Standard Patent Size

ClaimsPerPatent

by Dennis Crouch

The chart above might take a couple of minutes to digest, but the main point is that, while the median patent has remained relatively unchanged, patents are becoming more uniform in size.

The chart above shows the number of claims per patent for three groups of patents – those issued in 2007, 2012, and 2017 (through 10/16/17).  For each group, the chart provides a size-strata based upon the number of claims found in each patent and a relative percentage.  Thus, in 2007 about 27% of patents issued with 1 to 9 claims; in 2017 that figure has dropped to 20%.  Similarly, in 2007 about 30% of patents issued with 21 or more claims; in 2017 that figure has dropped to 18%.  That decrease at the extremes of claim count size has been replaced by a bulge in the middle – patents with 10 to 20 claims (especially those with exactly 20 claims).

This graphical representation is akin to a measure of variance or standard deviation.  As expected, the standard deviation has also dropped during this time as shown by the chart below:

STDEVClaims

This second chart reports both the average claim count and the standard deviation for each year of utility patent issuance.  Note that the average claim count has dropped slightly (especially since 2011) while the standard deviation has decreased substantially each year.

Causes: It is easy to postulate on the causes for the changes here.  First up is USPTO Fees.  Starting in 2004, the USPTO substantially increased the cost of filing patents with >20 claims or >3 independent claims.  This led to a substantial decrease in “jumbo” patents with many patent claims. Today, it is quite a bit cheaper (w/r/t USPTO fees) to file two patent applications with 20-claims (3 independent) each rather than one application with 40-claims (6 independent).

Evidence Based Prosecution II: Independent and Dependent Claims

In addition to USPTO fees, the market for patent prosecution has shifted significantly to patents-as-a-commodity with recognized usual costs.  The fixed-cost approach means that a change from the usual 20-claim standard will involve a heightened level of review and approval — something many outside counsel avoid.  Often, the fixed-cost agreement includes the particular number of claims to be drafted.  This reasoning can also be combined with the continued increase in the proportion of foreign-originated patents – many foreign applicants enter the US system with a smaller claim-set (based upon high foreign fees for jumbo claims).

Finally, we should recognize that independent inventors are a smaller proportion of patent applicants than ever before – as is the proportion of applicants that file without the advice of a patent attorney.  The very-small claim sets tend to come from these groups of independent inventors and those who do-it-yourself.

Some folks believe that restriction practice is also to blame here, but I have not thus-far found a significant increase in restriction requirements during this time.  (Percentage of applications filed as divisionals is down during this time period).

Good or Bad?: Perhaps a question for a different post, but the standardization has some important benefits: reducing transaction costs between applicant and attorney and facilitating better management of patent examiners.  The lower number of claims may also make it easier for third parties to understand the scope of what is claimed — however this is only true if the ‘extra’ claims are not simply being replaced by an ‘extra’ patent.

 

8 thoughts on “Standard Patent Size

  1. Good or Bad?: Perhaps a question for a different post, but the standardization has some important benefits: reducing transaction costs between applicant and attorney and facilitating better management of patent examiners.

    “Standardization” has facilitated the opposite of better management of patent examiners.

    “Standard” claim count being used to justify some type of standard “one sized widget” management may make things “easier,” but easier is not synonymous with better management.

  2. OK, as a recent example, a client has four US cases within the general size indicated in your analysis (with identical specifications), but a single application in Canada, India, China, and a few other places, with 4x times the number of claims in any one of the US cases. It is nice not to get nicked for extra claims in such places. In pre-Draconian US restriction practice days, that would have been a single US filing and we would have filed and paid fees accordingly. Now, we file four US cases on the same day to get the same result. Is this progress? More monkey motion at the USPTO, as far as I am concerned. Results in more maintenance fee payments, if that’s the USPTO goal…. But, it has not done any favors for the patent owner….

    On the other hand, given the financial pinch at the EPO on large cases, we shrink all of that down to maybe 18 claims total from the 4 US cases. Yet, given the “multiple/multiple dependency” scheme allowed there, we didn’t give up as much as you might in the US context. On the other hand, in litigation in Europe, you are more likely to get some of the 18 claims found infringed than the 80 claims in the US, due to the more practical claims interpretation. Likewise with respect to validity, in many arts…

    So, there are different answers for different legal schemes… …in different places around the world…. And, the US scheme presently provides less value for the $$ than many other countries….

    1. Isn’t there also a serious risk of “obviousness type double patenting” rejections in voluntarily [not by PTO restriction] splitting up inventions into plural applications just to file more claims less expensively?

      1. Note that merely having identical 20 year patent terms does not eliminate OTDP dangers. See the Federal Circuit’s decisions in Gilead Sciences, Inc. v. Natco Pharma Ltd., 753 F.3d 1208 (Fed. Cir. 2014), and Abbvie v. Mathilda & Terence Kennedy Institute, 764 F. 3d 1366 (Fed. Cir. 2014).

      2. I would view that risk as non-negligible, but certainly lower than the efforts to corrodinate continued prosecution. Same day filings with multiply different claim sets do not always get assigned to the same examiner, so fragmentation and (undesired) overlap may emerge after filing.

        The OTDP rejection is easy enough to overcome, if it arises. Also, it should be remembered that same day filing does NOT always yield same term lengths (due to PTA).

        1. Good additional points. But note that failure of at least one of the various split filing application’s examiners to apply OTDP is quite possible. But it will NOT be overlooked by defendants being threatend by or sued on any such patents, and it may NOT be fixable by terminal disclaimers at that late date per some Fed. Cir. decisions.

    2. The hot topic in England at the moment is infringement by equivalent, a scope of protection wider than what the claim means. Why did the UKSC do this, just a few weeks ago, in Activis v Lilly? To conform with the jurisprudence of mainland Europe. In doing so, it overturned a century of precedent, to help patent owners. Interesting, no?

  3. This is a good blog analysis of these statistics.

    The increased prep and prosecution fee and cost restrictions and controls by many major users of the PTO* could also account for the indicated reduction in divisional applications, since in most cases divisionals are no longer filed without client approval, which is not always granted. Also, there is the PTO system for subsequent rejoinder of restricted claims in some cases.

    *Many of whom do not seem to appreciate any correlation to their patent enforcement difficulties.

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