Does it help to have a lot of patent claims?
Channel: Rolf Claessen
Date: 2017-03-30

I am Rolf Claessen, patent attorney of Michalski · Hüttermann & Partner, and in this video I will look into, whether it helps to have a lot of patent claims. I give you my opinion in advance: a lot of patent claims generally do not help, except maybe during prosecution. In this video I will look into three different stages in the lifecycle of a patent: prosecution, validity challenges and enforcement. I looked at over 13.000 opposition cases and will present first findings from this analysis.
In my opinion, the only stage where a lot of patent claims may help is the prosecution. The European Patent Office sometimes objects to certain combination of features in claims that are supposedly not clearly and unambiguously disclosed in the application as a combination. Due to multiple dependencies in claims, you could just draft claims for all possible features and then have the perfect ground for combining any feature with any other feature. However, as you see later in this video, a lot of claims can also have drawbacks.
Let’s look at the opposition stage. I have looked at over 13.000 random opposition cases at the EPO and analyzed them with regard to many parameters, such as number of claims, length of claims, country of the representative, priority country and about 100 more parameters. I will talk about other parameters in future videos. As for the number of claims, I found the following:
Oppositions are rejected in 17% of all cases, if the number of claims is 21 or more, whereas the opposition is rejected in 25% of all cases, if the number of claims is 2 to 10. On the other hand, the patent is maintained in amended form in 38% of all cases, if the number of claims is 21 or more, whereas the patent is maintained in amended form in 29% of all cases, where the number of claims is 2 to 10. As you may know from your experience, opponents may allow maintenance in amended form, if their own products would not fall in that scope of the amended claims. Many claims offer more choice to amend the patent in opposition proceedings. 
And in litigation? Well, the single most important claims are the independent claims, as they determine the scope of the patent. The dependent claims can also play a role, but are sometimes even a hindrance for the patentee, since the independent claims are sometimes interpreted in light of these dependent claims. In my personal view, a valid patent with only a small number of claims is the best.
I hope I was able to explain why I think that many claims in patents may not be helpful. If you are new to my channel and want to learn more about patents, trademarks and designs, please subscribe to my Youtube channel. If you liked this video please it like. I am answering questions in the comments below this video. And most importantly: protect your intellectual property and go make it count.





Stichworte: Rolf Claessen, Patentanwalt, Michalski · Hüttermann & Partner, Patent Attorney

Other useful websites:

IP Fridays - http://www.ipfridays.com (intellectual property podcast)

IP Newsflash - http://www.ipnewsflash.com (intellectual property news portal, free patent PDF download, free patent family search)


About Rolf Claessen

Rolf is patent attorney of IP boutique law firm Michalski · Hüttermann. The firm is managing about 4500 trademarks and 6500 patents and patent applications for mostly domestic medium sized clients in Germany in many technical fields.  

The focus of his practice is the prosecution of trademarks and patents and other intellectual property rights. His expertise in patent prosecution encompasses a deep understanding of patent law, prior art searches, prosecuting patent applications, patent drafting, opposition and defending against competitors. With the team at Michalski · Hüttermann, he strives to be the external IP department for many medium sized companies. 

Rolf has been included in the Patent 1000 rankings of the IAM magazine ever since 2013. And he is included in the WTR1000 ranking in 2015.



Contact Rolf at

Dr. Rolf Claessen
Michalski · Hüttermann & Partner
Speditionstraße 21
D-40221 Düsseldorf
Germany

Telephone:  +49 211 159 249 0
Facsimile: +49 211 159 249 20
Email claessen@mhpatent.de

http://www.rolfclaessen.com


Legalese and Disclaimer

You have been watching a video by Rolf Claessen. The views expressed by the participants of this program are their own and do not represent the views of nor are they endorsed by their respective law firms.  None of the content should be considered legal advice.  This video should not be construed as legal advice or legal opinion on any specific facts or circumstances.  The contents of this video are intended for general informational purposes only and you are urged to consult your own patent attorney on any specific legal questions. As always, consult a patent attorney.