In a previous post, I had discussed a Controller’s decision, where the Controller had made certain observations regarding an applicant’s attempts to amend claims before a certain date. This post suggests two specific policy level changes that may be brought in by amending the rules, (rather than the patents act), to benefit the applicants, the patent office, and the exchequer/public at large.
The Controller had made certain observations (highlighted below in quotes), and in my view if that is the way in which claims are looked at our patent office, it ought to be changed.
“…I wonder how different types of claims are possible for a single description which related to single invention in different jurisdictions…..The applicant misleads patent administration by manipulating the information disclosed in the description in a different way to acquire patent for infant formula which was not at all prepared as a product.”
There are two reasons why the suggestion is a practical one. The first reason is that, for the suggestions to be implemented, it is easier for the Controller General/patent office to change/amend rules. The suggestions do not require a change in the patent act, and we all know an amendment to the act is difficult, long drawn and is an extremely cumbersome process. The second reason is that the suggestion, if implemented, will raise significant revenue for the patent office/public/exchequer.
The suggestion is: (1) allow applicants to submit multiple format claims in different number and (2) charge them for examining/allowing/rejecting them without taking a moral stand on the claim style. Needless to say that claims should be supported by the original disclosure.
The suggestion may be more easily understood by concrete examples. Say, an application is for a communication transceiver. In this example, there may be distinct system, transmitter, and/or receiver claims apart from the method claim, described in detail in the application. The Indian patent office allows only receiver claims, and grants the patent. The applicant has to pay a renewal fee, and other fees in order to keep it in force. Now if our patent office allows only one particular set of claims to the exclusion of all others, the applicant has no opportunity to even apply for a second set of claims in a continuation application. The patent office/public forgoes this additional revenue from the applicant that could be had from those additional claim sets/applications that were not entertained.
Some readers might question here, that if multiple claim styles are allowed, it amounts to ‘evergreening’. That is not the case because each granted patent (continuation application) derived from a single application expires on the same day, and therefore, even if multiple claim styles are allowed-receiver, transmitter, method etc. all expire on the same day. Ergo, no evergreening, ever.
The benefit to the applicant is that in case of infringement, it becomes comparatively easier to charge the infringer without any distributed infringement issues coming in the way. This is not the case when the patent office grants only a transmitter style claim, and the applicant is stuck with that.
It is a common practice in most other patent jurisdictions, that the applicant gets what she pays for including multiple claim styles. Korea, China, Taiwan, United States, Europe all allow applicants to submit different claim sets by charging a separate fee for a different application. Why should our patent office be any different? If a claim is rejected by our patent office, the idea is not that the same claim is reintroduced for examination with ulterior motives. The idea is that if a different form of the claim is allowable then why not at least try it. The applicant is obviously paying for it and the patent office has the option of rejecting/allowing it. It is the applicant who bears the search costs. Additionally, that the Examiner may not have to do an additional search for different claim sets or applications. There is no obfuscation of the invention, because the more the claims or claim style, the better the interpretation of the invention. In this sense, continuations are more helpful to understand the invention. Given this background, the public obviously benefits in two ways: Increased fees for patent office, 2. Increased understanding of the invention. The patent office has still got the option to reject claims.
The idea with continuations in the US, and divisionals in Korea/China is the same. Allow the applicant as many bites to the apple in accordance with the fee paid. Applicants want different claim sets because of litigation/enforcement reasons. Eg. In wireless technology, handset claims are more valuable than base station claims.
Practice in other jurisdictions: Even at the European Patent Office, the applicant has the choice to file something called as EP divisional (like Korea/China) at the time of first entry into Europe after PCT. In the US, a continuation is generally filed after allowance but before payment of issue fees. In Korea/China, the applicant can file multiple claims sets for the same application at the same time. For example: 0345.KR; 0345.KR.01, 0345.KR.02 may indicate that the series 0345 has three different claim sets. The applicant pays right at the beginning for three different sets. In India, a divisional application may arise at the time of examination, where the Examiner states that the specification has more than one invention. So divisional gets the benefit of the original filing. Therefore, there is no obfuscation of the invention.
There is another issue at here, of how an imprecise language can be used to define by metes and bounds the extent of protection/scope of the claims. Claims are expressed solely in mathematical terms. If something that by nature cannot be defined precisely, there is all the more reason to ask for different forms/ways in which that something can be expressed. There is, and always will be some sort of “manipulation” to express a claim. The manipulation may be in terms of expressing as a receiver, transmitter, or a infant formula, or a product.
Hello Mr Chaudhary,
Congrats for a very good post. But I am not sure if I have understood it correctly.
By your suggestion that applicant may be allowed to submit different format claims for the same invention with different numbers , are you proposing providing choice to applicant to put his protection claims in three different ways. And all these to be evaluated by the examiner. And which are turns out to be farthest from the anticipation be considered for the grant of patent.
Let me take the liberty of continuing with the example of communication transreceiver. It constitutes three parts. Receiver , transmitter and the baseband system. Claims can be submitted for receiver exclusively, transmitter exclusively , system exclusively or a method linking all three systems or with each system separately. And if I am on the right track of understanding of what you have proposed then all these claims may be allowed to be filed with patent office deciding the most suitable for grant of patent.
Such a scenario is perhaps not good for any of the stakeholders. Apart from increasing of workload of an already not so efficient IPO, it would also be a big disincentive for any potential applicant to do rigorous homework before filing application. And claims seeking protection are built taking care of unity of invention and made to logically flow from “which technical problem has been solved”.
I limit my arguments as I need to confirm the correctness of my understanding of your proposal.
Regards
R.K.Jain
Patent Agent
Rajeev, the proposal to have “continuation” applications is nothing new and exists in many jurisdictions as already pointed out in Rajiv’s post. Whether it entails more workload for the patent office is immaterial because if it is the patentee’s right it must be permitted. There are other ways of taking care of prosecution backlog than restricting applications.
Also, I would say the more homework you do (not less!), the more ways you are likely to come up with to claim the invention. Prosecution involves risk in the way the claim wording is interpreted with reference to the prior art. One way to cover the risk is for the applicant to try and claim the invention in more than one application.
If the description can support more than one set of claims, on what basis can the right to make those claims be denied?
Dear Mr. Shankar,
I beg to differ with your comments. The comments of the Controller is reflective of the fact that an invention framed according to the principles of ‘unity of invention’ and a solution to a technical problem” cannot be represented in two forms for a single invention, If the description can support more than one set of claims, then the deligent aplicant may as well as look for filing seperate applications or go for division of applications.
R.K.jain
Patent agent
Mr. Jain: Sir, thank you for your kind remarks. There are a couple of places where your assumptions are shaky. In addition, I should have explained the terminology better. Let me explain in detail.
An application is filed with a set of 10 claims (say 2+8: two independent-eight dependent). If our patent office follows the Korean/Chinese/European practice, then the applicant has the “option” of filing simultaneous “divisional” applications with different claims.
If our patent office follows the US practice, then the applicant has the “option” of filing a “continuation” before payment of issue fee for the original application.
In both cases, it is optional, not mandatory to file additional sets of claims by paying addtional fees.
In all jurisdictions where simultaneous filing is allowed, (korea/China/EP), claims are usually “never” examined simultaneously. One application (usually the one with original claims) is taken up first. Others are “usually” taken up for examination after a first office action is issued. Plus, the applicant is duty bound to cite the result of the actions in one set of claims across all others.
Your first assumption that increased claims increase IPO patent examiner workload is incorrect. Because multiple claim sets (arising from a single disclosure) are almost never examined simultaneously, there is no increase in workload.
Another reason is the way our patent office functions. Suppose that applicant files applications in US/Korea/China and EP and takes opportunity to file multiple claim sets in those jurisdictions. If the same applicant files in India, then she is duty bound to disclose the result of the entire prosecution history in the entire world to our patent office. It is common knowledge that PCT applications filed in 2008 at the IPO are being taken up for examination now.
So our patent office has actually got multiple opinions at the cost of the applicant. The workload is reduced, rather than increased!!
Shankar has already answered the issue you raised about homework. I would just like to add that Unity of invention is present across jurisdictions. Filing multiple claim sets does not break it. You have incorrectly assumed that multiple claim sets break the unity of invention.
In India, it is not to the applicant to choose filing divisionals. The Examiner is responsible to indicate the same.
One final example is claim language from one of these continuations/divisionals (in a separate comment) that generate revenue for other patent offices but not for ours because of the moral stand taken by our office.
As an example where the patent office gets literally “free” money by accepting multiple claim sets, please have a look at U.S. Patent numbers: 7787859 and 8078142, both assigned to Nokia and arising from a common disclosure.
1. You can see the difference in claim terminology to see why the applicant preferred multiple claim sets; and more importantly you can see the list of references cited. There is NO difference. This is proof that the patent office does not get additionally loaded with more work when applicants file multiple claim sets.
Therefore, our patent office misses out on the opportunity to earn easy money.
Dear Mr. Chaudhary
Thanks for example of U.S aptents. I went through them They truly validate your point.
This means that the applicant has now two patents for the same invention, with reference of first mentioned in second. Can you help me understand that why is USPTO doing this, when it can very well see that they are the same invention. The references cited by the examiner are exactly the same.
Further what happens when one set of claims are found to be invalid while the other set comes clean. Will it imply the patent getting a second life.
Also what happens when by virtue of definitions one set of claims are found to be infringed while other is not.
A response will be greatly appreciated
R.K.Jain
Patent agent
Mr Jain: Sir as I had mentioned in the post, applicants may want multiple claim sets for many reasons-including litigation/licensing.
If one set is found “invalid”, then the entire file history of that application suffers including continuations/divisionals/continuations-in-part. It may happen that the claims may be found to be valid and not infringed. It is then, that the other claim set may be asserted. Usually, the patentee does her homework in this regard (which claim set to assert) before approaching litigation or licensing negotiations.
Rajeev,
I agree with you on multiple claim styles.
I did not quite understood when you mentioned in one of your comment(12:12 am) that “it is not the applicant to choose filing divisionals……..”.
Don’t you think that S.16 allows even applicant to file divisionals on its own? Let me have your thoughts!
Anon@12:33AM: For a second. I thought you were referring to Mr. Rajeev Jain.
That statement referred to divisional practice in US/India where it is the Examiner who says that one application contains more than two inventions. Hence “divide” the application into separate inventions. Therefore the name divisional.
The applicant “usually” wants this job to be done by the Examiner, because otherwise applicant would have to file multiple applications-i.e. more fee at one time.
Yes, Section 16 allows applicants, but applicants would be happy if they don’t have to shell out large amounts in one go. A typical official fee for a corporate filing runs into lacs of Rupees. There is no need to pay entire amount first, and take the risk of filing two/more applications, when one would have sufficed. Examiner also has the option of combining applications-it is rarely done but I can refer to US examples.
Rajeev, the amount of money saved by bunching together more than one set of claims with an application is perhaps Rs.4000 at a maximum, which could be negligible compared with the total fee payable when the number of pages/claims are considered, on an average internationally pursued application. Unless, of course, the applicant does not include those claims at that time, but in that case, does he ever have an opportunity under Indian law to make an application with claims that were originally not included?
It seems that section 54 does not cover this case at all and any additional claims must be filed at the outset whether in a single application or through multiple applications.