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All Questions in Other >> dependent vs independent claims

dependent vs independent claims

Posted by Anonymous . updated on 2/26/2009
Hey I have a question...

While attending an IPR seminar, I started thinking of why do we need dependent claims at all if independent claims have the widest claims and if they are disallowed, so are the dependent claims that follow?

cheers,
the_student
Answers (15)
 
JimIvey
I'd go even further and say that another reason is for versatility in litigation/enforcement.  The broadest allowed claims are typically more susceptible to challenge with respect to validity.  Usually, there's no way to fix problems in claims discovered in litigation (well after allowance).  The narrowest allowed claims are typically most easily avoided (infringement-wise).  You hope that, somewhere in the middle, there is at least one claim the defendant can't invalidate and still infringes (and, even better, can't effectively design-around).

Dependent claims are a convenient mechanism for having a fairly robust range of breadths.

Regards.
 
 
Puzzler
Question:

In what situation might an independent claim and a dependent claim (that refers to said independent claim) have different real dates of invention?

Answer:
In a CIP application this can happen. The independent claim can find support in the parent application while the dependent claim finds support in the new material of the CIP application.

I don't know whether this hair is often or ever split during prosecution.  I'm generally concerned about the prosecution of CIP applications.  I'm concerned that, out of convenience, the Examiner proceeds with a search for references preceding the priority date of the parent application.  Has anyone actually seen a case where an Examiner tries to split out priority dates to apply separate searches in CIP prosecution or asks the applicant to split out priority dates?

Yeah, I know, if you only care about issuance it doesn't matter. But what about after issuance? I've been called upon to analyze CIP claims and split out priority dates by reading the parent, reading the CIP, and finding the new matter. That is, I'm aware that people look for weaknesses (in issued patents) around this topic.

Having that experience prompts me to carefully consider claim priority dates when writing a CIP application. However, supervisors tend to brush off such concerns. Fairly typically, I've been told to write only claims that draw upon the new matter. Isn't is disengenuous and arguably incompetent to file a CIP with no claims that even arguably deserve the priority date of the parent?

It seems to me that many practitioners concentrate too much on the specification. If you write a specification that has similar matter to a previous pending case ... let's call it a CIP. It think this leads to situations where prosecution of the case can become misdirected. But alas, in this forum I can post concerns forbidden from expression in my work place.

I'm going to go do what I'm told now.
Bye.

 
 
Isaac
Quote
Question:

In what situation might an independent claim and a dependent claim (that refers to said independent claim) have different real dates of invention?

Answer:
In a CIP application this can happen. The independent claim can find support in the parent application while the dependent claim finds support in the new material of the CIP application.


Actually the filing date is only the assumed date of invention.  In any application, different claims might turn out to have different dates of invention based on when the applicant actually conceived the associated subject matter.

Quote
I don't know whether this hair is often or ever split during prosecution.


Sometimes its pretty clear what the new matter is.  In some cases it might be immediately clear that none of the claims gets the benefit of priority.  

Examiners usually try not to split that hair unless they find good intervening art during the search.

Quote
Fairly typically, I've been told to write only claims that draw upon the new matter. Isn't is disengenuous and arguably incompetent to file a CIP with no claims that even arguably deserve the priority date of the parent?


Not necessarily.  Who knows what claims might be added or how claims might be amended during prosecution.    But if there are no claims which get priority, the applicant may be giving up some patent term unnecessarily.

 
 
Puzzler
Isaac says:
Actually the filing date is only the assumed date of invention.

Puzzler says, I didn't mention filing dates so I hope you don't think you were correcting or addressing any point of mine.

Isaac says:
Examiners usually try not to split that hair unless they find good intervening art during the search.

Puzzler says:
I already knew that cookie cutter answer.

Isaac says:
Who knows what claims might be added or how claims might be amended during prosecution.    But if there are no claims which get priority, the applicant may be giving up some patent term unnecessarily.

Puzzler says:
I already knew that cookie cutter answer too.

I think you are deftly avoiding addressing my concerns with shelf item answers.  I've launched this conversation with others ... this is usually where it ends. If you're comfortable with those typical anwers, you needn't read on.  My concerns persist.

My concerns live in the real world where patent examiners may not always be diligent in searching and differentiating intervening art. If the applicant asserts benefit of an earlier priority date, I suspect examiners proceed at their greatest convenience.  My concerns relate to examiners writing rejections using art available that precedes the priority date of the parent regardless of the real invention date of the claims under examination. Prosecution then can proceed in any direction in view of what is not the best prior art and an invalid patent can issue.

Indeed, MPEP 201.08 Continuation-in-Part Application says:
******************
Unless the filing date of the earlier nonprovisional application is actually needed, for example, in the case of an interference or to overcome a reference, there is no need for the Office to make a determination as to whether the requirement of 35 U.S.C. 120, that the earlier nonprovisional application discloses the invention of the second application in the manner provided by the first paragraph of 35 U.S.C. 112, is met and whether a substantial portion of all of the earlier nonprovisional application is repeated in the second application in a continuation-in-part situation. Accordingly, an alleged continuation-in-part application should be permitted to claim the benefit of the filing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the **>other< requirements of 35 U.S.C. 120 >and 37 CFR 1.78, such as<:

(A) The first application and the alleged continuation-in-part application were filed with at least one common inventor;

(B) The alleged continuation-in-part application was "filed before the patenting or abandonment of or termination of proceedings on the first application or an application similarly entitled to the benefit of the filing date of the first application"; and

(C) The alleged continuation-in-part application "contains or is amended to contain a specific reference to the earlier filed application."
******************

I want to bring attention to a portion of the above, specifically:
******************
Accordingly, an alleged continuation-in-part application should be permitted to claim the benefit of the filing date of an earlier nonprovisional application if the alleged continuation-in-part application complies with the **>other< requirements of 35 U.S.C. 120 >and 37 CFR 1.78
******************

This seems to invite Examiners to behave precisely according to my concerns.

I agree that no one typically knows what claims might be added or how claims might be amended during prosecution. I am concerned that CIP practice as typically pursued is one of the more strategically error-prone areas in our field. I've had no substantive discussions on this topic with other practitioners and I hate to file CIP's because I don't think people have really thought these issues out.

It's up to us to vanguard the validity of the patents we prosecute, but I'm concerned many practitioners at least inadvertently play shell games (hide the nut) in CIP applications.

Oh yeah, I better go do what I'm told now ... where's my cookie cutter?
 
 
Isaac
You opined about the "real date of invention" and then commenced talking about a CIP.   The implication is that the filing date/priority date is related to the "real date of invention" I think my comment was appropriate.   If you meant something else other than the "real date of invention", perhaps using a better fitting term would have done the trick.

I'll describe my behavior when examiner.   I never performed searches where I used the applicant's priority date  to limit the search, and examiner's are taught not to do so.   As a result, the examiner can make a call whether or not to apply art that falls in between the filing date of a CIP and the priority date.   If there is great art that beats the priority date, then the Examiner applies that preferrably.

So no separate search; just one search that fits the bill.  Screen the art first and then look at dates.

That said, the Examiner may not do a perfect job, for this reason and for any number of other reasons.   If the Examiner misses some art that is applicable the patentee is stuck with the weakness.

It's not clear to me whether you consider it to be an issue, but if it turns out that no claims at all are eligible for priority, that in itself does not cause a problem.
 
 
JimIvey
Quote
Question:

In what situation might an independent claim and a dependent claim (that refers to said independent claim) have different real dates of invention?

Answer:
In a CIP application this can happen. The independent claim can find support in the parent application while the dependent claim finds support in the new material of the CIP application.

It can happen in any application, CIP or not.  From my primary area of practice, consider a software application with 3 significant innovations -- perhaps separately usable, perhaps synergistic, perhaps both.  Inventor thinks of innovation 1 and begins work on reducing it to practice.  A month into this work, she or another inventor conceives innovation 2 and either immediately or just upon completion of reduction of innovation 1 to practice begins to work to reduce innovation 2 to practice.  And, innovation 3 can be subsequently conceived and reduced to practice.

Claims pertaining to innovation 1 only would have the invention date of innovation 1.  Claims including innovation 2 and not innovation 3 (with or without innovation 1) would have the invention date of innovation 2.  Claims including innovation 3 would have the invention date of innovation 3.

You see, "invention" is conception plus reduction to practice and can be dated as of conception if conception and reduction to practiced are linked by an unbroken period of due diligence in reducing to practice.  So, it all comes down to the conception, reduction to practice, and the transition between the two for the stuff recited in each claim.  And, since each application, CIP or otherwise, can have multiple claims reciting different stuff, each application can have claims with different invention dates.

Regards.
 
 
eric st...
Puzzler wrote: It's up to us to vanguard the validity of the patents we prosecute, but I'm concerned many practitioners at least inadvertently play shell games (hide the nut) in CIP applications.



I'm not concerned. Whilst the law might demand an assumption of validity, it is common practice (particularly for infringers) to assume otherwise. Accused infringers almost always challenge the validity of patent claims using prior art, inequitable conduct, or most often both.

Due to the different dates of priority for the original and "new" matter, challenging a CIP might be a bit more complicated, but it is essentially no more involved than challenging any patent. The nuts will be found.

This is why "hiding nuts" from the patent office is NEVER a good idea. It is far better for an applicant to deal with the intervening prior art in ex parte examination at the USPTO than to have it handed to him by an accused infringer in a licensing discussion.

Getting patent claims granted which are of questionable validity or which can potentially be challenged harms the applicant more than it does the public. Questionable claims may never cost the public anything, but a worthless patent is certain to cost the applicant $10-15k in attorney and application fees. It's expensive wallpaper.

/Eric Stasik
 
 
xcellen...
This is going to seem trivial to most but: I have a prior art frame that has a dependantly claimed frame corner brace.  I have created a totaly patentable new frame, but I would like to independantly claim a similar corner brace as well as my frame.  It does not pass the "unobvious" test; It does not pass the "inventive" test.  Am I to almost assume that the prior art frame tried to do an independant claim on something so simple, and had to settle for a dependant? If I make an independant claim on the brace for my PPA, and it gets rejected when I file my RPA, does making it a dependant claim norow the focus, or would they through it out all together?  

Thanks for the answers, and you guys really have a nice forum.  I have enjoyed reading it for over a year now.
 
 
JimIvey
First of all, don't bother with a provisional application -- they're worthless for the purposes that most people seem to use them for.

Second, if a nearly identical claim was filed and rejected in a prior application, it seems fairly likely that the same claim in your application ought to meet a similar fate -- even if the rejection in the prior application could have been overcome, the prior application most likely describes exactly what you want to claim.  Plus, it's hard to swear you invented something that you read in another patent application.

As for the dependent claim, it will have much better odds.  If it depends from a claim reciting your new and non-obvious frame, that the dependent claim would recite the brace in combination with your new frame.  If the frame is patentable, so is the frame in combination with a brace of whatever kind.

Will the dependent claim be independently patentable?  Maybe.  If the known brace is not obviously combined with your frame, it might be patentable even if your new frame isn't.

I hope that helps.

Regards.
 
 
xcellen...
Jim,

Thanks for the response.  I have written my PPA as an RPA, so it will make a valid citation when I file my RPA in 10 months or so.  Obviously I am just trying to keep cost down.

I have no way of verifying what claims were struck off from the prior art's claims, but I can only assume that a triangle-like brace for a frame was not novel enough for an independant claim.  Is there any way to see struck claims on prior art?

Also, the crux of the question is: If I make an independent brace claim using a prior art's dependant brace claim, and there is nothing novel, do you think that my brace claim would get narrowed to a dependent brace claim, or would it get rejected?

Thanks again Jim,
 
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