News & Publications
News
23 February 2009
Avoiding High EPO Fees for Very Large Claim Sets
As you may recall, the EPO started charging heavily for excess claims beyond the 15th claim last year. The second stage of this fee reform kicks in on April 1, 2009, when the claims above the 50th will be charged at a rate of €500 (US$700) per claim rather than €200 (US$280).
Clearly the EPO is making it punitively expensive to submit a large number of claims for examination. To take an extreme (but certainly not unprecedented) example, a case containing 100 claims, if unamended, would result in excess official claims fees alone of €32,000! If filed before April 1, 2009, the excess claims fees would still cost €17,000.
In cases such as this, therefore, while considerable cost savings are available by filing before April 1, 2009 (in which case the €500 fee can be entirely avoided), the more prudent course is clearly to reduce the claims to 15 in number, or as close as possible to 15. Your FRKelly attorney can advise you of the many ways a claim set can be reduced by combining alternatives, using multiple dependencies and transferring claim subject-matter into the description.
We also remind clients that the EPO will normally require deletion of all but a single independent product claim and a single independent process claim (with limited exceptions), so there is really no possibility of presenting multiple alternative independent claims for examination. By limiting the claims to one independent claim per category, you not only make potential savings at the point of paying excess claims fees, but you also save time and money during substantive examination by anticipating and avoiding what are often inevitable objections.
