Patently-O TidBits

  • ScreenShot024Foreign Patent Applicants and the New Rules: Based on the set of 2992 patents that issued on August 21, 2007, it seems likely that the PTO’s new claim filing limits will impact US applicants at a much greater rate than it would foreign applicants. Patents ever_assigned to US corporations are more than twice as likely to issue with more than twenty five claims than patents ever_assigned to foreign corporations.  Even more pronounced within the study, US owned patents are more than three-times as likely to have more than twenty-five claims than are Japanese owned patents.  (Ever_assigned patents are patents that have been assigned at least once to the referenced group.) (See side graph)
  • Niro v. Jackson: The famed Niro firm recently filed a declaratory judgment action against its former client alleging patent invalidity.  Niro wants the patent found invalid so that the firm can avoid malpractice charges arising out of patent infringement litigation. NiroVJackson.pdf
  • Quanta v. LGE: The Solicitor General supports Quanta’s petition for certiorari covering the first sale doctrine and contractual limitations of patent licensing. [QuantaCVSG.pdf (110 KB)][Background]
  • Race Specific Patents: Shubha Ghosh (SMU) has an interesting new paper examing patents that claim race-specific inventions. US Patent No. 6,465463, for instance, claims a drug with improved tolerence “in a black patient.”  Professor Ghosh argues that racial categories should be excluded from patent claims and from any nonobvousness analysis. [Read the Paper Here]
  • Patent Law Jobs: New Jobs in Chicago, Atlanta, Oregon, Missouri, Cambridge, Denver, and Maryland.

40 thoughts on “Patently-O TidBits

  1. 39

    Mr. Katznelson is right.

    It is actually worse if you believe that government essentially works based largely on it’s ability to tax.

    At the very least government sanctioned exclusionary rights (“patents”) are very powerful property rights that cannot logically be predicted (what is a good patent?) or we could simply write them and sell them from the back of a truck. “Hey, seen any 7,123,0XX??”

    Registration system or compulsory licensing schemes, how far and in what direction is going to be interesting with Congress and the Courts sure to have their own opinions about who gets the extra taxes…

    How the tax (filing fees) gets appropriated and by what measure is very arbitrary to begin with — how much is the cost of a “necessary but not sufficient standard” for basic search to contemplate anything such as an ESD– and the manner in which applications are examined.

    The irony is that the patent office mostly pays for itself and now it will literally be paid for by the folks who are behind the actual rule changes. It is a terribly shift in public policy which will swing folks to other forms of property: trademarks next?

  2. 38

    Mr. Katznelson observed, “On the other hand, if ESDs are to be filed only in a small minority of cases, how would patent quality change in any material way?”

    No kidding. The USPTO also said that continuations had a “crippling” effect, yet said that the new rules would only affect a small number of cases.

  3. 37

    Thanks Ron and DJF.

    I hope the courts will not.

    I understand the imbalance when forced with the choice of either giving up property or filing the ESD. We’ve been keeping them within the 5/25 limit so far, and we have had little time to discuss even the nuts and bolts strategies with so much in the pipeline.

    However, I am pessimistic about this going away. If-when reform passes in Congress, the cost of doing business with the PTO will soar like an Eagle, with much less value given in return. Examiners will be forced to at least double thier unit/hr work ourput, we will be filing more applications to avoid EDSs, and when we must file one of those documents, it will cost a bundle. In the end, there will be a net decrease in quality unless the applicant take it upon himself to pay for a decent search. So, the PTO will become richer, with highly paid examiner sweathog clerks.

    $$$ The PTO gets what they want $$$, and the big corps get what they want.

    It’s all about money.

    About ten years ago, I believe under Lehman, PTO management and the examiner union were discussing a similar quasi-registration system where searching would be outsourced and a particular limitation placed on the number of claims. That died quickly, but it is interesting there was no core-wide backlog problem at the time (and only about 1500 examiners).

    “Sharing” the burden, what a joke. What they are doing shifting the backload over to us while they get a FEE ($) ride.

  4. 36

    Mr. T, from the theoretical standpoint maintenance fees are not meant to help the PTO recoup the cost of examination. Maintenance fees represent a balance between the value of the invention to the patentee and the cost to society of that invention being the exlusive province of the patentee. This is why maintenance fees generally increase with the life of the patent. Cooter & Ulen have a nice graph displaying this in their book on economic analysis of law – I don’t have it in front of me, but as I recall it bore some resemblance to a supply/demand curve, albeit sloping more sharply as time went on.

    Of course, in practice things are quite different than in theory. I agree with you that in fact, maintenance fees do partly serve to offset PTO operating costs. I don’t get why you should have to pay maintenance fees to the EPO pre-grant, when you don’t really have any rights (ok, maybe some provisional rights in some countries). Until the patent is granted, your application is just a placeholder, which may cause competitors to take notice, but it’s not enforceable, so the fee at a given point in time should be higher post-grant than pre-grant, or even non-existent pre-grant. The USPTO’s scheme, which was originally implemented under the 17-years-grant regime and thus requires fees to be paid 3.5, 7.5 and 11.5 years after grant, wasn’t modified when the switch to 20-years-from-earliest-filing was made, hence if your application is granted quickly and you’ve got 6 years left on the life of the patent when you pay the final maintenance fee, you pay the same as someone who’s only got 6 months left on his patent when he pays the final maintenance fee (due to protracted examination and consequent late issuance of the patent). That doesn’t square with theory, but it is much easier to calculate the fee due under the USPTO’s system than a in scheme based on how much time is left on the patent (especially in the era of patent term extensions for PTO delays).

  5. 35

    Mr. T,
    Despite your support of my statements, I think you might have misunderstood the main point. My point was not that the USPTO is looking to ‘nickel and dime’ us indirectly. In fact, I wish they were doing so by asking Congress to increase their resources by user fee increases. Rather, my point was that they attempt to set patent policies that are Congress’ prerogative. They do so in a manner that happens to contravene the very specific claim-based statutory directives for user fees. Their goal appears to be directed at limiting patentees’ opportunity to claim their inventions in effective ways and to create prosecution history minefields, weakening patents. Their improvement in patent quality story simply does not compute.

    If applicants’ ESD’s are required to improve the quality of patents with more than 5 independent claims, what quality should we expect out of the USPTO for patents having less than 5 claims? There is very little difference in the quality of prior art search required for patentability analysis of 3 or 5 claims directed to similar subject matter. Clearly, the USPTO’s stated logic for the 5/25 Rule couldn’t be taken seriously. On the one hand, they argue that the ESD burden would only be borne by applicants in a minority of cases and therefore we should not be concerned. [BTW, where is the economic analysis of the USPTO on the 5/25 rule?]. On the other hand, if ESDs are to be filed only in a small minority of cases, how would patent quality change in any material way? The USPTO cannot hold both ends of this spin stick. Indeed, this is not about workload or patent quality. It is about weakening the US patent system via an end-run on Congress.

    One can easily tell that these rules usurp Congress’ lawmaking role as they contain the USPTO’s own view of what is an equitable burden placed on micro or small entities versus that placed on large entities. There is no basis in the record to establish what the ESD financial burdens are, let alone the basis for exempting only small entities from submitting the claim “maps”. Congress, and not a government agency, is supposed to craft these types of provisions subject to appropriate balances after a development of adequate public evidentiary record and the participation of elected representatives.

    If my point is not clear enough, get this: Congress codifies by *statute* applicants’ examination and search fees in ranges of only hundreds of dollars (see 35 U.S.C. 41). – And here comes the USPTO and enacts costs for filing patent applicants in the order of thousands of dollars with no economic regulatory impact analysis and no statutory authority?
    Do you think the courts will let them do that?

    Ron Katznelson

  6. 34

    Right on Mr. Katznelson. I tried to make similar points here in another topic, but you say it sooo much better than me. Don’t forget maintenance fees, you know, those mafia-like fees which supposedly represent some of the costs of examination.

    It is clear the PTO wishes to increase fees and perform much less work. In fact, the reformers would not have examiners searching at all, but still find ways to nickel and dime applicants more than ever. It is dispicable! These government princes running the show make me hurl.

  7. 33

    The 5/25 claim-limit rules: Let’s call this spade a spade!
    The USPTO management will tell you that these rules do not contravene the statute because they do not set a limit *per se* on the number of claims that can be filed for inventions. They say that the ESD requirement for exceeding the 5/25 thresholds is a manifestation of “Shared Responsibility”. But we have had “Shared Responsibility” all along, wherein Congress set the precise parameters for sharing the responsibility. Applicants do their share by PAYING examination and search fees commensurate with the number of claims according to rates and claim surcharges set by *statute* (35 U.S.C. 41) and the USPTO does its share by SEARCHING the prior art and EXAMINING each claim as part of their office actions (i.e. generating the requisite ESD at the applicants’ expense). Now the USPTO management wants to shift their examination costs to the applicant and, at the very minimum, raise the effective user fees without congressional authority to do so.

    One should note that in enacting the Consolidated Appropriations Act of 2005, Congress codified in 35 U.S.C. 41 the very details that ensured that applicants do not bear the costs for claim examination work that the USPTO does not actually perform. Congress even provided for refunds to applicants. Evidently, only Congress can apportion the “Sharing of Responsibility” on a claim-by-claim basis (!). Although the new claim limit rules may not require payment of the search fees when an ESD is submitted, the ESD requirements and its deliverables go well beyond a mere search report, as it effectively pre-examines the claims. Presumably (as the USPTO contends), this minimizes the USPTO examination burden. It certainly shifts the examination costs to applicants.

    A spade is a spade. The USPTO management cannot have it both ways. At the very least, these rules contravene the statute either by limiting applicants to the 5/25 claim count, or alternatively by effectively extracting user fees beyond Congress’ authorization in an attempt to circumvent the statutory provisions of Section 41.

    To be clear, I actually strongly advocate amending the statute to permit the USPTO to charge more for its services and improve its examination quality. Generally, patent user fees have not kept up with market costs of hiring and *retaining* qualified professionals to serve on the USPTO examination corps. The readers of this Blog need only look at the small share of USPTO fees as a fraction of the total costs to obtain a patent. US patent user costs per issued claim are essentially the lowest in the world.

    The USPTO must do its job for which it is paid. It is funded to develop and retain expertise in the various arts. Aside from their duty of full disclosure, inventors have no obligation to know all available prior art. It is the USPTO’s responsibility in protecting the public from overbroad claims to search and generate ESDs independently of applicants’ prior art submissions. The USPTO needs more resources and the USPTO management should have just made the case to Congress to amend Section 41 yet again instead of making the breathtaking declarations that they “cannot hire their way out” of the workload problem. For more quantitative details on the USPTO failure to address its workload over the last two decades, see section 3.1 of my recent submission to OMB available at link to whitehouse.gov.

    – Ron Katznelson

  8. 32

    BB:

    No magic words are required. “The widget of Claim 1, further comprising” is perfectly fine. But feel free to email the USPTO, if you’re concerned.

    “Why would 2 rules say the same thing?”

    Good point. Perhaps, the USPTO would conclude that “A method of using the widget of Claim 1” properly incorporates each limitation, but improperly changes statutory class. If so, then the incorporation of all limitations rule may only be relevant to “wherein” clauses that broaden/remove elements — which have always been a no-no. I’ll have to think about that.

  9. 31

    RF

    I don’t read it quite that way. I read the new rule as saying your dependent claim must incorporate all of the limitations of the parent by reference, as in:

    The method of Claim 1 together with all of its limitations, further comprising the step of . . .

    I am reading the rule literally as saying you must now incorporate all the limitations by reference — I know of no other way to do that other than by a statement to that effect. The examiner looks at the dependent claim; if it doesn’t explicitly incorporate by reference, it’s no longer a dependent claim. I don’t see that “The do-hickey of Claim 1” alone constitutes incorporation by reference.

    The second part of the rule prohibiting crossing statutory lines addresses the example you gave such as “A method of using the widget of Claim 1.” Why would 2 rules say the same thing?

    This ban on crossing lines is a pretty huge lurch downward, too. Compare (current) MPEP 608.01(n). Guess I’ll have to spring for a new MPEP again. It’s almost as bad as when Jordan kept switching sports and teams and the kids had to keep buying the latest jersey to keep up with his number.

    I hope you’re right on the incorporation by reference. Go ahead a file a few old-style claims and let me know how it goes. 🙂

    Babel Boy

  10. 30

    Mr. Roethel wrote: “How about ‘The product made by the process of Claim 1.’ Is this type of claim any good any more?”

    It’s still good, like the other two examples above; however, like these other two example, it will be treated as an independent claim. In your example, the statutory class of invention is changed (from process to product) and thus will be treated like an independent claim.

  11. 29

    How about “The product made by the process of Claim 1”. Is this type of claim any good any more?

  12. 27

    BB wrote, “It’s no longer good enough to say ‘The method of Claim 1, further comprising…”

    No. It’s fine to say “The method of Claim 1, further comprising” because it is expressly incorporating “The method of Claim 1.” The rule addresses dependent claims that fail to incorporate the limitations of a prior claim, e.g., claiming “An apparatus configured to interface with the widget of Claim 1” or “A method of using the widget of Claim 1.”

  13. 26

    MC — agreed. But the PTO’s “stupidity” is but one of our worries. Their dishonesty should be more of a concern. For instance, new Rule 75(b)(2) now requires each dependent claim to incorporate by reference all of the limitations of the parent or else the dependent claim will be deemed to be “independent” for fees and ESD purposes. It’s no longer good enough to say “The method of Claim 1, further comprising…”

    How does PTO justify changing the traditional claim preamble language that has been honored for many decades in just about every country? They justify it by a flagrant mis-characterization of Pfizer v. Ranbaxy (CAFC), claiming that Pfizer says a dependent claim is required to incorporate by reference all of the limitations of the parent. (FR 46724:col 2) That is not what Pfizer says. It says precisely what the statute says, which is: “A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.”

    By substituting “requires” for “shall be construed” the PTO has perpetrated a fraud in order set rules that are contrary to federal law and to set yet another trap for applicants to fall into with regards to this loser ESD initiative. Imagine, for instance, what effect this change will have on internationally accepted claim drafting, where one set of claims can generally be drafted for multiple countries by using the traditional “The method of Claim 1” format.

    Were you or I to pull this stunt, we would be facing charges of inequitable conduct and sanctions.

    Dudas signed the FR document. Maybe every patent lawyer who reads it has an ethical obligation to report Dudas to . . . whom? The PTO??? Ha, ha, ha…

    Babel Boy

  14. 25

    Maybe we should not complacently accept the new rules. We need a grassroots concerted “write your congressman” effort, Amnesty International style. If we all moaned together, someone might take notice of PTO’s stupidity and, hopefully, restore an ounce of sanity. Dennis, since you have the ear of the patent practitioners’ community, I think you should seriously consider blogging this idea.

  15. 24

    While most foreign applications do not have more than 20 claims, multiple dependent claims are counted as one claim in many other Patent Offices. In the new USPTO rules, multiple dependent claims are counted as multiple claims. There is a likelihood (in fact, I know of more than one example) that a foreign application entering the national stage in the US will appear as more than 25 claims when, in the country where it was originally filed, it had less than 20 claims.

  16. 23

    Dear Professor Crouch, I don’t believe claim counting provides an accurate basis for comparison; foreign patenting systems tend to dictate the number and type of claims, rather than the desires of the patentee. For example, the EPO allows multiple dependent claims which in many cases facilitates a rather drastic reduction in claim count(s). The US patent system is biased against this type of claim by requiring a rather costly surcharge which most practitioners avoid by writing more dependent claims. The graphics are interesting but probably not particularly meaningful. A much more informative graphic would be to take a poll of your readers regarding the USPTO rulemaking.

  17. 22

    Babel Boy:

    Is Virginia a case-within-a-case jurisdiction? In such jurisdictions, to prove causation, you must prove that you would have won the infringement lawsuit but for the malpractice. In malpractice based on patent litigation, it seems the whole case of infringement and validity must be tried as part of the malpractice case. This implies a federal question (substantial question of patent law) even if the complaint doesn’t expressly refer to “patent” malpractice.

    In any event, this precise question is pending before the Federal Circuit right now. Decision expected in fall.

  18. 21

    On whether there is exclusive federal jurisdiction over patent malpractice actions, there are currently two Federal Circuit cases pending on this exact point, so I am not sure what the outcome would be. But my question is whether DJ as a substitute for removal is the procedurally proper mechanism to do it; and I doubt it. Wouldn’t the district court have discretionary authority to decline DJ jurisdiction if it thought DJ was improperly being used in place of the removal statute?

  19. 20

    Pardon me while I “adjust” a mis-statement in my last post.

    A more precise statement of (my understanding of) the case law is that regardless of very substantial federal patent law issues, there is no exclusive (!!) federal jurisdiction in a state malpractice case against a patent lawyer for screwing up a patent application. I believe in many instances it’s possible to frame a complaint so that a federal court will hear such cases and take pendant jurisdiction of the state tort claims. But in our case we framed the complaint for state court, the defendants had to argue exclusive federal jurisdiction to get into the federal court, and the federal judge farted them out the door.

    BTW, I believe if one could try a patent malpractice case in federal court by claiming a deprivation by the miscreant patent lawyer of his client’s rights under 35 USC something or other. But don’t quote me.

    Babel Boy

  20. 19

    “prosecuting infringement actions on a patent they knew to be invalid”

    I thought that this was the Niro firm’s business plan in the first place.

  21. 18

    Re the Niro DJ gambit.

    A couple years ago I sued some patent attorneys for malpractice, fraud, breach of fiduciary duty, etc. in state court (Va.) and they pulled a similar stunt as Niro. First, they waited too long to remove to federal court and then they filed a motion to dismiss in state court, arguing that the state court didn’t have jurisdiction over the patent-related issues and it was too late to remove; therefore, the only option for the judge was dismissal. The judge actually vacillated on this — primarily because state judges will do anything they can to avoid trying lawyers.

    I asked the state judge to stay the proceedings, and then filed the same action word-for-word in the local federal court to test the defendants’ exclusive federal jurisdiction theory. In researching the issues I found that even if there are very substantial patent law issues in a state malpractice case, there is no federal jurisdiction. The issue comes down to what relief is being sought. The state plaintiff is not seeking enforcement of a patent; he’s seeking enforcement of state tort & fraud laws. In my case the federal judge wouldn’t even hear oral arguments — he read the complaint and the answer and entered the final order — no federal jurisdiction on state law malpractice claims. Not a real hard call.

    Niro’s DJ gambit is technically different, but I don’t think it will go anywhere either. Of course, until one reads Jackson’s state complaint you can’t tell what relief is at issue.

    BTW, Niro’s federal DJ complaint looks to me like an admission of ethics violations — prosecuting infringement actions on a patent they knew to be invalid. This could be a case of remove-shoe, shoot foot.

    Babel Boy

  22. 17

    As far as fewer number of claims in foreign filed applications (both into and out of the US) this should surprise nobody. Except for filings only in other English-speaking countries, it costs money, lots of it, for translation. I always go over claims in foreign filed applications to minimize the claims.

    As far as racial restrictions in claims, they are just that – claim restrictions. What next? Will sexual restrictions will be outlawed? Patents on prostate cancer treatments will be invalid because they are only applicable to men? Patents on uterine cancer treatments are invalid because they only apply to women? No one is discriminated in favor of by such claim restrictions, they just describe a scientific fact. Isn’t that what the Constitution refers to after all?

  23. 16

    I realized something that made me a little nervous last night concerning the patent reform act. An epiphany occurred when I heard that Acer, a Taiwanese company, had purchased Gateway Computer. This was the second U.S. provider of computers purchased by a foreign company in as many years. The last company was Levono which purchased IBM’s personal computer business. I realized that the current bill could be used to weaken the patent portfolio that was sold, along with the business interest, to these foreign manufacturers. In this manner, the value of the transferred assets would be instantly reduced. Then I realized that was not good enough. There must be some additional revenue in it for the large U.S. corporations. Then it hit me like a thunderbolt. These foreign companies are instantly thrust into the personal computing market in the U.S. Now they can be sued for patent infringement in the U.S. The large companies get a triple play. They obtain cash from the initial transaction. The assets are transferred in excess of the real value, because the patent reform act will undermine the value of the companies by reducing value of the patent portfolio transferred in the initial transaction. These companies are now susceptible to patent damages in the U.S. on patents not transferred as part of the initial sale. Just think how a large U.S. manufacturer could set up the suit in advance by carefully selecting the patents transffered in the initial sale.

    I would say this is on the level of what we did to the Japanese in the 1980s. First we got them to purchase a substantial portion of U.S. real estate. Then, we raised the capital gain tax and effectively made the real estate worthless. It was a huge money transfer back from Japan to the U.S.

    The sad part is that if I am correct, rest assured that the patent reform act will be passed.

  24. 15

    I made one mistake in my previous comment. Niro would not have been able to bring a counterclaim seeking a declaration that the patent is invalid and unenforceable in the state court action, as I believe only a federal court would have jurisdiction to make such a declaration. But counterclaims seeking a declaration that a patent is invalid and/or unenforceable are routinely pleaded in patent infringement actions. My point is that the DJ action is something more than merely a defense to the state court action (a commenter above stated that the federal court should not exercise DJ jurisdiction because Niro is merely defending a state court action on a theory that involves a federal question, which if true would be insufficient to establish subject matter jurisdiction).

  25. 14

    Going back to the Niro case, one commenter has suggested that the federal court should not exercise DJ jurisdiction. My question is can the federal court dismiss this case? There does not appear to be a question as to subject matter jurisdiction, as Niro is asking for a declaration that the patent is invalid and unenforceable. (This is more than just a defense; I believe it would have been a counterclaim in the state court action). With respect to DJ jurisdiction, is there a “case or controversy” between the parties? It seems to me that there is because Jackson is suing Niro for malpractice, which means that he must contend that the patent is valid and enforceable. Therefore, there is a controversy as to validity and enforceability of the patent, the outcome of which affects the extent to which Niro can be liable for malpractice. Also, based on the complaint there does not appear to be a question as to personal jurisdiction. If all three jurisdictional requirements are met (personal, subject matter, DJ), what would be the basis for dismissing the action in federal court (without considering the actual merits of the pleadings)?

  26. 12

    Ron wrote:

    This US advantage should not be underestimated. What the USPTO is doing by their draconian 5/25 claim limit rule is to effectively rob U.S. inventors of their advantage over foreign applicants, making U.S. patents less valuable.

    Wait a sec – I thought the rules have “No economic impact” as the fine folks at the OMB have taught us.

  27. 11

    Dennis and MaxDrei,
    You are both correct in general terms. On average, foreign applicants in the USPTO file fewer claims than domestic inventors. Although the absolute percentages exceeding 25 claims that Dennis shows are lower than would be found in *applications* (for the reasons explained in my prior post), the *relative* trend is consistent with my research on average number of claims filed at the USPTO, EPO and JPO. Because most European and Japanese applicants at the USPTO claim priority to their respective domestic applications, many of them maintain the same claim structure and number when filing in the US. Therefore, the statistics of the number of claims at filing in the US by these applicants is expected to be similar to that in their priority countries. I have studied the historic trends in such national statistics.

    In the last section of my recent paper entitled ‘Bad Science In Search Of “Bad” Patents’ published this month in the Federal Circuit Bar Journal (available for download at link to ssrn.com), I present data showing that the average number of claims filed at the USPTO exceeds that of the EPO, which in turn exceeds that of the JPO. While my paper reports on the average number of claims, the top end of the distributions above 25 claims are expected to be tightly related to the average claim number.

    The reasons for the differences are varied. The Japanese are still slowly moving up from their old habit of writing only one claim per patent, as that limit was in their patent statute until 1988. However, they do file multiple patents for the same invention group. They are also more likely to combine claims from multiple Japanese patent applications into a single U.S. application. Other reasons for fewer claims in Europe and Japan are discussed in my paper including the higher cost per claim. My FCBJ paper cites a reference showing that the average cost per U.S. patent claim (including maintenance fees) is about one fifth of that of the EPO or the JPO.

    Finally, there is recent evidence (that I will gladly provide upon request) that the “First-to-File” rule in other countries results in fewer pages in patent application disclosures filed by foreign inventors compared to those filed by U.S. inventors. Unlike prevalent practices of U.S. inventors under the First-to-Invent system, applicants in nations that use the First-to-File system are wrongly balancing disclosure and enablement detail with a race to be the first to file the application. One only needs to look at a few Japanese patents to appreciate this fact. As a result, by their own actions, foreign inventors must make due with less specification support and are therefore generally disadvantaged compared to US domestic inventors when the scope and number of claims are considered.

    This US advantage should not be underestimated. What the USPTO is doing by their draconian 5/25 claim limit rule is to effectively rob U.S. inventors of their advantage over foreign applicants, making U.S. patents less valuable.

    – Ron Katznelson

  28. 10

    Dennis and MaxDrei,
    You are both correct in general terms. On average, foreign applicants in the USPTO file fewer claims than domestic inventors. Although the absolute percentages exceeding 25 claims that Dennis shows are lower than would be found in *applications* (for the reasons explained in my prior post), the *relative* trend is consistent with my research on average number of claims filed at the USPTO, EPO and JPO. Because most European and Japanese applicants at the USPTO claim priority to their respective domestic applications, many of them maintain the same claim structure and number when filing in the US. Therefore, the statistics of the number of claims at filing in the US by these applicants is expected to be similar to that in their priority countries. I have studied the historic trends in such national statistics.

    In the last section of my recent paper entitled ‘Bad Science In Search Of “Bad” Patents’ published this month in the Federal Circuit Bar Journal (available for download at link to ssrn.com), I present data showing that the average number of claims filed at the USPTO exceeds that of the EPO, which in turn exceeds that of the JPO. While my paper reports on the average number of claims, the top end of the distributions above 25 claims are expected to be tightly related to the average claim number.

    The reasons for the differences are varied. The Japanese are still slowly moving up from their old habit of writing only one claim per patent, as that limit was in their patent statute until 1988. However, they do file multiple patents for the same invention group. They are also more likely to combine claims from multiple Japanese patent applications into a single U.S. application. Other reasons for fewer claims in Europe and Japan are discussed in my paper including the higher cost per claim. My FCBJ paper cites a reference showing that the average cost per U.S. patent claim (including maintenance fees) is about one fifth of that of the EPO or the JPO.

    Finally, there is recent evidence (that I will gladly provide upon request) that the “First-to-File” rule in other countries results in fewer pages in patent application disclosures filed by foreign inventors compared to those filed by U.S. inventors. Unlike prevalent practices of U.S. inventors under the First-to-Invent system, applicants in nations that use the First-to-File system are wrongly balancing disclosure and enablement detail with a race to be the first to file the application. One only needs to look at a few Japanese patents to appreciate this fact. As a result, by their own actions, foreign inventors must make due with less specification support and are therefore generally disadvantaged compared to US domestic inventors when the scope and number of claims are considered.

    This US advantage should not be underestimated. What the USPTO is doing by their draconian 5/25 claim limit rule is to effectively rob U.S. inventors of their advantage over foreign applicants, making U.S. patents less valuable.

    – Ron Katznelson

  29. 9

    OK, will all those supporting the 5/25 claim rules and the new one-size-fits all continuation rules kindly take two steps to the right … OK, now face the wall.

    I think it may be time to take up magic or snail herding over deep-tech patent prosecution.

    If you want to know how I really feel – still – see:

    link to patentlyo.com

    Pax vobiscum.

  30. 8

    These arbitrary rule changes make me embarrassed to be an Examiner. I feel like I’ve entered the Twilight Zone or some Scott Adams comic. Today’s latest news from the Office: “Claims and Continuations Webinar a Resounding Success.” They really love their truthiness.

    It’s like they picked random words out of a hat and strung them together to make these rules.

    Meanwhile, the Patents community is going through the Kübler-Ross model of the five stages of grief: denial, anger, bargaining, depression and acceptance.

    Yet, these fundamental changes to the patent system are getting no coverage in the press. Instead, it’s Michael Vick that’s the big story.

  31. 7

    Do alien Applicants at the USPTO present less claims? Of course. Your data Dennis only serve to confirm what was already crystal clear to anybody with an overview. It works the other way too. At the EPO, the behaviour of Applicants from USA is hugely different from that of Applicants from everywhere else on this planet, who all write in pretty much the same way. Superficially, First to file vs First to Invent is the most striking difference. But, look deeper and it’s common law vs civil law that explains things like the number of claims people write. Before UK joined the European civil law system British patent attorneys would write a whole lot more claims than they write these days. Since there is no chance of ROW switching to common law, and no chance of USA switching away from common law, we are stuck with two legal planets (different atmospheres) for the foreseeable future. Mixing the atmospheres will damage life on both planets. No more attempts at harmonisation/compromise please. But, in any case, I don’t need to get excited. As another correspondent said recently, international harmonisation in patent law is not interesting enough to engage the US Congress, and the US courts have meanwhile curbed the most egregious excesses of the US patent system as it was until just now.

  32. 6

    I agree that the Ghosh paper is interesting, and I even agree with its premise that race-specific patent claims inevitably leads to courts having to apply explicit racial distinctions, which is generally not a good thing. But I am not sure about the categorical rules that Ghosh proposes. Suppose that I invent a drug that, for some biological reason, cures cancer in white people but not black people (since whites and blacks have different biological susceptibility to different diseases, this is hardly an impossible scenario). If I do not claim the racial distinction, my patent will fail for lack of full enablement. Even under strict scrutiny, a demonstrable biological difference coupled with a pressing need will often support a racial distinction, so to suggest patents should never have a racial distinction in the claims is problematic.

  33. 5

    Ron — Very good comment. I used issued patents here because my datasets of recently filed patent applications do not have a reliable associated assignee.

    Setting aside for a moment the absolute percentage of patents affected, are there any quarrels with the suggestion that foreign filed patent applications will be, on average, less affected by the claim-number rule change because foreign filers usually file fewer claims already.

  34. 4

    Dennis,
    You are showing data for the number of claims in *issued* patents. That is different from the number of claims in patent *applications* – for which the 5/25 rule applies. The USPTO Chicago Town Hall PPT slides from last year shows that the number of claims at filing is approximately double the number that ultimately issue. So when you look at issued patents, 13 claims is perhaps a more realistic number corresponding to the 25 claims limit at filing. Therefore, the fraction of applications that are impacted is significantly higher than the numbers you show.

    Please do not compare apples to oranges….

    Ron Katznelson

  35. 3

    The state law case is well pleaded as a state law negligence case. Having a defense involve a federal question is insufficient for federal SMJ (remember Louisville and Nashville RR v. Mottley). Since the issues are properly pending in the state law case, the federal court should not exercise DJ jurisdiction.

  36. 1

    If Niro thinks that its state court action is really about patent infringement, isn’t the proper course to seek removal rather than DJ? Does anyone know of a case where a law firm has sought federal DJ in response to a malpractice complaint?

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