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Are dependent claims obsolete? June 23, 2009

Posted by Brian Schar in Patent prosecution, USPTO.
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We patent attorneys have been taught all about the claim tree.  Each independent claim has a plurality of dependent claims depending therefrom, where each dependent claim further limits the subject matter of the independent claim.  In theory, the narrowest dependent claim in a given tree should define the narrowest scope that the applicant would be willing to accept.  That way, if the Examiner objects to a dependent claim, that dependent claim can be folded into the parent independent claim, and that amended claim can proceed to issue. 

If only the process worked that simply.  It occurred to me the other day that I haven’t seen an objection to a dependent claim in probably well over a year, if not longer.  Granted, my applications fall primarily in a handful of art units, such that the rest of you outside those art units may not have the same experience.  But I bet you have.

This observation prodded me to think about dependent claim practice more generally.  We pay for 3 independent claims and 20 total claims.  But sometimes, where an invention is narrow in the first place, it’s a struggle to come up with 17 worthwhile dependent claims.  If so, writing 20 claims for the sake of having 20 claims may be a waste of time.

More importantly, if dependent claims are never going to be objected to at all, or only rarely objected to, they only serve to pollute the record.  As an example, consider independent claim 1 that claims A+B+C, claim 2 that depends from claim 2 and additionally claims D, and claim 3 that depends from claim 2 and additionally claims E.  The reality is that this claim string invites a 103 rejection.  It’s likely a groundless, analysis-free 103 rejection that can be dealt with under one of the provisions of MPEP 2143.01.  But nonetheless, such rejections, no matter how ill-conceived, end up on the record, as do the patents and published applications cited therein.  My friend and old colleague Jon Hallman and I discussed this for a while the other day, and the idea that you might be able to reduce the obviousness rejections in a particular case (or at least their complexity) by reducing or eliminating dependent claims was pretty appealing.

Dependent claims are also an invitiation to species restriction.  Despite the fact that “[c]laims themselves are never species,” not every Examiner has gotten that memo.  Even when confronted with the straightforward language of MPEP 806.04(e), some Examiners will not back down and will maintain a restriction requirement where groups of dependent claims are identified as species.  (Of course, if the continuation rules go into effect, this is not necessarily a bad thing.)

When would you want to submit dependent claims?  In conjunction with a properly-written specification, some dependent claims may be useful for claim differentiation purposes.  One also might submit a number of dependent claims after allowance of the independent claims.  Such an amendment by definition would not require a new search, because those claims only further limit the allowed independent claims.  Whether such an amendment would actually be entered is another question.  However, careful drafting of those additional dependent claims (such that they clearly further limit the allowed independent claims) would increase the chances of such an amendment being entered.

I’m not sure that I’m going to adopt this approach, but I’m going to give it serious consideration.

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