As you will know by now, the EPO has a new and very expensive excess claims fees regime in place since April. To help reduce the cost impact for your future cases, we have compiled a list of the most useful strategies for reducing claims when filing in Europe:

1. Combine alternatives
   The EPO may allow you to combine several alternative, but related, features in a single claim, even in mechanical or electrical cases.
2. Concentrate on one invention
   For Euro-PCT cases, the EPO will now only search the very first invention encountered in the claims. If claim 1 does not cover the most important invention, it is critical that we reshuffle the claims to bring this invention to the front. You cannot amend to unsearched subject-matter later on, so you might otherwise have to file a divisional for the preferred invention.
3. Cull dependent claims
   Dependent claims in Europe are primarily used to provide good fall-back positions for restoring patentability to the main claim if this should prove necessary. If a dependent claim covers something trivial or obvious in itself, then it might be wasting a valuable slot in your set of 15 “free” claims.
4. Cancel duplicates
   Repeating the content of dependent product claims as dependent method claims (or vice versa) is an expensive luxury. If a dependent method (or product) claim merely repeats a feature listed earlier in the claim set, you can cancel it.
5. Consider multiple dependencies
   Multiple dependent claims incur no penalty in Europe, allowing significant savings in some cases.
6. Create pseudo-independent claims
   A "pseudo-independent" claim is one which starts with the appearance of a new independent claim but which actually refers back to earlier claims, such as: "A method of protecting an invention in Europe, comprising the steps of filing a PCT Application as claimed in any of claims 1 to 5, entering the EP regional phase before 31 months, and amending the claims to reduce excess claims fees."
7. Confine yourself to one independent claim per category
   The EPO will almost certainly object if there is more than one independent device/apparatus/system claim, or more than one independent method/process claim, except in very limited cases. Several different overlapping independent claims will normally not be examined beyond the first product claim and its equivalent process claim, so you can save significant fees by confining your protection at the outset to the single best claim with reasonable prospects of success.

The above pointers do not, of course substitute for specific advice, and I would be happy to advise in relation to any particular set of claims which you are considering for filing in Europe.

How does the new claims fee structure work?

Claims 1-15 are "free", i.e. covered in the basic filing fee.

Beginning with claim 16, the cost is €200 (about US$320) per claim. This means that the excess claims fees alone for a set of 50 claims would be US$11,200.

When can you amend?

On Euro-PCT cases, you can reduce the claims either when entering the EP Regional Phase, or within one month of receiving an invitation, which issues shortly after you file.

On direct (non-PCT) EP filings, the changes must be made in time for the reduced claim set to be submitted with the initial filing to the EPO. The claims fees are based on the actual claim set as originally filed and no post-filing amendments are allowed until after the search report issues.

Last Updated :

Wednesday, May 07, 2008