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.