Localizing Foreign Applications

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.

3 thoughts on “Localizing Foreign Applications”

  1. If some of your claims are withdrawn, say, five claims are withdrawn after a restriction requirement, then you can add new claims for withdrawn claims (in this case, five more claims) without extra claim fee?
    Also, when you have to pay additional claim fee? At the filing of claim amendments or after the notice of allowance mailed?

    1. I assume the application already has more than 15 claims. In this case, adding five more claims will result in a fee, as long as the withdrawn claims are pending. If the withdrawn claims are canceled, then there is no extra claim fee.

      The additional claim fees are paid at the time of filing the claim amendment.

      1. Sorry, I meant to say “more than 15 other claims.” So, there would be 15 pending claims + 5 withdrawn claims + 5 new claims = 25 total claims.

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