Drafting efficient patent specifications – recent changes in claims fees at the EPO – Decision of the Administrative Council of 6 March 2008
29. May 08
The European Patent Office tries to encourage patent applicants to draft shorter patent specifications. One of the measures taken is that the official fees for European patent applications comprising more than fifteen claims have increased dramatically.
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
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.