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June 26, 2023

June 26, 2023

Seed IP partner Bobby Soltani authors "Patent Claims in Foreign Jurisdictions: Maximizing Opportunities"

"Patent Claims in Foreign Jurisdictions: Maximizing Opportunities" - Bobby Soltani, Partner, Seed IP

In today’s global economy, businesses employing patentable technologies are practically required to secure intellectual property (IP) protection in numerous jurisdictions. Maximizing patent claim opportunities and maintaining flexible options during international filings are vital aspects of this process. This article offers insights on how to effectively draft claims in the U.S. for future foreign patent filings and maximize the opportunities for protection in several popular foreign jurisdictions.

Filing in foreign jurisdictions is a complex process that requires careful planning and attention to detail. Among the most critical components are the claims, which define the scope of protection for the invention. The key point here is that the United States Patent and Trademark Office (USPTO), the European Patent Office (EPO), as well as the patent offices of China, Korea, Japan, and Taiwan all have different rules and fees for claims. This makes it essential to craft claims carefully in U.S. priority patent applications to maximize opportunities and flexibility during subsequent filings in foreign jurisdictions.

Patent claims are categorized into four distinct types, and it is crucial to understand that these types are not uniformly accepted across all jurisdictions. When planning to file patent applications in multiple jurisdictions, one must take into consideration which types of claims each jurisdiction allows. The four categories are: 

·    Independent: these claims stand alone and describe the primary features of an invention.

·    Dependent: these claims are narrower than independent claims and depend on one other independent or dependent claim.

·    Multiple dependent: these claims incorporate two or more other claims by reference.

·    Multiple-multiple dependent: these claims incorporate at least one multiple dependent claim by reference.

As mentioned, there are differences in major foreign filing jurisdictions such as Europe, China, Korea, Japan, and Taiwan. Below is a brief synopsis of some key differences. Bear in mind that this is not an exhaustive list of the differences in major foreign filing jurisdictions, and there may be others that should be considered.

 ·     European Patent Office (EPO)

o  Language: USPTO claims must be written in English, while EPO claims can be written in any of the official languages of the EPO, English, French and German. Note that translation into all three languages is required at the grant stage.  

o  Less flexibility: In the U.S., attorneys can draw from the specification to form amendments, even implicitly. In contrast, EPO examiners are much stricter on what constitutes written support for amendments. While ideally, amendments should be explicitly disclosed in the specification, the EPO rules permit a degree of flexibility, allowing a knowledgeable reader to directly and unambiguously derive the feature from the specification.

o  Variety of claims in an application: Typically, a European patent application includes only one independent claim for each category (e.g., apparatus, method), whereas the U.S. allows multiple independent claims for each category. Although multiple independent claims of the same category (e.g., two apparatus claims) are permitted in Europe in certain circumstances, they are not common. Consequently, filing a single European patent application that contains, for instance, three independent claims to distinct apparatus embodiments can prove challenging.

o  Dependent claims to overall system: Dependent claims may refer to a system that incorporates the claimed component. For instance, a valid European claim could be framed as, “A computer comprising the processor of claim 1....” These types of claims are generally not favored in the U.S.

o  Types of claims permitted: All four categories are permitted. Europe not only permits but actively promotes multiple dependencies. This practice can yield advantages during prosecution and subsequent litigation, benefits typically not observed in the U.S. due to high multiple dependency fees, and the fact that the U.S. does not allow multiple-multiple dependent claims.

o  Claim fees: The fees associated with the EPO can be substantial and accumulate rapidly. For instance, while a U.S. patent application can include 20 claims at no additional cost, a European patent application only includes 15 claims. Each additional claim costs approximately $280 USD. Therefore, even if a U.S. patent application dodges extra claim fees, the same specification and claims could still result in considerable expenses in Europe if claims are not amended prior to examination.

 ·     Chinese National IP Administration (CNIPA)

o  Language: The USPTO examines patent applications in English, while the CNIPA examines applications in Chinese.

o  Types of claims permitted: The CNIPA does not allow multiple-multiple dependent claims, but does allow the other three claim types listed above.  

o  Claim fees: The CNIPA charges approximately $22 USD for each claim over 10 claims in a patent application.

·     Korean Patent Office (KIPO)

o  Language: The KIPO examines patent applications in Korean.

o  Types of claims permitted: The KIPO does not allow multiple-multiple dependent claims, but does allow the other three claim types listed above.

o  Claim fees: In addition to charging fees per claim when a request for examination is made, the KIPO also charges fees for each claim annually. Thus, you may consider removing claims that are not particularly valuable to avoid substantial claim fees. The fee schedule for claims in the KIPO are as follows:

o  $34 USD per claim at the request for examination stage.

o  $10-42 USD per claim annually, starting at $10 USD the first year and escalating every 2-3 years up to $42 USD per year.

o  Total: Approximately $875 USD per claim over the life of the patent.

 ·     Japanese Patent Office (JPO)

o  Language: The JPO examines patent applications in Japanese.

o  Types of claims permitted: For applications filed in Japan after April 1, 2022, the JPO allows multiple dependent claims but not multiple-multiple dependent claims, similar to China, Korea, and the U.S. For applications filed in Japan before April 1, 2022, the JPO also allows multiple-multiple dependent claims. The international filing date counts as filing in Japan.

o  Claim fees: Similar to Korea, the JPO charges fees for each claim annually. The fee schedule for claims in the JPO are as follows:

o  $29 USD per claim at the request for examination stage.

o  $2-33 USD per claim annually, starting at $2 USD the first year and escalating every 2-3 years up to $33 USD per year.

o  Total: Approximately $620USD per claim over the life of the patent.

·    Taiwan Intellectual Property Office (TIPO)

o  Language: The TIPO examines patent applications in traditional Chinese.

o  Types of claims permitted: The TIPO does not allow multiple-multiple dependent claims, but does allow the other three claim types listed above.

Claim fees: The TIPO charges $26 USD for every claim over 10 claims in a patent application.

In conclusion, preparing patent claims in the U.S. for subsequent prosecution in foreign jurisdictions requires careful planning and attention to detail. Understanding the unique requirements associated with filing claims in each jurisdiction is vital to obtaining strong patent protection. As patent laws and regulations are subject to change, staying informed about the latest updates is equally crucial. By adhering to these guidelines, patent practitioners will be better equipped to successfully obtain patent protection for their clients’ inventions across various jurisdictions.

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About the author

Bobby Soltani's practice focuses on the U.S. and foreign patent prosecution of electrical engineering and computer software matters and patent litigation, infringement opinions, licensing, and strategic portfolio management. He received a B.S. in Electrical Engineering from the University of Oklahoma (2001), and an M.S. in Electrical Engineering from Oklahoma State University (2003). Bobby holds a J.D. from the University of Oklahoma College of Law (2007).

Bobby is admitted to practice in Washington (2010) and Colorado (2007) and is registered to practice before the U.S. Patent and Trademark Office. He is a board member for the Washington State Patent Law Association (WSPLA). Bobby is also a member of the American Intellectual Property Law Association (AIPLA) and the Institute of Electrical and Electronics Engineers (IEEE). Bobby also lectures on U.S. patent practice at the University of Washington's renowned Center for Advanced Study and Research on Innovation Policy (CASRIP).

Read more about Bobby Soltani.

 

 

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