In addition to a reduction in the number of patent applications being filed, we are also seeing a reduction in the number of claims in each issued patent. All things being equal, patents with more claims are typically deemed more valuable. The reduction in claims is likely associated with cost-cutting measures taken by patent applicants.
The Chart below is based on a random sample of 22,000 issued patents.
“The reduction in claims is likely associated with cost-cutting measures taken by patent applicants.”
I disagree. It is more likely associated with the more frequent use of restriction/election requirements by examiners.
“So, you’re one of those examiners who is quite overzealous in their restriction practice? Gee, I’m shocked. It’s all a big game of “gotcha!” to you.”
Who said that?
Although it probably does appear to be a game of “gotcha” to certain ignorant prosecutors. Once they have been educated they get along just fine as do the legions of others who practice in our art.
Old hands in our art know how to draft claims so that they are restriction proof and they know they have the option of doing so if they so choose. Otherwise they’ll figure there will be a restriction, which is fine by them since they already know it is coming.
Certainly there is no need for me to remind you that nobody makes you file independent and distinct inventions in one application bucko. And don’t blame others for your own tomfoolery.
“…as a relief from the thinking I have to do”
And here I thought you posted in order to learn – silly me.
Noise: No.
The other way? You try it if you like. And see how far it gets you in Europe.
This blog is for fun, as a relief from the thinking I have to do, at work.
MaxDrei,
Try the other way (hence leaning on the word INdependent); that is, outside one of them does NOT equal outside them all; but rather, each and every independent claim gets its own turn at bat.
As to Malcom’s observation of “As a practical matter, large numbers of claims often create issues during claim construction that are not capable of resolution in favor of the patentee.”
…do you really want to take an Office worker’s advice on either prosecution or litigation (especailly Malcolm’s)?
…especially as the reason proffered at the end (not trying to be especially thoughtful) is a killer of ANY strategy and not just a “claim more’ strategy?
MaxDrie – is it time for a “wake-up and think” call?
Heavenly contribution from MM. I have often suspected that, over here in Europe, it’s a case of
“The More the Merrier”,
by which I mean.
“The more independent claims, the merrier the infringer”
by which I mean
that he has more chances to bring the court to a view that the scope of protection is no more than the subject matter that is common to all those independent claims”.
In other words, outside one of them = outside them all.
Comix: More does not equal better.
But does more equal worse? No.
Ideally, an issued patent has claims that are high-quality (whatever that means).
But once quality is ensured, what’s wrong with going for quantity? Very little downside I can see, really only potential upside.
As a practical matter, large numbers of claims often create issues during claim construction that are not capable of resolution in favor of the patentee. For example, I recall one very aggressively prosecuted case with reams of new dependent claims added during every Response. Well, wouldn’t you know that one of those dependent claims recited an old element that unquestionably rendered the broader independent claim anticipated (whereas, without the dependent claim, there was at least a colorabe argument available that the broad term in the independent claim did not include the old element)?
Claim differentiation becomes a greater issue as well. Granted, it’s a two-way street but in most cases the patentee was simply grabbing “more” and not trying to be especially thoughtful about it.
Since most patents turn out to be worth nothing (actually less than nothing, once you take all the fees into account), 20 or fewer claims per patent should suffice in most cases.
Draconian restriction policies is making me prosecute fewer claims.
“Although, on my own docket it seems like there are usually less claims left after restriction than there used to be.”
So, you’re one of those examiners who is quite overzealous in their restriction practice? Gee, I’m shocked. It’s all a big game of “gotcha!” to you.
Btw, with your attitude, you will never ever get a law firm job. Although, sadly, with your attitude, you will probably become a SPE some day and be a royal pain to applicants everywhere.
The drop in the number of claims at filing was already observed in the article “Patent inflation in Europe” (link to dx.doi.org ). Indeed, figure 7 shows the average number of claims in published US applications of US origin and EP second filings originating from the US by year of filing at USPTO. It is a clear evidence of the changes in the drafting behaviour determined by the US patent fee policy.
Single: a claim is a ring fence around a protected area. I see nothing wrong with using dependent claims as fall-back positions (is that not their purpose?). By fall-back positions I mean successive fences, each one wholly inside the perimeter of the antecedent claim, providing the Emperor with successive further rings of protection, if the outermost fences fall to prior art attacks. At the centre, there’s just one Emperor. At the perimeter there’s just one area protected. EPO-style claims protect just one invention.
Now you, please.
And Noise, I have forgotten all that you say you “taught” me. You’re right yet again.
And folks, in Europe M+F means what it says, and delivers the widest protection possible. With Art 69 EPC there to help the patent owner too, she don’t need more than one independent claim in each category (product, process, apparatus, use, dosage form etc etc).
Other than all that, take a look at the Patent Prospector blog for a thread on the Restaurant v Oilmatic litigation. Pure entertainment, I guarantee you.
Noise,
if you can also give the same teaching you gave Max Drei to Examiners (especially in the biotech area), may be then my clients would become more happy.
single invention,
MaxDrei has purposely forgotten the lesson I taught him on why such multiple idependent (and dependent) claims do not violate his fanciful thinking. He sometimes slips back into a let-me-throw-crap-at-the-wall-and-see-what-sticks posting mode.
I liked your posting, Comix
Max said “, Do you not have in the USA a requirement that each app is limited to a single invention? If so, how can different feature combinations, presented in a plurality of different independent claims, constitute a single invention”
Since dependent claims stand on their own too, how can you even have dependent claims. According to your logic, it should just be a one claim application. (Not even an apparatus and a method claim)
I can admit my weak points. You should try the same Ms. I-can’t Read Worth-a-dam.
“And I wouldn’t say gloating, although it may be that I’m here for awhile. Precisely because of those “ordering problems”.
F logic games.”
oh really, gosh i am SOOO surprised.
/sarcasm off.
“… and settle for a less awesome school …”
ROFL.
“Gee, it wasn’t that long ago that you were crowing about how you were going to pick up a sweet-paying gig at a law firm that would also sponsor you for law school. Now you’re gloating about your job security. What happened – did those ordering problems on the LSAT practice tests turn out to be too difficult? Or was it the reading comprehension part?”
That was before I decided to try to go to GW instead of somewhere like Catholic. If I get into GW I’m certainly not going to have a job during school. Although hopefully the job as I got out would be the awesomez and maybe help out with the payments. Or, on the other hand be paying so much that it wouldn’t really matter to me.
And I wouldn’t say gloating, although it may be that I’m here for awhile. Precisely because of those “ordering problems”.
F logic games.
On the other hand I might just bite the bullet and settle for a less awesome school, and maybe also be able to keep the job as a result. It’s just hard to do when it is GW we’re talking about. I mean come on, have you been there?
“And in the later event, it’ll still be 2+ years before we get layed off.”
Gee, it wasn’t that long ago that you were crowing about how you were going to pick up a sweet-paying gig at a law firm that would also sponsor you for law school. Now you’re gloating about your job security. What happened – did those ordering problems on the LSAT practice tests turn out to be too difficult? Or was it the reading comprehension part?
“Correct me if I’m wrong people, but isn’t that the first clue at the office that you’re about to get sh*t canned?”
You’re wrong. You stand corrected. The only indication that I’m about to be fired will be my messing up badly on the PAP, or filings going down by about another 50k. And in the later event, it’ll still be 2+ years before we get layed off.
What are the downsides to more claims during prosecution?
(1) Claim fees?
(2) You might irritate the Examiner?
What is the downside to having more claims issued? I can’t think of any. (You have a moment or two of trouble deciding which claims to sue with, because they’re all so good?)
More does not equal better.
But does more equal worse? No.
Ideally, an issued patent has claims that are high-quality (whatever that means).
But once quality is ensured, what’s wrong with going for quantity? Very little downside I can see, really only potential upside.
any organization willing to spend that much more money on a lot of extra claim fees must think they have an important invention for which they are also probably willing to spend more on the application’s preparation and prosecution to get valid broad claims
Or they just want a lot of claims because, like a small child in a candy store, they believe that “more = better.”
2 things:
“The reduction in claims is likely associated with cost-cutting measures taken by patent applicants.”
Unusually bold statement from Dennis, and equally unusually, no supporting evidence offered therefor. Sorry Dennis, but basically useless.
And Windy City, I recently prepared a non-infringement opinion on a patent having over 50 claims. The patent was a mess, but the fact that there were over 50 claims made it even more of a mess. Grief. I ended up suggesting to the client that he cap my fee, so that only the best arguments were discussed and evaluated.
The fee was capped, the opinion was prepared, and everyone was happy. He settled out of court.
Yes, there is “data showing that “patents with more claims are typically deemed more valuable.”
That should not be surprising, since any organization willing to spend that much more money on a lot of extra claim fees must think they have an important invention for which they are also probably willing to spend more on the application’s preparation and prosecution to get valid broad claims, if they can, and as noted, it may be harder to avoid or invalidate all the claims. Also, unfortunately, the applicant may get an examiner who does not appreciate and adequately examine significantly different or broader claims after claim 1, leading to claims more likely to be infringed by someone if the technology becomes commercial.
Is the data showing that “patents with more claims are typically deemed more valuable” strong? Because it doesn’t seem intuitive to me.
“less claims left … than there used to be”
Correct me if I’m wrong people, but isn’t that the first clue at the office that you’re about to get sh*t canned?
I once wrote an app with 200 claims – at the client’s request. Needless to say, the application (and the underlying technology) was deemed “valuable.”
” I don’t think the new rules package explains the drop beginning in 2005.”
In 2005 it was probably just a statistical outlier. The trend only gets going after 2 years. But remember guys, this is claims in issued patents, not submitted apps.
Although, on my own docket it seems like there are usually less claims left after restriction than there used to be.
“I chuckle at the thought of someone writing a non-infringement opinion or invalidity opinion,”
That’s how you know when you’ve become evil.
“preparing for the new rules back when they thought they were going to go into effect”
The 5/25 and 15/75 claim count rules came up late in the new rule cycle. Those rules were not in the original rule proposal which used examination of 10 representative claims. I don’t think the new rules package explains the drop beginning in 2005.
Windy, Do you not have in the USA a requirement that each app is limited to a single invention? If so, how can different feature combinations, presented in a plurality of different independent claims, constitute a single invention. Searching the single invention defined by that plurality of independent claims must be a nightmare, as you observe.
Corollary: in the EPO the invention XYZ is a single invention, whether expressed as the method steps of X-ing, Y-ing and Z-ing or the apparatus features of means for X-ing, means for Y-ing and means for Z-ing. So, independent method and apparatus claims can co-exist as different aspects of a single inventive concept.
Me, I think it’s a shame that the USPTO can’t just search ultra-simple XYZ.
I think it had more to do with the large increase in U.S. fees for claims in 2005 – a fee for each independent claim in excess of 3 of $200., and a fee for each claim in excess of 20 of $50.
I usually discourage my clients from filing large claim sets (40+), although occasionally there are good reasons for doing so. For example, the invention may have a significant number of alternative embodiments, and each embodiment may be similar enough that there is a decent chance that they may not receive a restriction requirement.
When we file a large claim set, I chuckle at the thought of someone writing a non-infringement opinion or invalidity opinion, especially if each independent claim has a different feature.
Mr. Judas,
…or perhaps not “likely lead to”, but rather are the result of actual restrictions – note that the data is for claims per issued patent.
“patents with more claims are typically deemed more valuable”
jist cause we all think it’s so don’t make it so.
Other factors may include applicants preparing for the new rules back when they thought they were going to go into effect, or that applicants are starting to realize that filing the really high claim counts, say 50-100+ claims, will likely lead to an election/restriction.
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