Recently, the European Patent Office (EPO) introduced steep increases in patent claims fees. From April 1 2008, an excess claim fee is due for each patent claim in excess of 15 and the fee will be as much as 200 EURO (!) per claim. In addition, there are further drastic new claims fee increases to take effect from April 1 next year.
So, if you plan to enter the European market, it might be a good idea to learn at least some of the techniques at your disposal for limiting the number of claims …
Right from the beginning when a patent application is drafted, there are a number of claim drafting techniques that can be used in order to reduce the number of claims. In the U.S. for example, patent applications often show a large number of claims having single dependency. In contrast, the EPO accepts multiple dependencies.
If the invention is claimed in more than one independent claim, e.g. apparatus and method claims, in Europe it may in fact often be enough to have only one sequence of dependent claims to which the second independent claim refers. Multiple dependencies can also be an effective measure in limiting the number of claims if certain combination of features are to be defined with as few dependent claims as possible.
In some cases, applicants may indeed also consider using optional features following expressions such as “preferably”, “for example”, “such as”, etc. in the claims (as long as these expressions do not introduce ambiguities, of course…). Although the EPO may object to such optional features in later prosecution, the EPO does not fundamentally object to the use of optional features in each and every case and, hence, applicants may consider using this approach in the first filed set of claims. This may help the applicant to find room for as many embodiments as possible within the fifteen claims. Furthermore, EPO allows claims including alternatives using the expression “or”. So, instead of claiming several embodiments in several dependent claims, the alternatives can instead be claimed altogether in one single dependent claim.
If used properly, the above techniques may help applicants to limit the number of claims. This sounds pretty good, doesn’t it? You might note that there are few disadvantages though – even if these techniques are properly used. However, if the techniques are not used properly, well then that is a different story…”
I therefore recommend contact with a European patent attorney at an early stage in the process who can advise you regarding a proper claim drafting. Our patent attorneys are ready to give you advice in this regard!
Christian Arkelius, Patent Attorney
