by Dennis Crouch
In 1982, the USPTO began charging a surcharge for patent applications that included >3 independent claims and >20 total claims. The original surcharge was $10 per extra claim. The surcharge slowly rose up to $18 per extra claim by 2004. Then, in December of that year Congress pushed the fee up to $50 per claim–almost treble damages. Since then, the rate has continued to rise–jumping to $62 and then $80 in 2013. It now sits at $100 per claim beyond the 20-claim buffet limit.
The chart below shows the percent of patents that I call “jumbo patents”–those with >50 claims (orange) and >100 claims (dashed-blue). Both curves peak in 2005 with that year celebrating the issuance of the most jumbo patents in history. At its peak, only about 3.5% of patents issued with more than 50 claims. That number is now down below 0.5%.
I posit that the rapid decline in jumbo patents after 1995 was a direct result of the substantial rise in fee-surcharges December 2004. The impact of that change began to be felt in patents issued in 2006, and is shown much more dramatically by 2008 as the pre-2005 applications worked their way out of the system. An application with 50 claims (including 7 independent claims) went from an $850 surcharge to $2,300 surcharge. Thus, the new surcharge was substantially above the $1,000 fee for simply filing another patent, and almost covered the issue fee of $1,400 as well. In fact, the rise in jumbo patents was a key reason why the Dudas USPTO pushed for the large surcharge increase — Imagine seeing that upward trajectory in the pending applications and trying to figure out how to manage examination time.
= = =
The following are the most-jumbo patents from the past year:
- 11,116,808 – 394 claims – Nielsen Biosciences – “method for treating a common wart”
- 10,973,440 – 354 claims – method for “determining a gait velocity” – solo inventor.
- 11,080,336 – 302 claims – “a commonplace of information” – solo inventor
- 11,199,807 – 289 claims – Canon – Printer Cartridge
- 11,050,855 – 231 claims – JENAM TECH (a patent assertion entity) – timeout of a non-TCP setup
- 10,992,786 – 211 claims – IOEngine (a patent assertion entity) – network communication
- 11,075,994 – 202 claims – FedEX – method of monitoring shipping containers for environmental anomalies
- 11,135,311 – 188 claims – OCULIS EHF – ophthalmic microsuspension
- 11,063,439 – 183 claims – Solarlytics – solar panel efficiency method
- 10,951,742 – 176 claims – JENAM TECH
- 11,202,827 – 170 claims – Seagen – method of treating cancer using the anti-CD40 antibody.
“It now sits at $100 per claim beyond the 20-claim buffet limit.”
O lawd, no wonder nobody wanting to pay that lately. I had thought it was still around 35$.
Not everyone pays $100/claim. For a small entity, it is only $50/claim. I expect that apps filed by small entities are more willing to add extra dependent claims.
Perhaps that is why there are two pro se apps in that super-jumbo list. Micro entities pay only $25/claim for extras in excess of 20.
That’s what I figured but nearly 100% of my apps are mega corp.
I feel sorry for Canadian examiners, who, if I am correct about this, have to examine lots and lots of claims, since I do it think the Canadian Patent Office slaps an excess claims fee on their applications, not to mention their allowing multiple dependent claims without any extra fee for doing so.
.. do not think …
I meant ti write ‘.. do not think …’
I am surprised that only three of the eleven are pharma-related. I would have thought that the jumbos would have skewed much more to pharma.
Art Unit Groups with the most >50 claim patents:
3690 is a genuine surprise.
Good to know. So my impression was accurate that pharma applications are more likely than other applications to have a lot of excess claims, but for whatever reason the eleven largest claim sets are more randomly distributed among the art units. I am sure that it cheers the folks in the 1700s, to know that they are unlikely to see any gut-buster claim sets.
Between this and the “Central Tendency” article, I have to wonder what narrative is being crafted with attention to such minuscule issues.
There are simply bigger and more important issues still left unresolved, and the better application of energy and focus is not on the subject of “large number of claims.”
If somewhat less than 0.5% of patents are “jumbos” still issuing with more than 50 claims that could still be about 1,800 issued last year. That is of concern for at least two reasons. First, presumably many have been pending for way too long, from before the big December 2004 excess claims fee increase. Secondly, as far as anyone knows, only some of Hyatt’s long-pending applications with huge numbers of added claims have ever been given any of the extra examiner time which jumbo applications deserve. Logically, all other jumbos did not get sufficient examination of many claims.
The very fact that 3 or these 11 new jumbo patents are [even admittedly] owned by a patent assertion entity demonstrates a vastly higher percentage of these as important patents as compared to the very small percentage of normal issued patents that are ever asserted.
… “the very fact” ….
Ah, the Efficient Infringer “0h N0es Tr011s” is the desired narrative…
Logical fallacy:
“Imagine seeing that upward trajectory in the pending applications and trying to figure out how to manage examination time.”
This presumes that ANY such “management” was ever contemplated.
Let’s hear from Examiners on this.
Better yet, let’s hear from a representative of the Examiner’s Union.
This presumes that ANY such “management” was ever contemplated.
I absolutely think that this was done for time management reasons.
Thanks Random – but “what” was done for time management reasons?
How was examiner time managed here?
How was examiner time managed here?
Using some hypothetical but largely accurate numbers – assume the average primary examiner examines four new applications a biweek, one of which is selection-controlled based on a docket timer, each comprising 20 claims that generally means 7-10 unique claims. At the end of the biweek the office has four documents which one can review discussing the patentability of 80 claims, some 28-40 of which are unique. And if not, it is because the examiner is submitting other documents based upon open applications that have been amended, all of which are all selection controlled by docket clocks. This ensures (a) work is provably done and (b) difficult or disfavored actions are not kept in administrative limbo.
Now imagine that a second examiner is randomly passed one application with say 70 unique claims out of 170 claims. That second examiner could be just as good as the first one and yet not produce any document at all for over 4 weeks.
Now try and determine whether that second examiner did any work at all in the past month. Then readjust the timers on all of their amendments because they could not reasonably comply with both the new application timer and the amendment timers at the same time. Imagine how this impacts statutory extended enforceable time due to office delay.
Then consider a third examiner who is randomly passed a 170 claim application with 120 unique claims. Repeat.
Inconsistent amounts of work per application would require inefficient modifications to the entire pipeline beyond the completely subjective fact of trying to scale the credit for the amount of work.
By essentially forcing 3/20 claims and utilizing restriction, there’s some plausible consistency in work per application in a given field. Then all you have to do is balance CPC classes against each other for relative credit time (and they can’t even do this well) and you can have a single number for docket timers. If you can’t plausibly enforce consistency, every examiner is encouraged to seek nonstandard time, and every supervisor is encouraged to grant nonstandard time, and that makes holding either examiners or supervisors accountable difficult or impossible. Work/time and quality/work are the only real mechanisms you can use to determine if an examiner is any good at examining. It’s unquestionable that given infinite resources one could either better confirm validity or better prove invalidity, so you can’t allow subjective time modifications on a routine basis.
But does your “hypothetical” ACTUALLY happen
(vis a vis; “Then readjust the timers on all of their amendments“)
Are the timers so adjusted? Are counts actually adjusted?
Are the timers so adjusted? Are counts actually adjusted?
There is an automatic credit adjustment of one hour (total, over the whole evaluation) for 25+ claims, and another hour for (I think) 150+ spec pages. Both of which are essentially nothing at all. Then there is a blanket statement that further adjustments could be made on a showing its appropriate. I don’t believe there are any DM adjustments as a matter of course.
That being said, the point is that the adjustments don’t have to be made because jumbo patents are so uncommon, because the fees cut them off at the head. I’ve gotten one, maybe two jumbos in the past year, and nothing approaching 70 unique claims, so I haven’t had occasion to ask for a large amount of extra credit or pauses to my clocks. You have a very low percentage chance of lucking into a 1-3 claim application sometimes too, and it all balances out. I assume that with the jumbo fees the number of applications one would spend 4 weeks on numbers in the dozens per year, spread out over a corp of thousands.
The thing the office clearly wants to avoid is a situation where every supervisor is giving adjustment credit routinely. That opens the office up to complaints of favoritism or targeting. So the goal is to standardize as much as possible so that credit is given only in extreme cases so you couldn’t establish a pattern of improper assistance. To standardize you have to make it as painful as possible to practice outside of the norms, hence the fees.
And to be fair it simply makes common sense – $3300 to examine a 50 claim application versus $3000 to examine three 20 claim applications is probably going to take about the same amount of examination time.
“Both of which are essentially nothing at all. ”
Which is basically my point, eh?
“the point is that the adjustments don’t have to be made because jumbo patents are so uncommon,”
ALSO my point, eh?
“To standardize you have to make it as painful as possible to practice outside of the norms, hence the fees.”
Hardly “painful” – but as I have also noted something that has been effective in changing habits (habits which include a more purposeful use of Continuations).
So you have in effect confirmed THREE of the points that I have provided spanning these two recent threads.
You could come out and say as much, you know.
I have rather a lot of jumbo apps (overall spec+drawings+claims all together), though they generally stick to 40 or less claims even for jumbos these days. I guess at the 100$ per extra claim cost they figure may as well put the rest in a CON and have the costs deferred (that is they can wait and see if they actually need those other claims for a couple of years rather than pay hundreds/thousands now).
“Hardly “painful””
I mean you say that anon, but a lot of these dudes basically have from their clients an outright ban on going over the bare min on the claim excess fees (as reported by them to me on many occasions). So, to those drafters it is rather painful when they would like to be able to make a whole other claim line, because they are effectively banned, but they are also tasked with trying to best protect the innovation (they are also sometimes basically in charge of prosecution for all intents and purposes tho they run things by some other guy).
I literally laughed at 6’s comment of, “I guess at the 100$ per extra claim cost they figure may as well put the rest in a CON and have the costs deferred”
as he ‘resisted’ this very point of mine on the prior 3/20 claim post.
Do you even realize this, 6?
If you file the original U.S. application leaving out other intended claims for a later “continuation?” is that possibly going to limit foreign application coverage since that can only claim Paris Convention priority from the original?
“as he ‘resisted’ this very point of mine on the prior 3/20 claim post.
Do you even realize this, 6?”
I’m not sure that you ever made such a “lolpoint” clear, with dollar amounts attached derp derp ta rd. Had you put the $$$ amounts up I’m sure I would have understood. But your usual obscurantism no doubt reigned supreme.
“If you file the original U.S. application leaving out other intended claims for a later “continuation?” is that possibly going to limit foreign application coverage since that can only claim Paris Convention priority from the original?”
Not sure if you’re asking me or whom, but I would guess it could have intl reprecussions due to their WD reqs and all depending on some factors, but you’d need to consider all that before filing.
If you file the original U.S. application leaving out other intended claims for a later “continuation?”
One can include the subject matter in the original application, even as one leaves out the claims, with the intent of pursuing the omitted claims in one or more continuations. I do not imagine that anyone is proposing to omit the subject matter altogether, as would be necessary for this strategy to cause problems in the ex-U.S. branches of the patent family.
“ ever made such a “lolpoint” clear, with dollar amounts attached ”
LOL right back at you, as the point simply does not need dollar amounts attached.
But you be you and cling to that Peak of Mount S of yours there 6.
“So the goal is to standardize as much as possible so that credit is given only in extreme cases so you couldn’t establish a pattern of improper assistance.”
Which is why ta rds needs to give more time period. Derp derp.
“why ta rds needs to give more time period”
LOL (again) – just so that we are clear here 6, WHO are these particular “ta rds” that be needing to give more time?
(and did you want to attach dollar amounts — or hours — to any such action?)
“By essentially forcing 3/20 claims and utilizing restriction”
That’s rather the point — THESE are not “forc[ed] 3/20 claims” (and let’s not even get started on the Office’s restriction pracitce, which is BOTH not at issue in this thread, nor bears any semblance to reasonable actions per any type of APA evaluation).
Your response SOUNDS like something that MAY be a consideration, but that consideration is just not here — for any actual “management” of the subject Jumbo claim sets.
THESE are not “forc[ed] 3/20 claims”
No, but clearly the number of jumbo applications would be much higher if the fees weren’t increased.
If you tell me a set of applications in my field are non-jumbo and prepared by an attorney I can confidently predict how much search (in specific) and examination (in general) will be spent on average over say 20 applications. While no individual application is a good test and you may run into an easy/hard dispute once or twice, the average would fall into a small range so you can confidently use that average to see who is over/underperforming it.
You hand me a stack of 20 applications that are jumbo or not prepared by a lawyer and the range of time it takes to search (for jumbos) and generally examine (for pro se) is all over the place, and consequently you aren’t really evaluating the examiner so much as the blind luck of a semi-random docketing algorithm. Its clear that it makes administration difficult.
let’s not even get started on the Office’s restriction pracitce, which is BOTH not at issue in this thread, nor bears any semblance to reasonable actions per any type of APA evaluation
They’re more intertwined than you seem to think, as are RCE and appeal fees and rules about nonresponsiveness and election by original presentation (which is not necessarily a restriction issue). They are all directed at standardizing the number of unique limitations in a given atomic office action. Whether they’re appropriate or not is another question altogether.
“so much as the blind luck of a semi-random docketing algorithm. Its clear that it makes administration difficult.‘
Yet again – my point.
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March 8, 2022 at 6:55 pm
“so much as the blind luck of a semi-random docketing algorithm. Its clear that it makes administration difficult.”
Yet again – my point.
The first fees for excess claims were for more “compact prosecution” and also to reduce some prior game-playing by some applicants of inserting plural independent claims in which a key limitation was left out of one of them, apparently hoping the examiner would not notice.
“The first fees for excess claims were for more “compact prosecution” and also to reduce some prior game-playing by some applicants of inserting plural independent claims in which a key limitation was left out of one of them, apparently hoping the examiner would not notice.”
I was never sure if that was game playing or just them trying for slightly larger claim scope. When I see it these days generally I figure it’s just the later as they’re just trying to squeeze by some few pieces of prior art (among the thousands searched and near hundred/s that are relevant usually) using one of the other limitations. Obviously it usually just gets them another rejection on other art, but they like to try sometimes. Even if you tell them on the phone it’s like a .1% chance of them getting it, and even if they believe you, they still want to try for the “dream meme claim”.
6,
Surely you recognize that Paul F. Morgan’s perspective is always anti-innovator, and thus ALL such things must only be ‘games.,’ eh?
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