Practical Tips for U.S. Patents
and Patent Applications
How to Count Claims in U.S. Patent Application
for Determining Filing Fee
The filing fee for a U.S. patent application includes a surcharge
for the number of claims in the application in excess of 20.
The U.S. claim counting method is different from the practice
of other patent systems, such as the European Patent Office
or the Japanese Patent Office. An applicant who translates
into English a European or Japanese patent application, and
files the translation as an application in the U.S. Patent
and Trademark Office (PTO) may face a high surcharge due to
the presence of multiple dependent claims in the application.
Since the five-year strategic plan of the PTO provides for
a steep increase in the claim surcharge, it is all the more
important for applicants to manage the claim count in their
U.S. patent applications according to U.S. guidelines.
The following illustration of claim counting is reproduced
with permission from the section on “Patent Practice
Tips,” authored by Le-Nhung McLeland on the Web site
of the firm Armstrong,
Westerman & Hattori, L.L.P. The illustration includes
an example of incorrect multiple dependency in a claim, and
how it can be corrected.
| |
Description
of Claim |
Claim
count
for that claim |
|
| Claim 1 |
Independent |
1 |
|
| Claim 2 |
Depends on “claim
1.” |
1 |
|
| Claim 3 |
Depends on “claim
1 or 2.” |
2 |
|
| Claim 4 |
Depends on “any
one of claims 1-3.” |
|
| |
Note: Claim
4 is incorrectly multiple dependent, because a multiple
dependent claim may not depend on another multiple dependent
claim. In this case, claim 4 cannot depend on claim 3
which is already multiple dependent. Therefore, claim
4 must be amended to depend only on “claim 1 or
2”. In such amended form, claim 4 would count as
two claims. |
|
| |
Claim 4, as amended
to depend on “claim 1 or 2.” |
2 |
|
| Claim 5 |
Depends on “any
one of claims 1-4.” |
|
| |
Note: Similarly
to the case for claim 4, claim 5 must be amended to depend
only on “claim 1 or 2.” |
|
| |
Claim 5, as amended
to depend on “claim 1 or 2.” |
2 |
|
| Claim 6 |
Depends on “claim
3.” |
2 |
|
| |
TOTAL
NUMBER OF CLAIMS = |
10 |
|
How to Determine the Term of Protection of a
U.S. Patent
In 1994 the United States enacted legislation to make the
changes in intellectual property law required for compliance
with GATT/TRIPS (General Agreement on Tariffs and Trade/The
Agreement on Trade-Related Aspects of Intellectual Property
Rights). This legislation changed the way in which the term
of a U.S. patent (other than a design patent) is calculated.
The patent term no longer ends 17 years after the date
of issuance of the patent. Instead, the patent term is
set to end 20 years after the effective filing date
of the application from which the patent is issued. A transition
was provided around the cut-off date of June 8, 1995, which
complicates the determination of patent term.
- If the application from which the
patent issued was filed on or after June 8, 1995,
the patent term begins on the patent issue date and ends
20 years after the effective filing date of the application.
(If the application is a continuation or division of a prior
application, then its effective filing date is the filing
date of the earliest filed application in the chain of applications.
If the application is the U.S. national stage of an international
application filed in the PCT system, then its effective filing
date is the international filing date.)
- If the application from which the patent
issued was filed before June 8, 1995, the
term of the patent is the longer of: (a)
the term as calculated under the old method (17 years from
issue date), and (b) the term as calculated under the new
method (20 years from effective filing date). This transition
rule extends the term of a patent that was in force on June
8, 1995, if the term as calculated by the new method is
longer than the term as calculated by the old method.
To add further complication, the term of a patent may be
extended by a Patent Term Adjustment (PTA) to compensate for
delays attributable to the Patent and Trademark Office (PTO),
offset by any delays attributable to the applicant. The value
of the PTA (expressed in terms of number of days added to
the patent term) is printed by the PTO on the cover page of
the patent. However, the actual expiration date of the patent
is not provided by the PTO, and should not be determined without
the help of a patent professional, in view of the potential
complexity of the calculation.
For examples of patent term calculation, see pages 9 and
10 of “What
Every Chemist Should Know About Patents”.
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