Thirteen Thousand+ Patent Claims

Via Greg Aharonian’s Internet Patent News Service.

Apparent the USPTO issued a Notice of Missing Parts for an underpaid filing fee - in the staggering amount of about $1.25 million USD (or about $1.5 million CAD)! This fee was for filing a total of 13,305 claims in a biotech patent application entitled Electrical devices and anti-scarring agents (US 11/006,891). There were 1441 pages worth of claims alone. Check out the USPTO’s filewrapper for this application and click on the Pre-Exam Formalities Notice for the Notice of Missing Parts.

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Okay, to me that just seems just a tad bit excessive, 13,000+ claims; even if they are for a biotech invention. Apparently the applicant thought so too, because they ended up deleting most of the claims, leaving only about 50 and paying a much smaller fee.

Putting the filing fee aside for a moment, how long did it take the poor patent agent to draft all these claims? I often take 10 to 20 hours to draft, review and revise 20 or so claims. The most I’ve ever dealt with in one application was 125 claims. I can’t imagine breaking the 1000 claim barrier, let alone 13,000+ claims. The written description is also not trivial, it’s an impressive 453 pages!

I do note that all the inventors are Canadian and that the first-listed inventor is Dr. William Hunter - President and CEO of Canadian based Angiotech Pharmaceuticals, Inc.

Unfortunately I wasn’t able to find an exact corresponding Canadian application (it may not have been published yet). The closes one I did find was CA 2,388,844, with only 354 claims.

However, had they filed an application with 13,305 claims in Canada, the filing fee would have been a mere $200 for a small entity; and that’s Canadian dollars. Unlike the USPTO, our Patent Office does not charge an additional fee based on the number of claims.

The Canadian issue fee would have been a different matter. Currently, for a small entity, our patent office charges a $150 basic issue fee, plus $6 per page over 100 pages. Still, assuming the full 1441 pages of claims + 453 pages of description + 32 pages of drawings, we’re only looking at a mere $11,106CAD issue fee (nothing like the million-and-a-half for the US filing fee).

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