The "5/25 Rule", "Representatitve Claims", and the USPTO

One of the most controversial aspects of the continuation rule changes is the "5/25 Rule", which essentially limits applications to 5 independent claims, and 25 claims total for each application. If an applicant exceeds this amount, an Examination Support Document (ESD) must be filed. There is unanimous consensus over the view that ESD's are too burdensome and costly to be used under most circumstances.

What is interesting is that the 5/25 Rule appears to be worse than the "Representative Claims" approach previously proposed by the USPTO. Ironically, the 5/25 Rule was enacted by the PTO to replace Representative Claims "in response to public comments" (click here). One wonders what comments were being considered when the 5/25 Rule was enacted.

The Representative Claims approach was proposed in the original changes (link), and was rationalized this way: since PTO examination is usually centered around the independent claims and broader dependent claims, there is little benefit in having examiners analyze, search, and cite prior art on narrow dependent claims that the applicants weren't going to respond to anyways.

Warts and all, there was some logic behind this approach - by having applicants specify which claims they wanted to fight over, the examination would arguably be more focused. And because you could specify up to 10 "representative claims," applications could technically have an unlimited number of claims, as long as the independent claims numbered 10 or less. According to the PTO, the pre-selection of 10 claims would only affect 1.2% of all applications:

The Office’s PALM records show that only 2,522 (866 small entity), or about 1.2 percent of all nonprovisional applications, included more than ten independent claims. Thus, this proposal will allow for the examination of every independent claim in 98.8 percent of the applications filed since January 1, 2005, without any additional effort by the applicant.

With the "5/25 Rule", this metric has obvious changed. But how much? the PTO again states:

Under the changes being adopted in this final rule, less than eight percent of the applications filed in fiscal year 2006 would have required either the cancellation of one or more independent claims or an examination support document. In addition, less than twenty-five percent of the applications filed in fiscal year 2006 would have required either the cancellation of one or more dependent claims or an examination support document.

This begs the question: why were the rules amended to encompass more applications and have less flexibility for the applicants? And, is the number of affected applications being underreported?

Dennis Crouch over at Patently-O has done some initial legwork and found the following:

Patent Applications Published on August 16, 2007
More than 25 claims = 27%

Patents Issued on August 21, 2007
More than 25 claims = 18%

While being a tiny snapshot, this initial finding confirms (more or less) the PTO's numbers, but nonetheless reflects almost a twenty-fold increase in the number of affected applications.

But wait, there's more.

In a patent searchers online forum (forwarded by Greg Aharonian), Roy Zimmerman of Medtronic did some digging via IFIPAT on STN, where number of claims are range searchable, and published applications are a defined file segment. He found that, between 2002-06, 1,288,664 patent applications were published by the PTO.

Of those, 372,879 patent applications across all technological areas had more than 25 claims, or 29%.

When it comes to medical devices and pharma, the affected applications jump significantly:

• Medical devices (classes 607 or 623) - 46% exceeded 25 claims
• Pharma (classes 424 or 514) - 43% exceeded 25 claims
• Biotech (class 800) - 47% exceeded 25 claims

Presuming that only 100k of the affected applications require ESD's, filed at a cost of $10k each, this results in one billion dollars of added costs to patent applicants to comply with the 5/25 rule alone.

As a side note, the PTO's proposed annual budget for FY2008 (link) is $1.9 billion dollars . . .