In view of the high excess claims fees that apply to European applications, it’s common for PCT applicants to reduce the number of claims on file at regional phase entry to Europe.
In the past, the EPO has taken a surprisingly (in my view) laissez faire approach to the format of such claim amendments. Simply submitting replacement pages with the regional phase entry documentation was generally sufficient.
It’s always been desirable to show the nature and location of any amendments being made at regional phase entry. However, it’s about to become compulsory to do this.
If the amendments are just claim deletions (presumably for the purpose of fee reduction) then it’s acceptable to provide a marked-up copy showing the deletions and claim renumbering, along with a clean copy of the final version. For the marked-up version, most applicants use some form of “track changes” feature in their word-processing software, such that additions are underlined and deletions struck out.
If the features of certain claims are being combined, it will also be necessary to provide a summary of how the new claims relate to the old claims.
And finally, if subject matter from the description is being newly imported to the claims, it will be necessary to explicitly point out where the new claim language is supported in the detailed description.
A couple of other points to note:
The official fee for excess claims in Europe is €200 per claim after the 15th, and €500 per claim after the 50th. It therefore often makes sense to rationalize claims if there are many more than about 15 of them and costs are an issue.
It’s worth remembering that the EPO allows multiple dependencies, and dependencies aren’t counted for the purpose of claim calculations. No matter how many claims a particular claim refers to, it only incurs a single claim fee for the purposes of excess claims calculations.
As well as amending claims to reduce official fees, it may also be worth taking the opportunity to take into account the EPO’s new approach to multiple claims in each claim category (we’ll be posting more about this early next week).
Please feel free to contact us if you need more information about these (or any other) EPO rule changes.