Wednesday, August 24, 2011

Filing multiple applications will reduce excess claim fees

Within an article on patent applications on cloud computing, one has the text

Patent applicants can benefit from a strategy of filing multiple related applications for a cloud computing invention. Each application could be directed, for example, to a separate potential infringer. In this manner, the patent applicant can avoid drafting claims requiring dual actors for infringement and can tailor claims to each of multiple potential infringers. Moreover, if multiple potential infringers exist, it is likely that a large enough number of claims could be drafted so that it would be cost-prohibitive to include them all in a single application. Filing multiple applications will not only reduce excess claim fees, but will also prevent potential prosecution headaches down the road. For example, including a diverse claim scope in a single application increases the risk of a restriction requirement once the application is examined, which in turn can raise the cost of the patent process for the patent applicant. Accordingly, care should be given to determining the parties for which asserting the patent is the most viable and separating the claims into separate applications.

The basic fees for a utility application include the basic filing fee of $330, a utility search fee of $540, and a utility examination fee of $220. This sums to $1090. Independent claims in excess of three are $220 per claim, and claims in excess of 20 are $52. The excess claim fee for 3 independent / 17 dependent would be something like $1544, indeed in excess of $1090.


Blogger David Boundy said...

Issue fees, maintenance fees, cross-citing prior art among sibling applications (a cost that rises as n**2), double patenting, and the attorney headaches of managing multiple cases with multiple examiners. Yow. Keeping claims together is a big cost saver.

1:23 PM  

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