Patent Claims Continue to Drop

PatentlyO077

The chart above shows the percentage of patent applications published with more than twenty claims, grouped by publication date. I use the twenty-claim threshold because patent applicants are required to pay a surcharge to the USPTO for each claim over that limit.

As the chart shows, the percentage of applications with more than twenty claims has been declining for much of the past decade. This change is even more dramatic when looking at applications with forty or more claims.

PatentlyO078

Of course, if the percentage of high-claim applications is decreasing, the percentage of mid– or low-claim applications must show some increases.  The chart below presents a time series showing the percentage of patent applications with fifteen-to-twenty claims.

PatentlyO079

126 thoughts on “Patent Claims Continue to Drop

  1. 126

    “If you think you need 60 claims to get the proper scope of coverage, then you likely have at least 2 patentably distinct inventions.”

    Depends on art area, I think. Software is plagued with a BS shifting target of patentable subject matter, among other things. Once you write the same claims over again as Apparatus, Method, System, M+F, Beauregard, and Product by Process, its not at all unusual to far surpass 60 claims.

    Good thing we have all these exhorbitant fees for extra claims that require no additional effort to examine. There’s nothing at all out of whack in charging $2000 in extra claims fees for cut and paste rejections. And don’t ya just love those 6 way restrictions? /sarcasm

  2. 125

    If you think you need (pull a number out of your a__) claims to get proper scope of coverage, then you likely have at least (pull another number out of your a__) patentably distinct inventions.

    Bottom line: unsolicited and unwarranted thread hijacks are frowned upon. Today is not a “blame the applicants” day.

  3. 124

    If you think you need 60 claims to get the proper scope of coverage, then you likely have at least 2 patentably distinct inventions.

    Bottom line: know what your invention is, and write better claims. But, of course, we all know that requires time and effort. Neither of which Applicants are willing to give.

  4. 123

    Bush? Housing price bubble-burst. Bubbles always burst. Stock markets, 1929 and 2000. Housing market, 2008. Japan’s real estate bubble burst in the 1990’s, but they endured stagnation rather than recognize re-adjusted property values.

    The trick is to avoid a bubble. Now, if anyone knew how to do that, we’d all give them a medal.

  5. 119

    Hey, Sunshine’s handlin of tags aint got nothin to do with his grasp of patent law.

    Sure, bit be slippery, but that’s not a correlation, it be just a coincidence.

    As for the politics – B O R I N G

  6. 118

    …much like Mooney’s ability to comprehend complex technologies such as html tags. I sure his “clients” appreciate his competence.

  7. 117

    We could have recovered much earlier had we followed the policies followed by the Europeans and by the Japanese, who kept tax rates low and increased spending.

    That was George W. Bush’s economic plan. It worked really well until it didn’t, much like the Hindenberg.

  8. 116

    Also, my point earlier individual income taxes was to show that there is a strong correlation between economic expansion and low tax rates. Actually, in many cases, tax revenues go up when tax rates are lowered. This is a strong indication that the Laffer curve is real.

    Given all the above, what FDR should’ve done when he took over from the Hoover administration was to restore lower tax rates of the pre-Hoover era while at the same time increasing government spending. In the end, the United States recovered from the great oppression because of World War II. We could have recovered much earlier had we followed the policies followed by the Europeans and by the Japanese, who kept tax rates low and increased spending. They had long left the Great Depression behind while United States still suffered.

    Today, what we need is a tax rate cut while keeping government spending about the same as it is. This will increase the deficits, of course, but what we will effectively be doing is using the government’s borrowing power to put money into the hands of the American private sector. Since a good portion of the borrowed money comes from sources outside United States, this effectively increases the supply of money inside United States and will spur the US economy. It is not true, as some conservatives will state, that deficit financing does not stimulate the economy because it merely borrows from one American and gives it to another American. This is not the way it works.

  9. 115

    GM was a special case.

    GM was a very special case. It was a case of having a growing number of retirees claiming benefits and a shrinking number of current employees paying into the system due to loss of market share, which was a problem because the system wasn’t fully funded.

    You know, like Social Security.

    Many jurisdictions, such as Singapore and Thailand, go out of their way to provide tax Holidays for corporate investment.

    And the jobs will leave there too, once someone else offers those companies more money or the workers decide they’d rather band together to demand a living wage.

    It’s not a long-term solution. The US economy has moved past manufacturing, because we will always buy stuff from whatever foreign country can build stuff and ship it for the lowest price. The real problem isn’t that manufacturing is gone, but that there’s nothing to replace it on a similar scale.

    What this suggests to me is that German firms have less incentive to move jobs out of Germany than a corresponding US firm.

    At best, the German firms have the exact same incentive, but merely less profit at stake. The incentive is always the same: more profit > less profit. The only other concern would be a sense of loyalty to one’s home jurisdiction, either because it would cost more to carry out the actual move, or out of a sense of duty to one’s home country that has no counterpart in America because all America cares about is last quarter’s earnings.

  10. 114

    OK, Max and IANAE. I thought that point was raised earlier by at least IANAE.

    However, the argument was advanced by some when, for example, the GM bankruptcy was an issue. That company failed in part because it provided generous healthcare to its retired employees. The thought was that relieving GM of that burden would help GM survive. link to healthcare-economist.com

    Clearly it would. But the general case in the US is that corporations do not pay for retiree healthcare. GM was a special case.

    On the larger issue of making a buck, the location of manufacture makes a difference if the location is important in increasing profits because the cost and delays of transportation is not all that great. Many jurisdictions, such as Singapore and Thailand, go out of their way to provide tax Holidays for corporate investment. They also have low corporate taxes.

    Location, location location. Find the jobs. They are found where the profits are the highest.

    Germany’s corporate taxes are clearly higher than those of Asia, but much lower than those of the US. What this suggests to me is that German firms have less incentive to move jobs out of Germany than a corresponding US firm.

  11. 113

    Ned, ever heard the expression “What you lose on the roundabouts, you gain on the swings” or “6 of one, half a dozen of the other”. Besides, I am not aware that “corporations” have any “concerns” at all. CEO’s do, of course, but that’s another matter.

    And, sorry, I don’t know about IANAE (he can speak for himself) but Max at least “would also argue”…..NOT.

  12. 112

    Now Max and IANAE would also argue that the German healthcare system being wholly financed by the government somehow reduces the burden on German corporations.

    We would? I hadn’t even begun to consider thinking about looking into arguing that.

    This is where level corporate taxes becomes critical in decisions about where to build factories.

    It’s not a great long-term strategy to use lower taxes as the primary means for attracting local business. Anybody who leaves their current location for a better deal will just as soon leave you for a better deal whenever one comes along. And on top of that, you’re effectively letting someone else set your tax policy by engaging in a price war.

    Unless your local jurisdiction has something going for it, like a local source of customers, skilled employees, or raw materials (in cases where location even matters anymore), you might as well accept that your local economy has outgrown those jobs and they will eventually leave for someplace that can sustainably do them at a lower cost.

    Sure, you can have the local government keep buying them presents, and they might stay as long as they keep getting shiny expensive things, but they never really loved you in the first place.

  13. 111

    More data:

    US corporate tax rate: US 35% States: 0-10% Combined Avg. 44%

    German corporate tax rate: Federal 15%; Local 15%: Total 30%

    See: link to en.wikipedia.org

    Now Max and IANAE would also argue that the German healthcare system being wholly financed by the government somehow reduces the burden on German corporations. I believe though that the employment tax related to healthcare of German employees is about 12%. This is equivalent to what US employers pay for employee health insurance, which is deductible. In either case, the cost of an employee is raised equivalently by the cost of healthcare.

    Now I would agree that the quality of life in Germany is high, but when corporations make decisions about where to build manufacturing plants, the quality of life of employees is not their highest concern. Rather, their greatest concern is to make a buck, and to keep as much as they can of what they make. This is where level corporate taxes becomes critical in decisions about where to build factories.

  14. 110

    If I break down what he is saying, then there would be WAY less men on this Planet. Because what I think he is saying we would kill each other off, leaving only the Chinese to flourish? Hello….. the Chinese are still in China.

  15. 109

    Maxi,

    The Chinese you refer to our some of the most capitalistic beings on the planet.

    The guise of “communism” there is only to keep the masses away from those with the power.

    Been there – done that.

  16. 108

    You are so messed up Maxi. The word Communism tells us that the communist-thinking males aren’t the thinkers. It be the boss.
    And you are telling us that back in the Caveman Days, they had a Communist party along with the Democrats and the Republicans. How does anyone make sense of your post.
    Maxie quick move back to the UK you must have mad cow and need special attention.

  17. 107

    ping, if you divorce your quote about skills and needs from the dirty word communist, what’s so reprehensible about it? The instincts of the human brain have not evolved much since the blink of evolutionary time, ten thousand years ago, when all there was was little social groups of humans, shy apes who attacked and murdered the males of any other group that might cross its path. But each group survived only if it were a communist-thinking group, no? Take the “real life” present day communist-thinking Chinese tribe. On its last legs, would you say?

  18. 106

    Well that’s nice Lionel. Thanks. I had been expecting vigorous disagreement with my position. After all, a moderate standpoint, of seeing some merit in both sides of the argument, is distressingly unsatisfactory to all the zealots, on both wings of the debate.

    And there’s the rub: if we spend too much time debating, nothing ever gets done. But much worse than that, what gets done by deciders, who listen only to their inner voices, and do not thoughtfully rehearse with reasonable experts all the obvious consequences of their decisions, soon gets exposed for posterity as rubbish work.

    No wonder patent reform is taking so long. Good so.

  19. 104

    IANAE,

    It seems just as funny that the socialist view is that somehow, magically, everyone “should be benevolent to everyone else and so casually share. What’s that communist manifesto – From each according to their skill, to each according to their needs?

    How’s that working as a real world proposition?

    Maybe it’da work in Middle Earth. Planning any campaign trips there in the near future?

  20. 103

    I mentioned nothing about benevolence.

    It’s funny, actually, that the free-market-capitalism types expect extra money to make its way from the rich to their employees by the mechanism of greed.

    And of course, paying other people only ever aligns with greed when the other people have a union that threatens to close down your whole shop, and is it not written, “I can’t be having with that kind of thing”?

  21. 102

    Groucho,

    I read and understood your post, which was a near complete nonsequitor response to my post. I mentioned nothing about benevolence.

  22. 101

    Max,

    I wasn’t quoting you. I was quoting whats up. I was also – separately – asserting you have been correct in your back and forth with Ned Heller. I realize that may have been unclear from my post.

  23. 99

    Lionel, I’m a bit confused by you at 6.53. Your first two para quotes are not mine. Your 3rd para though announces that Max is absolutely right “here”. Huh?

  24. 97

    Lionel,

    You did not go over my head – you simply fell into the category of people that you were lambasting. Try actually reading my comments.

    Deliciously ironic.

  25. 94

    Production efficiencies need to be shared with workers.

    I love the ignorance of people who decry US corporate or personal taxes. It’s ridiculous.

    Lionel, add yourself to the list of ignorant people if you think that it will be sheer benevolence that will drive this sharing of profits (driven by increased production efficiencies) with the workers). Stating “should” without stating “how” is pretty nigh useless. Stating “should” without recognizing the dynamics involved in this “redistribution of wealth” is pretty ignorant.

  26. 93

    “If you give a European extra vacation days, the European will go to the beach. If you give an American (not employed by the PTO) extra vacation days, the American will work another job.”

    They will do this because they have to or because they are simply to stu pitt to plan their own time.

    Max is absolutely correct here. I love the ignorance of people who decry US corporate or personal taxes. It’s ridiculous.

    Production efficiencies need to be shared with workers. It is truly despicable that we haven’t transitioned to a 30 hour work week by now.

  27. 92

    Patrick Henry, I don’t understand. Since when was refraining from graffiti-izing every passing public service vehicle and vandalising every waiting room “blind obedience to authority”. Where does the boundary come, between “normal civilised behaviour” and “blind obedience to authority”? You wouldn’t train even an animal using fear as your only training means, would you?

  28. 91

    I, myself, would catution about such blind obedience to authority.

    You’ll never make it in the GOP with that kind of attitude, mister.

  29. 90

    Respect for social institutions is manifest.

    That’s one way of putting it. I, myself, would catution about such blind obedience to authority. Such is not the panacea that you make it out to be.

  30. 88

    Max, you have a point about Germany. It is a very well kept country. Respect for social institutions is manifest.

    I had a similar impression about Japan.

  31. 87

    They are saying that Americans are lazy

    They’re lazy when the GOP wants to cut social assistance programs like welfare, health care, and social security. They’re ambitious but not quite ambitious enough to work for a slightly smaller profit when the GOP wants to lower taxes for rich people. Try to keep up, will you?

    Where are all these Americans getting their second jobs, anyway? Lots of people out there would love to have even a first one. I’d highly recommend spending those days off at the beach, if the beach weren’t covered in crude oil. And if Americans didn’t desperately need those second jobs because the first jobs pay minimum wage with no benefits, and those “days off” weren’t just the employer cutting their hours.

  32. 86

    If you give a European extra vacation days, the European will go to the beach. If you give an American (not employed by the PTO) extra vacation days, the American will work another job. Americans are the hardest working people on earth.

    That’s not what the Teahadists in the Party of McVeigh are saying. They are saying that Americans are lazy and that unless we immediately end all those unconstitutional “entitlements” like unemployment benefits, nobody will ever want to go back to work again.

  33. 85

    Given the state of the global economic crisis today, these numbers are sadly not that surprising at all. Truly, inventing something alone requires money and effort while the patent process can be costly and timely as well. These are just commodities today that few people and companies have.

  34. 83

    IANAE, just because patent examiners do not have an ethos of hard work does not mean that all Americans lack a work ethic. If you give a European extra vacation days, the European will go to the beach. If you give an American (not employed by the PTO) extra vacation days, the American will work another job. Americans are the hardest working people on earth.

  35. 82

    Ethos of hard work? Really. How many weeks of holiday do Germans award themselves?

    First rate educational system? really. Have you heard about the international PISA comparisons here in Europe?

    But if you had said something about health, shared investment, confidence and trust in social infrastructure, then I might have agreed with you. Check out the quality of the city centres and their transport systems (bus, tram, subway, roads and railways) and the lack of vandalism visited on all this ultra-modern, immaculately maintained public infrastructure, next time you come to Germany. Stroll through a shopping centre on a sunny Saturday afternoon and try to spot an obese person.

    Corporate taxes. Do me a favour. German corporations cry that what they pay is the highest in all the world. Is this not, Ned, what every corporation anywhere in the world, always says, about its home country? And you believe it?

    But plug on with all that “rugged pioneer” stuff Ned, if it makes you feel good and suits the American mindset. Each to his own. I’m sure there is a lot of force in the argument. And perhaps (who knows) the vital pioneer spirit and the high tax infrastructure are actually incompatible with each other.

  36. 81

    Increased government spending is what got us out of the Great Depression. The worst year of the Great Depression was the year FDR listened to the Republicans and cut spending.

  37. 80

    Germany has long had a first rate educational system for all, and an ethos of hard work. The combo is lethal.

    And yet, nobody trying to solve America’s problems ever suggests addressing either of those two shortcomings. Well, Obama did faintly echo JFK’s “ask not what your country can do for you” sentiment during his campaign, but that’s about it.

    It was a huge fight just to get a public healthcare system that probably doesn’t hold a candle to Germany’s – the very first in Europe.

    Can you imagine what Americans could do if they got a proper education, had a proper work ethic, and stayed healthy long enough to accomplish stuff? After all, even if you’re taxed on your profits you are still turning a profit.

    But no, let’s lower taxes. That’ll make unionized US unskilled labor cost-competitive with the far east. Surely that’s the only thing the Germans are doing right.

  38. 79

    Just an observation, Max, but Germany has long had a first rate educational system for all, and an ethos of hard work. The combo is lethal.

    As well the German corporate tax is not so great as it is in America. This helps keep jobs in Germany.

    The US system is highly dependent on individual initiative, the startup, the pioneer. Incentives to invest are critical. That is one of the reasons taxes are important.

    In the last election, even the high-tax democrats were talking about lowering the US corporate tax burden in an effort to keep jobs here. Didn’t happen, of course.

  39. 76

    You are so perceptive ping. That’s me sorted. Now tell us, how come you are yourself here so much. What’s your story? Oh I forgot. Never mind. You don’t do questions, do you.

  40. 75

    Maxie – you be a blimey stuck in Germany? No wonder why you be so unhappy and hang around these boards so much.

  41. 74

    It’s that simple is it Ned. Even for a patent attorney to figure out?

    Maybe in your country, but not in Europe. Have you visited Germany recently Ned? Check out the unemployment figures there, and the tax rates, and the prosperity everywhere you look, and then compare life in Germany with life in England.

    The biggest factor is social capital. Who does one trust, these days?

    In Germany, believe it or not, “Your employer” is top answer, higher than all the other “usual suspects” on the public opinion poll questioner’s list.

  42. 73

    For those of you who like facts, check this:

    Compare tax rates with economic growth. Here is a chart of tax rates: link to en.wikipedia.org

    Here is an economic history of the US:

    link to en.wikipedia.org

    Note: the huge rate increases under Wilson caused a depression. The tax rate cuts by Harding and Coolidge caused a boom. The stock market crash cause a decline that was turned into the great depression by the Hoover tax hikes. FDR continued to raise taxes his entire administration. Economists are in general agreement that the tax hikes by Hoover and FDR kept the US in the depression even while the rest of the world was enjoying a boom.

    So, what does this tell one? Is there any correlation between taxes and economic prosperity?

  43. 72

    ” I see restrictions now routinely made with no explanation, save a form paragraph, as to the reasons for restriction. And I’m not talking about applications with 100 claims–these are on 20-claim applications.”

    We make those in my AU to prevent the situation of you amending in a ton later and us not being able to restrict then.

    “Sometimes a justification is made for the restriction by classifying the a dependent claim and the independent claim from which it properly depends into mutually exclusive subclasses, which one would think would be a logical impossibility.”

    You say the dep is properly dependent but I’ve seen quite a few misdrafted deps in my day. On the other hand, misclassification is par for the course around here these days. Some days it seems like half the corps seems to think that if the invention involves the 2 dot but not the 1 dot then it’s A-ok to drop it there (at least cross it there).

    I even found a blatantly misclassified patent I did myself back in the day. Je s u s krist. I would think that a spe could have classified that properly in his sleep. At least it appears that was pretty much the only one that I’ve issued that was so blatantly misclassified. Many others aren’t great though.

  44. 71

    By the by Adam,

    ” It should be a race on the merits facilitated by a government of laws, not thugs. Put real risk and reward back into the system. ”

    It is a race on the merits and the thugs are the real risk in the system. I suppose some people get a reward so that’s there too.

  45. 69

    “Nobody could have predicted that Beauregard claims would bite the dust! Nobody!”

    You keep predicting it Mooney, and, predictably, nothing keeps happening. Just like in the world of your intellectual development.

  46. 68

    Cut government spending by 50% – start with 6. Of course BigGulp sales will suffer dramatically as a result.

  47. 67

    I’ll tell you in three words why more claims (done right) are better:

    The. Unknown. Future.

    Nobody could have predicted that Beauregard claims would bite the dust! Nobody!

  48. 64

    I’ll tell you in three words why more claims (done right) are better:

    The. Unknown. Future.

    Rules change.

    Regulations change.

    Laws change.

    Court decisions change.

    As we’ve seen, today’s claim (types) may someday not be allowed.

    How and when they may or should be used may change.

    How they’re interpreted may change.

  49. 61

    “6, I do not understand. Are you saying that more than one examiner is working on (i.e., examining) claims in a single application?”

    Um, yes. They’re working on a “single application” in so far as one does the parent and one does the DIV. What did you think happens to most of your restricted applications? Are you familiar with office procedure at all?

  50. 60

    6, I do not understand. Are you saying that more than one examiner is working on (i.e., examining) claims in a single application?

  51. 59

    “While Congress plunges us deeper into the pit of debt to feed an obscenely bloated government, visionaries like Russia are trimming their national costs by firing bureaucrats by the thousands”

    I thought you were an Obama / Democrat supporter?

  52. 58

    Paul Morgan, why don’t we consider extending your idea of examining only the genus claims leaving the examination of the species claims to the future – perhaps in RCE’s – to the general case, and examine only the independent claims. If the applicant wishes to incorporate subject matter from the dependent claims into the independent claims he could do so in RCE.

    We can then reduce the search and examination fees accordingly – and also totally eliminate excess claim fees for dependent claims.

  53. 56

    are different enough that they are likely to be restricted

    More mind-reading requirements laid on the applicant.

  54. 55

    “cut government spending by 50% — what do you propose to cut — social security, medicare, medicaid, military, veterans benefits?”

    I’m down with that sickness.

  55. 54

    “Cut taxes and government spending by 50% immediately. Put some teeth back into the patent right and watch filings, number of claims, and the American entrepreneurial engine roar back into life.”

    cut government spending by 50% — what do you propose to cut — social security, medicare, medicaid, military, veterans benefits?

  56. 53

    Explain what? In your hypo system you seem to want to just pay for the extra claims to be examined by the examiner who has the case. It’s not that simple in most cases. If I restrict an application it goes into, for example, two parts. One part I’ll take. The other part I might also examine, but only rarely, and when I do decide to I usually end up regretting it because it is outside my normal stomping grounds of subject matter. It will usually go to someone outside my AU, or even outside my TC.

    Now lately I have an AU where some of the guys do some of the stuff that is often the subject of the other part of my apps, so it will sometimes go to them. My old AU was not a “mixed” AU like this though, and the case would have gone outside the AU.

  57. 52

    The applicant is not required to be aware of the internal searching requirements of a particular examining group.

    No, but the applicant is required (sort of) to claim only a single invention in a single application. If his independent claims are different enough that they are likely to be restricted (now that we are aware of restriction practice, thanks to this thread), he is well advised to consider the implications for his application, as well as whether he really needs all those claims in the first place.

  58. 50

    “A better way that could be easily implemented via the EFS would be to issue a preliminary report that either contains a restriction or a a bill to examine all pending claims. Perhaps a nominal fee can be charged at this time to pay for the examiner’s time to restrict, and thereafter, the claims to be examined paid for.”

    Thing is Dr, often that restriction needs to go to two different examiners.

  59. 49

    “A better way that could be easily implemented via the EFS would be to issue a preliminary report that either contains a restriction or a a bill to examine all pending claims. Perhaps a nominal fee can be charged at this time to pay for the examiner’s time to restrict, and thereafter, the claims to be examined paid for.”

    Thing is Dr, often that restriction needs to go to two different examiners.

  60. 48

    That is not true Ian. The applicant is not required to be aware of the internal searching requirements of a particular examining group. Classification is a PTO thing. Plus, restriction, especially between related inventions, is at the discretion of the examiner (unless the applicant wants to argue that the inventions are not distinct – duh).

    A better way that could be easily implemented via the EFS would be to issue a preliminary report that either contains a restriction or a a bill to examine all pending claims. Perhaps a nominal fee can be charged at this time to pay for the examiner’s time to restrict, and thereafter, the claims to be examined paid for.

  61. 47

    If an application is filed with, say, for simplicity, a generic claim and 100 species claims, why could not the PTO simply say that it would only search and act on the generic claim in the first office action

    Posted by: Paul F. Morgan | Sep 20, 2010 at 01:45 PM

    Paul, I usually get an election of species in this situation, rather than a restriction. The main difference being that rejoinder is possible without the need to petition.

  62. 46

    It is a sham for the PTO to charge 220 dollars for examining each extra independent claim and 52 dollars for each extra dependent claim when these claims are not ever truly examined in the parent application.

    It could also be said, with a rationale similar to the basis for making a rejection final, that if your claims end up being restricted you should never have filed them in the same application in the first place. And had you planned ahead, you would not have been called upon to pay the “sham” fees.

  63. 45

    “It is a sham for the PTO to charge 220 dollars for examining each extra independent claim and 52 dollars for each extra dependent claim when these claims are not ever truly examined in the parent application.”

    Why not petition for your fees to be returned? Are those fees even set by the office? Or is it a statute that you don’t like?

    Is there also perhaps a problem in your perception that the fee is there in order for you to “pay for examination of your claims” as opposed to a simple arsehole tax on you for making so many claims? Perhaps, if it is indeed stated as an examination fee, then that is just a cover for an arsehole tax?

  64. 44

    Claim fees should not be paid until some determination has been made as to which claims are to be examined, or some other system that credits non-examined, but paid for claims in divisionals.

    It is a sham for the PTO to charge 220 dollars for examining each extra independent claim and 52 dollars for each extra dependent claim when these claims are not ever truly examined in the parent application.

    Jules, I agree that there are times where the examiner must utilize restriction to efficiently examine an application in the short amount of time given (by the PTO, but not set based on the $$$ paid for claims). The problem is not with you; it is that the PTO has been paid to examine claims and they are not doing it.

  65. 43

    Broje I just went ahead and read your whole post. What you’re saying seems a bit, um, made up. We do have to include the subs that must be searched for “group” restrictions, it is only for “species” restrictions where this is not the case. And that is because there can be an examination burden even if the search is not going to be hugely more burdensome. See: prior art applicable to one species would likely not be applicable to the other etc. However, examiners can put in the subs for a species restriction as well if the species are so far apart that they are under a different classification or “field of [text] search”.

  66. 42

    Yeah I had seemed to notice this trend of less initial claims in newly filed cases myself. It did seem rather weird to me at first, ahd there are no doubt a variety of factors at play but chief amongst them is likely the $.

    “Don’t you think it is a bit arbitrary for the Examiner to issue a ristriction of claims when one set requires search of classes A, B, and C, and the other requires search of A, B, C, and D? If the Applicant then elects the claism that require search of A, B, C, and D, why is there extra burden on the Examiner to search A, B, and C for the other claims?”

    Are you sure that this is what the restriction said, or are you making up your own classifications now?

    “But if that’s your case, you could have made ABCD depend from ABC, and you wouldn’t have gotten restricted in the first place.”

    Not necessarily. He’s not talking about features abc, he’s talking about subclasses 1/1, 2, 3.

  67. 41

    Since you didn’t answer my questions, I don’t think I’ll answer yours.

    “The system is abusable by Examiners. It necessarily follows that the system will be abused.”

    Just like any other system, simply replace “Examiners” to your hearts content.

  68. 40

    Don’t you think it is a bit arbitrary for the Examiner to issue a ristriction of claims when one set requires search of classes A, B, and C, and the other requires search of A, B, C, and D? If the Applicant then elects the claism that require search of A, B, C, and D, why is there extra burden on the Examiner to search A, B, and C for the other claims?

    If that’s your case, you have a perfectly good argument for traversal, especially if you elect the ABCD species.

    But if that’s your case, you could have made ABCD depend from ABC, and you wouldn’t have gotten restricted in the first place.

  69. 39

    Jules,

    Don’t you think it is a bit arbitrary for the Examiner to issue a ristriction of claims when one set requires search of classes A, B, and C, and the other requires search of A, B, C, and D? If the Applicant then elects the claism that require search of A, B, C, and D, why is there extra burden on the Examiner to search A, B, and C for the other claims? I’d really liek to see some data showing how often the classes searched in a divisional turn out to be the same classes as were searched in the parent. I can’t remember ever seeing a restriction requirement that identified which classes would have to be searched for each restriction. Why don’t Examiners identify the clases so there can be some accountability? Oh, I know, it’s because they aren’t required to do it, and who would volunteer to be held so accountable? The system is abusable by Examiners. It necessarily follows that the system will be abused. Why don’t Applicants traverse the restriction requirements? Because it delays prosecution, and hardly ever proves fruitful.

  70. 38

    “Given that Applicants pay for extra claims, I don’t see how there could be a serious burden placed on the Examiner unless some of the claims require searching art outside the area Examined by that art unit. ”

    Let’s disregard your leap in logic from fees to burdening the examiner, addressed by IANAE above. Consider coming up with more specific terms than “art unit” and “area”. Consider using class/subclass.

    Consider a fictional example: an application in the field of prosthetic limbs, with one claim set to the physical structure of a prosthetic limb, and another claim set to an algorithm for controlling said prosthetic limb. Prosthetic limb structures are classified in 300/4, while prosthetic limb control algorithms are classified in subclass 300/56 (fictinoal classifications). Can you imagine the differences in, and effort for, examining the two claim sets? Maybe you need to work at the PTO for a little while to gain that knowledge.

    Can you address 804.01, and do you understand any better now? Would you consider using the language from 804.01 to traverse?

    Like IANAE said, consider a traversal. But use better terminology and solid reasoning instead of undefined terms and accusational complaining.

    “Prosecution would be a lot more compact if the restrictions were not made, and the claims searched and examined together.”

    Again, maybe you need to put in some time working at the PTO. A proper restriction is fully justifiable. Without them, your examination would suffer because the examiner doesn’t have unlimited time to examine multiple inventions for a single application.

  71. 37

    Hey Ian, I am speaking the truth about the PTO, the examiner, the applicant, and claims fees.

    So am I. Even if the PTO didn’t charge extra, the applicant would probably be wasting his money filing that many claims, as well as getting a more cursory examination. Most dependent claims are completely useless to anyone but the agent who charges by the hour to draft them. If claim 34 wouldn’t be patentable over claim 1, scrap it.

    If you’re really worried about getting your 60 claims restricted, you can file the five independent claims, see if they get restricted, and then add the dependent claims once the independent ones have been examined on the merits.

    But even if you’re only saving the fees for your non-elected claims on all your RCEs, that’s still good, right?

    And if you’re filing in Europe too, you should already have a nice set of 15 claims ready to go that pretty well covers the invention. The US won’t charge you any extra for examining those.

    You do not have to bring your work to a large and costly law firm,

    But if you do, shouldn’t you insist on getting value for money? I never understood all this “love it or leave it” nonsense. What’s wrong with “we generally like it, but think we could improve it with a little effort”? Not as catchy a slogan?

  72. 36

    Hey Ian, I am speaking the truth about the PTO, the examiner, the applicant, and claims fees. You do not have to bring your work to a large and costly law firm, and I would discourage anyone from doing so unless they would get some added value along the way for the rather large differences in price.

  73. 35

    Method and apparatus, for example, are typically classified separately, even when they are in the same art unit. Mind you that’s assuming they do more than a mere keyword search, which may be assuming too much.

  74. 34

    You are right to be concerned that you have paid dearly for the claims, but the PTO does not care about you or the examiner.

    This, of course, is in sharp contrast to your garden variety law firm, which charges more for complex or time-consuming files but doesn’t pay its salaried associates any more for their trouble. They just want your money. Only, they can’t scapegoat their own employees because it would raise liability issues, so they blame only the examiner.

    So I guess the main difference is that a lowly patent prosecutor can aspire to someday owning part of his firm, whereas such a person could never hope to rise as high in the PTO as, say, Director.

  75. 33

    Remember payment of fees is, for the most part, insulated from the examiners. You are right to be concerned that you have paid dearly for the claims, but the PTO does not care about you or the examiner. They just want your money, and like the fact that the examiner is the scapegoat.

  76. 32

    Feel free to consider this a dumb idea just to kick around: If an application is filed with, say, for simplicity, a generic claim and 100 species claims, why could not the PTO simply say that it would only search and act on the generic claim in the first office action, INSTEAD of the time-wasting forcing of multiple restrictions at THAT point in time? Then, if the generic claim is found to be anticipated, the applicant could abandon or amend the generic claim and make its own sensible reductions in the species claims, and/or get a restriction THEN, when it may actually be necessary?
    [Despite endless years of complaints, petitions and studies, the PTO seems to be incapable of fixing its lengthy and confusing MPEP restriction sections, or their highly erratic uncontrolled usage by differenct examiners. So something much simpler and more drastic needs to be seriously considered. With Kappos leading the PTO it might even be achievable?]

  77. 31

    Given that Applicants pay for extra claims, I don’t see how there could be a serious burden placed on the Examiner unless some of the claims require searching art outside the area Examined by that art unit.

    Applicants don’t pay the examiner any more for extra claims, so why wouldn’t examining more claims for the same counts constitute a serious burden?

    If the divisional goes back to the same examiner, he is now given twice as much time to examine all those extra claims. That’s much less of a burden, as I’m sure you’ll agree.

    Prosecution would be a lot more compact if the restrictions were not made, and the claims searched and examined together.

    If the claims demonstrably can be searched together, you are free to traverse the restriction requirement. But then, you should probably have fewer independent claims if that’s the case.

  78. 30

    What’s really funny is when Mooney talks about “his clients.” If you have so many clients Mooney, why are you always here smelling up the air with your anti-patent, anti-business, anti-prosperity buffoonery.

    Thankfully, those of us who still have jobs sincerely hope that your worldview gets relegated back to the dumpster where it has always belonged.

  79. 29

    “We can all be thankful that your m0r0nic plan is dead on arrival,”

    Except it isn’t. Contrary to your wishful blustering Mooney, it’s just getting started what with tea party candidates winning everywhere and Democrats abandoning the likes of Obama and Pelosi in droves, your little predictions are clearly based in nervous, forgot-to-flick-your-cigarette-ash fear. Nothing new here Mooney, we’ve all seen your little tantrums before.

    For someone who is always talking about this one or that one having their head in the sand, you should try pulling yours out of the sand, or where ever it is that you’re wedging it these days…

  80. 28

    My relpy to Jules and Hoteling Examiner:

    803.01 MANUAL OF PATENT EXAMINING PROCEDURE
    Rev. 5, Aug. 2006 800-4
    If the search and examination of **>all the claims in an< application can be made without serious burden, the examiner must examine *>them< on the merits, even though **>they include< claims to independent or distinct inventions. >
    I.< CRITERIA FOR RESTRICTION BETWEEN PATENTABLY DISTINCT INVENTIONS There are two criteria for a proper requirement for restriction between patentably distinct inventions: (A)The inventions must be independent (see MPEP § 802.01, § *>806.06< , § 808.01) or distinct as claimed (see MPEP § 806.05 - § *>806.05(j)< ); and (B)There *>would< be a serious burden on the examiner if restriction is >not< required (see MPEP § 803.02, **>§ 808< , and § 808.02).

    Given that Applicants pay for extra claims, I don’t see how there could be a serious burden placed on the Examiner unless some of the claims require searching art outside the area Examined by that art unit. If the Divisional goes back to the same art unit, where is the “serious burden?” I think Examienrs just ignore the requirement for “serious burden.” Prosecution would be a lot more compact if the restrictions were not made, and the claims searched and examined together.

  81. 26

    Oh, and you forgot about repealing the 14th amendment and teaching creationism in schools.

    And deregulating all domestic industry. It worked so well for the banks, and it’ll work for manufacturing too. Our government’s obsession with governing has allowed China to take the lead in manufacturing – and sell it back to us in our children’s toys.

  82. 24

    Cut taxes and government spending by 50% immediately. Put some teeth back into the patent right and watch filings, number of claims, and the American entrepreneurial engine roar back into life.

    We can all be thankful that your m0r0nic plan is dead on arrival, Candy. Oh, and you forgot about repealing the 14th amendment and teaching creationism in schools.

  83. 23

    Cut taxes and government spending by 50% immediately. Put some teeth back into the patent right and watch filings, number of claims, and the American entrepreneurial engine roar back into life. Hire back retired Examiners as consultants to teach examiners how to do their job. True freedom means that the outcome can’t be predicted by who buys the most politicians. It should be a race on the merits facilitated by a government of laws, not thugs. Put real risk and reward back into the system. Not predictable outcomes based on corporate payoffs.

  84. 22

    Because, like the concept of *real* business with *real* innovation protected by *real* patents prosecuted by *real* attorneys representing *real* clients before *real* examiners working for a functional PTO administered by a *real* constitution-abiding government, having *real* courts rendering sensible decisions that *really* protect those *real* exclusive rights, has become largely a sad, overly politicized and socially engineered joke.

    We can’t have actual inventors with revolutionary ideas disrupting the carefully orchestrated plan of allocation of capital by the state so that bloated corporations that invent nothing but paychecks half of which get fed back to the state can maintain the unsustainable status quo. So why bother filing a bunch of claims that will not be properly enforced anyway. No one has that kind of long range vision right now.

    American entrepreneurship has become dumbed down, mediocrity has become institutionalized and the scope of the failure itself has been deemed too big to fail, supposedly. There is just too much epic failure to admit to.

    While Congress plunges us deeper into the pit of debt to feed an obscenely bloated government, visionaries like Russia are trimming their national costs by firing bureaucrats by the thousands.

    What’s wrong with this picture?

  85. 21

    Maybe two punches were necessary. With that level of unsubstantiated BS, it might even require more. I think this language from 804.01 is pretty strong:

    “This apparent nullification of double patenting as a ground of rejection or invalidity in such cases imposes a heavy burden on the Office to guard against erroneous requirements for restrictions where the claims define essentially the same invention in different language and which, if acquiesced in, might result in the issuance of several patents for the same invention.”

  86. 20

    Jules, “Try reading chapter 800, particularly 804.01 to help understand when a restriction may be improper, i.e. “bogus”. If two claim sets present in one application would induce an ODP rejection if they were claimed in different applications, then restriction is likely not proper. That’s one test I find most useful, but there may be others. Certainly no test has to do with which Art Unit a case belongs to.”

    Obviously, the patent office is performing malpractice to the extent that it will allow two patents on the same invention because it cannot now enter a double patenting rejection between the parent and the divisional.

    But, from the view of the applicant?

    But I agree that the cost of the excess claims fees is a primary cause of the reduction in number of claims, especially in view of the fact that one has to pay for the claims every time one files an RCE and RCEs are almost the norm today.

  87. 19

    It would be interesting to see a study of how many times 5 independent claims are restricted when the entire claim set is 20 claims or less v. when the entire claim set is 40 or more. (assuming a total of 5 independent claims).

  88. 17

    “The justifiable reason for restriction is because the other claims need to be assigned to a different Art Unit. If that’s not needed, then the Exmainer should go ahead and examine them, since the Applicant paid extra money for the additional search and Examination on a pay per claim basis.

    Any time the Divisional goes to the same art unit, it’s a bogus restriction.”

    Go read the MPEP, then come back to us. It doesn’t say that burden is established only when a different AU is required for the restricted invention. Hopefully you realize singular art units examine multiple inventions that are distinct from one another.

  89. 16

    “Any time the Divisional goes to the same art unit, it’s a bogus restriction.”

    Good thing you’re living up to your name, because that is a bogus statement. Cite some support or give up on your “logic” right now, or keep wasting your time.

    Try reading chapter 800, particularly 804.01 to help understand when a restriction may be improper, i.e. “bogus”. If two claim sets present in one application would induce an ODP rejection if they were claimed in different applications, then restriction is likely not proper. That’s one test I find most useful, but there may be others. Certainly no test has to do with which Art Unit a case belongs to.

  90. 15

    Of course, our paternalistic overseer alredy knows what is good and proper for all applicants and has already decided what should be and what should not be.

    By which you mean “the government gets to decide who is entitled to a patent and under what circumstances”?

    Ooh, how paternalistic. What a shame they didn’t put something in the Constitution to prevent the government from doing that.

  91. 14

    Restrictions should not be used to reduce how many claims an Examiner will review, but they often are.

    Actually, that’s exactly the reason restrictions should be used. It’s the reason they exist.

    The justifiable reason for restriction is because the other claims need to be assigned to a different Art Unit. If that’s not needed, then the Exmainer should go ahead and examine them, since the Applicant paid extra money for the additional search and Examination on a pay per claim basis.

    Any time the Divisional goes to the same art unit, it’s a bogus restriction.

    That said, it does make sense for Examiners to receive more credit for Examining applications having more claims, but they shouldn’t get a whole extra count for a divisional where they already did the search in the parent, and have a rejection road map from the prosecution history in the parent. That’s part of what is motivating all of the undue restrictions, because Exmainers get rewarded in easy counts for restricting that way.

  92. 13

    In any event, it should be up to the applicant to decide how to“…

    – define the invention.
    – pursue the business dealings and contracts that the applicant desires.

    Of course, our paternalistic overseer alredy knows what is good and proper for all applicants and has already decided what should be and what should not be.

  93. 12

    you can’t accurately predict how some word will be construed in your claim,

    Depends on how you choose your words, and whether you’re willing to define them in your spec. A little experience will teach you which words to avoid if you don’t like surprises.

    it’s always a good idea to have alternative approaches in describing the same invention.

    Sure, you might want to claim your invention from different angles, but even so there’s a limit to what you can usefully claim before you can accurately predict that your claims are going to get restricted.

    Restrictions should not be used to reduce how many claims an Examiner will review, but they often are.

    Actually, that’s exactly the reason restrictions should be used. It’s the reason they exist.

    But yes, if examiners do review a large number of claims in a single application, and they can’t properly be restricted for some reason, their extra work should be recognized by their employer. Then again, as long as they’re getting paid the same anyway, wouldn’t you rather they spend a proper amount of time on 20 claims than do a bad job examining 100?

  94. 11

    IANAE – 1. agreed re timing of claim drafting and spec writing – 2. point was spending 10% more drafting time on an extra 20+ claims is a worthy investment, but only if those claims are going to be reviewed by the Examiner. 3. Disagree re need to have alternative claim sets – you can’t accurately predict how some word will be construed in your claim, so it’s always a good idea to have alternative approaches in describing the same invention.

    In any event, it should be up to the applicant to decide how to define the invention, including how many claim sets are desired. Restrictions should not be used to reduce how many claims an Examiner will review, but they often are. If Examiners got credit for reviewing the extra claims, I think restriction practice would be less likely to be abused.

  95. 9

    While restriction (correctly) practiced by the examiners is mostly understandable, the way the PTO manages restrictions and divisionals is a scam. When claims are paid for up front in one parent application, and a divisional is filed off of that parent, the PTO makes you pay again for examination of the same claims. SCAM!

  96. 8

    Patrick Muir: In many applications, it would make sense to draft 60+ claims after spending all that time and money in writing up the spec,

    1. It would make sense to draft the claims before writing up the spec.

    2. The claims will take longer to draft than the spec, if you’re drafting that many, which will make the application even more expensive even without the excess claim fees. Your time would be better spent going through the claims you’ve already drafted and seeing which 40 of them are worthless details nobody will ever infringe or that don’t meaningfully narrow the parent claim.

    3. How many claims do you really need when you’re only claiming one invention? If I were an examiner and I saw 60 claims in a mechanical art, I’d be thinking restriction too.

    Paul Cole: A single claim listing 200 potentially pharmaceutically active compounds is NOT the legal equivalent of 200 claims each to the individual compounds. And if the compounds all fall within a single genus claim, how is the Patent Office caused inconvenience or additional work?

    Okay, fair enough. If the drug companies want all those claims, all they have to do is pay for them. For companies in other fields, it’s simply not worth it. Maybe you’ll want to go a little over 20, budget permitting, but if you’re not patenting a chemical genus you really don’t need more than 20.

    How is the PTO caused inconvenience or additional work? They have to search 200 individual species. If you only claim the genus, they can stop searching once they find either (1) the genus, or (2) any single species in the genus.

  97. 7

    Restriction practice seems to be used at the USPTO now as a stall tactic to avoid having to produce an action on the merits. I see restrictions now routinely made with no explanation, save a form paragraph, as to the reasons for restriction. And I’m not talking about applications with 100 claims–these are on 20-claim applications. Sometimes a justification is made for the restriction by classifying the a dependent claim and the independent claim from which it properly depends into mutually exclusive subclasses, which one would think would be a logical impossibility. I wonder how the petitions office will be dealing with the increased load of applicants asking for review of restriction requirements made final.

  98. 6

    My prior post did not seem to stick – probably because I said something truthful about the PTO people pushing illegal rules.

    Reasons: cost! and failed continuation rules. Obviously, clients are very cost conscious these days. Think humans think!

  99. 5

    Reduced claim numbers relates directly to restriction practice. Restriction practice at the USPTO is out of control. If you file too many claims, your chances of receiving a restriction (no matter how related the claims are) increase dramatically. In many applications, it would make sense to draft 60+ claims after spending all that time and money in writing up the spec, but it is very unlikely you will be able to pursue them all in one app, so you reduce your claim numbers to a smaller set to reduce your chances of attracting a restriction, and save costs.

    Examination is a tough job and Examiners should be given credit for the review of the extra claims over the 20/3 limits. PTO should also implement some sort of quality review of restriction practice – maybe they have it already?

  100. 4

    Here’s my $.02 — the EPO is causing this. My big clients file all their applications at the EPO as well as the USPTO, so, unfortunately, my claiming strategy is altered somewhat to ensure the EPO counterpart is done properly.

  101. 3

    A reduction in claim numbers is not necessarily good.

    A single claim listing 200 potentially pharmaceutically active compounds is NOT the legal equivalent of 200 claims each to the individual compounds. And if the compounds all fall within a single genus claim, how is the Patent Office caused inconvenience or additional work?

    Rights of applicants and patentees should take precedence over bureaucratic convenience, and arbitrary rules are not universally beneficial. Reconsideration is appropriate, especially in the chemical/pharmaceutical arts.

  102. 2

    Excess claims cost money, and increasingly applicants don’t have it. You can also file two applications and split up the claims if the excess claims fee would exceed the filing fees of a second application. I think the dividing line is somewhere around 35 claims with 3 independent claims.

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