different scope and is “patentably distinct.”

    If they define “patentably distinct claims” in terms of non-obviousnness (i.e. claims in Application B must be nonobiouvs over Application A filed on the same day with the same inventor assignee), then this is STILL not clear.

    Must the claims in Application B be non-obvious over the CLAIMS in Applications A OR must the claims in Application B be non-obious over the SPECIIFCATION of Application A (i.e. the Applicant’s specification for Application B is used as a reference against claims of Application A for the 5/25 rule).

    Has the USPTO clarified this ????!!!????

    In any event, it would seem that this would seriously INCREASE the burden on the USPTO.

    Example – pre-rules, if claim 1 is allowable and claim 2 dependent from claim 1, there is no need for the Examiner to Examiner whetehr or not claim 2 is non-obvious over claim 1.

    UNDER THE NEW RULES – I put 25 claims in application A, and 25 claims in application B (which have different scope from the 25 claims in application A).

    Now the Examiner of Application A has to Examiner claims of Application B to determine whetehr or not each claim is non-obvious over the other disclosure (or claims). This is WORK for the Examiner.

    As an applicant, I will assert that the claims are NON-OBVIOUS over the other application – this is what I am asserting ANYHOW – this is whyh the dependenet claims are FALLBACK position. Execpt now I force the Examiner to work harder.

    BTW – if I disagree with the Examiner’s assertion of non-distinct, is this appealable or petitionable?? Does this stop the clock for Examination ??? Will I have a chance to fight for every claim possible in Application B as “patentably distinct” and then cancel those determined to be “patentably indistinct” or will I have a “take it or leave it situation”

    AM I SLOW OR IS THE USPTO BEING VERY VERY UNCLEAR WITH THESE NEW RULES ??????

    DENNIS, SOMEBODY – HELP !!!

  13. Do all comments on this thread get awarded “treble damages”?
    To test for triple entry,
    the above comment went to “Preview” then “Post.”
    This comment will go directly to “Post.”

  14. Blaise –
    You have a point, but I meant what I said about a single inventive concept. All of the examples I wrote of were patented in a single application. They were simply covering different aspects of the same invention. To be accurate, restriction requirements were issued, but I successfully traversed them. However, with the present rules, even if I did draft separate applications, the entire family (same inventor, same filing dates, substantially similar disclosure) is subject to the 5/25 rule, and if there are more than 5 aspects, I’m stuck. Some aspect of my inventor’s invention is going to have to go unprotectable or require huge outlays of money for the showing. This CAN’T be right

    As to what makes a patent important –
    I’ve prosecuted the tail end of patent families (appeals to the Japanese High Court) which when filed were, to the assignee (a major international electronics corporation) of relatively minor importance to one of their smaller businesses, but as technology developed ended up being incorporated into every VCR made. At the time of filing, it’s often hard or impossible to foresee what is important. Further, this company rarely litigated patents. They licensed their patents based on a thorough analysis of the patent, the competitor’s “infringing” goods, and reasonable terms. They made many millions of dollars more through non-litigated patents than the rare litigated ones. On the other hand, numbers like that are pretty much impossible to get, so using litigated patents as an indicator of importance seems reasonable.

  15. Blaise –
    You have a point, but I meant what I said about a single inventive concept. All of the examples I wrote of were patented in a single application. They were simply covering different aspects of the same invention. To be accurate, restriction requirements were issued, but I successfully traversed them. However, with the present rules, even if I did draft separate applications, the entire family (same inventor, same filing dates, substantially similar disclosure) is subject to the 5/25 rule, and if there are more than 5 aspects, I’m stuck. Some aspect of my inventor’s invention is going to have to go unprotectable or require huge outlays of money for the showing. This CAN’T be right

    As to what makes a patent important –
    I’ve prosecuted the tail end of patent families (appeals to the Japanese High Court) which when filed were, to the assignee (a major international electronics corporation) of relatively minor importance to one of their smaller businesses, but as technology developed ended up being incorporated into every VCR made. At the time of filing, it’s often hard or impossible to foresee what is important. Further, this company rarely litigated patents. They licensed their patents based on a thorough analysis of the patent, the competitor’s “infringing” goods, and reasonable terms. They made many millions of dollars more through non-litigated patents than the rare litigated ones. On the other hand, numbers like that are pretty much impossible to get, so using litigated patents as an indicator of importance seems reasonable.

  16. Blaise –
    You have a point, but I meant what I said about a single inventive concept. All of the examples I wrote of were patented in a single application. They were simply covering different aspects of the same invention. To be accurate, restriction requirements were issued, but I successfully traversed them. However, with the present rules, even if I did draft separate applications, the entire family (same inventor, same filing dates, substantially similar disclosure) is subject to the 5/25 rule, and if there are more than 5 aspects, I’m stuck. Some aspect of my inventor’s invention is going to have to go unprotectable or require huge outlays of money for the showing. This CAN’T be right

    As to what makes a patent important –
    I’ve prosecuted the tail end of patent families (appeals to the Japanese High Court) which when filed were, to the assignee (a major international electronics corporation) of relatively minor importance to one of their smaller businesses, but as technology developed ended up being incorporated into every VCR made. At the time of filing, it’s often hard or impossible to foresee what is important. Further, this company rarely litigated patents. They licensed their patents based on a thorough analysis of the patent, the competitor’s “infringing” goods, and reasonable terms. They made many millions of dollars more through non-litigated patents than the rare litigated ones. On the other hand, numbers like that are pretty much impossible to get, so using litigated patents as an indicator of importance seems reasonable.

  17. “Why would 40 claims be needed to claim an invention in such a way that it could be enforced against any conceivable infringer? You lost me.”

    You need several claims to compositions, several claims to the compositions that it go into (plants, animals, etc.), you then need method claims for each of these, and then you have to add all the dependents under each of these to cover your embodiments and give you some claim breadth for prosecution. Currently you would get a four or five way restriction – time will tell if you still get that, but I hope we do.

  18. Real Anonymous said: “the solution can’t just be stopping up or constricting the front-end of an industrial system that has been driven by free-market forces. That *can’t* have a good result on a free-market economy.”

    Excellent point. You can’t fight the market.

  19. The new changes to the patent system are being brought to you by the same ideologues who got us into Iraq.

    And the results are the same: the weakening of the United States.

    Jed Margolin

  20. The new changes to the patent system are being brought to you by the same ideologues who got us into Iraq.

    And the results are the same: the weakening of the United States.

    Jed Margolin

  21. The new changes to the patent system are being brought to you by the same ideologues who got us into Iraq.

    And the results are the same: the weakening of the United States.

    Jed Margolin

  22. MM: if we knew a priori that an invention was important, we’d definitely scour the art (even the little guys, b/c if it was really important then they could easily get funding). The problem is that at the time of filing, the importance may not be fully appreciated.

  23. C’mon KCB – that’s the best you can do? Pray tell, is there a Supreme Court case which disagreed with Calder v. Bull that ex post facto only applies to criminal cases? I certainly am not aware of any.

  24. Hey METOO!
    I counter your dribble with the following:

    Chase remains the only U.S. Supreme Court justice to have been impeached. His acquittal is believed to have helped ensure that an independent Federal judiciary would survive partisan challenge in the U.S.

    By the way his views on ex post facto legislation were in a seriatim opinion, i.e., not the opinion of the Supreme Court of the United States of America. While I do not know if he was on medication, his having the ignominious distinction of being the only Supreme Court justice to be impeached hardly makes him worthy of espousing the opinion of the Founding Fathers. At least it can reasonably argued that his views of the law were sufficiently repugnant to the requisite number of his peers during his career to get his arse in trouble.

  25. Bob Priddy mentioned prior art discovered in litigation that was “in sales literature published in Finnish in Finland.”

    Thanks! I’ll have to use that example when discussing the practical limitations of prior art searches and the risks of new art being found in litigation.

  26. “I don’t get the any conceivable infringer reference or what your point is. Look through a few chem pats published with 60 claims. Are they needed?”

    Not if they are anticipated or obvious if the independent claim is anticipated.

    “Maybe not but which ones does one leave out?”

    The invalid ones.

    “How many species are important?”

    I don’t know. If you can’t get a generic claim, then probably only the species you actually syntehsized and tested are “important.”

  27. “An object lesson for me was suceessfully litigating a patent we issued with 51 claims. All but 3 claims were rendered likely invalid by prior art not considered by us or the PTO during prosecution, but discovered during litigation by our litigation opponent (in sales literature published in Finnish in Finland). …”

    So here’s the rub on this. This “invention” was allegedly “important”. But virtually every embodiment of this “important” “invention” was previously disclosed by some earlier genius in Finland. I think I can safely say that I’m very skeptical that the remaining 3 claims would not be found obvious under KSR but perhaps the “magic” limitations in those claims were sufficiently bizarre or disparaged in the art that they would escape.

    “How, without knowing of the after-discovered art, would I have known which ones would survive and would not, and therefore which ones to have retained and omitted?”

    You couldn’t possibly know, of course, but your question answers itself, doesn’t it, and avoids the real issue: if you have a truly “important” invention, why wouldn’t you scorch the earth looking for prior art so as to prove to yourself that you have, in fact, actually invented something new? The answer is that you don’t have to if you can simply pay a relatively small fee and get a patent with 200 claims that include the “composition of claim ##, wherein said composition is near a kitchen sink.”

    But really, if you have an “important” invention, you should spend some serious change and get the best search that money can buy. Your litigation opponent evidently felt that it was important enough to do so and was forced to spend some money to do what you and the PTO evidently did not find it necessary to do.

  28. MM,
    “”Chem and bio cases may require more than 40.”

    Why would 40 claims be needed to claim an invention in such a way that it could be enforced against any conceivable infringer? You lost me.”

    I don’t get the any conceivable infringer reference or what your point is. Look through a few chem pats published with 60 claims. Are they needed? Maybe not but which ones does one leave out? How many species are important? Quite a bit of work to narrow the field.

    My experrience of 25 plus claims is mostly in sys/tronics/software and the typical 40 or so may not be essential. However, it may be quite difficult and time consuming to get it down to 25. I think this is a real and practical problem. It most likely can’t be appreciated by the USPTO management and some tough time in the trenches is needed to get a feel for the issues here.

  29. While I generally agree with Dennis with respect to his analysis, it is curious that Dennis effectively characterizes “important” patents as having a high likelihood of being litigated.

    In my opinion, patents having a high likelihood of being litigated are simply more “controversial” and are not necessarily more “important.” Unless one is in the tabloid business, “importance” is not synonomous with “controversy.”

    It’s troubling that the PTO is now in the business of suppressing controversy.

  30. In my prosecution and litigation experience since about 1960 on at least some patents on commercially valuable inventions, the pursuit of well over 25 claims in most patents has been prompted by a desire to stake out as many intermediate positions as possible between the broadest and narrowest claims. This has been the result of experience showing that, in most cases, even a combination of good U.S. and International patentability searches will not locate all of the pertinent art that will be uncovered in extensive validity searches by a determined opponent.

    An object lesson for me was suceessfully litigating a patent we issued with 51 claims. All but 3 claims were rendered likely invalid by prior art not considered by us or the PTO during prosecution, but discovered during litigation by our litigation opponent (in sales literature published in Finnish in Finland). Had I omitted some of the claims from the application, would the three that survived have been retained? And how, without knowing of the after-discovered art, would I have known which ones would survive and would not, and therefore which ones to have retained and omitted?

    I have often seen inventions whose value was not apparent, and where the most important embodiments were not apparent, until well after the FAOM. The new rules appear to force a decision on whether to provide an adequate complement of fall-back claims and incur the considerable expense of an ESD when it is not known whether the cost is justified.

    In “attending” the webinar yesterday, I was left with the conviction that the above uncertainty in combination with the cost of ESDs will impair, not improve, the protection of a significant but presently unquantifiable proportion of important corporate and individual inventions in years to come. The relief from mapping accorded some small entities does not appear to be a sufficient offset of the burdens being created. As often happens, regulations adopted by governemts with good intentions actually harm the interests they are said to promote, or create other unintended problems.

    Echoing a comment by someone else earlier this week, I’ll definitely be trying to use definitions and descriptions in the disclosure to take the place of claims previously presented only for purposes of claim differentiation. Not sure this will significantly reduce the number of claims or the work of Examiners, but will obviously try additiobnal ways to economize on claims.

    I suppose a PTO official reading this will be tempted to say “See, our new rules are having a beneficial effect on practitioners already”. Based on my experience, the PTO will probably be successful in reducing the number of claims proecuted, with a damaging effect on the ability of patents on valuable inventions to survive litigation.

  31. Medical devices, classes 607 or 623, 46% exceeded 25 claims 2002-2006

    Pharma,classes 424 or 514, 43% exceeded 25 claims 2002-2006

    Biotech,class 800, 47% exceeded 25 claims 2002-2006.
    ———————

    So is there a chart where we can see how the number of *filed* and *issued* claims is actually distributed? I’m curious as to whether there is a detectable “dropoff” after a certain number in either filed applications or claims, or if it’s just a long tail reaching out to 300 claims or something sick like that.

  32. Real anonymous, I’m warning you. We know who you are. We’ve reconfigured the internet trunks so that all packets to and from the Patently-O server cross over British soil where they are continuously monitored. Lay off of Mooney!

  33. “Assuming $10,000/application requiring detailed searching and examination support patentability opinions, assuming only 100,000 of 300,000+ applications filed annually in the US will trigger the requirementthat adds $ONE BILLION in added costs to the patent applicants. To put that in perspective, the Bush administration budget proposed $1.8 billion for 2008 for the PTO.”

    But, but, but… that can’t be. OMB said of the rule changes:

    “ECONOMICALLY SIGNIFICANT: No”

  34. “That said, Dennis’ quickie little data analyses are almost always good conversation starters.”

    Malcolm, yes, for those who like to talk they would be very good conversation starters. That said, Dennis, Keep ’em coming!

  35. Alun Palmer writes “OTOH, I think more people will go to 5/25 who might have stopped at 3/20.”

    I agree. Thus, PTO may actually be making more, not less, examination work for itself.

  36. The following is a note published by Roy Zimmermann of Medtronic in a patent searchers’ discussion group:
    WILL THE NEW SEARCH RULES IN THE CONTINUATION PACKAGE COST BILLIONS?

    The just published PTO rules, 72 FR 46716, Changes to Practice for Continued Examination Filings . . . And Examinations of Claims in Patent Applications, page 46718, states: “Under the changes being adopted in this final rule, less than eight percent of the applications filed in fiscal year 2006 would have required either the cancellation of one or more independent claims or an examination support document. In addition, less than twenty-five percent of the applications filed in fiscal year 2006 would have required either the cancellation of one or more dependent claims or an examination support document.”

    That is, up to one third of applications filed in 2006 would have required an extensive prior art search and examination support document analysis unless they cancelled claims to be either fewer than six independent claims or 25 total claims.

    Considering that between 300,000-400,000 applications were filed at the PTO in 2006, one suspects that more than 100,000 of them would either have had to reduce their claim sets, or would now trigger the search and examination support document requirements.

    That’s according to the PTO. I thought I’d like to see how commonly US Pre-grant Published Applications have exceeded 25 total claims since the US began publishing applications in 2001. Here’s what I found for 2002-2006.

    Searching in IFIPAT on STN, where number of claims are range searchable, and published apps are a defined file segment, I found 1,288,664 published applications in the US, 2002-2006. Of those, 372,879 had more than 25 claims, or 29%. That is across all technology areas. Given how differently pharma, med devices, biotech are responding to the proposed Patent Reform Act of 2007 compared to computing/semiconducting manufacturers, I thought I’d see how the overall compares to medical devices, pharma, and biotech.

    Medical devices, classes 607 or 623, 46% exceeded 25 claims 2002-2006

    Pharma,classes 424 or 514, 43% exceeded 25 claims 2002-2006

    Biotech,class 800, 47% exceeded 25 claims 2002-2006.

    Thus, starting November 1, 2007, unless a substantial change occurs in claims drafting to create fewer claims/application, one can see a HUGE INCREASE in detailed patentability searching, along with extensive prior art distinguishing and enablement analyses, will have to happen. Will it be FREE?

    I think not. When did it become politic to impose unfunded mandates again?

    Assuming $10,000/application requiring detailed searching and examination support patentability opinions, assuming only 100,000 of 300,000+ applications filed annually in the US will trigger the requirementthat adds $ONE BILLION in added costs to the patent applicants. To put that in perspective, the Bush administration budget proposed $1.8 billion for 2008 for the PTO.

  37. “Chem and bio cases may require more than 40.”

    Why would 40 claims be needed to claim an invention in such a way that it could be enforced against any conceivable infringer? You lost me.

    As has been pointed out above, a lot of time and money is spent in biotech drafting so-called “kit claims” that add very little to the value of the case. I mean, throw in one if you have to, but dependent claims talking about a spatula, instructions, the color of the packaging, etc. Mostly worthless. There is a “traditional view” that these sorts of claims are “easier to enforce” than method claims but (like so many other patent prosecution fables), I’m not aware of any facts (e.g., a well-considered analysis of the relative success rates of asserting method claims versus kit claims) that support this view.

  38. “It seems many of the very bright patent practitioners that post to this site are missing Mr. Crouch’s fine, yet simple point. … he’s saying that patents that are litigated are, one would think, more likely to actually be worth something to the litigants, and thus are important. The fact that litigated patents have more claims seems”

    My point and the point of other commenters above was that what “seems” to be the case is not, in fact, necessarily the case.

    If you want to argue that Dennis proved that “important” patents issue with more claims than “unimportant” patents, go ahead. I don’t think you can do that without engaging in a bit of circularity.

    That said, Dennis’ quickie little data analyses are almost always good conversation starters. Keep ’em coming!

  39. I think Mr Caracappa and BabelBoy each have valid points. A lot of dependent claims are trivial, and these will disappear in apps that need five claim sets to cover infringers. Where the extra work comes in is that prosecution will involve more pulling limitations from the spec and less incorporating dependent claim that may not be there anymore. OTOH, I think more people will go to 5/25 who might have stopped at 3/20.

    The ESD rules seem to involve about the same amount of work as writing a new app, and even with the simplified ESD for small entities it will be completely prohibitive for them, whereas just _almost_ completely prohibitive for large corporations.

    However, the real sting in the tail is when you have to file one because you have 25 citations, as we have been threatened with in the proposed IDS rules. Maybe this rule will be softened, or maybe soon we will hear “Please abandon the application, because there are too many citations”.

  40. Justice Chase in 1798: “The restraint against making any ex post facto laws was not considered, by the framers of the Constitution, as extending to prohibit the depriving a citizen even of a vested rightto property.”
    Justice Iredell (concurring): “Still, however, in the present instance, the act or resolution of the Legislature of Connecticut, cannot be regarded as an ex post facto law; for, the true construction of the prohibition extends to criminal, not to civil, cases.”

    I wonder what medication those guys were on back in 1798.

  41. The whole package is so arbitrary. Having been on the inside and having practiced for many years, IMHO, this will not help the system in any way. It all certainly makes quite a bit of busy work.

    There is no doubt that some apps need the extra claims. Systems, electronics, software and some process cases often require 40 or so claims. Chem and bio cases may require more than 40. Mech cases often don’t need 20.

    This entire business is a foolish waste of resources by ignorant newcommers that certainly don’t understand the big picture.

    I could never vote for a socialist but the pres has made some of the worst appointments and I regret that I voted for him.

  42. KCB, did you ever stop to think that even Rehnquist was not so powerful that the decision you refer to was his, and his alone? Also, I knew Rehnquist was on the Court for a long time, but I never knew he was on it when Calder v. Bull was decided (hmm…when was that…of yeah…1798) You lose credibility day by day, my friend.

  43. We can all thank Chief Justice Rheinquist for this mess. In the mid-1980s, when he was one back medication, he authored an opinion that was in complete contravention to established U.S. history. He stated that the ex post facto prohibition applied only to criminal law. Now these public servants think they can change the rules whenever they want. For example, not more than 8 years after that sad decision by Rheinquist, Billy-Jeff Clinton promulgated the first retroactive tax increase in the history of the United States. He was undoing the tax breaks of Bush 41. Can you imagine what the next democrat with do with Bush 43’s tax breaks? What we have here is another example of retroactive effect of legislation. This must stop. We are in a struggle for nothing less than Freedom. Can you imagine what can happen to our national character if we allow government agencies to retroactively apply rules? We might as well return to have the Crown of England be the head of our country.

  44. I seem to recall an article a few years back in the AIPLA Quarterly Journal which argued that patents with more claims are, satistically speaking, more valuable in that they are less likely to be invalidated. The research showed, if I recall correctly, that the majority of patents which are maintained through their entire stutory terms have well more than 20 claims.

  45. The 5/25 rule will actually increase the total number of claims submitted to the PTO vis a vis the 3/20 rule.

    That’s because human nature being what it is, and it ain’t much, everyone tries to get all they can before the next penalty kicks in. The micro-economists have a term for this behaviour: greed. So now non-big entity applicants will look right past the “old” 20 limit and think, “I can push the 25 envelope” for just an extra $100, and the “basement bargain” light goes on.

    It would be very helpful, Dennis, if you would run the same bar charts for applications above and below 20 so we have a baseline. This time next year the applications over 25 may (or may not) drop, but the percentage of applications between 20 and 25 will increase substantially. What the PTO is doing is practically insuring an increase in total number of claims filed by 20-25%.

    BabelBoy

  46. I agree with David. Often, it is not possible to write a disclosure on a system invention without needing to disclose all aspects. Typically, there is only one invention, but it is desirable to draft the claims to target the potential infringers. Sure, I can draft a single system claim, but who wants to sue an enduser? Drafting claims by focusing on potential infringers is why I usually have more than 5 independent claims in my apps.

  47. “A 10% reduction in examiner workload is irrelevant.”

    I don’t think a 10% reduction in examiner workload is irrelevant, but if that 10% reduction comes at an expense of, say, a 20% increase in applicant workload (getting currently pending applications in shape) and/or a 10% reduction in the property value obtained by the applicant, then you will have had external factors that should have been entered into the equation, but weren’t.

    Something certainly does need to be done about workflow management at the USPTO (which includes, in my view, lessening the load on the examiners, providing them with better tools to do their work, and increasing their worth/reward, unless of course we’re heading to a registration system), but the solution can’t just be stopping up or constricting the front-end of an industrial system that has been driven by free-market forces. That *can’t* have a good result on a free-market economy.

  48. David,

    I would think that presenting a set of claims as indicated above would basically be begging for a restriction by an examiner. In my experience as a patent searcher patent claims to different statutory classes as you have suggested lack unity and often require divergent prior art searches and different applications of prior art. You would propably be better off drafting different applications focusing on the specifics pertinent to each set of claims.

  49. We need to think bigger.

    Limiting the number of claims in a patent application to 25 will have no measurable impact on pendency or quality.

    As Dennis points out, only 18% of the roughly 3000 nonprovisional patents issued last week had more than 25 claims. Even if all of these high-claim-count patents had been cut off at 25 claims, then the TOTAL number of claims examiners would have had to process would have been reduced by only 10%. (54,000 claims to 46,000 claims)

    A 10% reduction in examiner workload is irrelevant. It’s not going to get our clients their patents any faster. What we need is a 10X INCREASE in examiner PRODUCTIVITY if we are going to have any sort of meaningful patent reform. The only program that I’ve seen that has a glimmer of hope of achieving that kind of performance improvement is the peer to patent trial currently underway.

  50. First, I don’t think 5/25 is enough claims. I have cases where there are three or four categories of inventions, all linked as a single inventive entity: (1) a composition, method of making, method of using, device made from composition, product by process; (2) apparatus for mounting A on B; apparatus A ready to mount on B; apparatus B ready to receive an A; method for making A; method for making B; method for using A and B; method for using A on a B; method for using B with an A; kit for making A; (3) communications system with receiver and transmitter; a receiver; a transmitter; method (SW?) for using system; method (SW) for using receiver; method (SW) for using transmitter; media carrying SW for receiver; media carrying SW for transmitter; media carrying SW for system. All of these are real applications I’ve drafted and prosecuted, and all deserve coverage without a horribly expensive showing.

    A second observation is that this will kill small inventors. Large companies will hold their noses and authorize huge quantities of money to generate whatever showings and other documents they need to file more than the 5/25 claims. A small inventor will simply give up some coverage which they truly deserve because they can’t afford the expense. I think the big companies all got together and agreed to all say the same PC things to push this monstrosity through. There’ll be a lot of champagne drunk in the board rooms in November this year. “We’ve finally gotten rid of those pesky little guys!”

    Having criticized, I have a suggestion to solve the problem. It looks as if the PTO is looking for an average of 5 supporting dependent claims per independent claim. So my suggestion would be to allow one independent claim for each inventive category (as in my examples above) with 5 dependent claims per independent claim as of right (allocated however the drafting attorney/agent thinks fit – I’m talking only the total number of claims). I’d also like an increase in the number of dependent claims per independent claim, but I could live with 5. This is not as easily policed as the present standard, but would allow all categories in an invention to be protected without an horrendous increase in expense for a showing.

  51. I recently read that 40% (50%) of patent filed with the US PTO origninate outside the US. Most of these patents are filed with fewer than 25 claims. I think the 5/25 will have greatest impact on US companies and inventors.

  52. “Wasn’t Denis trying to highlight that there are lot of contentious patents which will be affected – this isn’t a side issue…. Thus reducing claims may lead to less litigation as a result of more clearly defined claims.”

    Contentious patents? Are you so anti-patent that you could work for USPTO management? What other reason would an applicant seek a patent if not to enforce it by litigation if necessary, to hang it on a wall perhaps? This is the kind of ignorance I would expect from USPTO management or from a scholar who knows less than he thinks. Help me here, is it wrong to litigate a patent, or do you think competitors will always acquiesce to licensing patents with “clearly defined claims”? Your comment shows a complete lack of both patent experience and patent expertise.

    Wow, this thread has a high proportion of USPTO-troll-like postings…. gee, I wonder why they are coming out now? (No, not really.)

  53. It seems many of the very bright patent practitioners that post to this site are missing Mr. Crouch’s fine, yet simple point. He is not saying that more claims necessarily equals more importance. Rather, he’s saying that patents that are litigated are, one would think, more likely to actually be worth something to the litigants, and thus are important. The fact that litigated patents have more claims seems to indicate that the new rules have a disproportionate impact on large companies and prolific inventors that, quite simply, need a large number of claims to adequately protect their hard earned inventions and distinguish their inventions from competitors. Anyway, back to SRRs and ESDs …

  54. I think the 4400 figure has been misinterpreted by a few commenters. Wasn’t Denis trying to highlight that there are lot of contentious patents which will be affected – this isn’t a side issue.

    Of course, there is also an argument be that the more claims, the more contentious a patent is, since the ratio of patents with >25 claims litigated is higher than would normally be expected. Thus reducing claims may lead to less litigation as a result of more clearly defined claims.

  55. Seriously, all that information is meaningless. Just because you can generate data does not mean it has meaning.

  56. Has this guy Lemley written/prosecuted any applications? His statement is pure bullshi*t! In the technological field I work in, which is not arcane in any respects, 35-40 claims at the time of filing would be common to capture all prospective commercial embodiments. Some of these pan out, some don’t. But in this business you are damned if you do and especially damned if you don’t. This claim number limitation has many liability issues attached!

  57. Come on, according to the esteemed preeminent patent scholar Mark Lemley…”The idea that this would be any sort of significant restriction on patent owners is ludicrous to me. It will affect 10 applications a year, maybe 50, out of 450,000.” And thanks Patent Prospector for pointing out once again that Professor Lemley is a fool or a tool…heck, he’s both. link to patenthawk.com

  58. If they had only picked a more reasonable number, say 50, instead of 25, I wouldn’t have so many objections. [Reminds me of Dragline counseling Luke about the number of eggs he announced he was going to eat.]

    When claiming electrical/computer systems, methods and software, it is often difficult to come in under 25 claims and feel comfortable. However, I also believe it is relatively rare that the total exceeds 50 claims.

    The number 25 triggers so many problems, and similar ones are coming our way with the new IDS rules.

    Mr. Dudas, amend these rules!

  59. And speaking of people named John whose last name begins with the letter D, I was disappointed to see that John Doll’s entry at Wikipedia is seriously lacking: link to en.wikipedia.org Of course Jon Dudas’ Wikipedia entry reads like it was written by his mom: link to en.wikipedia.org (although Wiki does indicate that some of the opinions on Dudas “need balancing”)

  60. TJ, have you found anyone yet that thinks the new rules are a “good thing”? (and Malcolm doesn’t count – although I’m not yet certain if Malcolm likes the new rules – heck, I’m still trying to figure out if Malcolm’s real name is John and his last name begins with the letter D)

  61. LL’s third paragraph hits it on the nose. (Note it’s also the only paragraph based on actual observation instead of speculation, and reflects a common-sense appreciation for the econmic drivers for the whole process.)

    Each claim is a little insurance policy against error, sneaky infringers, overlooked prior art, etc. The more valuable the underlying asset, the more carefully I insure it.

  62. Forgetting the rule package itself, for a minute, the stats given are almost meaningless (no disrespect intended). They are without real context, so they can not be analyzed properly.

    In line with what a previous posted said, the greater number of claims in an issued patent, the greater chance of litigation of some sort. This would be due to many factors. Claims of different scopes allow the claims to be read on that many more possible other “inventions”. More claims means that there is a greater chance of error in some claim(s), due either to examiner or applicant/lawyer error. This can be a “buried” broad independent claim that go thru or a new claim that really didn’t have original support, for example. Easier to miss these if there are 100 claims than if there are 5/25 claims. A lot of claims may mean that there is more than one invention being claimed. So, a lot of reasons can lead to cases with lots of claims going to litigation. It can also make a different if the litigation was instigated by the patent holder for infringement or a 3rd party trying to invalidate the patent (true, often both happen at the same time, but you know what I mean).

    Also, I would guess (not a prosecuter, myself) that if an applicant “knows” that a given application is likely to be very significant (i.e., important inthe field & able to collect a lot of royalties from it), they will try to load up as many different claims in as many different variations and permutations as they can afford so that if some claims get invalidated during litigation, they can still have others to claim infringment against. Based on these types of cases that I have examinered, they have followed this course, anyway.

    Another source of cases with large numbers of claims is the proverbial “submariners” and “patent trolls” who appear to figure that if enough claims are thouwn at the examiner something “useful” will get thru. Another little thing that will skew the stats some.

    As for the percent of issued patents with more than the 5/25 claims, a more useful stat would probably be how many claims those same patents had at filing, as well at a max during prosecution. You will probablysee a much higher % that is greatrer than the 5/25 than 18% or 27%.

    thanks,

    LL

  63. “A troubling aspect of the new rules is their potential to have a disproportional impact on valuable patents.”

    Dennis, this depends on whether you think the new rules are a good or bad thing. If they are a good thing, the lack of limits (i.e. unlimited claims in unlimited continuations) is “troubing in its disproportionate impact” on competitors who are sued on valuable patents.

  64. “Malcolm, you’ve never prosecuted a patent (or if you have, I’d love a chance to work on it).”

    LOL. I know of a patent right now with less than 25 claims that may be worth hundreds of millions of dollars. Would more claims make that patent more valuable? Nope.

    But better claims would.

  65. It would be helpful to know how many patents issued
    between January 1, 2002 and August 1, 2007. Is it 35% of 4400?

    Am I understanding this correctly: In one week 3000 utility patents issued? How can that be? If that is true, then the 4400 number is very low. Is this approximately the regular number of patents that issue every week?

    Please clarify.

  66. Just a thought…it appears that the 5/25 and ESD will cause many applications to go ABN. For example, if an applicant has a family of 5 or more applications each with one or more independent claims – the applicant will be forced to cancel claims inorder to avoid the ESD. Which claims/applications to let go…hmmm. The retro aspect of these new rules is very problematic for complex family trees. I dont have any client’s that would be will to spend the $ to prepare ESDs in all of their cases. Your thoughts?

  67. “I don’t think the number of claims is meaningfully related to the “importance” of the patent”

    Malcolm, you’ve never prosecuted a patent (or if you have, I’d love a chance to work on it).

  68. I’m not sure if you can say more claims = more valuable based solely on the research above. (although its an intriguing possibility). For instance, one would need to to look at plaintiff/defendant sucess rates and payout amounts based on patent claim number to determine whether they were more ‘valuable’ (larger damage awards, greater chance of litigation sucess) or simply more ‘litigated’.

    Also, consider checking for a correlation between entity size and claim number. I suspect many independent inventors may file with only one or two picture book claims which may be easily worked around, or else are clearly infringed (higher settlement chance, and thus less litigated).

    Other possibilities also exist. For example patents with a large number of claims may be inhereintly less likely to be licensed at an early stage( no one is willing to invest the time or money to understanding their actual scope) and thus more likely to be litigated, even if they have the same value at the end of the day.

    Another way to consider the value of these patents may be to correlate annuity payments with claim number. Are patents with more claims more likely to be maintained?

  69. “Important Patents: Approximately 4400 of the patents issued between January 1, 2002 and August 1, 2007 have been involved with some type of patent litigation. 35% of these “important” patents have more than 25 claims. ”

    4400 is what percentage of all issued patents in that period?

    I don’t think the number of claims is meaningfully related to the “importance” of the patent, except that the more claims there are in a single patent, the more likely it is that one claim from that patent is going to be litigated versus, say, one claim in a patent with only two claims. I think this has less to do with the “importance” of the invention than it does with simple math.

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