Dropping Claim Counts

Earlier, I published the results of a study of rising claim counts in issued patents over time. My data for that study ended in 2005. I have now updated the dataset for patents issued from 2006 to mid 2009. The results – based on the average of all utility patents issued during those years – are shown in the table below.

The median number of issued claims has dropped from 15 claims in 2006 and 2007 to 14 claims in 2008 and 2009. The mode claim number continues to be 20 claims as seen in the histogram below.

Several factors are likely leading to the lower claim counts: (1) increased USPTO fees for additional claims; (2) more frequent restriction requirements; (3) a greater internationalization of the patenting process; (3) greater hourly attorney fees; and (4) reduced economic value of patents; etc.

56 thoughts on “Dropping Claim Counts

  1. 56

    I looked through the MPEP for the answer, and I believe the answer is “no”. There may be an exception based on Director approval, or an old version of the MPEP/rules may be more applicable. I don’t understand why anyone would do that.

  2. 55

    Very interesting distribution. It’s difficult to do the integration by inspection, but it appears that the total number of patents with five or fewer claims is greater than the total patents with twenty-five or more claims.

  3. 54

    From my chemical engineering days, I know that what Shell is trying to achieve, practical in-situ cracking of heavy hydrocarbons, is quite remarkable and very hard to do. It could have a significant impact on energy supplies if they can meet their cost and environmental targets.

    More from their web site. link to bit.ly

    I’m still not sure how their claim strategy is tied to their business goals or the nature of the technology.

    As I was digging into it further, however, (pun intended), I found another set of 91 “high claim count” patent applications in the same technology area they filed on 4/24/01.

    Total claim count for this set?

    Almost 1/2 million.

  4. 53

    Probably about 2 days worth of cut and paste time.

    Either way, they firmly established those claims as part of the application as originally filed. Great way to avoid 112 1sts on things you might like to amend into later.

  5. 52

    “Did they have excess claim fees in 2002?”

    They certainly did, but they changed in 2004. I looked again, and it’s not as strange as I thought.

    They never paid the filing fees up front, but they were granted a filing date. In response to a notice to file missing parts, they reduced the claim set, then paid the fees only for that.

    What the attorneys charged for initially writing 150000 claims? I don’t know.

  6. 51

    “Did they have excess claim fees in 2002? I thought that didn’t start until Dec 2004.”

    Bad behavior by a few => everybody loses.

    But guess what? The greedy people never care. All that matters is that they get a chance to exploit the system, ruin it, and collect their cash.

  7. 49

    It cost them nearly $200,000 in excess claims fees. Times 17? Six months later they file a preliminary amendment reducing the number to about 100 claims.

    Do they get a refund? I looked through the MPEP for the answer, and I believe the answer is “no”. There may be an exception based on Director approval, or an old version of the MPEP/rules may be more applicable. I don’t understand why anyone would do that.

  8. 48

    It cost them nearly $200,000 in excess claims fees. Times 17? Six months later they file a preliminary amendment reducing the number to about 100 claims.

    Do they get a refund? I looked through the MPEP for the answer, and I believe the answer is “no”. There may be an exception based on Director approval, or an old version of the MPEP/rules may be more applicable. I don’t understand why anyone would do that.

  9. 47

    “Where did you come up with that?”

    Inspired by Dennis’s research I did a search on patent applications filed with 200 or more claims to see who was exploring the frontier of massively parallel claiming.

    That particular application is actually one of a suite of 17 that were all filed by the same applicant (Shell Oil) on the same day (10/24/02) in the same field (in situ thermal processing of oil shales).

    Taken together, they have nearly 150,000 claims.

    Is that a record for most claims in a “single” patent application?

  10. 45

    I 100% agree with Znutar and his comments on species elections. Almost every one I have had is bogus. Basically if every Figure does not show every limitation claimed then I get a species restriction. Sometimes it’s just a matter of a different perspective. It’s ridiculous.

  11. 44

    You have three independent claims (1) A, B, C (single prime); (2) A, B, C (double prime); and (3) A, B, C (triple prime).

    they really are not species of one another and A, B, C is not patentable.

    You get a restriction requirement. You know that it is improper, or at least really not needed as the searches will be nearly identical. But you can’t really argue against it without making admissions that the claims are not patentable over one another.

    So the examiner wins.

  12. 42

    Re: “many examiners don’t understand ..restrictions.” Thanks for the candor. Many attorneys don’t understand them either. I blame MPEP 800 for being obtuse, confusing, and circular.”
    Interestingly, the PTO itself more or less admitted that several years ago by publicly requesting public inputs on what to do about it. The AIPLA and others responded, and almost everyone agreed that the MPEP was confusing. Was anything actually ever done about it? [Not that I heard.]

  13. 41

    Speaking of egregious restrictions — I will rarely fight restrictions and elections of species. There is no point. By the time your petition gets decided, prosecution has advanced and your separaely prosecuting the claims anyway. And further, the more patents I have, the better. Its just money.

    What I don’t like about election of species, is that I will elect a species. The Examiner then can’t find that species, but finds another species and says that it is an obvious varient over my elected species. Obviously, the Examiner’s response is contrary to the reason he insisted on an election of species in the first instance – i.e., the species were patentently distinct. When I point this out to him, he withdraws the species requirement. Well that’s dandy. Now I don’t mind paying for prosecution, but I paid (via outside counsel) to respond to the restriction/election just to have it removed during substantive prosecution. We could have skipped that step (the election of species) and went right to substantive prosecution, saving time and money!

  14. 40

    Dennis,
    Good survey. Although some of the factors suggested by the comments above may be at play, a much simpler explanation accounts for much of this observed trend.

    First, note that the largest decrement in the average number of claims took place after 2007, about three years (= average grant pendency) after the step reduction in the average number claims filed in US applications. The precipitous decline in the number of claims in applications was due to a substantial increase in excess claim fees in December 2004. The resultant step decline in the average number of claims in US applications is shown in Figure 2 of an appendix to my amicus brief filed in the Tafas case.
    (see link to works.bepress.com ). Because there exists a wide spread in grant pendency, the applications’ step function is ‘smeared’ over several grant years in your graph. I would have been surprised had your findings been any different.

  15. 39

    To Exr 9: No, I’m not lamenting the demise of apps with excessive numbers of claims, achieved at the EPO by charging an official fee of EUR 500 for every single claim after the first 50. My point was that fee scales do squeeze egregious attorney behaviour. I say “egregious” because more claims = more hours billed. All those claims at the USPTO are absolutely necessary, I gather, if I am to have any hope of the patent being effective in litigation. But is that really true?

  16. 37

    “I think a great improvement to MPEP section 800 (besides trashing the whole thing and starting over) would be to require an identification of a genus by the examiner as part of the species election requirement. And where there are only two species to the genus, it should be per se reasonable to examine both.”

    Why are you prosecuting using the MPEP? There’s only 3 things you should be using, 37 CFR, 35 USC, and case law. The amount of garbarge interpretations of those three found in the MPEP is (not) surpising.

  17. 36

    hyperdictionary.com defines “system” as “[n] instrumentality that combines interrelated interacting artifacts designed to work as a coherent entity; “he bought a new stereo system”; “the unit consists of a motor and a small computer”

  18. 33

    “Besides the clear commonality between the two, I suspect this examiner was one of your more seasoned ones and he knew from the outset that he’d find art applicable to both system and method. ”

    You might be right, and maybe he just fed you up the backside intentionally. Tough cookies. Either take it like a man, or take it to the spe/petition. I admit there are cases where restrictions aren’t appropriate based on your reasoning there. But then again, on the other hand, perhaps the examine was a newbie. From all that you tell me it seems probable. Forgotten/missed 112’s etc. At least your answer wasn’t as boring as 9’s.

    “The examiner asserted that the transitional phrase “consisting of” was merely used to avoid the prior art of record which was “an abusive use of the phrase.””

    I wouldn’t have gone with that wording he used, but his overall position on your lacking WD is a hardline position reminiscent of my own. You can’t just go making up your invention as prosecution proceeds. If you argued back, I’d likely give it to you though. Let the courts settle that mess we need $.

    I have, in the past, “won” similar situations though.

    “Can you point to authority on that? I missed the memo. I’ll give up on that issue if I am shown something that officially made it optional.”

    I can’t, but I do seem to recall something going out. It could have just been training materils. Talk to the TQAS’s, or get an examiner to, if you are sufficiently concerned with the situation. They’re the only ones who keep up with that mess most of the time.

    “I never said that method claims were filed in a divisional w/o consideration for the cited art. In fact, we amended the system claims in the first app to overcome the art cited in the next OA, and then filed the DIV with amended claims. The system and method apps were out of phase, but the rejections were basically cut ‘n’ paste the same. ”

    Well then everything went according to plan, routine blah blah blah, I don’t know why you’re upset other than the whole thing about you thinking he was a primary of 20 years who should never have issued the restriction in the first place. Perhaps you’re right about that one, I simply don’t know.

    “Anyway, no one opined on my idea of having to identify a genus when requiring species election. ”

    If by “identify a genus” you mean “identify any generic claims” we’re already supposed to do that. If you’ll recall, while we have to designate the species as they are presented in the spec, the species must already be in claims or else we have no basis to restrict. Thus, when we identify you some generic claims, we are in effect giving you your desired designation of a genus.

    I figured you just weren’t very smart and wasn’t going to pick on you for asking, since you’re already usually getting it. If you, for some reason, aren’t getting generic claims identified in your written restrictions, then you can call the examiner and ask them for some help identifying them. It usually isn’t exactly rocket science to do.

  19. 32

    “If you want to argue that miracle references are common than why are you restricting if there is usually no burden”

    I’m not going to “argue” it with you, you can either accept reality as reality or not. I don’t care which.

    “If you want to argue that miracle references are common than why are you restricting if there is usually no burden.”

    First because miracle references are unpredictable, and you never know when that burden will start to get big. If you don’t think it will, then don’t restrict. I don’t sometimes.

    And second this is because if you let them off the hook initially then it becomes more likely that they’ll btch up a storm when they’ve amended the product to be very dissimilar to the method after first action and you try to restrict then. And they may even win that on petition. They don’t, however, tend to win petitions where you restrict from the get go.

    “If the system and method are just BS terms for the same thing”

    It isn’t always. But it can be, and seeing what the examiner did leads me to believe that is what happened here.

    As an aside I note that their unpredictable nature is yet another reason to toss on to the pile of why they should be extinguished.

    I imagine you, 9, as being an examiner with little to no experience in dealing with system/method claims. Or, in the alternative, in dealing with them properly. Don’t feel bad, one of my good buds has a really hard time with method claims too. I admit, they’re a pain.

    Still, you could get someone to run you through the basics.

    “If the invention is for a number of devices positioned remote from one another but operatively linked together, I would likely claim it as a “system.””

    And you should be rewarded with a 101 for mine and yours time and trouble.

    “Why not a “paradigm”?”

    Exactly. And why the CAFC picks on that guy’s paradigm and yet leaves the system claim alone is a testament to their lip service to the presumption of validity. System claims should at least be killable during prosecution, and perhaps 112 should be the sword.

    Jimmy is a man with the right plan.

    People these days regard the sacred difference between the statutory classes as nothing but a non-issue. Personally I’m glad that the CAFC is stepping up efforts to make people pay attention once again.

  20. 31

    6 – “How, prey tell, was the examiner supposed to know that the system and method “take the same art” pre-restriction?”

    Besides the clear commonality between the two, I suspect this examiner was one of your more seasoned ones and he knew from the outset that he’d find art applicable to both system and method. But we did not object from the outset because I’m not in the habit of going to the mat on restrictions between inventions on first action. Had I know that we’d go to appeal and have examination reopenned, including new (and quite silly) 112 rejections that could have been raised from the beginning, and then back to appeal over different art, in two applications in parallel, I would have objected to restriction from the beginning. We ended up arguing over whether there was written description support for a “consisting of” claim having two limitations when a drawing showed a system consisting only of those two limitations, but the specification said the system illustrated by the drawing “comprised” the two limitations. The examiner asserted that the transitional phrase “consisting of” was merely used to avoid the prior art of record which was “an abusive use of the phrase.”

    6 – “Znutar, you’re just frustrated because many examiners don’t understand species restrictions.” Thanks for the candor. Many attorneys don’t understand them either. I blame MPEP 800 for being obtuse, confusing, and circular.

    6 – “We did away with [explanations of the reasons for species election requirements].” Fascinating. Can you point to authority on that? I missed the memo. I’ll give up on that issue if I am shown something that officially made it optional.

    6 – “The funny thing which you, and Znutar, don’t like to talk about was that the applicant filed the DIV with that claim, and already had the reference that would invalidate it.” I never said that method claims were filed in a divisional w/o consideration for the cited art. In fact, we amended the system claims in the first app to overcome the art cited in the next OA, and then filed the DIV with amended claims. The system and method apps were out of phase, but the rejections were basically cut ‘n’ paste the same.

    Anyway, no one opined on my idea of having to identify a genus when requiring species election.

  21. 30

    “If the invention is for a number of devices positioned remote from one another but operatively linked together, I would likely claim it as a “system.”

    Why not a “paradigm”?

  22. 29

    What’s the reason for the over-representation of even numbers of claims? The only thing I can think of is multiple groups, especially pairs, of nearly identical claims, like product/process groups. If that’s the case, it should be easy to check whether more restrictions are the cause of the decrease in claims: just make the same graph for previous years. If restrictions without rejoinder are that much more common (especially improper restrictions, where the product/process have nearly identical limitations), the over-representation of even numbers of claims should be more pronounced in past years than it is now, since more paired claim groups would have been let through intact.

    And curious, that is literally the definition of an apparatus. “An integrated group of materials or _devices_ used for a particular purpose.” I look at system claims as an attorney trying to slip something past me and restrict them every chance I get.

  23. 28

    If the invention is for a number of devices positioned remote from one another but operatively linked together, I would likely claim it as a “system.”

  24. 27

    -6
    I conceeded that it does happen rarely. If you want to argue that miracle references are common than why are you restricting if there is usually no burden. Apparently you art rolls a lot looser than mine.

    If the system and method are just BS terms for the same thing, than theres no need to do a restriction. There is no burden and if your SPE allows you to restrict the BS into seperate piles of BS, than you are indeed most fortunate.

    Who knows why he sent in the Div. Maybe he thought the art was BS, maybe he sent them in at the same time. In any case yeah he could have saved money (the issue was restriction by using the same rejection).

    -Max
    Are you saying having no Apps with 50+ claims is a bad thing? Claim fees in general are pittance in general to revenue collected. I’m sure no ones crying at the EPO.

  25. 26

    “( although very rare).”

    That isn’t rare at all. It happens routinely in my art. The “system”, aka bs term for “apparatus”, “method”, “composition” or “product” or an amalgamation of any combination of two or more of the above, is very often close enough to get caught in some huge disclosure of a prior art ref that is applicable to the method. It is not apparent that such a miracle reference will surface at the beginning of the search however.

    In this case he “copy/pasted” no doubt because they used the bs term “system”.

    System claims should be rejected at the get go under 101 and never be heard from again. One more abomination plaguing the system that just causes problems and provides no benefit other than ambiguity for the patentee. Ambiguity which the statutes sought to squash.

    “Any person of ordinary skill in the art should be able to recognize whether they would use same rejection not to reject both the system and method immeadiately. ”

    And I’m sure the examiner did too, as soon as he found the reference. Which was after the restriction was sent out and he didn’t give a crap whether he would or not.

    The funny thing which you, and Znutar, don’t like to talk about was that the applicant filed the DIV with that claim, and already had the reference that would invalidate it. This was the apps fault, not the examiners. Come on, seriously, you have to be pretty dmb to do that.

    This is routine. And it was boring to discuss it with you. Except for the abomination part. Still, I expect better from you.

    Curious, I will decline to, since I have gone over it time and time again already. And as I have told you already, nobody with authority will sanction those types of rejections, and thus there are no MPEP sections about it. If the issue ever went to SCOTUS we’d have it sorted out right fast though.

  26. 25

    -6
    I did not mean to suggest that system and method should never be restricted. And its possible that a restriction between a method and system could use the same art and be acceptable( although very rare).

    But if you are copying and pasting the same rejection without taking notice oh whether its a system or method, than its clear they aren’t distinguishable and should not be restricted.

    Any person of ordinary skill in the art should be able to recognize whether they would use same rejection not to reject both the system and method immeadiately.

  27. 24

    Don’t underestimate the power of declarations to condition Applicant behaviour. Since the EPO introduced (with a huge fanfare) its new rules that impose fees on every claim over 15, and swingeing fees on every claim over 50, the income the EPO gets from claims fees has (I suspect) gone down. My suspicion comes from what my firm pays the EPO in claims fees since March 2009, compared with what we were paying up to March this year. Apps with 50+ claims are now rarer than ever.

  28. 23

    6 writes:
    “No Paul, please don’t, he knows exactly what you mean, but doesn’t like it. Everyone knows it, nobody with authority will allow it.”

    Actually, I would like for you to explain them, Paul. Are you referring to “undue multiplicity”? (Or 6 can explain them if he wants, preferably with MPEP cites.)

  29. 22

    “I understood it was up to the Examiner whether or not to allow more than one invention in a given patent application. ”

    It is, per 121, up the the director, and presumably the examiner acting in his stead. However, that shouldn’t precede the rejections which could be made per the 101 and 112 reasoning put forth by Paul.

  30. 21

    Hello Mr. Six (said with voice inflection like Seinfeld said “Newman”),

    I understood it was up to the Examiner whether or not to allow more than one invention in a given patent application. I had one jumbo application that was allowed with almost 200 claims that was broken into 16 inventions in Europe, and another jumbo that was broken into 18 inventions in Europe. The latter required one Continuation to get all the claims we wanted allowed.

  31. 20

    “Paul writes: “getting a 35 USC 112 rejection for violating its statutory “particularly pointing out and distinctly claiming” requirement, and/or for miss-claiming more than one invention per application [also per 35 USC 101]”

    Please explain both of these rejections, Paul. Thanks

    No Paul, please don’t, he knows exactly what you mean, but doesn’t like it. Everyone knows it, nobody with authority will allow it.

  32. 19

    “Sounds like you got hosed, if the system and the method take the same art should be one application. ”

    How, prey tell, was the examiner supposed to know that the system and method “take the same art” pre-restriction?

    I await your reply in earnest.

  33. 18

    Znutar, you’re just frustrated because many examiners don’t understand species restrictions. In fact, there are many that will tell you this to your face. Or at least my face, since I’m not an attorney. Most of these people don’t even use species restrictions. But the ones who don’t understand them and still try to use them will obviously make that mistake like in your sub example.

    That said, it is rather complicated to think about these kinds of things. For example in your sub example we have a combination/subcombination between the sub and the periscopes (depending on how you claimed the sub) and then we have 3 species of periscopes, and we have a “two subcombinations usable together” most likely with your screen and the periscopes.

    That’s a fcking hard restriction to make. In situations like those in my art it can take me a few hours just to wrap my head around the whole thing sometimes. Especially since there is often more than one way to skin (restrict) this cat.

    In your example with the three chemical species I don’t even bother and just find the three species. HOWEVER, something funny about that was a case I had which listed about 12 different polymers (iirc?) that were not your run of the mill polymers. It was a burden to search more than 3 or 4 of these, so I figured, restrict them. Almost unbelievably, a spe (not my spe) whom I consulted after I did it thought that was not a proper restriction to make. I was like WTF, if there ever was a time to use species restrictions now’s the time! My spe agreed with me when I later consulted him, and he had previously signed the restriction. The moral of this little story is that there are people who just don’t know wtf is going on in restrictions because they are too complicated.

    I note that the real btch about that restriction was that, even after they elected one species they had a big list of all the species in the ind, so that claim was generic, so when I couldn’t find the elected species I had to try to find all the rest of the species anyway since then the generic was allowable. Two words “STIC search”. I did a bit on my own, but it was hardly in depth since they supposedly consult big databases of these things to find them at the STIC.

    And the funny thing about that case was that I had found, in my FOAM search, one of the species in the big list and rejected the big list. Then of course they removed that one species, moved the big list to the ind. It was funny though because I actually did find one of those weird looking species in an obscure 1 page long journal article.

    “And I’d also like to see species election requirements stop reciting that the requirement is appropriate for at least one of the several enumerated reasons listed in the form paragraph, and actually indicate which reason…and why.”

    We did away with that, was too much of a bother and is merely a courtesy.

    “why is my application with 3 independent claims and 17 claims total unreasonably burdensome?”

    You know good and well that the burden may arise from shear number of claims as well as being able to arise from the disparate nature of the things being claimed in different claims.

    “There was no unreasonable burden on the examiner, but he got twice the number of counts for the same schlock job. ”

    You know good and well it isn’t based on whether or not it turns out in the end to have been a burden, but whether or not it appears, at the time of restriction that it will be burdensome.

    Don’t be pretending Znutar.

    I advocate simply training examiners, and requiring them to pass a restriction test before they are authorised to use them. A pretty tough test. Maybe 5 questions. All of them having a subcomb/comb or method/process in addition to a species or two, and each species being a sub/comb to other claims etc etc. That is, if anyone was sufficiently concerned with the “problem” of incorrect restrictions going out enough to fix it. Since they’re not, I advocate the status quo.

  34. 17

    Znuter,

    Sounds like you got hosed, if the system and the method take the same art should be one application.

    For your submarine example, its really dependant on your periscope designs and video display, you shouldn’t be claiming the submarine so I don’t see how that would be a seperate species.

    As for examining multiple genus, you have to understand the examiners can be very specialized.Its just effcient or plausible to do so.

    In any case I would always suggest attorneys know and understand the classification system. It would make traversing a restriction that much easier.

  35. 16

    “assuming that all examiners in an art unit examine approximately the same number of claims then it shouldn’t make much difference”

    Sounds like the law of averages, also known as gamblers fallacy. You usually have such insightful comments too. Furthermore even if they did balance out like you propose. It still doesn’t address the probability of one examiner recieving a ton of cases with 100+ claims all in a short time. Thats the problem with the production system, they took a bunch of averages and assumed everything would balance out. It rarely does.

  36. 15

    Paul writes: “getting a 35 USC 112 rejection for violating its statutory “particularly pointing out and distinctly claiming” requirement, and/or for miss-claiming more than one invention per application [also per 35 USC 101]”

    Please explain both of these rejections, Paul. Thanks

  37. 14

    Back when the PTO was first proposing draconian absolute limits on the number of claims I had responded that the very significant fee increases in excess claims would eventually solve most of that problem, and it seems to have.
    The above comment about restriction requirements [increasing?] lowering the number of claims per patent is a good point also.

    The rare abuser of client funds, the PTO and the public who is filing a hundred or more claims in an application should logically be getting a 35 USC 112 rejection for violating its statutory “particularly pointing out and distinctly claiming” requirement, and/or for miss-claiming more than one invention per application [also per 35 USC 101]. [Not that the PTO is well noted for originating new but appropriate rejections.]

  38. 13

    “examiners don’t get extra time for more claims” assuming that all examiners in an art unit examine approximately the same number of claims then it shouldn’t make much difference

  39. 12

    Znutar says “labelling every drawing as representing a separate species ought to be banned.” I agree

  40. 11

    If there is going to be a statistical analysis of restrictions, please differentiate between restrictions and species elections. I find the species elections more often abused than the restriction requirements. I’m OK with treating the method claims and the system claims as separate inventions, but it’s just silly to label every figure as a distinct species [without having even looked at the figures, in most cases] and require an election of only those claims that read on one of the figures.

    Where species election makes some sense is where the examiner can identify claims that recite alternative species of a common genus, for example the independent claim requires a component to be plastic and the three dependent claims recite that the plastic is polyethylene, polypropylene, and PVC. OK, I can pick one and move on. But what I frequently see is the situation where there are several genera amongst the claims, each with several species, and I’m told to pick one species from amongst the multiple genera. I think a great improvement to MPEP section 800 (besides trashing the whole thing and starting over) would be to require an identification of a genus by the examiner as part of the species election requirement. And where there are only two species to the genus, it should be per se reasonable to examine both.

    And as I noted above, labelling every drawing as representing a separate species ought to be banned. FIG. 1 shows a submarine, FIGs. 2-5 show three alternative embodiments of periscopes usable in the submarine, and FIG. 6 shows an optional video display usable with any of the three periscope designs. How does this represent five species? What if I elect FIG. 1?

    And I’d also like to see species election requirements stop reciting that the requirement is appropriate for at least one of the several enumerated reasons listed in the form paragraph, and actually indicate which reason…and why.

    And when the PTO was ready to implement a rule where it was per se reasonable to file 5 independant claims and 25 claims total, why is my application with 3 independent claims and 17 claims total unreasonably burdensome?

    Going back to restriction, I had an examiner restrict between system and method, and then after the non-elected claims wound up in a divisional he did the same search and came up with the same references and made the same rejections without even bothering to tailor the rejections of the system claims to the now rejected method claims. There was no unreasonable burden on the examiner, but he got twice the number of counts for the same schlock job.

  41. 10

    “examiners don’t get extra time for more claims”

    Now isn’t that just silly? Who came up with this system, anyway?

  42. 9

    I wouldn’t call it a 20 claim attention span, its more to do with production requirements. Since examiners don’t get extra time for more claims you have to take shortcuts somewhere.

  43. 8

    I would be interested to see a graph of the increased frequency of restriction requirements over the years, and a plot both curves on the same graph.

  44. 7

    Is “1) increased USPTO fees for additional claims;” one of the reasons why the PTO is going broke?

  45. 6

    “Several factors are likely leading to the lower claim counts: (1) increased USPTO fees for additional claims; (2) more frequent restriction requirements; (3) a greater internationalization of the patenting process; (3) greater hourly attorney fees; and (4) reduced economic value of patents; etc.”

    IMHO the main reason is (3) More frequent restriction requirements.

  46. 5

    Maybe the claim count is dropping because more patents being issued are of foreign origin???

  47. 3

    WindyCity, I am glad to see at least some people are catching on. Attorneys out there should advise their clients similarly. In fact, it should be an obligation to obtain reasonable claims for your client, and not filing 100+ claims is part of that.

  48. 2

    I have a client who regularly instructed us to file apps. with 100+ claims. Recently, they switched their approach, and their latest apps. were filed with 20-30 claims. The reason they expressed – that the “extra” claims don’t receive a thorough examination, and features presented in the later claims aren’t considered by the Examiner or discussed in the Office Action. As if the Examiner has a 20 claim attention span, or the Examiner invokes an informal restriction requirement not in the record and without applicant election.

  49. 1

    But only one factor indicates that issued claims should be less than the filed claims as you had in a previous graph (iirc). Restrictions.

    Well, maybe two. Bad quality patents having to have more deps moved up.

    Those’ll be your main culprits I’d wager.

    I don’t know about you guys but the number of claims I end up allowing is usually very meager. Probably an avg of 7 claims per case. So many deps are cancelled or moved up by the end there’s just very few claims. I was thinking about this just the other day and it seemed rather odd that all these claims come in with cases, and then by the end we have so few.

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