I had the honor of speaking at the NAPP Annual Meeting recently.
My presentation focused on foreign filing best practices and ways to ensure that your US approach would not undermine your global patent opportunities. One attendee asked a question which I feel would be of interest to our blog subscribers.
A portion of my presentation discussed the strategy of introducing multiple dependent claims at the PCT national stage as a way of reducing excess claim fees in foreign countries. As you may know, in all countries except the US, multiple dependent claims are counted as only a single claim, and it’s possible to have nested multiple dependencies. Therefore, claims in multiple dependent form can sometimes be a useful tool in reducing claim fees while maintaining the scope of the claims.
The question that arose was why an applicant would choose to enter claims in multiple dependent form at the 30 or 31 month date rather than including them in the initial priority or PCT application.
In our experience, a decent proportion of US attorneys don’t even think about multiple dependent claims when drafting the initial application. Often, the client is not sure whether they want to enter the international arena anyway, so their attorneys tend to tailor the application with US filing and prosecution in mind.
Accordingly, I focused my presentation on the idea of amending claims to include multiple dependencies at national phase entry outside the US.
However, it’s definitely worth considering whether including multiple dependencies when initially filing the PCT application might reduce your client’s costs in the long run. If it’s likely the application will enter the national phase in several countries, it’s easier to start with multiple dependencies because you don’t need to then introduce them to each and every country (often at additional cost) during national phase entry or prosecution.
Even if you need to enter the national phase in the US, the cost of amending once to go back to single dependency form at US national phase entry is most likely outweighed by the savings in time and foreign attorneys’ fees in other countries that can use the multiple dependencies as filed with the PCT.
Of course, before you start taking this approach, you must be sure you understand how multiple dependencies work, including their advantages and disadvantages. In practical terms, sometimes it’s easier to start with a single dependency approach then add in multiple dependencies after the claims are drafted, but sometimes it works better the other way.
However, sensibly used in the right circumstances, multiple dependencies are a great way of increasing the scope-to-cost ratio.
I am experimenting with using the EPC as the site for PCT applications, on the theory that it will give a better idea of whether the subject matter is effectively patentable outside the US and in particular in Europe. Besides the usual PCT commentary and references, there may be an opportunity to do an IPER in Europe after the initial PCT review. Although in principle the EPC/PCT search report is apparently supposed to be the IPER, there appears to be an opportunity to get another round of examination before moving to the national stage.
A first step on the learning curve has been to place Euro-style claims FIRST in the claim list in the PCT application. They apparently feel no obligation to look further down the list of claims after looking at US style claims, especially when the use of medical devices to cure disease, or other non-Euro topics, are being claimed. This is a nuisance, but renumbering the US claims is only that; keeping them in the application allows a delayed entry into the US if needed or wanted. It also ties in to the upcoming changes in EPC policy, in which only the first independent claim in the claim list will be examined.
However, it is not clear how to do an IPER in Europe (or if it is possible) without foreign correspondents. That is not a heavy burden, but it adds expense, which small clients try hard to minimize. Comments from those experienced in this area would be of great interest.
Hi Francis
As when a US applicant selects the EPO as the International Search Authority (ISA), there is no need to use a European representative if a Demand for International Preliminary Examination (IPE) is submitted selecting the EPO as the International Preliminary Examining Authority (IPEA).
In other words, it’s fine for a US patent attorney/agent or applicant to communicate directly with the EPO as IPEA.
That said, demanding IPE is not cheap, and in many cases it offers limited advantages. Certainly most clients we work with seem to only take this step relatively rarely.
Incidentally, I believe the changes to independent claim searching relate to only the first independent claim in each category being searched, rather than only the first independent claim per se. If you have, say, a method claim and a corresponding apparatus claim, both should be searched.
Thanks for your comment.
Jeff
A very important reason to use multiply dependent claims in both PCT filings and even in the US (filed concurrently with a preliminary amendment removing the multiple dependency) is written description/added subject matter. You can get a “matrix” of combinations by doing this, and thus generate written description support for these combinations. As the claims as filed are part of the description, you can support written description even after you file the preliminary amendment to remove multiple dependency.
Also, in response to above, keep in mind that under the new EP rules, if you use the EPO as the ISA, the order of the claims matters A LOT: they will search the first invention. So make sure you put the claims in the order you want!