I am working on a post involving dependent claims and would like some thoughts from practitioners on why you file. The one-minute survey is anonymous.
Click on the survey — Preliminary results will be posted on Thursday, May 22.
I am working on a post involving dependent claims and would like some thoughts from practitioners on why you file. The one-minute survey is anonymous.
Click on the survey — Preliminary results will be posted on Thursday, May 22.
“E6K –
Wild Goose Chase?
Aren’t you using that to refer to a search for something that can’t be found?”
Wild Geese can’t be found? As far as I’m concerned they can be found, they’re just difficult and time-consuming to find, even though you know they’re there.
“That meaning had been lost by the 19th century. In Grose’s Dictionary of the Vulgar Tongue, 1811, he defines the term much the way we do today:
“A tedious uncertain pursuit, like the following a flock of wild geese, who are remarkably shy.”” There’s you a definition eh?
“During prosecution, I decide to amend my independent claim to recite one of the limitations of a dependent claim and cancel the dependent claim.
Is it not true that if that limitation had *not* been recited in a pending dependent claim but appeared instead only in the specification, that you would be more likely (and better positioned) to object to the amendment (arguing that the new limitation is drawn to a distinct invention) following my amendment?”
Nah, if you add them in I’ve got to examine them unless you really did a woozie on the claim. Sucks, but it happens every now and again. I want to restrict so much, but I hardly ever can.
“The Examiner and the applicant dance around the dim light of a burning strawman and plot against Mooney.”
Dennis, can I have a new personal tr*ll? I want better jokes.
“If we’re going to patent everything and let the courts sort ’em out, why don’t we just go with a registration system?”
Because we don’t want the courts to sort EVERYTHING out, that’s not what they’re designed for. We just want them to sort out the close questions.
In addition, The patent system is designed to decrease the cost of ensuring a return on your investment in R&D. Letting the courts sort everything out would completely undermine that goal.
Another consideration is that US patent law keeps changing as to what must be disclosed, how broadly claim scope will be interpreted, etc. This is one of the challenges of patent prosecution – writing claims that will still be valid 20 years after they’re written.
Mooney’s cat is telling him that there is a strawman around every corner. This is the same strawman that surreptitiously sneaks into the PTO at night and conducts clandestine Examiner interviews. The Examiner and the applicant dance around the dim light of a burning strawman and plot against Mooney.
If the examiner allows the application because he is lazy and bored with it, it is time for that examiner to find a new job, preferably not in the patent field.
“If we’re going to patent everything and let the courts sort ’em out”
Enough with the stupit strawman.
greater than 50% chance of being held –invalid–
Lionel, years ago no claims existed. Then one. Then many. Now a plethora. Today, the shotgun approach passes for knowing what the invention is. It’s become a game of guessing what the invention is because I sure don’t know, neither does the inventor, and neither will the examiner. If we’re going to patent everything and let the courts sort ’em out, why don’t we just go with a registration system? The current search and examination system, complete with its bottomless supply of dependent “hedge” claims, results in patents that have a greater than 50% chance of being held valid. We don’t need to pretend that dependent claims are useful and just simply because they’re accepted practice.
‘The “human mistakes?” would include the failure of the examiner to find and properly apply relevant art which would invalidate the independent claim but not the dependent claim?’
Curious: Claims 1-19 are anticipated by blah, blah blah, but claim 20 would be allowable because I can’t be bothered to find a specific art that has this cute little limitation and I want to go home sometime today and, hey, if I don’t give you something you’ll file an RCE and I’m really bored with this case, so I’m just going to bank on the fact that you’re not going to litigate and if you do, well, tough luck to you for taking a patent where the novelty was use of a RISC processor where the prior art taught a convention one. Next!
Idealist,
You don;t seem to quite grasp dependent claims (and I am not certain the poster of the survey does either). Years ago, they did not exist. The patent applicant filed an application containing a series of independent claims. As someone else posted, you can claim the same invention from different perspectives to capture different infringers. You also want your broadest claims to contain the minimum patentable subject matter. The dependents contain all the added limitations that may be incorporated or provide more detail on the ones that were originally broadly described.
The “human mistakes?” would include the failure of the examiner to find and properly apply relevant art which would invalidate the independent claim but not the dependent claim?
‘But let’s not just assume that “unity of invention” is a sacrosanct policy.’
Ok, if unity is not important, then more than one claim is fine.
“idealist — are you a patent examiner?”
Why do you ask? If you want to dismiss my comments based on some trivial fact, perhaps you are you a litigator.
My point was that dependent claims compensate for the human mistakes in executing a theoretically pristine system. We should not pretend that they are ideal.
“Claims presented in the same application are supposed to be for one invention. If in fact they are not, a restriction is necessary.”
Says who? This is thrown out as if it’s scriptural. I don’t think Congress really cares. And I’m almost certain that the Framers didn’t care. Restriction practice is about administrative efficiency. Efficiency may suggest that a vigorous restriction policy is a good idea. But let’s not just assume that “unity of invention” is a sacrosanct policy.
idealist — are you a patent examiner?
“Why are features in dependents patentably indistinct?”
Claims presented in the same application are supposed to be for one invention. If in fact they are not, a restriction is necessary.
I’m exceedingly familiar with patent prosecution and litigation, but I am an idealist. Are these incompatible?
The fact that you think inventors know more about the art than anyone shows that you haven’t exactly dealt with a lot of inventors. It’s just not like that, at all.
Why are features in dependents patentably indistinct? Or noninventive variations? I tend to use dependents to narrow the subject matter of independents, not add new features, so your argument doesn’t apply to the way I (and a lot of other prosecutors) draft claims.
Once again, you don’t know how litigation works. I can write different claims sets directed to the same invention that provide protection against infringement by manufacturers, sellers, installers, and users. This isn’t really possible with one claim set, let alone one claim. (assuming that you want to be able to sue for direct infringement).
“95% of litigation would evaporate if the inventor avoided the gambling mentality and claimed what he invented, the office did their job properly, and meaningless or inconsequential procedural mistakes were forgiven”
If that’s the criteria, 100% of litigation evaporates if we just get rid of the patent system.
“most inventors who actually have an invention know the art inside out” I disagree.
Dear Lowly:
“As you guys have to know, there is such a large volume of prior art out there that it cannot possibly all be searched, especially not in the couple hours time I can bill for it.”
The art can certainly be searched. Not perfectly, I’ll give you that. However, most inventors who actually have an invention know the art inside out. These leading-edge inventors know more about the art than anyone. Me-too inventors are pretty much gambling. The assumption that an inventor is entitled to a claim without knowing what the claim is is a bad one, in my opinion. Why should the system bend over backwards for someone who half bakes an idea and then expects everyone except him to figure out what his monopoly is? If he wants a monopoly, he should claim it.
If an inventor presents a good claim and the office performs a good examination, a valid patent will be issued. If the patent is anticipated by art that no one knew about, why should a patentably indistinct feature of some dependent claim suddenly be considered inventive? The invention is known to the public by way of the anticipating art and the dependent features were implicitly admitted by the second inventor to be non-inventive variations. Why in hindsight should there suddenly be an invention?
Dependent claim practice is akin to me staking a gold claim by saying “I claim all this here land, except any that may be owned by someone else or any land that isn’t in fact land but instead water or sludge or something.”
“Why do you guys think that any invention can be described in only one claim? I think this attitude shows that you know nothing of what happens in litigation and how it works.”
Litigation does what the inventor and patent office should have done beforehand, as well as raise procedural issues that apparently can invalidate a patent and destroy the inventor’s contribution to the public for trivial reasons. 95% of litigation would evaporate if the inventor avoided the gambling mentality and claimed what he invented, the office did their job properly, and meaningless or inconsequential procedural mistakes were forgiven.
Fyi: ignore the last three words in my previous comment. I apologize for the typo.
I think it goes without saying that there is nothing typical about e6k as a patent examiner. Nevertheless …
Let’s say, e6k, that you receive an application with a couple independents and a bunch of dependents. For whatever reason (e.g., girlfriend chews you out for spending too much on the internet), on the day that you are working up your restriction requirement you don’t issue an earth-scorching restriction requirement removing all the dependent claims from examination even though you feel like you *arguably* could have done so. Instead you only issue a 15 way restriction requirement. So after my election there is, say, one independent claim and ten dependent claims left.
During prosecution, I decide to amend my independent claim to recite one of the limitations of a dependent claim and cancel the dependent claim.
Is it not true that if that limitation had *not* been recited in a pending dependent claim but appeared instead only in the specification, that you would be more likely (and better positioned) to object to the amendment (arguing that the new limitation is drawn to a distinct invention) following my amendment?
E6K –
Wild Goose Chase?
Aren’t you using that to refer to a search for something that can’t be found?
Isn’t that the definition of allowable subject matter? Why aren’t you indicating the allowability of such dependent claims?
E6K, Idealist,
As you guys have to know, there is such a large volume of prior art out there that it cannot possibly all be searched, especially not in the couple hours time I can bill for it. While I never knowingly draft an independent claim that would read on the prior art, it is of course always possible that there is a piece of art that I missed that is a good 102. Or that an examiner will give my claims their broadest unreasonable interpretation in prosecution.
Therefore, I need fall back positions. In fact, I keep more fall back positions than even in my dependent claims, peppering them throughout the spec.
Why do you guys think that any invention can be described in only one claim? I think this attitude shows that you know nothing of what happens in litigation and how it works. A one claim patent would be about as worthless as non-alcoholic beer.
to bring more DEFINITION to the claimed invention, which generic terms in independent claim may not clearly bring out.
i feel all other reasons are implied out of this basic reason.
no doubt the dependent claims exonerate us from drafting the most ideal independent claims… and makes the inventors especially the ones who are new to patenting, relate to what is claimed. managers generally like numbers and length..but needs to be balanced to avoid huge extra claims fees..
strongly agree @ lowly later comments..
dep claims though are used to limit the statement “dep claims help avoid restriction” is soo true! seems to be an anomaly but is true!..
ashish
“then dependent claims will often be able to be used to point out what is allowable by the examiner.”
Let’s do lunch, and you can point out for me some subject matter in one of 10 or so cases (I can bring them all if you like) I will bring with me that I should have pointed out instead of smacking down like the bich that it was.
“Too often, I see examiners try to just keep adding in ref after ref for dependents when there is no reason to put them all together other then the claims.”
I don’t hardly go past 3 myself, I’ll usually start allowing stuff past there. Maybe I would toss a fourth in if it was something drop dead obvious on a string of 3 that was the real subject matter rejection.
“Also, the dep claims give the examiner some idea what the app think the invention really is (as usually the indep are SOOO broad it can read on almost anything). ”
So what you’re saying is the ind. doesn’t particularly point out jack sht much less the subject matter which he regards as his invention? I agree. 112 shall we? lol.
Bottom line is, I could give them 10000 ways to go in nearly every application, they already know they have this freedom. They don’t hardly need my help, and if I render it, and new art shows up then it’s just going to look like I led them right smack into the rejection. I see qq coming my bosses way from that attorney. At least if I stfu until I KNOW I see something allowable then it all ends up just fine.
“As for the restriction, other than elect of species, or as a linking claim or evidence claim, there are very few instances (other than some chem/bio areas) where the dep claims are restrictable from the indep claims.”
I’m “non-species” restricting ind’s away from other ind’s mostly thx. You use the dep’s to restrict between the groups. Linking claims do not apply except in that you have to examine the linking claim (usually the ind). So yes, combo/sub can sometimes even rip dep’s away from their master. It’s rare, but all you need iirc is for the dep to be of such huge differeing specificity as to reclassify the whole kit kat and kaboodle away from where the ind would be normally (especially if other deps put it more firmly into the ind’s classification). Tough to give an example, they’re rare I’d have to look back. You can go to any of the restriction presentations and the demonstrators can hook you up with one though. Restriction practice seems to go beyond a couple of the higher ups/old timers around here (no offense). Combo/sub are a beast though I will admit. You should check out what the definition of “combination” and “subcombination” are sometime I found it on the web defined for patent attorneys awhile back but I forget where. Attorney’s are regularly crossing this line, and if we had a better classification system (more specific) then it would get easier and easier to use that restriction.
“I get a 29 way restriction”
You sir sure know how to claim em’.
“So, I withdraw a few dependent claims and they get allowed after the independents are allowed as generic claims.”
Kind of like how all deps should be added in. By jove, he’s on to something!
e#6k babbles “In all seriousness though, “dep claims help avoid restriction” is lolable, I use deps to restrict things all the time, if anything they get you restricted more.”
Unfortunately, I get too many restriction requirements like this. What is really laughable is when I get a 29 way restriction and I only have 20 claims. I’ve seen this only a few times, but it does happen in the electrical-mechanical arts.
Many of the restrictions I receive are based on the embodiments illustrated in the figures. Those are easy to respond to, but a waste of time for the examiner. The unique features of the embodiments only appear in my dependent claims. So, I withdraw a few dependent claims and they get allowed after the independents are allowed as generic claims.
e6K,
This time, instead of calling b$ on the attorneys, I have to call it on you.
1) Unless your art is different from most of the other electrical arts (I thin you indicated you are in one of those), then dependent claims will often be able to be used to point out what is allowable by the examiner. If you have a string of dependents, just because each “on its own” may be well known does not mean that the combination of all of those are. Too often, I see examiners try to just keep adding in ref after ref for dependents when there is no reason to put them all together other then the claims.
Also, the dep claims give the examiner some idea what the app think the invention really is (as usually the indep are SOOO broad it can read on almost anything). Looking at those dep claims, you can usually (or should be able to) either indicate something allowable (i.e., obj to it) or indicate that if claims 2, 4, and 6 (or such) were combined (even if they do not already depend on one another) would overcome the art of record (saves a lot of time). Or at least indicate that the applicant needs to elaborate on the limitations of claims X as the disclosed details for that feature are not in the prior art of record. Gives the app a way to go & if new art shows up later, you can still make final if necessary since you are not committing to specific language.
2) As for the restriction, other than elect of species, or as a linking claim or evidence claim, there are very few instances (other than some chem/bio areas) where the dep claims are restrictable from the indep claims. Personally, that sounds like an improper restriction. Can you give us a real-world example (doesn’t have to be you case) where this can be done? I haven’t seen it in a couple decades.
Oh, and just because a dep claim recites something that isn’t in the indep claim does not mean it is restrictable. They at least need to be patentably distinct as well as meet the requirement for the type of restriction being made. A combo-subcom would not be met so I do not see how you can do it for this.
MVS
“e#6k — Don’t you ever indicate allowability of subject matter recited in an dependent claim but not the ind claim? Many Examiners do this.”
Very. Rarely. If I didn’t have the deps it would be because I wasn’t trying hard enough nearly 100% of the time. Sure every now and again I’ll give em a little leeway on what’s obvious and what’s not, but it better impress me rather than just being one more bs thing for me to go on a wildgoose chase after. Otherwise, if I see a teaching suggestion motivation situation then you better bet your bottom you’re getting a 103 or a bigger 103 if there was a 103 on the ind. Either way, I’m a staunch believer in implementing some system where deps can be designated as being there to add additional limitations that the app would accept as an ind. if they moved it up or just being there for the “decorative” purposes as enumerated above. Then examining the ones that the app has designated as such.
As to the restriction, nah, not usually very hard to make that showing in my art. I’m referring to restricting between combo/subcombo product/method of making etc. As long as you have the different classification and some different features recited you’re usually in the clear. If the different features are just obvious variations that I know are obvious variations within the realm of common knowledge (so much so that I wouldn’t hesitate to Off. notice) then I won’t use that as a different feature.
“I use deps to restrict things all the time, if anything they get you restricted more. If you’re an attorney and hit strongly agree for that you’ve got a major malfunction.”
Isn’t it difficult to show that dependent claims are “independent and distinct,” as required for a restriction requirement. Perhaps you’re talking about election of species?
see how it could be important in litigation, but I don’t see it’s usefulness in prosecution nor when it would be brought up especially since we generally give you the hugest most broad interpretation anyway in order to examine the app.<<< e#6k -- Don't you ever indicate allowability of subject matter recited in an dependent claim but not the ind claim? Many Examiners do this.
“Because I start with the broadest independent claim I can draft, based upon the results of my prior art search. Then, in the dependents, I further narrow that broad claim with fall back positions for prosecution. I also use dependents for claim differentiation. (know what that is, E6k? many of your ilk seem not to).”
Lowly should be a new super hero amongst attorneys, yet, he insists on using deps.
In any case, lowly, why is it that you feel we do not know what claim differentiation means? For that matter, that we don’t understand the doctrine of claim differentiation? I mean, it seems rather straightforward. Even so, why would our not knowing what it is about support the use of deps or have any effect on prosecution? Seems like the only real purpose of it existing is so that you can say later “well, in my ind. that could have been taken to refer narrowly to something must be taken broadly because in my dep here I made a narrowing statement directed to the element which is having its broadness being brought into question”? I see how it could be important in litigation, but I don’t see it’s usefulness in prosecution nor when it would be brought up especially since we generally give you the hugest most broad interpretation anyway in order to examine the app.
Dependent claims exist because people, even experts like patent attorneys and judges, have a tough time fully embracing the one and only true absolute of claiming: less is more. People are comforted by seeing familiar words in dependent claims, when in fact absence of these words is what matters.
If everyone fully comprehended and embraced the stunningly beautiful inverted logic of claiming, one independent claim would suffice in every single case.
Regarding fall-back positions, if everyone is doing their jobs properly, there is no need. Point (filed claim), counterpoint (official action), grant/refusal.
Sadly, ideals are rarely met in this cruel world.
“Why file dep claims instead of only ind. claims?”
Because I start with the broadest independent claim I can draft, based upon the results of my prior art search. Then, in the dependents, I further narrow that broad claim with fall back positions for prosecution. I also use dependents for claim differentiation. (know what that is, E6k? many of your ilk seem not to).
“You attorney are apparently reading the question too narrowly”
I think you are reading the responses too narrowly.
If sometimes invalid independent claims mean invalid dependents while at other times they do not, then the survey question still shouldn’t be confusing. All that’s required to answer the original question is to point out those situations where the question makes sense.
MVS- You should be careful too, since reasonable minds can differ as to how “invalid” should be interpreted. A much more reasonable read of the question is that, in this case, invalid means invalid for a reason that would not prevent a dependent claim from being valid, e.g. prior art. Really in light of the structure of the question, one skilled in the art of patent law would realize that this is the proper way to read the question. Could the question be more explicit? Yes. Should the question be read the way you suggest: to encompass forms of invalidity other than 102 and 103? No.
Beat me to it. Here I’ll share my form with you guys:
Strongly agree for all
Other reasons: Because I’m an attorney that’s why! It’s what we do!
Why file dep claims instead of only ind. claims?: They’re all just shorthand didn’t you hear?
In all seriousness though, “dep claims help avoid restriction” is lolable, I use deps to restrict things all the time, if anything they get you restricted more. If you’re an attorney and hit strongly agree for that you’ve got a major malfunction.
D why aren’t the results viewable (at least without filling out the form)?
“If the independent claim is held invalid, would not the dependent claim inherit the invalid feature(s)?”
You attorney are apparently reading the question too narrowly.
“Invalid” does NOT mean that the claim is invalid because of prior art. It CAN mean that. It can also mean invalid because of 112 or 101 or many other reasons. For most (or all) of these reasons (non-prior art) the dependent claim WOULD inherit the problems of the independent claim & would also be invalid for those reasons. IFF the independent claim was invalidated because of prior art (which the question does NOT state), then you would be correct. Assuming that the same prior art would not also invalidate your dependent claims.
Try reading things more carefully next time (like I am sure you do for all of the office actions you see 😉 ) before you jump on somebody who, it turns out, was RIGHT!!!
MVS
If the independent claim is held invalid, would not the dependent claim inherit the invalid feature(s)?<< The dependent claim is narrower and could recite features that make it patentable whereas the independent is not.
Confused:
Independent claim 1 recites features a and b
Prior art x shows features a and b. Therefore, claim 1 is invalid.
Dependent claim 2 recites feature c, and depends from claim 1. Therefore, claim 2 requires a, b, and c. If prior art x does not show feature c, claim 2 is valid.
I’m not an attorney and was not filling out the survey, although I’ll be interested to see the results. I was just asking a simple question.
To answer your question: No
You probably should not be filling out the survey if you have to ask that question.
“If the independent claim is held invalid, would not the dependent claim inherit the invalid feature(s)?”
‘If an independent claim is held anticipated or obvious…’ is how the question should read.
I’m confused by a question in the survey – “Dependent claims are backup in case the independent claim is found invalid in litigation.”
If the independent claim is held invalid, would not the dependent claim inherit the invalid feature(s)?
In before E6k saying why all applications should be only 1 claim…
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