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Comment To Advance Notice of Proposed Rulemaking

Comment To Advance Notice of Proposed Rulemaking At 1215 OG 87
[Docket No.: 980826226-8226-01]

With respect to proposed rule change number 4, to limit the number of claims in an application to 40 total claims, the following comments are provided:

The proposed limitation appears to have been selected based on a recognition that about 5% of current applications are filed with more than 40 claims. Even though it may be appropriate to place some limit on the number of claims for examination in an application, the cutoff that has been chosen seems overly restrictive.

Each patent is to be issued for only a single invention, a requirement which to some degree limits the number of claims in issued patents. But the number of claims required to provide adequate protection for any given invention will depend upon the nature of the invention. Prudent protection of a fundamental development having wide applicability could be expected to require more claims to protect an applicant's legitimate interests than would be required for an invention that is a narrow improvement of a well developed technology. The fact that only about 5% of applications are being filed with more than 40 claims seems just as consistent with a conclusion that only a small number of applications concern inventions of a nature that is fundamental enough to prudently justify a large number of claims, as a conclusion that about 5% of current applications include excessive numbers of claims.

Applicant's should have significant latitude to claim an invention with a relatively large number of claims if considered necessary by the applicant for adequate protection under the circumstances. In that regard, the published statistics for FY 1997 applications show that about 4% of the applications contain from 41 to 100 claims. This is a significant number of applications and suggests a legitimate need for more than 40 claims in a significant, although small number of applications.

To the extent that an application includes over 20 claims, the PTO currently charges for the additional claims, presumably to reflect the greater effort required to examine the additional claims. If the cost of the added examination burden is not being covered by the existing additional claim fees, then it would seem appropriate to increase the additional claim fees so that Examiners will have enough time for adequate examination. This solution would seem to be preferable to a solution that arbitrarily limits claims to a number currently deemed necessary by about 4% of applicants, and would seem to be consistent with a PTO objective to provide services of the highest quality. Charging a significant fee for each additional claim, without a limit on the number of claims that may be examined, is a common practice among other high quality patent offices in the world.

Restrictions on applicants' latitude to claim an invention under the proposed 40 claim limit seems especially severe given the proposal to count multiple dependent claims as the number of claims to which direct reference is made. The practice in the U.S. to discourage multiple dependent claims, through the current fee structure, often results in a large number of claims in U.S. practice to provide claim coverage for various combinations of features that could be more efficiently obtained through the use of a much smaller number of multiple dependent claims. It is perhaps this single feature that has resulted in a larger number of claims generally being included in U.S. applications than applications in other countries. The proposed limit of 40 claims seems unduly restrictive with the proposed treatment of multiple dependent claims. A better option might be for the PTO to adopt a practice concerning the use of and fees for multiple dependent claims that is similar to practices in other countries.

The PTO is proposing, through a petition process, to permit, on a case by case basis, certain applications to go forward with more than 40 claims "in the extraordinary situation in which it would be more beneficial" to permit more claims. Given that 4% of FY 1997 applications included from 41 to 100 claims, the situation when applicants believes that more claims are required does not seem to be extraordinary. Furthermore, it is not clear what criteria would be used to determine when it would be "more beneficial", because it would always seem be more beneficial to the PTO's finances (through increased filing fees and maintenance fees) to have the additional claims processed in continuation applications. Moreover, it is not clear why the PTO would be a better judge than the applicant as to the number of claims needed to adequately protect an invention in any given circumstance, because the applicant will almost always have superior knowledge concerning realities of commercial exploitation of the invention.

In closing, the proposed limit of 40 total claims seems overly restrictive, especially with the proposed treatment for multiple dependent claims. With this approach, U.S. applicants will be unable to seek protection in a single application of a scope commensurate with that available in other countries. A better approach would to be to change the treatment of multiple dependent claims or to select a significantly higher claim limit, with fees for additional claims that adequately cover the additional examination burden.

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Last Modified: 7/16/2009 10:40:31 AM