China's Costly Surprise for PCT Applications: Mind Your Claim Count

The Patent Cooperation Treaty (PCT) is a popular option for seeking patent protection in multiple countries, and many applicants would choose filing via the PCT route into China for its booming economy. However, some applicants may be caught by a surprise upon entry. Unlike most countries, China charges excess claim fees based on the original claim count of the PCT application. That is, even amendments under Article 19 or 34 won't help.

Some patent practitioners strategically include a large number of claims (think 100!) in provisional applications to ensure verbatim support or basis for later filings. This tactic is valid, but achieving the same effect is possible by leveraging the summary section. Specifically, less important claims can be moved from the claim section into the summary section and be listed as "statements of invention". With this simple rearrangement, excess claim fees for China can be reduced or eliminated. Unfortunately, some practitioners forget or omit this crucial step during PCT filing, unnecessarily costing their clients thousands in China's excess claim fees (RMB 150 for each claim in excess of 10, as of the time of writing).

The optimal number of claims can vary depending on the complexity of the invention, but for most inventions, 20 to 30 claims should be more than enough to sufficiently capture a layered scope of protection. Remember, patent examiners are less likely to focus on and properly consider your important claims when there are too many claims.

Strategic claim drafting at the outset is paramount, especially when targeting China.  By including only important claims in the claim section while keeping less important ones in the summary section, applicants can not only reduce excess claim fees but also ensure proper examination of crucial features. Additionally, future claim amendments or additions can still find verbatim basis in the summary section.