Loren Donald Pearson

Loren Donald Pearson is a Registered Patent Attorney and a Florida Bar Board Certified Intellectual Property Attorney.  He is a partner at Assouline & Berlowe, PA and leads its intellectual property group.  Read his profile

 
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Entries in European Patents (1)

Thursday
Jun022011

My Theory about the Decreasing Number of Claims in Patents

European patent rules are affecting the number of claims in US patents.  That is my theory.

A widely-read blog, Patently-O, noted Decreasing Patent Claim Counts.  Their theory is, there are three primary factors that converge to explain the bulk of the decrease. (1) In 2004 the USPTO more than doubled the application fee associated with filing more than 20 claims in a single patent application. The reaction to that fee increase has now filtered through the system and most of the drop in average claim count is driven by a major reduction in the number of patents issued with more than 20 claims.  (2) In addition to increased-fees associated with a larger claim set, the USPTO appears to have ramped-up its restriction practice over this same time period – effectively causing applications to be split into two or more patents. (3) Finally, there is anecdotal evidence that the demand for patent claims has dropped based on general economic conditions and a perception that recent legal rulings have reduced the value of patent rights.

I disagree.

European patent fees are probably caused the drop in the number of claims toward 15 total claims.

European rules have significant costs for applications with more than 15 claims. This rule went into affect April 1, 2008. See EPO announcement on fees.

The timing of the European rule matches the timing of the drop in US claims.

As a result of the rule, incoming US National Phase/European Priority claim cases almost all have 15 or fewer claims.

In addition, when I write as US case that is going to be filed in Europe, the 15 claim "limit" influences my claim drafting.

European/PCT Unity of Invention standards also affect the number of claims. The unity of invention standard generally results in a more focused claim set. The result is more sister applications, each with a smaller claim set. This affects both the number of claims in incoming applications as well as well as the number of claims in US cases that will be outgoing to Europe or PCT.

A European patent attorney associate of mine, Adrian Hocking, (Adrian's email ) offers a European Patent Cost Calculator, which illustrates the effect of the number of claims on European filing costs.

Request a consultation if you are considering extending your US patent rights to Europe.  There are special considerations that significantly affect your costs.