Prosecution

As described in Chapter I, foreign filing can be excruciatingly expensive. Indeed, the problem is much worse where the applicant employs a large number of independent claims. Whereas a single U.S. application with a few independent claims may spawn a family of half a dozen or more foreign applications, the same U.S. application drafted with many independent claims will likely spawn separate families of foreign applications for each of the U.S. divisionals. This is a big reason that a single U.S. application can end up costing the company a million dollars in prosecution fees!

Figure 35 — Foreign Filing Costs Go Up Even More

In addition, the patent offices of many foreign countries refuse to deal with multiple independent claims. The EPO, for example, may allow an application to contain more than one independent claim, but only if the subject matter claimed falls within one or more of the exceptional situations . Otherwise the EPO will usually examine only the first independent claim, and issue a lack of clarity rejection, refusing to examine the remaining claims. The specific rejection will be that "the plurality of claims makes it difficult, if not impossible, to determine the matter for which protection is sought, and places an undue burden on others seeking to establish the extent of the protection".

Thus, even if the U.S. patent office allows the applicant to keep several independent claims within the same utility application, a foreign patent office may still require the applicant to divide out the foreign application into several divisional applications. Since the expense is often too high to file all those divisionals, the applicant is forced to re-draft his claims to be dependent upon a single independent claim. That additional work is both unnecessary, and expensive. Among other things, all those new claims have to be translated. Indeed, both inventors and foreign associates often wonder why the U.S. patent attorney failed to draft appropriate claims in the first place.

As an aside, one wonders why the U.S. Patent Office doesn't adopt a similar strategy. As of the publication of this book, the U.S. Patent Office has only issued about seven million patents in the entire history of the country. And yet the Patent Office is currently backlogged more than 600,000 applications, and within the next eighteen months the patent office is supposed to be backlogged more than 1,000,000 applications. In other words, the backlog is increasing at a rate of 20,000 patent applications a month. This awful situation is due to many factors, including especially: (1) the willingness of the Patent Office to examine applications with ridiculously high numbers of independent claims; and (2) the willingness of the government to use patent office fees to offset the national debt .

One solution currently being floated by the Patent Office is to severely limit the number of continuations. That is a terrible idea. In my 17 years of experience, RCE type continuations are usually due to intransigence, inexperience, or illogic on the part of the examiner, and CIP type continuations are usually the result of the inventor having developed a significant improvement. In both cases the patent office should encourage rather than limit further prosecution. A better solution is to limit the total number of claims of any application to twenty or thirty, and the total number of independent claims to two or three. Yes, that would require patent attorneys to do the heavy mental lifting of actually figuring out what the "invention" is when filing the application. But we know they can do that. Patent applicants already re-write their claims to meet similar requirements in several foreign countries. The total number of applications on a single subject matter should also be limited in some manner, perhaps to five or six. "Single subject matter" could well be difficult to define, but could be defined by claims that overlap sufficiently to require a terminal disclaimer.