by Dennis Crouch
I’ve got three charts to show you below. The first and second are histograms showing the number of claims per US utility patent – 2021 and 2006 issue dates respectively. You’ll notice that the 2021 histogram has a much stronger central tendency focused on the buffet-limit of 20 claims. The 2006 patents are significantly more spread, with many more patents under and over 20-claims mark. That wider distribution is also shown in the time-series box-and-whiskers plot at the bottom (showing 25-50-72 percentiles in the box). And by the standard deviations: the standard deviation for the 2021 claim counts was less than half of that for the 2006 claim counts. Basically, the 2021 patents are much less likely to either a very large number of claims or a very small number of claims.
My hypothesis is that these changes are driven by several factors, with the following two most impactful: (1) Since 2006, there has been a substantially increases in USPTO fees associated with having more than 20 claims. That change has pushed folks away from having a large number of claims in a single patent; (2) Since 2006 we have also seen a further professionalization of patent prosecution, including a recognition that the applicant should include 20 claims if possible. This change has shifted applicants up from the very low numbers. Some may argue that restriction practice is also important. However, I don’t believe that restrictions have increased so dramatically as to cause this change.
But – why does someone need 20+ restatements of the invention? Would it be conceivable to have a system that includes just one claim? What do you think?
The fee structure for excess claims (>20) was established in the form we know back in 1982. The final chart below comes from 1980, and you see no 20-claim impact.
Claims after the first aren’t restatements, they change the specificity of protection. This helps in prosecution and litigation. Others have mentioned the prosecution effects. Dependent claims can also paint a clearer picture of infringement; if a device practices all of the 12 limitations in a dependent claim, infringement can seem more obvious than if a device practices all of the 4 limitations in the independent claim.
I apologize is this is too far off topic, but how about a system where 1 claim (or some really low number of claims) is examined first, and once that particular claim is determined to be allowable, then you add dependent claims. I think the quality of issued claims would increase because the examiner could focus their search on the concept(s) of the single claim, rather than the many different directions that a large amount of dependent claims can force an examiner to search. When there are many dependent claims often each of those claims don’t get a good search because there is not enough time to do a thorough search for each of them.
How about examiners do their jobs and stop making excuses?
While we’re sharing goofy ideas, I like the idea of firing examiners and requiring practicioners to examine an application in exchange for each application they submit.
I’m sure that a lot of the “confusion” around 101 would clear up once attorneys’ registration numbers are risked by an excessive OPQA 101 error rate.
Ha!
Great idea! Not clear to me that things would progress in the way you suggest.
+1
“I’m sure that a lot of the “confusion” around 101 would clear up once attorneys’ registration numbers are risked by an excessive OPQA 101 error rate.”
Amazing idea bruh. Truly, an idea whose time has come.
I did not expect these lols this morning.
Meh, I have two opposing reactions to Ben’s whining.
First, as is often typical of examiner ttypes, Ben’s whining is a gossamer cover over his wanting others to do his job. Taken at face value, he seems perfectly willing to be fired because he feels that attorneys wouldn’t be able to handle his job.
He could not be more wrong.
Which brings me to my second reaction – and this is more in view of Crouch’s reply: things would NOT progress in the way that Ben suggests.
Let’s compare and contrast your typical lemming bureaucrat examiner kowtowing to the feared OPQA (in part because You — the Royal You – have no stones when it comes to making your union actually support you) with attorneys who RELISH winning confrontations. Ben’s paradigm further loosens the restraint that attorneys often have to hew to client wishes (read that as acquiesce in battles that they would rather fight and win) and place the attorney’s livelihood on the line, and what you would MORE likely see is an exodus of OPQA people leaving after THEY are reversed.
The end result would be a BETTER pattern of 101 decisions – much more in favor of patentees, but THIS would make your problem be my (and my client’s) problem.
Let’s compare and contrast your typical lemming bureaucrat examiner kowtowing to the feared OPQA (in part because You — the Royal You – have no stones when it comes to making your union actually support you) with attorneys who RELISH winning confrontations.
+100
Ben’s paradigm further loosens the restraint that attorneys often have to hew to client wishes (read that as acquiesce in battles that they would rather fight and win) and place the attorney’s livelihood on the line, and what you would MORE likely see is an exodus of OPQA people leaving after THEY are reversed.
I contemplated writing (in my response below) that this suggestion might cause a lot of QA specialists to find a new line of work. I’m glad you made this point.
I’m sure that a lot of the “confusion” around 101 would clear up once attorneys’ registration numbers are risked by an excessive OPQA 101 error rate.
A bunch of non-attorneys QAs attempting to explain to real attorneys how the law is supposed to be construed — sounds amusing.
I don’t think this would work out in the way you imagine.
“A bunch of non-attorneys QAs attempting to explain to real attorneys how the law is supposed to be construed”
Um no re re. It’s a bunch of non-attorneys explaining to attorneys how the law is being construed by the executive. There’s a difference. No “attempt” is made. It’s just done. With authoritie.
I chuckle at you 6, as the bureaucrat that you are, and not recognizing that you have ZERO “authoritie” choosing the meaning of the law.
It’s a bunch of non-attorneys explaining to attorneys how the law is being construed by the executive.
LOL. Then why do these same non-attorneys give different advice on the same issues across art units/tech centers? The answer is that they are all putting their own spin on the guidance.
If there were more attorneys involved in the process, there would be a far more robust debate as to how the law should be interpreted.
The problem with the USPTO is that the vast majority of the people who are applying the law don’t know how to properly read and interpret the law and apply the law to different fact patterns than what is found in the cases . Consequently, you’ll get what I see everyday — which is rote recitation of case law without any analysis that actually applies the case law. 95% of what is produced by examiners is a bunch of legal cr@p. It is little better than what you get from jailhouse “lawyers” trying to petition the Supreme Court to get their convictions overturned.
I would daresay that it is even worse, as the convicts are not under a bureaucratic delusion of how important they are.
Just look at the vocal examiners on this board.
“Then why do these same non-attorneys give different advice on the same issues across art units/tech centers? The answer is that they are all putting their own spin on the guidance.”
Never heard of such.
“If there were more attorneys involved in the process, there would be a far more robust debate as to how the law should be interpreted.”
I mean you say that, but there’s plenty of “attorneys” involved as is.
“The problem with the USPTO is that the vast majority of the people who are applying the law don’t know how to properly read and interpret the law and apply the law to different fact patterns than what is found in the cases”
Literally a feature, working as intended.
Literally, Your ownership of your own Peak of Mount S is amazing (and amazingly thorough).
I’m curious where your confidence comes from.
The only explanation I can see is that you’re assuming that the QAS identified errors would be appealed to a body far more favorable to attorney arguments regarding 101 than PTAB.
link to patentlyo.com
The confidence comes from the distinctions that I have pointed out.
YOU are wanting to change the dynamics f the game, and pointing to the CURRENT PTAB just does not cut it.
You really need to stop and think through things here Ben. You are embarrassing yourself.
I’m curious where your confidence comes from.
25+ years of experience, winning 100s of cases at the Board, and successfully arguing before the Federal Circuit.
The only explanation I can see is that you’re assuming that the QAS identified errors would be appealed to a body far more favorable to attorney arguments regarding 101 than PTAB.
Don’t confuse the law with what you are told by government employees who are following a particular agenda.
“Don’t confuse the law with what you are told by government employees who are following a particular agenda.”
Oh, so you’re talking about the law not the system. I guess then when you said it “sounds amusing”, you were talking about the prospect of correctly reciting the law to those QASs while the system crushes you, indifferent to your arguments.
Yeah, that does sound amusing.
Ben,
That you think that somehow you have ‘the upper hand’ in this conversation is what is really amusing.
When there are many dependent claims often each of those claims don’t get a good search because there is not enough time to do a thorough search for each of them.
The first independent claim presented during prosecution (of a non-Continuation) of an application is just a guess. Applicants don’t know how the Examiner is going to construe the claims. Applicants don’t know what prior art the Examiner may dig up.
If you are going to guess, you don’t want to guess to conservatively. Otherwise, you’ll be giving up claim scope. As such, a good first independent claim should be arguably patentable over the prior art you are aware of but otherwise as broad as practicable. Dependent claims are there as backup to address broad claim interpretations as well as previously-undiscovered prior art.
In addition to or alternatively, dependent claims encompass additional aspects that the inventor/patent professional think could be separately patentable. As such, if the broad concept of the invention isn’t available for patenting, something else from the dependent claims may be patentable.
The Examiner’s job isn’t just to reject claims (although many do). Rather, the Examiner’s job is to work with the inventor to identify the boundary between what is patentable and what is not. Knowing what else the inventor thinks could be patentable (as evidenced by the dependent claims) helps in this process.
Certainly, examining a single claim would be easier for the Examiner. However, making it easier for the Examiner isn’t the goal of the patent system. The fees paid entitle applicants for a full search on everything that is being claimed.
“However, making it easier for the Examiner isn’t the goal of the patent system. ”
+1,000,000
The vast majority of applications I see have 20 claims, but it’s 1 independent claim with two different frames using identical language withstanding some conjugation. Similarly there are typically 6-9 truly different dependent claims, with the balance made up of more reframed claims.
So I wonder how it was back in the 80s, and whether this convergence to 20 claims might actually represent a decrease in true claim diversity.
Fair enough question, and of course it is likely that individual cases may provide different results of any analysis.
That being said, my initial training was “back in the day” and by and large the number of claims was unrestrained by fee considerations and driven by other tactical considerations.
There has been a large scale shift due to costs. While I do not care for it, THIS IS a call by the client, and (again, by and large), that call is for the standard (what comes in one pay package) of 3 and 20.
Along the same time, there was a growing movement towards a more robust Continuations practice, and clients were typically content with any additional nuances or claims sets above the 3/20 to hold onto those until Continuation time.
Well . . . single claim patents can be useful in cons . . . in order to keep a patent family going . . . for a potential future portfolio sale . . . for potential licensing . . . potential litigation . . . for . . .
hit a filter….
Your comment is awaiting moderation.
March 2, 2022 at 2:02 pm
Pro Say,
While true enough, once you are going to a mode of prosecuting a continuation — and for the standard cost — a regular 3/20 approach is no more expensive than a single claim (USPTO fee-wise), the general client view is to push for the 3/20.
Sadly, this also ‘made more common’
C
R
A
P
P
Y
dependent claims that really do not – of themselves – provide much value.
Definitely NOT my druthers, but I have inherited enough work of others (and talked with those others) to see that this was “blesssed” by clients.
The clients I have that are very professional and license their patents usually have more claims. One client I used to have regularly had 80 claims and often their patents were litigated including some I wrote.
The claim set would typically be of different forms: means+function, CRM, method, apparatus. So, 20 claims for each form and you have 80 claims.
And, why have dependent claims? Seriously? Ever litigated? It is hard to invalidate a lot of dependent claims and many of the dependent claims guard against all the strange oddities of CAFC case law for claim construction and 101.
Plus, good dependent claims can often capture details that the accused product is actually doing, which makes it look guilty to not only infringe claim 1, but to infringe 5 of the dependent claims. Now the D has to invalidate all those dependent claims and the independent claim.
Anyway…
The two big things about lots of claims is that they got a lot more expensive so the clients cut down on the claims. One of my largest clients used to be OK with me bumping up the claims to about 25 but now only wants to pay the standard 20 fee.
Plus, it is annoying that the examiners don’t get more time on the big claim sets.
Plus, big claim sets often come to from systems where there are two or more players. For example, in 3GPP patents, there is the handset, the access point, and the internal systems. So you can have three different independent claims right there.
>Plus, it is annoying that the examiners don’t get more time on the big claim sets.
I agree. It’s shocking that a government agency can charge higher fees w/o actually doing any additional work. It’s pure punishment, not cost recovery.
If I’m ever director, the extra claim fees will directly fund examiner points.
“It’s shocking that a government agency can charge higher fees w/o actually doing any additional work.”
I believe management is aware of how bad this looks because they’ve implemented a policy where there’s a onetime extra-hour for any application with 4 independent claims or 25+ total claims.
This way, they can now tell congress that your extra claims fees are going towards extra time for examination. Even though an application with 200 claims still only gets one extra hour.
Re: “Even though an application with 200 claims still only gets one extra hour.”
[One reason why many regular examiners will apparently not work on even notoriously-long-pending “submarine” patent applications with that [or even more] claims if there is any way they can avoid it.]
Curious – Examiners, how WOULD one “avoid it?”
Plus, the reality is that often there is more than one invention in a patent application and the dependent claims often include the other inventionts.
Plus, almost every invention I have ever claims (which is probably in the 1000’s at this point), always has different ways of claiming it in that one can do it from different perspectives, at different levels of abstraction, include different elements, and so forth.
I could easily write 100 claims for just about any invention I’ve ever worked with.
Anyway, I think I gave everyone a flavor of why claiming is so complex. Some of my claims have been litigated and MANY have been sold and licensed.
“I could easily write 100 claims for just about any invention I’ve ever worked with.”
If not thousands, which is why the “but but but you should examine the whole application” line is gaslighting.
“which is why the “but but but you should examine the whole application” line is gaslighting.”
You are not using the term “gaslighting” correctly.
Bottom line 6 – and this IS something that you (the Royal You) signed up for: you ARE charged with examining the WHOLE application.
You DO seem to regressing along a spectrum of things, from your faux Wokeness becoming very evident to this desire of yours not to examine the whole application (something that I schooled you upon LONG ago).
“It is a covert type of emotional abuse where the bully or abuser misleads the target, creating a false narrative and making them question their judgments and reality.”
I used it correctly.
No, 6, you did not use it correctly, as Night Writer’s comments is neither bullying nor abusive, and certainly does not create a false narrative.
Bottom line remains that You MUST examine the whole application.
This is as I schooled you way back when when you wanted ONLY to examine on claim key words. There is nothing bullying, abusive or false in setting you straight on this point.
That YOU may question your judgement and need to realign YOUR view of reality to conform with actual reality is simply NOT gaslighting. It is simply you being wrong in the first instance.
6, it is not gaslighting, but I agree that it is often unfair to the examiner.
I worked with a start-up where we pushed probably 20 inventions into a single application due to budget with the idea of many divisionals and continuations.
Probably not fair to the examiner to have to look at that monster of a specification.
“it is not gaslighting”
It literally is tho. It’s an attempt to make the examiner question their lived reality and judgement made thereof/thereon by the creation of a false narrative (which narrative is easily seen but I could spell out for dunces). And further, to question the examiner’s lived reality as explained by the examiner. And always done by anon as an attempt at abuse aggressively. Both of those are literally gaslightings.
“I worked with a start-up where we pushed probably 20 inventions into a single application due to budget with the idea of many divisionals and continuations.”
Yeah I see this kind of thing fairly routinely in the sub-art I’m in, and more and more in my overall art. It’s getting to absurd levels. Everyone’s got 2 or three+ main methods/devices and then like 5+ species. I mean, it’s great to have all that disclosure and all, but the office just doesn’t want to fund its examination and would rather pretend its the 1960s.
“Probably not fair to the examiner to have to look at that monster of a specification.”
I’m sure they did some restrictions and all as long as it wasn’t a 371 that couldn’t be restricted etc.
“And always done by anon as an attempt at abuse aggressively. ”
You confuse your being wrong with the person pointing out that you are wrong as being “abuse aggressively.”
Your use of the word remains wrong – as does your attempted slant of the basis of what Night Writer posted.
Here’s a hint 6: put the shovel down.
“Your use of the word remains wrong”
And you remain OCPD and an abuser.
Clearly not so.
That you want these terms to apply simply does not make it so, and DISabusing you of your ill-founded beliefs is just not the same as imposing a false reality.
It’s actually the opposite — taking away your own self-imposed false reality.
Just like when you finally realized that I was correct in that you DO have to examine the whole application and not just claim keywords.
Doesn’t that make you the person who can’t cut their abuser out of their lives when it’s obvious to everyone else that you should?
You presume TOO much, Ben.
Coddling 6 in his errors just won’t help him.
link to imdb.com
Watch this movie 6 to understand what gaslighting is in our current culture.
I get what you are saying and think it is kind of gaslighting but more puffery as there is no real power for the applicant to fool you into thinking something that is not true in order to confuse you or for you to question your sanity.
Night Writer,
6 is asserting something completely different and wants you to believe that challenging his MISinterpretation of reality is also “gaslighting.”
He thinks that ANY attempt at correcting his views can be so labeled.
This is of course preposterous.
“as there is no real power for the applicant to fool you into thinking something that is not true in order to confuse you or for you to question your sanity.”
I hear what you’re saying and all, but that isn’t what formally determines what gaslighting is in our modern leftist culture (you’ll note obviously that them taking a slightly larger view of what gaslighting is makes a whole sht ton of stuff irl then become magically gaslighting).
And I also somewhat disagree here to a degree. This being as the applicant and the office admin work in tandem to establish the working conditions of the examiners (majority controlled by the office admin but its obvious that the admin is under many applicant’s thumbs practically directly now). Myself and other examiners read PO, anon knows this, and his (and some few others) constant trying to establish a false narrative is the same thing as the attempts by the media to do so these days in other contexts, writ small. Further, it isn’t just him that attempts to perpetuate the false narrative. To a degree, out of one side of the office admin’s mouths they ape those same words. Then out of the other side of their mouths they establish a system under which no living human can actually do that on a day to day basis for a year+, and establish training that is in direct opposition to such. This leads inevitably to the exact things that gaslighting always leads to. The questioning of the “victim/targets” actual reality etc. etc. and the associated mental stresses that accompany that. And thus, his, and others outside of the office, and the office admin’s itself propagation of that narrative is harmful to people, and ultimately does have power behind it causing harm.
I will try to watch the movie when it’s available on a streaming or some such that I have access to, I don’t really buy/rent movies to watch these days (rather buy stocks and assets thx). Good to know that this seems to be the genesis of the term in common culture tho.
OK 6. The term comes from the gas that someone could breath from a street light and would make people confused.
That is the origin of the term.
I gotcha, seems like I might have heard that awhile back, or in an article I read about it awhile back.
In other words, you stand corrected (yet again).
Another clue for you 6: don’t try to make things up, or worse, persist when you have been corrected.
It’s just not a good look for you.
Another hint for you: just because a Liberal Left wants to use a term a certain way just does not make it so that they CAN use the term that way.
means+function
[cringe] I don’t think I have ever intentionally written a means + function claim. Granted, I know your client requested it, so it isn’t your call.
It is hard to invalidate a lot of dependent claims and many of the dependent claims guard against all the strange oddities of CAFC case law for claim construction and 101.
With good dependent claims, you are absolutely correct. Not everybody writes good dependent claims but that is one of the reasons they are there.
means+function is also used in some foreign countries where it is required by the client for the country claims of a PCT. (I can tell a couple of really big clients that you haven’t worked with.)
Another explanation may be the uncertainty with which the doctrine of equivalence has been interpreted in the courts. Increasingly, applications seek to draft multiple claims to cover different alternative aspects of the invention literally.
To answer Denis’s question – it is easily possible to have a patent with only one claim that describes in detail an invention. However, that kind of narrow claim might be easier to defend against assertions of invalidity but would not provide very good protection against competition. As most of us here know, narrow claims are much easier to design around than broader claims. The varying scope of the claims pushes the competition farther and farther away from the claimed invention. If the competition can be pushed far enough away, it is no longer competition.
Yes, and competitors who actually copy do not copy claims, they copy product features, and will infringe even if the claim is narrowly drawn to the commercial product, unless they looked for, found, and were properly advised, to avoid the subject claims.
Bass ackwards Paul — did you purposefully miss the point there in your hurry to cheerlead the Efficient Infringer mantra?
Maybe I am misunderstanding your intent, but this strikes me as a very odd thing for someone who teaches patent law to be asking.
What do you tell your students about the function of dependent claims? (Or, indeed, of independent claims having differing scope.)
Just so, Mark. I have never seen dependent claims as re-statements of anything. I think in writing that, Dennis is being deliberately provocative, fishing for a lengthy comments thread. Has he overlooked how chemists draft their sets of patent claims, I wonder.
Does the expression “onion skin” drafting style mean anything in Australia: the use of dependent claims to reveal a dense and compact progression from “outer envelope” of the broadest independent claim, through a succession of intermediate levels (fourteen at the EPO) of generality, each with the contribution to the art at a significantly different level of potency (think: ladders of abstraction, ever-higher technical effects), all the way up to the magnificent “best mode”, the diamond within the envelope, in all its patentable glory.
Just like a good series of EPO auxiliary requests, the presence of such a nicely graded set of dependent claims reveals to Examiners and Judges that even claim 1, at the maximum level of abstraction of the inventive concept, can be recognized as having patentable merit.
But presumably: no such revelations in the USA.
“But presumably: no such revelations in the USA.”
MaxDrei, you have in the past begged off from having a dialogue claiming that you do not know US prosecution, yet you insist on making asinine comments about US prosecution.
That’s not provocative — that’s down right rude (without being an assault on the unthinking, as it is itself unthinking).
If there were (such revelations), Dennis would not be asking the question whether in the USA one claim is conceivably enough.
You jump to a rather unwarranted conclusion — which is even worse than Crouch’s odd statement.
It would be better for you to recognize your limitations of US prosecution and act accordingly.
Looking in from Europe, where the EPO imposes a fee for every claim in excess of 15, I find it interesting how many US law firms will i) file a PCT with loads of claims and then drop all but 15 of them on entry to the EPO. There is rarely any sign of recognition by the drafter that each dependent claim is there for the vital purpose of defining a level of patentably enhanced generalisation intermediate between the envelope of claim 1 and each “point value” within represented by each illustrated embodiment is not evident. Main thing: there has to be 15 claims, whatever. It is almost as if defining the invention properly takes second place to getting claims free of official fee.
And then there’s the “three independent claims” rule. Best not talk about that though.
Best….?
That’s rather odd.
In fairness, a multiple dependent claim set could be viewed as hundreds of different claims.
(I wish the US would adopt this ‘global consensus’ practice, too)
Adopting the practice would be less a driver than any fee scheme associated with the practice.
See the current fee structure for using multiple dependencies in the US.
Like it or not – claim strategy cannot be divorced from the business of patenting.
This is the absolute best showing of just how TOTALLY EZIER patent examination has gotten over the years.