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« Pfizer, Inc. v. Teva Pharmaceuticals USA, Inc. (Fed. Cir. 2008) | Main | Thailand Continues Its Compulsory Licensing Practices »

March 11, 2008


One nice way to reduce paying excess claim fees at filing is by compressing your set of claims. Such a compression can be obtained by inserting all dependent claims language back into the independent claim by using the word preferably. For instance, if your original claims were:
1. Compound A (markush formula), wherein R1 is H, OH, or COOH.
2. Compound according to claim 1. wherein R1 is H.

these can be compressed into:
1. Compound A (markush formula), wherein R1 is H, OH or COOH, preferably wherein R1 is H.

During prosecution, you may freely amend these claims back into the original set. Only if the granted claim set contains more claims than 10 and more than originally filed you have to pay the access fees. In this way, you shift paying of excess claim fees to the grant stage, i.e. at the time that you are certain that all of the claims are patentable and worth paying for.

The only disadvantage is that your claims become lengthier and more difficult to read.

Of course the above trick only works with strictly hierarchical dependency.

The rule you refer to as Rule 110 under the old version of the EPC is now Rule 162 under EPC2000 - see: http://www.epo.org/patents/law/legal-texts/html/epc/2000/e/r162.html

and will be amended as follows:
3. Rule 162(1) EPC shall be amended to read as follows:
"(1) If the application documents on which the European grant procedure is to be based comprise more than fifteen claims, claims fees shall be paid for the sixteenth and each subsequent claim as laid down in the Rules relating to Fees within the period under Rule 159, paragraph 1."

(see http://www.epo.org/patents/law/legal-texts/decisions/archive/20080306.html)

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