In an earlier post, I noted that there are some benefits of providing an initial claim with concrete structure and limitations so that someone reading the claim can instantly understand the invention and its benefits. This helps frame the invention in the minds of the reader and may be especially important when the USPTO Examiner flips to Claim 1 before reading anything else in the patent application.
There are, however, limitations to this approach. In particular, 37 C.F.R. 1.75(g) provides that “[t]he least restrictive claim should be presented as claim number 1.” That rule of practice was added in 1996 along with other changes for implementing the 18-month publication rules. The purpose of the change was “to facilitate the selection of a representative claim” to be published in the Gazette.
Although the rule is in place, it appears to be rarely — if ever — enforced. The Manual of Patent Examination Practice (MPEP) interprets the rule as a should rule rather than a must rule.
Claims should preferably be arranged in order of scope so that the first claim presented is the least restrictive. MPEP 608.01(m)
Further, a search of CAFC, District Court, and BPAI opinions along with law review articles reveals only two passing mentions of the rule. (Interestingly, the law review article appears to incorrectly interpret the rule).
Of course, the fact that the rule has not been enforced does not lead to the conclusion that the rule will not be enforced against your client. (I.e., down the line it might come up once again).
The right aproach: Of the usual three independent claims, it is often difficult to determine which is the least restrictive because each may approach the invention from a different perspective. If one is clearly the least restrictive then it should be listed as claim 1. If some ambiguity remains, choose the claim that is the most concrete, fleshed-out, and understandable and list it as claim 1.
Concerning DS’comments:
Dennis asked whether it would be easier to examine an application when claim 1 serves as a “neon sign” to indicate what the Applicant really thinks is the invention and what is commercially critical.
If one considers the claim drafting process, this makes sense. One does not write a hierarchical story with a beginning that culminates in the invention, rather one starts with a clear claim directed at the invention and makes it vaguer and vaguer until the point just before it sounds silly. That is claim 1.
This, however, is a moot point. Once the claims are written there is no problem in rearranging them. Our job is to get the broadest claims possible with the fewest rounds of Office Actions. If the Examiners’ prefer broadest claim first, they know what they are asking. The Question is how to get clear feedback from the Examiners.
Concerning MaxDrei’s comments
There are differences other than opposition that make examination in Europe seemingly fairer and less adversarial than in the USPTO.
The “problem-solution approach” gives the Applicant and the Examiner a common language to discuss obviousness and provides some objectivity into what obviousness is.
No less important, the moment prosecution gets to a dead-end there are oral proceedings. The Applicant can’t be bled to death by a nasty Examiner who issues a Final. Rather, within a short time the Examiner has to publicly justify his rejection. At the same time, the Examiner is given support against an aggressive Applicant.
In my experience, both these factors keep the Applicant/Examiner dialogue civil and efficient.
There is, of course, the possibility that European Examiners are also given more time to examine each case so, all things being equal, give better comments.
Again, I understand the frustration out there with respect to examiners who don’t do their job and only look at a single claim, or only the independent claims. Certainly, these are the first claims inspected because, apart from 112 issues, should they be allowable, the rest follow. (At least) my examiners know that all claims need to be evaluated with the same amount of scrutiny. I would hope this is the case across the corps, but we all know this is not true. It is unfortunate that many feel the need to tailor their applicaitons to the lowest common denominator. I would hope we get some feedback from you when this occurs.
I am surprised that my approach is found to be surprising to some, as it seems to be common sense. We read a book from front to back, with the plot getting more complicated as the story progresses. It is only human nature to look for a similar type of story to be laid out in patent claims. Like I previously said, it makes the job of fining the line that much easier, a sort of linear progression. Now maybe I am overstating my case, and I am the only one at the PTO who feels this way, but I think not. Perhaps I’ll start a survey.
Is the Exr your adversary? Really? It all seems so much simpler, here in Europe. Post-issue opposition in the EPO really is adversarial, and issued claims often go down. The tribunal is a set of three EPO Exrs, with the case manager being the Exr that did the work before issue and the other two being new to the case. Those three Exrs follow the public interest, mediating between the opposed parties(patent owner and petitioner for revocation). Opposition being so common, Exrs get used to the idea that they are setting the “balance”. They watch out for the public interest. also, they defer to the PTO “customer”, namely the party that pays fees to the EPO, that being both applicant and opponent. How can examination prior to issue be “adversarial” when there is no participation by the opposing party?.
According to “DS” I understand that at least one (former) Examiner prefers the classic “hierarchical” approach for claims. This is surprising, but I’ve never been an Examiner.
I disagree with “anon”. The first thing an Examiner does is find the independent claims to evaluate unity of invention and issue an election requirement. There is no way to bury broad claims hoping that the Examiner won’t see them. Further, my experience is opposite that of “anon”. Most rejections of claims follow a quick read without trying to understand the subtleties of the language. The claims that get issued are those that are closely scrutinized.
I also, for the first time, disagree with “MaxDrei” perhaps because my clients are cash-poor single inventors and small start-ups. If an Examiner can find prior art that renders the invention not patentable, that is good because the client does not want to waste money on prosecuting, issuing and maintaining a worthless patent that everyone and his brother can infringe with impunity.
The problem is that in the past three years it seems that Examiners consider the little inventors liars, thieves and cheats for daring to apply for a patent. Suddenly everything is obvious and there is no need to even justify the 103.
At the risk of sounding like some refugee from the Age of Aquarius, I am happy to simplify examination and do not consider the Examiner my adversary (unless he/she insists on sending a silly baseless 103 rejections) so that we can together get high quality patents for inventions.
Simple, I will say it again: When an applicant “buries” a broad claim deep in his claim set, I tend to believe that applicant himself does not think the “buried” claim will survive close scrutiny. I think your comments tend to bear me out on that point.
If you truly believe the examiner is only going to examine one claim, why not try to make that claim the broadest possible claim that covers the invention? If the first and broadest claim is allowed, you will be able to assure your client that all claims are likely to survive an attack on their validity, should such an attack ever come.
If every examiner did their job and examined every element and limitation in every claim, I would have no problem making my first claim the broadest claim. I remember a one paragraph rejection from several years ago that basically said “Claims 1-22 are rejected as being obvious . . .” At that point I could not ignore the fact that some examiners did the absolute minimum and only examined the first claim. If it wasn’t in claim 1, then it didn’t really matter to them.
Currently, my first claim isn’t the broadest nor the narrowest claim. But, it does identify the elements that I believe are not in the prior art. I don’t do this to try to “hoodwink” or trick the examiner. I just want a substantive review of the claims, according to the rules and statutes. I also do this to accommodate the lowest common denominator: the examiner that only examines the first claim.
I’m not a patent attorney, so I’ve never had a client or helped someone obtain a patent. Maybe the attorneys here can help me out. Is it an object of the attorney to “hoodwink” the examiner into allowing claims? The previous commenter, although he doesn’t come right out and say it, implies that attorneys try and trick examiners into allowing claims they know to be too broad. What good is this? Aside from being unethical, isn’t it a waste of time, as such claims wouldn’t be enforceable anyway?
Sure, there is an adversarial relationship between attorney and examiner, but the goal is the same. To provide a patent to the applicant that provides the maximum protection they are entitled to under the law. I have seen attorneys “hide” broad claims and I have seen examiners refuse to divulge where they feel the patentable subject matter is in the disclosure, all in the interest of “winning”. To me, it makes little sense.
Examiners are trained to find that line, that point of patentability. If the attorneys lay out claims which make it easier to do that, it’s a win-win scenario.
The last commentator doesn’t reveal his/her viewpoint. is it a CAFC judge writing, a USPTO Examiner, or an observer from Europe, like me? The penultimate commentator writes as an ex-Examiner, who is aiming to “draw a line” between claims that are too wide and claims that are narrow enough. I’m thinking that patent attorneys presenting sets of claims for examination won’t do anything that would simplify the Examiner’s job of “drawing a line”. Hence 1) claim 1 not the widest claim and 2) no nice set of claims of step-wise decreasing scope, depending from claim 1. The Examiner is your adversary, is he not, to be hoodwinked. However, a disinterested observer like me might have thought that the best chance of smuggling through to issue the broadest independent claim for your client would be to put it up as claim 1 of a very compact set of claims, with every dependent claim distincly and progressively more non-obvious than the previous one. Won’t Exr then be tempted to allow the marginal main claim (quick disposal point on the first action) with the thought “Where’s the harm, given that it’s only marginally wider than all those evidently allowable claims depending from it. He has a good core of patentability, and the main claim is not absurd. I’ll give him the benefit of the doubt”. A bit like leading the Examiner in cross-examination to the answer you want? After all, most corporate applicants already know what’s in practice the “closest” art, even when they draft claim 1.
When an applicant “buries” a broad claim deep in his claim set, I tend to believe that applicant himself does not think the “buried” claim will survive close scrutiny.
I’m not an examiner, but I was, so I’ll give it a whirl. It is my belief that most examiners prefer the broader claims 1st, with the narrowing coming as the numbers progress, either by adding dependent claims or having more descriptive independent claims which follow, usually both. The reason is that examiners, like most people, like to follow a “story”, so to speak. Claim 1 is the opening which provides the basics and the outline. Subsequent claims fill in the details. Doing it this way allows the examiner to “draw the line” of patentability. Everything above the line is rejected, those below it can be allowed.
As noted, 37 C.F.R. § 1.75(g) only provides that “[t]he least restrictive claim *should* be presented as claim number 1.” Manadatory rules do not use the word “should” (except a few circumstances, such as where “should” is used to elaborate the details of a “must” rule, and the locution “should not” is often mandatory).
The practical reality is that claim 1 is the first place the examiner will start reading the application. For exactly the reason Dennis states (though to exactly the opposite conclusion), claim 1 “should” be used to teach the examiner what you want the examiner to know. I also use claim 1 to tie claims together against restriction requirements.
If the proposed “Examination of Claims” rule is adopted, claim 1 should be drafted by collecting *every* limitation of *every* other claim. That way, you can designate claim 1 for examinaition. That way, effectively all claims will be examined, and you can thereby ameliorate the harm that the new rule intentionally inflicts on your clients.
Claim Writing 101: We start with a narrow original claim that accurately describes the patentable aspect of an intended product. We then broaden the claim by removing features and using broad terms. This is mandatory to avoid development of simple non-infringing work-arounds but renders the broadest claims vague and difficult to read.
I always thought that by putting the original narrow claim first we can help the Examiners focus on what we really want.
The Examiner can then make a focused search using accurate search terms.
If the Examiner finds prior art that kills the narrow claim everyone gains: quick abandonment of a useless application without having to resort to bizarre 103 rejections.
If the Examiners find prior art similar to the narrow claim, they could point out what claims they would allow, just like they used to.
Sadly, I haven’t had more (or less) success with this approach in the last 3 years.
Any Examiners out there care to comment?
A rule that describes an action as “should” is on its face a recommendation and not a requirement. What would enforcement of such a rule mean, when the applicant can appropriately respond, “yeah, well maybe I’ll do that next time”?
I wouldn’t expect that hiding a broad claim from the examiner amongst a bunch of other claims to be an effective stragety. Nothing I’ve seen while examining patents or prosecuting them suggests to me that such a strategy might work.
Dennis, you are a star, for putting up for discussion matters that expose the gulf (long may it remain) that separates US patent law from that of the rest of the world. For ROW followers of US patent law it is evident that the USPTO and the CAFC are influenced by ROW, but the US user community (that fuels your blog)less so. I suspect that the US patent user community is blithely ignorant of how much of the workings of the USPTO and CAFC is now ROW-prompted. Except in USA, claim 1 is always the widest claim. Look at any issued US patent, however. Expect to find claim 1 harmless, but a much wider claim somewhere towards the end. Reading your column, I learn why. Thank you.
Make claim 1 the least restrictive; make claim 2 dependent and, as Dennis put it, “so that someone reading the claim can instantly understand the invention and its benefits.” In this way, you (1) comply with the rule and (2) communicate the invention to the examiner, early. While I can’t advise on “subconcious bias,” (anonymous, above) its concious counterpart can be avoided by putting your “concrete, fleshed-out, and understandable” (Dennis, again) claim somewhere up-front. Having the least and most restrictive claims next to each other makes life easier when planning a search (similarly, when classifying).
Providing a more detailed “teaching” claim as Claim 1 provides two benefits. First, it allows an examiner to quickly understand important features of the invention. Second, it helps reduce the risk of subconscious bias against the patent application — which can occur when the broadest, most agressive claim is presented first.
On the other hand, it’s improper to bury the broadest claim somewhere in the middle of scores of claims with the intent or hope that the Examiner will overlook the broadest claim (or read absent limitations into the broad claim). As PatLaw observed, the broadest litigated claims always seem to be “tucked somewhere in the middle out of sight.”
Since this is a rule, rather than a statutory requirement, this could not serve as a basis for attacking an issued claim in litigation, no? If the PTO chose not to enforce one of its own rules, I don’t think a court would/should do anything about it.
(another non-statutory rule that is regularly “violated”… the rule to show every element of every claim in a drawing)
Also, I don’t think the solution would be gutting claim 1. It would be cancelling all the claims that come before the broadest claim, and then adding them back in as “new claims” at the end. When the claims are renumbered at issuance, the broadest will then be claim 1.
In my experience, if you encounter a patent in litigation with more than 20 claims (say 50, 100, 150 — the kind intended to be litigated), the broadest claim will always be tucked somewhere in the middle out of sight. I have never seen nor would I expect that its status as “claim 72” rather than “claim 1” would be harmful to the patentee’s position, and I suspect the PTO would not attempt to suddenly enforce 1.75 as a mandate without changing the rule.
In my experience the broadest claim is not necessarily the easiest to “understand”. While all of my claims are always enabled, have utility, and satisfy the requirements of 112 (I wish, heh), it is not easy to tell what the utility is or how to make/use the invention from claim 1 at a mere glance. The dependent claims, however, introduce further limitations and it is therefore often easier to figure these things out quickly.
My impression has always been that the ‘suggestion’ that claim 1 be the broadest serves to aid the examiner in performing the search. Once the examiner has the art for claim one in front of her it a simple matter to reject all of the claims.
Not that any of this matters, since I always get each independent claim and its dependent claims restricted out in different groups anyway.
On second thought, perhaps my problem is not with the rule, but with the way the claims are examined.
One problem I have with the rule as that, at least in the computer/software arts, the examiners seem to examine claim 1, and then pay lip service to the other independent claims. So, if claim 1 is your broadest claim, they will more often than not gloss over new and/or further limitations in the independent claims that follow.
JVO-
Maybe you could share with Dennis the Examiners’ tips on how we can make their jobs easier, for possible publication.
Jim
I’ve asked numerous examiners for practice tips on what patent prosecutors can do to make an Examiner’s job easier. Almost all Examiners have told me make Claim 1. the “broadest” claim. Not one Examiner I’ve asked is aware of rule 75(g)’s direction regarding least restrictive claim, only that dependent claims should be grouped with the independent claim.
There is another rule that says claim numbering has to remain the same throughout prosecution (1.126). So if Examiner enforces 1.75(g), you can’t really do much about it (other than completely gutting claim 1 by amendment).
Also, claim numbering in prosecution need not be the same as claim numbering in issued patent. This makes sense since you never know going in which one will be least restrictive by the time you come out.
I also think this would be a good approach looking toward eventual litigation. I believe that most jurors [and judges, and litigators, for that matter] would expect Claim 1 to be the most “important” — the lead claim, for lack of a better word. Since the lesst restrictive claim is the most likely to be sued on, I think this would make a better appearance in court.
Prosecutors — is there any reason not to make Claim the least restrictive claim?
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