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Friday, 7 March 2008

More on EPO fee changes

Following on from the announcements made at the end of last year (noted by the IPKat here), the EPO have now filled in the details of what is going to happen come next month (1 April 2008), when many of the fees payable for European patents and patent applications will be increasing, some (much) more than others. The announcements on fees and other related matters are as follows:

As expected, Rules 45(1), 71(6) and 162(1) EPC are being changed (see Administrative Council decision here) to allow excess claims fees to apply to those over 15, instead of the current limit of 10.

The IPKat, who hasn't been through all the changes in detail, can see that this is an awful lot to take in, but can say with complete confidence that things are not getting any cheaper for anybody. Two hundred Euros sounds like a lot to pay for each excess claim, given the added benefit extra claims give (usually none) and the extra examination work required for each extra dependent claim (usually none), so applicants should be thinking a bit harder about whether it's better to go for a trim rather than waste money paying for EPO staff pensions on claims they don't really need. When it comes to claims from next month, think Agnyess Dean rather than Naomi Campbell.


Anonymous said...

The fee changes are actually intended to be budget neutral. Their purpose is not to provide additional income for the EPO, but rather to discourage abuse. The problem of examination of applications with excessive numbers of claims has been gradually increasing for many years and has become more and more onerous for the EPO to examine, but also, more significantly, for the public to make sense of. The idea is that the fee increase will reduce the number of unnecessary additional claims due to the extra cost, thus cancelling out any additional income from the increased fees.

The purpose of the change is also apparent from the fact the number of fee-free claims has been increased from 10 to 15, but the fee for the 16th and subsequent claims is now more expensive than what was previously the case for the 11th and subsequent claims. It is not uncommon for applications with in excess of 100 claims to be filed. Such applications have a longer pendency time because they do not comply with the conciseness requirement of Art.84 EPC and longer pendency also leads to greater legal uncertainty as to what will actually be granted, if anything. This is a double whammy - the broad and complex drafting style being addressed by this change results increased legal uncertainty firstly due to the difficulty in interpreting what has actually been invented plus the longer pendency which results from the consequent longer examination procedure.

The current claims-record belongs to an application with 30,000 claims, filed in the PCT, which has no claims fee (a coincidence? I think not). As a patent professional with many years of experience in this area, I can say that I have never come across an invention which could not be adequately defined in 15 claims, which is now the fee free limit. Consequently honest users of the system will be rewarded by not having to pay any claims fees at all.

It is also not correct to indicate that dependent claims represent no further additional effort in the examination procedure. In the cases targeted by this fee reform, the initial independent claim is often far too broad to have any reasonable prospect of a grant and it covers a complex web of claims with alternate dependencies and of overlapping scope, which varies depending on which of the alternate dependencies is taken into consideration. This represents a significant and undue burden on the public to realistically predict what will eventually end up being protected. It also means that a lot of effort is expended by both the public and the EPO in working out what has actually been invented, rather than examining whether or not that subject matter satisfies the requirements of novelty and inventive step, which is the primary purpose of the examination procedure.

Automatic criticisms about the EPO lining its pockets are entirely unwarranted. In fact the EPO does not intend to earn additional income but is critiscised for this reason, when in fact it is simply attempting to protect the public from legal uncertainty generated by a growing minority of patent applicants who file applications which are deliberately designed to create and maximise confusion and legal uncertainty by their cynical and deliberate obfuscation of the claimed invention. The present changes are a manifestation of a "zero tolerance" policy towards this kind of drafting style and it is intended to provide a balance between the interests of the active and passive users of the system (applicants and the public respectively).

Anonymous said...

I also disagree with your comment that extra dependent claims mean no extra work. You have to construe the claim, and check it is supported. You also have to check whether the new feature is present in any of your citations, and if it isn't, you then have to decide whether to make a search for that feature alone to find documents which can be combined with those you already have. If the independent claim is heavily anticipated and there are a stack of claims dependent on it, it can be a nightmare!

Anonymous said...

Extra work for each dependent claim? When the main claim is egregiously lacking in novelty? A lot or a little? Both commentaters are right, in that EPO Exrs just say "Claim 1 manifestly lacks patentability so, in truth, you have a zillion separate inventions in that gruesome stack of dependent claims. So, why don't you be a good boy and bring forward just one of them, and then we'll examine it. Not until then" Punishment proportionate to Applicant's deliberate abuse of the PTO, no?

Anonymous said...

I do a lot of infringement clearance work and have to give an opinion on perhaps 500 patents and applications a year. From that point of view I generally agree with the first poster. I think that in other terms as well (numerals in claims, two-part format, limited number of independent claims) the EPO has got it right.

The most time-consuming patent applications to give an opinion on are those with extremely broad independent claims and 50+ dependent claims. Or those which were filed with 8+ independent claims, because despite the rules on unity etc there is no real penalty to prevent an applicant including them all in the application as filed. They then hang over third parties as a potential threat for the next 1-5 years while the patent application is examined and any divisionals filed.

I do think most inventions can be adequately defined in 20 claims. That said my work is in the mechanical and electronics fields; I am not sure what impact it will have on chemical and biotech cases.

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