Independent Claims Increase Filing & Prosecution Costs

There are also disadvantages to having so many independent claims. One of the worst problems is that the patent office will often issue restriction requirements, forcing the applicant to prosecute each independent claim (along with its dependencies) in a separate patent application. Such restriction requirements are proper between two independent claims as long as it is possible to practice the combination of one of the independent claims without necessarily practicing the combination in the other independent claim. Another disadvantage is that the examiners typically dislike lots of independent claims. Attorneys sometimes forget that there is a human being on the other end of the patent application, and it does the attorney little good to unnecessarily annoy the examiner.

Another disadvantage is cost. The standard filing fee for a utility application with the U.S. patent office covers up to three independent claims and up to 20 total claims before additional filing fees are incurred. As of October 2006, additional fees for small entities (companies with less than 500 employees) are currently $100 per independent claim more three, and $50 for each claim more than twenty. The fees are double that for large entities

Those additional fees can add up quickly. Let's say a large company files a patent application with 20 independent claims. The 2006 government filing fees (for a small entity) are the standard fee of $400, plus the penalty fees for the 17 extra independent claims, which comes to 17 * 100 = $1700, for a total of $2,100. Using all those independent claims more than quadruples the filing cost.

It quickly gets worse. The first substantive action of the patent office will be to issue a restriction requirement, forcing the applicant to either abandon, withdraw, or divide out the various independent claims into perhaps five, ten, or even up to twenty separate applications. Let's say the applicant decides to pursue five separate applications. He now has to abandon or at least withdraw several of his originally filed claims with all the attendant prejudice resulting from that action, and in addition he must file another five divisional patent applications. The out-of-pocket costs on those five divisional applications is 5 * 400 = $2,000, plus paralegal time to file the paperwork. The total cost of filing fees for the twenty original independent claims is now over $5,000 instead of the original $400. If this were a large entity (over 500 employees), the unnecessary additional U.S. government filing costs would be over $10,000!

Even if the examiner doesn't issue a restriction requirement, it is unlikely that all twenty claims will be granted together in the same patent. The more likely result is that after prosecuting all those independent claims for a few years, the patent office will deem three or four of the claims to be allowable, and the applicant will pay the issue fee and have those allowed claims go to issuance. But that leaves seventeen non-issued claims, which must then be filed in a divisional application. The cost of that filing is $400 plus the penalty fees for the 14 extra independent claims, which comes to 14 * 100 = $1,400, for a total of $1,800.

Figure 34 — Too Many Independent Claims Greatly Increase U.S. Costs

All of that is unnecessary. The application could just as well have been drafted with one or two independent claims, and the remainder filed as dependent claims. The problem, of course, is that the patent attorney who is trying to build up a big caseload would only have one case to prosecute rather than five or six cases.