Eight Simple Ways to Improve Your U.S. Patent Application (While Also Reducing Your Costs)

29 March 2010 Publication
Author(s): Marshall J. Brown


By Marshall J. Brown, Foley & Lardner LLP

This article is part of our Spring 2010 edition of Legal News: China Quarterly Newsletter, Eye on China.

In today’s economic environment, companies of all sizes are closely examining their patent prosecution budgets and looking for ways to save money without substantially sacrificing patent protection. Chinese companies filing U.S. applications based upon foreign priority applications can achieve these goals, potentially strengthen patent coverage, and reduce the risk of unnecessary delays in the USPTO with the following suggestions.

  1. Consider the Necessity of Each Claim. Although applicants may file as many claims as they desire, each claim above 20 incurs an extra fee — $52 (U.S.) apiece for a large entity in 2009. Independent claims above three incur even higher fees — $220 (U.S.) apiece for a large entity in 2009. Obviously, these costs can escalate quickly. Therefore, if your application has more than 20 claims and/or more than three independent claims, it is advisable to consider whether any claims have little potential value and therefore could be cancelled.
  2. Limit or Eliminate Multiple Dependent Claims. Although permitted in the United States, multiple dependent claims (“The device of claims 1 or 2, wherein …”) are expensive —$390 (U.S.) apiece for a large entity in 2009. Additionally, multiple dependent claims are not allowed to depend upon other multiple dependent claims. As a result, applicants should consider limiting or eliminating multiple dependent claims.
  3. Eliminate “Omnibus” Claims. Omnibus patent claims that attempt to cover everything described in a patent (“A device as shown and described herein …”) are not permitted under U.S. law. Therefore, if you file your application with an omnibus claim, you will likely have to spend time and money removing it during prosecution. Further, if your application has more than 20 claims and/or more than three independent claims, you will be paying a fee for a claim that has no possibility of being allowed.
  4. Have the Inventors Sign an Oath or Declaration Before the U.S. Application Is Filed. Each inventor must sign an Oath or Declaration, stating that each person is an original inventor, each person fully understands the contents of the application, and each person understands his or her duty to disclose relevant information to the USPTO. Although this document may be submitted post-filing, a $130 fee (for a large entity) will be levied if the document is submitted after filing.
  5. Provide Relevant Prior Art to Your U.S. Counsel Early in Prosecution. Everyone associated with the prosecution of a U.S. patent application has a duty to disclose to the USPTO all information that is “material to patentability,” including relevant prior art patents, publications, offers for sale, and so forth that are known to the inventors, their U.S. patent attorneys, and foreign patent counsel. Although this duty applies during the entire pendency of a patent application, relevant prior art should be provided to U.S. counsel and submitted to the USPTO early in the prosecution. From a practical perspective, a number of issues can arise if inventors are not asked for relevant prior art until late in the prosecution process. For example, it can be more difficult to get inventors to cooperate if they have left the company, and inventors may have difficultly finding copies of relevant prior art as time passes.

    From a cost point of view, if an information disclosure statement (IDS) is filed after the issuance of a first office action, the applicant must pay a $180 fee, and even higher fees will likely be necessary if the IDS is submitted after a final office action or a notice of allowance. Additionally, prior art that is submitted late in the prosecution process can result in delays in prosecution, for example by causing an examiner to reconsider the patentability of claims that were previously considered to be allowable. This can cause an examiner to issue additional office actions, forcing the applicant to spend time and money to respond to new rejections while delaying allowance of the application.

  6. Remove Element Numbers From the Claims. While many countries require that each claim element be identified with a number corresponding to where the element appears in the figures, the United States includes no such requirement. Additionally, if such numbering is used in the figures, an accused infringer may later attempt to argue that the claim limitation should be limited to the corresponding feature in the drawing — and little else. Therefore, including element numbers in the claims likely will not aid you, and it could potentially be harmful.
  7. Considering Avoiding the Two-Part Format. Like element numbering, several countries require that independent claims be written in a two-part format, where prior art elements are included in the preamble, and the novel aspects of the invention are discussed in the claim body. Again, this format is not required in the United States. Additionally, the two-part format could be used against the patentee later, with an accused infringer arguing all of the elements in the preamble are “admitted prior art.”
  8. Submit Your Claim Amendments Early. As is the case with late-submitted prior art, even minor claim amendments can prolong prosecution of an application if substantive examination has already begun. If an office action has already been issued, new amendments to the claims could, in the examiner's opinion, raise new issues that can result in a new office action, delaying the ultimate allowance of the application and requiring the applicant to spend time and money responding to the action.

The above are a few ways in which an applicant can better prepare its claims for U.S. prosecution and litigation, while also saving potentially significant amounts of time and money along the way. Of course, other issues may arise during the prosecution process that could adversely impact an applicant’s patent coverage and costs. However, by being proactive in addressing the types of issues identified above, an applicant can take care of some of the “easy” issues in a cost-effective manner.

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