Hitherto, the EPO required claims fees to be paid for claims in excess of ten initial claims.  Moreover, until recently, claims fees at the EPO were relatively modest in comparison to a total cost of submitting a patent application.  However, pursuant to the Decision of the Administrative Council of 6 March 2008 amending the Implementing Regulations to the European Patent Office (EPO): “Any European patent application comprising more than fifteen claims shall, in respect of the sixteenth and each subsequent claim, incur payment as laid down in the (EPO) Rules relating to Fees”.

 

According to latest fees lists from the EPO, the EPO requires a payment of Euro 200 for each claim in excess of 15 claims.  A patents draftsperson unnecessarily including 30 claims whereas 15 would actually suffice is costing the applicant 15 x Euro 200 = Euro 3000 additional expense.  Such a sum of money is very significant and there is a moral duty to ensure that the applicant does not unnecessarily have to pay such a large sum of money.

 

Clearly, the EPO is incentivizing applicants, or their representatives when appropriate, to draft shorter patent specifications with compact short claim sets which are more efficient for the EPO to process.  The EPO is experiencing a continuous expansion in the number of patent applications submitted to it, and therefore such incentivized changes are effective at assisting the EPO cope with its very considerable workload.

 

Clearly, an era of long rambling patent specifications is drawing soon to a close.  A modern contemporary patent attorney shows his/her skill in drafting efficient compact patent specifications which provide sufficiency and options for claim amendment to circumvent indentified earlier documents from novelty searches and additional documents arising under opposition proceedings, and yet do not incur excess claims fees and translation costs.  A length of a patent specification is not a reliable indication of its quality; a short inexpensive patent specification in certain circumstances can often represent by far best quality when judged from a holistic perspective.