We often discuss localizing a foreign (i.e., non-US origin) application for examination at the USPTO. What does that include?
Typically, we begin by removing any multiple dependencies from the claims. The USPTO currently charges a one-time, undiscounted fee of $860 for the consideration of any claim with a multiple dependency. Avoiding this fee can pay for some (or even all) of the attorney service fees for a Preliminary Amendment to remove the multiple dependency.
There can be additional savings, because the USPTO also counts claims with multiple dependencies as multiple claims for fee purposes. MPEP 608.01(n) I G 2(a). We recall one Europe-origin application that would have exceeded $1,000,000 in official fees.
On the other hand, many applications enter the US with too few claims. For example, a typical Japan-origin application might include 1 independent claim and 7 total claims. In this situation, we suggest adding new claims to reach a total of 3 independent claims and 20 total claims. The USPTO charges no additional fees for such a set of claims. 37 CFR 1.16(h), (i); 37 CFR 1.92(d), (e). So, it makes sense for applicants to expand their claim set to that size.
The scope of newly added independent claims is a particularly fact-specific decision. Some common strategies include adding structural apparatus claims, means-plus-function claims, method claims, step-plus-function claims, computer-readable medium (i.e., Beauregard) claims, combination (e.g., system) claims, and/or sub-combination claims.
Regarding newly added dependent claims, additional value can be found beyond simply mirroring the current dependent claims to other independent claims. Specifically, new dependent claims can act as guideposts during prosecution. These claims test how the Examiner is interpreting the claims and applying the prior art. Therefore, almost any dependent claim presenting different subject matter can clarify (and expedite) a prosecution.
Finally, the Title and Abstract can be amended to address concerns during prosecution and litigation.
If Modal PLLC can assist you in preparing a foreign-origin application for US prosecution, please contact us.