The claims of a patent application determine the field of the art to be searched by the patent office. The claims of a granted patent determine the scope of protection and thereby the value of a patent.

An applicant is interested in a patent office search which is hierarchically structured and as extensive as possible; for this purpose he uses a plurality of principal and independent claims and claims referring to those. The European Patent Office (EPO), however, tries to curtail this additional efforts by charging claim fees (Rule 45 (1) EPC). For the EPO the prohibitive claim fees of currently 225 Euro per claim for claims 16 to 50 and the claim fees of 555 Euro for the 51st and each further claim has proven particularly effective.

Practiced counter strategies of applicants to reduce the number of claims without omission of disclosure in the claims are

  • the combination of alternative embodiments by using “or” combinations in one claim
  • the use of multiple dependencies in the dependent claims and
  • the addition of optional or more specific features subsequent to claim features being essential to the invention by using “optionally comprising”, “preferred”, “particularly preferred”, and the like,

which in case of a clear structuring of the claims comply with the clarity requirements of Article 84 EPC.

In extreme cases the applicant can shorten the claim set even after the transmission of the version of the patent intended for grant by the examining division (Rule 71 (3) EPC communication) to save claim fees, as ascertained in a recent board of appeal decision J 6/12 of January 29th, 2013.

In J 6/12 the applicant shortened the claim set in reply to a communication pursuant to Rule 71 (3) EPC by ten excessive claims liable to costs. Still, the claim fees have been charged by the EPO for those ten claims and the reimbursement of the fees has been rejected by the examining division, as the claim fees allegedly have already been liable with the notification of the communication pursuant to Rule 71 (3) EPC. Moreover, according to the examining division, there is no EPC-regulation allowing for a reimbursement of claim fees in case of the decrease of claim fees after receiving a communication pursuant to Rule 71 (3) EPC.

Fortunately, the board of appeal did not follow the opinion of the examining division and fully accepted the arguments of the applicant based on the following grounds:

The “version of the application intended for grant” constitutes the basis for charging additional claim fees. If the “version intended for grant” would always be the version determined by the communication pursuant to Rule 71 (3) EPC, then, consequently, the examining division would not be permitted to charge claim fees for claims added after this communication. The latter is applied practice of the EPO. The board of appeal elegantly assessed this practice putting emphasis on EPO interests as “not harmonious”. Also, the board of appeal did not accept the argument of allegedly missing reimbursement regulations and referred to “payment without legal ground”. The claim fees are to be demanded on the basis of “the version intended for grant”. “The version intended for grant”, however, is only determined after the examining division has permitted the submitted amendments (shortening of the claim set), but not already with the effective date of the issuance of the communication pursuant to Rule 71 (3) EPC.