I Claim This Land For Spain: Why Excessive Numbers of Claims Hurt the Patent Process
When an inventor applies for a patent, he puts his invention into numbered legal claims. Most patent applications have less than 30 claims; some have far more (in some notable cases, more than 200). It is not enough that applicants are forced to pay more for the excess claims. Claim sets for individual patents should be limited to thirty claims or less, at least on first filing. An excessive number of claims hurts the quality of examination, complicates the patent application process unnecessarily, creates inefficiency at the USPTO, and should be against the rules.
As recently as 2007, the USPTO, under former Director Jon Dudas, attempted to promulgate a rules packages that would limit the number of claims filed to 25. The Courts quickly struck that rules package down as a violation of the USPTO’s limited “procedural-only” rulemaking authority (like the Post Office, the PTO is a purely administrative agency; most agencies have some substantive authority (e.g., the FDA can issue Notice and Comment rulemaking)).
That was a mistake—it was not a substantive rule. The Office was merely attempting to control the size and flow of their workload. Instead, they currently grant some applicants an unfair advantage in pendency. But even assuming Mr. Dudas violated his statutory authority, there are strong policy reasons for whomever has the authority (here, either the Court – or Congress) to allow limitations on claim number.
It is no secret that many applicants actually desire a longer patent pendency, as long as they the courts or the Office grant them appropriate patent term adjustments. The bloggers over at Patently-O have an interesting graph posted that seems to correlate Patent Term Adjustments with the number of claims that each patent has, and finds a strong correlation. This makes innate procedural sense; those more unnecessarily complicated applications are far more likely to produce mistakes in the application process, which will likely lead to unnecessary delays in prosecution and hence term adjustments. So clearly, patent claim numbers can be reasonably construed as procedural rules only – ones aimed at a fair and equitable procedure in front of the office.
For instance, as just stated, this type of claim set forces the examiner workload to become highly unbalanced, leading to examiner error and oversight. For instance, an examiner gets the same amount of “production credit” for a 200-claim case than he or she would for a 25 claim case, regardless of how complicated the subject matter actually is, which means he or she should spend the same amount of time examining those cases. So, even subject matter that an examiner is well-familiar with can lead to errors when combined with the added complexity of a spider-web of dependent claims.
If the Courts continue to strike down such reasonable rules, they will either force Congress to act—which will happen slowly, if ever—or what is more likely, they will create inefficiency and bureaucratic waste in the office, and actually hurt the equitable chances of the average patent application.
*Disclaimer: The opinions in this blog are Mr. Stroud’s and Mr. Stroud’s alone in his capacity as a law student.