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 Using the same dependent claims for different claim sets 
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IP Attorney

Joined: 2012-01-24 14:53:15
Posts: 13
This is relevant to a discussion I've been having with some colleagues of late. The issue is whether it's OK to use the same dependent claims for multiple independent claims.

As in:

1. An apparatus comprising:
a widget; and
a blodget coupled to the widget.

2. An apparatus as in claim 1, wherein the widget is rectangularly shaped.
3. An apparatus as in claim 1, wherein the widget is circularly shaped.

4. An apparatus comprising:
a widget; and
a blue blodget coupled to the widget.

5. An apparatus as in claim 4, wherein the widget is rectangularly shaped.
6. An apparatus as in claim 4, wherein the widget is circularly shaped.

--

This has been a common practice of mine for years. Some colleagues are suggesting this practice to be improper, and that the dependent claims in my second claim set should be different, even if i'm aiming to claim the same points of novelty. Thus, they argue that instead of rectangularly shaped in claim 5, i should maybe state that the widget is a quadrilateral having opposing sides and opposing ends, with the opposing sides being longer than the opposing ends, where the opposing sides are perpendicular to the opposing ends.

I don't see what's wrong with keeping things consistent. I understand what they're getting at -- differing claim scope between the "same" dependents, because maybe some will survive in litigation and some won't. But I think that's taking things to an extreme and could potentially backfire. I also think it's baiting an examiner into a restriction requirement.

Thoughts?


2012-03-20 11:28:20
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Joined: 2012-01-08 23:06:37
Posts: 35
Evil InHouse Counsel wrote:
This is relevant to a discussion I've been having with some colleagues of late. The issue is whether it's OK to use the same dependent claims for multiple independent claims.

As in:

1. An apparatus comprising:
a widget; and
a blodget coupled to the widget.

2. An apparatus as in claim 1, wherein the widget is rectangularly shaped.
3. An apparatus as in claim 1, wherein the widget is circularly shaped.

4. An apparatus comprising:
a widget; and
a blue blodget coupled to the widget.

5. An apparatus as in claim 4, wherein the widget is rectangularly shaped.
6. An apparatus as in claim 4, wherein the widget is circularly shaped.

--

This has been a common practice of mine for years. Some colleagues are suggesting this practice to be improper, and that the dependent claims in my second claim set should be different, even if i'm aiming to claim the same points of novelty. Thus, they argue that instead of rectangularly shaped in claim 5, i should maybe state that the widget is a quadrilateral having opposing sides and opposing ends, with the opposing sides being longer than the opposing ends, where the opposing sides are perpendicular to the opposing ends.

I don't see what's wrong with keeping things consistent. I understand what they're getting at -- differing claim scope between the "same" dependents, because maybe some will survive in litigation and some won't. But I think that's taking things to an extreme and could potentially backfire. I also think it's baiting an examiner into a restriction requirement.

Thoughts?



There's nothing wrong with what you are doing. Your colleagues then would argue that multiple dependent claims are improper: alternatively, claims 2 and 5 can be written as a single multiple dependent claim, and claims 3 and 6 can be written as a single multiple dependent claim. I don't use multiple dependent claims in the US because there's no cost advantage, and later in prosecution, amending the claims can get messy. But I use them in EP applications because a multiple dependent claim is charged as a single claim; with the stiff excess claims fees in EP applications, you can save a lot of euros.


2012-03-20 20:49:42
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