Multiple Dependent Claims and Cost

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Multiple Dependent Claims and Cost

• Salvatore A. Sidoti
• Advanced PCT Seminar
• July 2005

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Multiple Dependent Claims In PCT Applications

• Applicable PCT Rule
• Cost Considerations
• National/Regional Phase Ramifications

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• PCT applications Applicant pays for number of
  pages, not number of claims.
• National/Regional phase applications In many
  countries, Applicant pays for number of claims.
• Filing fees, and in some countries, renewal fees
  are based on number of claims in application.

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• Australia
• Filing fee 320 (no claim limit)
• Acceptance fee 140 20/claim over 20
• Annual maintenance fees are not calculated based
  on number of claims in granted patent.

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• Brazil
• Filing fee does not include an additional fee
  for excess claims (ie-no claim limit)
• Examination fee include base fee additional
  fee for all claims over 10.
• Multiple dependent claims allowed
• Multiples on multiples allowed

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• Canada
• Filing fee does not include an additional charge
  for excess claims. (i.e.-no claim limit).
• A multiple dependent claim may refer to another
  multiple dependent claim.
• Annual maintenance fees are not calculated based
  on the number of claims in the granted patent.

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• China
• Filing fee base fee plus additional fee for
  claims over 10
• Annual maintenance fees are not calculated based
  on number of claims
• Multiple dependent claims allowed
• Multiples on multiples not allowed

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• European Patent Office
• Multiple dependent claims allowed
• Multiples on multiples allowed
• Filing fee based on 10 claims
• No additional fees for multiples
• At validation, all EPC countries accept
  multiples on multiples
• Annual fees in EPC countries do not include
  additional fees for multiples

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• India
• Multiple dependent claims allowed

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• Japan
• Filing fee 150 (16,000 Japan Yen)
• Exam request 1600 40/claim
• Annual maintenance fees include base fee plus
  additional fee based on number of claims.

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• Korea
• Filing fee 40
• Exam fee 106 31/claim
• Appeal fee 120 11/claim
• Multiple dependent claims allowed.
• Multiples on multiples not allowed.
• Annual maintenance fees include base fee plus
  additional fee based on number of claims.

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• Mexico
• Filing fee is not dependent on number of claims
  in application
• Annual maintenance fees are not dependent on
  number of claims
• Multiple dependent claims allowed

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Multiple Dependent Claims In PCT Applications

• Cost Considerations
• South Africa
• Filing fee does not include additional fee for
  excess claims (ie-no claim limit)
• Annual maintenance fees does not include
  additional fee for excess claims
• Multiple dependent claims allowed

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Multiple Dependent Claims In PCT Applications

• PCT Rule 6.4(a) provides, in part
• . . . Any dependent claim which refers to more
  than one other claim multiple dependent claim)
  shall refer to such claims in the alternative
  only. Multiple dependent claims shall not serve
  as a basis for any other multiple dependent
  claim.

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Multiple Dependent Claims In PCT Applications

• The ISA/US is not searching multiple dependent
  claims.

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Multiple Dependent Claims In PCT Applications

• What the International Search Report (Form
  PCT/ISA/210) will state
• Box II This international search has not
  been established in respect of certain claims
  under Article 17(2)(a) for the following reasons
  claims ____ were not searched because they are
  improperly multiple dependent claims as covered
  by PCT Rule 6.4(a)

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Multiple Dependent Claims In PCT Applications

• What the Written Opinion (Form PCT/ISA/237) will
  state
• BOX III Non-establishment of opinion with regard
  to novelty, inventive step, and industrial
  applicability
• Claims ____ are improper multiple dependent
  claims under PCT Rule 6.4(a)
• Claims ____ will not be treated in Box V.

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Multiple Dependent Claims In PCT Applications

• For a further discussion of the treatment of
  multiple dependent claims see PCT Applicants
  Guide Volume I International Phase,
  Paragraphs 128, 280, and 390(viii) (1 January
  2004).

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Multiple Dependent Claims In PCT Applications

• Ramifications
• Applicant receives a Written Opinion or, if
  Demand for International Preliminary Examination
  is requested, International Preliminary Report on
  Patentability in which less than all the claims
  were searched and examined.

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Multiple Dependent Claims In PCT Applications

• Ramifications (continued)
• The result is that the application includes
  claims that may have satisfied PCT Article
  33(2-4) with respect to novelty, inventive step
  and industrial applicability, in view of the art
  cited in the ISR and Written Opinion, however the
  Written Opinion or International Preliminary
  Report on Patentability transmitted to the
  national/regional offices will show that the WO
  or IPRP did not treat these claims during PCT
  prosecution.

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Multiple Dependent Claims In PCT Applications

• Ramifications (continued)
• National Phase Cost includes Cost for Multiple
  Dependent Claims (360 small entity 180)
• But the Multiple Dependent Claims May Not Have
  Been Searched and Examined
• Should one use multiple dependent claims if US
  prosecution comes via US National Stage Entry?