The Prosecutor’s Tool Box: How Many Claims?

Excess claim fees are nothing new and are used in many patent offices worldwide.  For example, the European Patent Office charges one claim fee for each of the 16^th to the 50^th claim, and then charges a higher fee for the 51^st and each subsequent claim; the Japanese Patent Office charges a fee for filing a request for examination that is directly proportional to the number of claims; and the Chinese Patent Office charges for claims in excess of ten.  Here in the U.S., the basic filing fee includes three independent claims and a total of twenty claims, and many practitioners limit the number of claims to twenty in order to avoid excess claim fees.  Today in our post-grant proceeding world, however, do we need to rethink the number of claims we use to cover an invention?

A day does not go by without some aspect of a post-grant proceeding flashing in the legal headlines – institution rates, limited ability to amend the claims, district court stays, and PTAB estoppel.  Despite all of this noise, prosecution continues to be the frontline defense for the patentee.  And a simple, yet sometimes overlooked prosecution tool to aid the patentee is the seemingly rudimentary decision regarding the number of claims used to protect an invention.

That is, one can easily get lulled into prosecuting an application with a total of twenty claims and having three independent claims, i.e., paying the basic filing fee.  In some instances, that may well be sufficient to aptly cover an invention.  But today in this post-grant proceeding world, the number of claims, and the varied way in which the claims cover the invention, are approaches worth considering.

For example, having a wider selection of claims of varied scope may force a would-be-challenger, i.e., petitioner, to rely on not only combinations of references but also different combinations of references, thereby reducing the chance of institution of a post-grant proceeding.  At the same time, a wider selection of claims may increase the chance of survival of some claims to cover the invention, and importantly, the commercial product.  Dependent claims are also useful tools.  Dependent claims can be used to further refine the novel aspects of the invention by scope and aspect.  Careful thought should be placed into this subject matter so that the dependent claims do not merely recite additional elements already known in the prior art.

In drafting and prosecuting claims, some factors driving the decision as to how many claims should cover the invention include the technology itself, the prior art landscape, the value of the application, and the scope and coverage of related applications.  Walking through those considerations now, avoid or minimize issues and costs in the long term.  Think about it:  How many claims?