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Arguing dependent claims February 10, 2012

Posted by Brian Schar in Patent prosecution, USPTO.

On appeal, it can be tempting to focus on the independent claim or claims, and allow any dependent claims to stand or fall with their parent claim.  Sometimes, that’s the best strategy – particularly where there is a narrow issue with the independent claim that is almost certainly in your favor as the applicant. 

However, sometimes the dependent claims are rejected in a particularly slipshod or erroneous manner.  If you would be willing to amend an independent claim to include the limitations of such a dependent claim, it can be worthwhile to argue that dependent claim.  Even if you lose on the independent claim, and win on the dependent claim, it’s still a win. 

My rule is that I shouldn’t appeal if I don’t think I am almost certain to obtain a reversal.  That is why my success rate on appeal is over 90%.  However, by arguing a weak rejection of a dependent claim, you increase your odds of victory overall, and lower the threshold in favor of appeal when making the appeal vs. RCE decision.  As an example, if the independent claim claims A and its dependent claim claims A+B, and I’m willing to settle for A+B, then my threshold for filing an appeal is a 50% chance of victory on the independent claim rather than the 80-90% threshold that I would otherwise have – as long as the dependent claim claiming A + B reaches the 80-90% confidence level for reversal.

In arguing a dependent claim, be sure to follow the guidance of In re Lovin and set forth an actual argument with regard to a dependent claim.


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