1. Claim drafting strategies when filing a European patent application or entering the European phase of a PCT-application
Christof Keussen

2. Legal Basics Art. 84 EPC – Concise claims
The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description
Rule 43(2) EPC – One independent claim per category
Principle: one independent claim in the same category (product, process, apparatus or use)
Multiple independent claims only if the subject-matter of the application involves one of the following:
(a) a plurality of interrelated products, 
(b) different uses of a product or apparatus, 
(c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim. 

3. Legal Basics Rule 43(3) EPC – Multiple dependencies allowable
A dependent claim directly referring to another dependent claim shall also be admissible.
Rule 45 EPC – Claim fees
EUR 235 per claim from claim 16 to 50
EUR 580 per claim from claim 51 onwards
Claim fees prohibitive, therefore a maximum of 15 claims advisable
Multiple dependencies may help to reduce number of claims without giving up scope

4. Legal Basics
Rule 62a(1) EPC – No search for multiple independent claims
If the European Patent Office considers that the claims as filed do not comply with Rule 43(2), it shall invite the applicant to indicate, within a period of two months, the claims complying with Rule 43(2), on the basis of which the search is to be carried out. If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category.
No possibility to pay additional search fees to obtain a full search

5. Legal Basics Rule 64 EPC – Search in case of lack of unity
Partial search report for first mentioned invention
Opportunity to pay additional search fees to have other inventions searched
Divisional applications will have to be filed to prosecute other inventions
Rule 164 EPC – Supplementary Search for EP derived from PCT
New, as of 1 November 2014 the procedure will be essentially the same as for EP direct applications
Rule 137(2) EPC
Only one opportunity to amend the claims freely
Subsequent amendments require consent of examining division

6. Legal Basics Rule 45 EPC – Claim fees
EUR 235 per claim from claim 16 to 50
EUR 580 per claim from claim 51 onwards
Rule 62a(1) EPC – No search for multiple independent claims
If the European Patent Office considers that the claims as filed do not comply with Rule 43(2), it shall invite the applicant to indicate, within a period of two months, the claims complying with Rule 43(2), on the basis of which the search is to be carried out. If the applicant fails to provide such an indication in due time, the search shall be carried out on the basis of the first claim in each category.

7. Claim drafting – The Approach
The wishlist:
Coverage for all aspects of the invention and the full stream of commerce (intermediate products etc.)
Validity over the prior art
Difficult to design around
Step 1
Define the most important aspect of the invention
Step 2
Draft a main claim directed to this aspect
Step 3
Build a claim set around this main claim to cover commercially relevant embodiments

8. Practical Example The invention: Step 1 Step 2
A novel way of controlling a combustion engine embodied in an engine control unit
Step 1
The core of the invention are the control process and control parameters
Step 2
Appropriate main claim to cover this is:
A method of controlling a combustion engine comprising the steps of…

9. Practical Example
Step 3 – dependent claims to cover the stream of commerce
a computer program product for performing the method
an engine control unit comprising the computer program product
an engine comprising the engine control unit
a vehicle comprising the engine
This claim set starts from a single independent claim but still covers the full range of commercial embodiments
The claim cascade begins with the key element (the control method) and moves on to the smallest commercial embodiment incorporating the key (computer program product)
The cascade continues with increasingly larger entities (ECU, engine, complete car) incorporating/using the key element

10. Practical example – EP derived from PCT
PCT claim sets need to be suitable for many jurisdictions, including the US requiring a multitude of independent claims
The problem: Reducing the total number of claims to 15 while maintaining the broadest possible coverage
The approach: Make use of multiple dependencies
A typical (US-style) PCT claim set:
Claim 1 : Device A
Claims 2-5: Preferred embodiments B, C, D and E
Claim 6: A method involving the use of device A
Claims 7-10: Preferred embodiments of the method including B, C, D and E

11. Practical example – EP derived from PCT
The reduced EP claim set:
Claim 1 : Device A
Claim 2: Preferred embodiment comprising at least one element selected from the group consisting of B, C, D and E
Claim 3: A method involving the use of a device according to claim 1 or 2
Instruments used for the reduction:
Multiple dependencies of new claims 2 and 3
Markush group in new claim 2 to cover embodiments B to E both in isolation and combination in a single dependent claim
Method claim 3 is multiple dependent on product claims to define preferred embodiments of the method

12. Thank you Questions? keussen@glawe.de