Theory of Dependent Claims: Survey Results

Patent claims define the scope of an invention much like metes and bounds define real property boundaries or a statute delineates the difference between criminal and non-criminal activity.  Often, patent applicants submit a series of claims all directed toward the same invention. Various independent claims allow an applicant to focus on various aspects of the invention. These broad aspects may be directed to various nodes of a larger system or regions of a compound, processes for creating or using various elements, etc.  Dependent claims by definition add additional limitations. Thus, for instance disputed claim 1 and 2 from the recent Lovanex dispute reads as follows:

1. A heterogeneous intimate admixture of sulfated heparinic polysaccharides … consisting essentially of

from 9% to 20% of polysaccharide chains having a molecular weight less than 2,000 daltons
from 5% to 20% of polysaccharide chains having a molecular weight greater than 8,000 daltons, and
from 60-86% of polysaccharide chains having a molecular weight of between 2,000 and 8,000 daltons ….

2. The heterogeneous polysaccharide admixture as defined by claim 1, comprising less than 2% of dermatan sulfate.

Claim 2 is interpreted to include all the limitations of claim 1 with the additional limitation of “less than 2% of dermatan sulfate.” See 37 CFR 1.71(c).

Earlier this week, I polled Patently-O readers on why they file dependent claims and received just over 1000 responses. (Listed below).

Theory of Dependent Claims            
Why do you file dependent claims?             
  Percent of Responses  
Answer Options Strongly Agree Mostly Agree Neither Agree nor Disagree Mostly Disagree Strongly Disagree Rating Average
Dependent claims are backup in case the independent claim is rejected in prosecution. 59% 34% 4% 2% 0%        1.51
Dependent claims are backup in case the independent claim is found invalid in litigation. 59% 31% 6% 3% 1%        1.56
Claim Differentiation: The dependent claims expand or alter scope of other claims. 47% 37% 8% 6% 3%        1.82
Dependent claims focus on particular commercial embodiments to make infringement easier to explain to a jury. 29% 44% 21% 4% 2%        2.07
I primarily include dependent claims with nonobvious additional limitations.  19% 45% 25% 9% 1%        2.29
I was taught to draft dependent claims. 26% 34% 26% 8% 7%        2.35
USPTO fees: Patent office does not charge extra for first twenty-claims. 26% 34% 24% 9% 7%        2.36
Dependent structure better supports foreign filing. 7% 19% 58% 11% 3%        2.84
Dependent claims are easier to draft and manage than independent claims. 6% 23% 37% 23% 11%        3.08
Client demands a certain number of claims. 6% 16% 29% 25% 23%        3.42
Dependent claims help avoid restriction requirements. 2% 13% 39% 31% 15%        3.44
A longer application is more valuable. 2% 13% 29% 34% 22%        3.60
          answered question 1029
          skipped question 0

Responses were also allowed to add additional reasons in the comment section. I have compiled a few of those individual responses below.

  • Drafting Process: A few responses commented on the iterative process of drafting a patent. For some, drafting the dependent claims helps refocus and redefine potentially problematic terms from the independent claims. For many, the dependent claims also serve as a guide for fully drafting the specification.
  • Prosecution Process: Some responses proposed that the dependent claims are helpful during prosecution for several reasons. First, there is a perception amongst patent practitioners that examiners read and consider the claim-set before looking at the actual specification. For that reason, the claims should be considered as a way to teach the examiner about the features and purpose of the invention.  For some, obvious limitations in a dependent claim are useful in that regard to show the examiner an intended use (practical embodiment) of the invention.  For those who see patent prosecution as a negotiation, a series of narrowing dependent claims speed up the the process — the applicant and examiner need only agree upon how narrow the claims need be.  Some propose at least some dependent claims being “super narrow” to serve as a “foot in the door” to increase the likelihood that there is at least some patentable subject matter.  Once you have agreed that a patent will issue, it may be easier to debate the scope of the eventual claims. On a practical note, the existence of dependent claims means that an applicant can get to a post-final rejection allowance without filing a request for continued examination. These practical concerns are important considering that the vast majority of patent applicants amend their claims during prosecution.
  • Claim Differentiation: Most practitioners agreed that the claim differentiation benefit of dependent claims is important. The doctrine encourages courts to consider that each claimed element covers something different than the others. Pushing that line, a typical reasoning is that two or more dependent claims providing alternative implementations of a term from an independent claim will help ensure that the independent claim element is not limited to a single embodiment. Some folks quibbled with my statements regarding dependent claims “expanding scope” of other claims and instead used a more PC version of “aiding construction.”  It is important to realize that the originally filed dependent claims also form part of the specification and can thus help overcome enablement and written description hurdles.
  • Appeasing Clients: Many inventors see their invention narrowly — as their particular embodiment. Dependent claims provide an easy way to satisfy the inventor’s desire to claim their invention without limiting legal rights. On this “politics” side — dependent claims also give reason to add joint inventors, which may be good for office politics. “An invention may only warrant one independent claim embodiment, but many clients like to see many claims. They believe the more claims they have the stronger the patent and that they are getting value for there money.So you add them, e.g., a blue widget, a red widget. It is like chicken soup for a cold, it can’t hurt.”
  • Ease of Analysis: “Filing dependent claims rather than only independent claims makes it much easier for several parties (attorneys prosecuting the application, examiners and the BPAI examining the patent, attorneys analyzing the issued patent, courts analyzing the issued patent) to more readily evaluate the differences and similarities of claims.”  Others noted that it is also useful as a way for potential licensees to know that the proposed product is literally and explicitly covered. For some patent owners, this “ease of analysis” is actually a negative. (Try to read NTP’s $600,000,000 claims). A long claim-set makes it more likely that a potential defendant will easily cave rather than pursue an expensive invalidity / noninfringement study.
  • Capture “minor inventions”: Dependent claims allow an applicant “to capture improvements to the invention that are not important enough to justify a separate application, but that one would want to avoid having a competitor step in and patent something similar.”
  • Tradition: There is nothing wrong with tradition and custom. It helps ensure that we’re all on the same page.  For many the 3/17 rule of independent/dependent claims serves as a default rule that can be adapted for unique circumstances.
  • International: Internationally, patents use fewer independent claims than in the US. One European attorney made the following comment: “Multiple independent claims in the US style cause major headaches and costs in Europe, so one good independent, with well gradated dependents, is the best solution for me.”
  • I will attach the full comments once reformatted.

107 thoughts on “Theory of Dependent Claims: Survey Results

  1. 107

    Curious EPA, that which, if done after, would infringe, anticipatess if done before, and vice versa – depends on suitability for purpose. The binding press in Hickman was too small to be a “workbench” so didn’t anticipate. A hole suitable for a rabbit might or might not be suitable for any particular other animal, and rabbits come in a great range of sizes…

  2. 106

    Dear Max,

    Old Hickory, Andrew Jackson, the 7th President of the United States, said:

    “It is a damne poor mind indeed which can’t think of at least two ways to spell any word.”

  3. 105

    “In Europe, if a claim read “A rabbit hole comprising…”, then the inclusion of the word “rabbit” itself would generally be non-limiting. Any hole having the characteristics defined by the claim would infringe.”

    Why do you say that? It seems contrary to Hickman v Andrews to me

  4. 103

    That’s me stuffed, Eurodisnae. No idea how to reply to your first para, or your second. I just wonder, was your little spelling mistake also a tease? If not, does your chaos theory predict when we will ever reach consensus how to spell concensus?

  5. 102

    Max, we’ll agree to differ on this one – I think we mean slightly different things. I’m a big believer in chaos theory, basins of attraction, multi-polar non-linear dynamic systems, etc. and tend to view concensus reality through that lens.

    Funny (jumping threads for a second) – wouldn’t have taken Mooney for an Airplane fan – had him pegged as a Deadhead (boom-boom). Me, I go with the Velvets, Iggy, Bobby D, Neil Y and Lenny C, even if two of them are Canadians (by birth…). No Europeans in there you notice, so the Stones, Zeppelin, John Martyn and Primal Scream also. Nick Cave (Australian) is set to join that pantheon.

  6. 101

    Eurodisnae, I agree with you, that national courts in Europe have different ways to arrive at a decision on non-obviousness. But each works within its system of law (common or civil) and none swings around like a pendulum. I happen to think that the 24 Boards have been good (over the long run) for legal certainty, and so is the competition on procedural and substantive law, between the national courts (DE, GB, NL) for the purest line, on any particular legal issue within the pan-European Patent Convention.

  7. 100

    Max
    I only meant that public policy matters are never static and tend to oscillate between different polar extremes. However stable the criteria for inventive step may be at the EPO, there are clearly still differences of view as to the threshold of inventiveness (e.g. the assumed characteristics of the skilled person) and other issues, bwteen national jurisdictions. Certainly, the EPO boards of appeal have a damping effect on such oscillations and it is probably true that the dynamic equilibrium that exists in Europe is more stable than in the USA, which is why I said
    “It seems to swing more violently and less predictably in the USA”.

  8. 99

    Eurodisnae, I have to take issue with you. What’s all this about the pendulum swinging in Europe “just as it does in the USA”. I think not. With 24xTBA in the EPO, all of equal rank and disagreeing with each other, till a consensus line emerges, which the courts of the Contracting States then duly follow, where’s the pendulum? Don’t you think that, after 30 years of steady TBA evolution towards legal certainty on “inventive step” we are also now embarking on another such evolution, with “technical”?

  9. 98

    pds:

    You critique the statement “a patent application should clearly indicate from the outset what it is that the applicant thinks he/she should be able to prevent others from doing.”

    The emphasis there should be on THINKS. The EPO philosophy of “public notice” basically means that the applicant has to set out their claims and justify them based on the teaching they contribute to the state of the art. Examination of the application should then be a process of negotiation to determine what claim scope is justified in light of the teaching judged against the prior art. The EPO places relatively strict limits on amendments in order to balance the rights of the applicant against the rights of the public. It’s not that they favour infringers over innovators, it’s about finding the right balance of competing interests.

    In the EPO, claim language is not cast in stone from day one: you CAN draw on the specification as a whole for claim amendments, but you might need to file a divisional in order to get a new search done and you won’t be able to generalise or arbitrarily combine features unless there is adequate support in the application as filed.

    The pendulum swings in Europe just as it does in the USA. It seems to swing more violently and less predictably in the USA.

    The idea that a patent application can simply disclose one or more embodiments of whatever the applicant has devised and that the applicant has a moral right be able to obtain claims covering whatever combinations of features drawn from the disclosure that can be shown to be novel and non-obvious over the prior art is a peculiarly American one (to which many of you would no doubt raise a glass…). Add to that a procedure that permits cascades of continuations that can continue for years while applicants monitor the activities of their competitors and adapt their claims to cover things that they plainly never invented themselves and you end up with a patent system that serves the lawyers more than it serves either the inventors, their employers or society at large.

    The European system (to whatever extent there actually is a “European System”) is by no means perfect, but its faults stem largely from its attempts to be pragmatic in balancing private interests against public interests. The faults in the US system seem to stem from a laudable but misguided idealism about the rights of inventors clashing with hard-nosed commercial reality.

    PS: My moniker modified through an abundance of caution about possible Disney trademark issues. With McDonalds thinking they own anything with a Mc or a Mac in it, it’s getting so an honest Scotsman can’t use his own given name in the course of business…

  10. 97

    What do you mean by ” the line cannot move around as it does with current deps”, Mr. e6k?

  11. 96

    “You say you need hours to dispel all my disbelief but it seems like you would have to draw heavily on some resource, you can just point me there, I hardly mind the reading.”

    Let’s see … try the MPEP, the Federal Circuit, 35 USC, 37 CFR. You also need a primer in basic logic and basic English (both spelling and grammar). It is easy to correct an error with the person just makes a single error. However, when a person makes multiple errors, bases arguments around unstated (but implied) erroneous underlying facts/principles, it becomes difficult to untangle the great big mess that you’ve created. You think that the logic you’ve employed to arrive at your conclusions is sound, but your logic is based upon so many errors that any conclusion that comes from you logic is bound to be flawed.

    “Put in your terms of a line around the subject matter, you’re right, that’s what is required, but he only gets one line, and every claim must describe that line and not any other line, the line cannot move around as it does with current deps.”
    This is an example of where you argue from a flawed position. If you’ve had an experience in the law, you would realize that few legal positions have to be set in stone, which is why certain people don’t like attorneys, because we try different arguments (i.e., argue in the alternative). With claims, there is NO REQUIREMENT that the line to be drawn cannot be moved. The CORRECT line that is drawn (which allows the application to overcome both 102 and 103) is not solely based upon applicant, it is also based upon the prior art that is found and how the examiner interprets the language of the claims. The applicant cannot know these in advance, which is why there is no requirement that the line be unchangeable.

    “a patent application should clearly indicate from the outset what it is that the applicant thinks he/she should be able to prevent others from doing.”
    I’ll go back to my prior point, if applicant had perfect knowledge as to the prior art and as to how the examiner, the BPAI, and the Federal Circuit would construe a particular claim term, then applicant could put together really good claims. However, the applicant doesn’t need to know what was done previously because the law only requires the inventor to disclose his/her own invention, not the inventions of others.

    Unlike the EPO, which as described above, has, in many instances, tried to limit the scope of the claims to what was orginally claimed, in the US, the extent of subject matter that can be claimed is limited by what is disclosed in the specification, not in the claims. If a competitor wants to know what could be claimed in the future, they should look at the specification.

    In the US, at least over the past couple of decades, the pendulum has swung to the side more favorable to the inventors. There are people (e.g., 6K, the higher ups at the USPTO among others) that want the pendulum to swing to the side of the infringers … I like to call these “patent fairness” advocates patent communists because many of them think people will continue to spend $$$$ on R&D for the betterment of society without any IP to protect that R&D.

  12. 95

    Thank you John Cooper – I hope you enjoyed my pet white rabbit’s question as much as we enjoyed your answer (õ¿Q).
    link to patentlyo.com

    Thank you step back; as you can see, your comment was most helpful. Here’s what I gleaned from your edification:
    link to patentlyo.com

    And here’s a Happy Birthday to my best friend and the world’s greatest patent attorney

    ———— HAPPY BIRTHDAY Frank ————

    Enjoy many, many more. Thank you for being there—your generous help and unsurpassed wisdom through the years has been priceless to us ordinaries. Stay well my friend, be happy, live long and prosper.

    And here’s to Americans Celebrating MEMORIAL DAY—
    Give thanks to all of America’s Finest for their ultimate sacrifice
    link to patentlyo.com

  13. 94

    Dear JAOWR

    “If an ordinary inventor claimed an improved “rabbit hole” … would the patent cover the latter farms?”

    The answer to that question would depend on what the patent described/taught and how it claimed it. If the teaching and claims were very specific to rabbits, they might not cover the application of the teaching to other furry friends, subject to equivalence, which would depend on what the skilled person would glean from the teaching. If the patent was well drafted, it could probably have claims such that direct infringement didn’t depend on the species of critter. Faced with such an invention, any patent attorney worth their salt would ask whether it was relevant to anything other than rabbits before drafting the application.

    In Europe, if a claim read “A rabbit hole comprising…”, then the inclusion of the word “rabbit” itself would generally be non-limiting. Any hole having the characteristics defined by the claim would infringe.

  14. 93

    Dear John,

    Pardon my familiarity, but I know something about holes since I used to live in one before being adopted.

    If an ordinary inventor claimed an improved “rabbit hole” comprising and characterized by clever “stuff” that increased the number offspring produced by breeding rabbits, and the ordinary inventor was granted a patent claiming his improved “rabbit hole”, and it was found that the improved “hole” with all the same clever stuff not only increased the hossenpepper output of a Leporidae farm but also similarly increased the output on Mink and Chinchilla farms, would the patent cover the latter farms?

    ———— * * * * * ————

    Also, Celebrate MEMORIAL DAY— see two comments back to back by Jaoi™ on this link:

    link to patentlyo.com

  15. 92

    First, a quick point about China. China was forced to establish a patent system, in the mid 1980s so e#6K wouldn’t remember, and to address many other intellectual property issues, as a condition of being allowed to play in the global economy. It has taken a while, but there are clear signs that China is achieving some success with the enforceability of IP rights. The growth of the Chinese economy quite simply would not have happened without a patent system having been established, because no-one would have traded with them.

    David J French wrote upthread:

    “I have been shocked, however, in European prosecution to find out that, after filing, it is very difficult to broaden claim coverage beyond the boundaries of the claim coverage originally sought. I do not understand how a “new matter” objections can be raised when a claim is modified after filing, for example, to delete “central” from a phrase “central hole” when the invention functions perfectly well with a hole, whether central or not. After all, there was always a hole described in the original disclosure.”

    I know from long experience that many US practitioners struggle with EPO ideas about claim broadening and added subject matter. This all comes back in the end to the public notice function of the 18 month publication of applications.

    The idea is that a third party should be able to read a published patent application and have a reasonable idea of what it is safe to do, without having to wait for the patent to be granted. That is, the application should foreshadow the broadest claims that are likely to be granted – if some activity would not infringe the published claims, it shouldn’t infringe the granted patent.

    Accordingly, there is a very strong bias at the EPO against allowing broadening amendments of independent claims during examination. It’s not prohibited, but there has to be very clear support for it in the application as originally filed. Otherwise, you fall foul of the absolute prohibition on adding subject matter.

    If your independent claim as originally filed and published recites a “central hole”, then it is assumed that you meant that a central hole was an essential feature of the invention – you were completely free to just recite a hole. If there is a clear indication in the description that the hole doesn’t have to be “central”, then you ought to be able to amend the claim by deleting “central”.

    If there is no such indication, then the teaching that you chose to provide by means of your patent application relates to a widget with a central hole, not any old hole. And you chose to claim a widget with a central hole, not any old hole. If you now try to delete “central”, the claim will embrace embodiments that were not disclosed in the application as filed – you have added subject matter to the application by implicitly adding those new embodiments to the teaching provided by the application.

    EPO practice on this is VERY strict. You need to make very sure that your main claim as filed doesn’t include any unnecessary limitations.

    This hard line is softened somewhat by the amendment (as of December 2007) of the Protocol on the Interpretation of Article 69 EPC to include specific reference to equivalents:
    “For the purpose of determining the extent of protection conferred by a European patent, due account shall be taken of any element which is equivalent to an element specified in the claims.”

    In this example, it is likely that if it was obvious to the skilled person that the location of the hole didn’t make a blind bit of difference then the claim would be infringed even if the hole wasn’t central (“central” itself might be argued to give a bit of wiggle room). But if the operation of the widget is such that some hole positions work and some don’t, then you could be stuck with only having taught a central location as a workable embodiment. It’s probably going to take a long time to establish anything like a harmonised approach to equivalents in Europe.

    Sorry David, but if the hole didn’t have to be central, claim 1 shouldn’t have said that it was.

    The other side of this coin is that it is baffling to us Europeans that applicants are given so much leeway in amending claims during prosecution in the US, and the idea of post-grant claim broadening is pure anathema to us. It seems to me that this wide-ranging freedom to change your tune about what you have invented, for years and years after filing, is the source of many of the problems seen in the US patent system.

    I can sympathise with e#6K up to a point – a patent application should clearly indicate from the outset what it is that the applicant thinks he/she should be able to prevent others from doing. But he also needs to realise that the parameters for what constitutes a patentable invention have been determined by decades of legal precedent. That’s why patent attorneys exist and why applicants, for the most part, don’t and shouldn’t write their own claims.

  16. 91

    “Next time, try an analogy that even remotely makes sense. I’ve seen examiner-speak like this before. In responding to an argument, instead of responding to your argument, he/she goes off on some random direction that has questionable relevance to the issues being debated. 112 has been around for a long time … it has been construed by much more educated/experienced/exacting minds than yours. However, nobody goes where you go (not even defendants in patent infringement suits that will try any argument to get a patent invalidated).”

    Gotcha, so instead of just showing where someone who was in charge of explaining 112 at the very beginning you choose to go on and on. Very attorney like. Also, my sentences you quoted above are grammatically correct. Now, maybe you can be of some use, remind me, it was said when the patent act was enabled in the 50’s that second para of 112 was essentially the same as the relevant portion of the act of 1836, just in updated wording, correct? I’m looking into why the portions of the 1836 document were taken the way you all hold in such high esteem. You guys seem to be so well entrenched in your knowledge of why it is interpreted in one specific way, yet you don’t even point me to beg. patent law books as references. I have to wonder how well justified your foundation is, as in math, do you know how to use the calculator or do you know how to prove what the slope of a tangental line to any curve is? You say you need hours to dispel all my disbelief but it seems like you would have to draw heavily on some resource, you can just point me there, I hardly mind the reading.

    Oh, and you quoted MM and then kept responding to me.

    “Yet again, your comments evidence your ignorance. You either just don’t get it or are just willfully ignorant. If applicant, in 2008, invented a wheel, that is his invention. It doesn’t matter if it has been invented for thousands of years, it is still his invention. Patent law has never required that applicant determine whether or not the invention is patentable. Instead, patent law requires that the inventor describe the invention and particularly point out and distinctly claim the invention. YOUR JOB, as the examiner, is to establish the facts that lead to a conclusion as to whether that invention is patentable. Just because it isn’t patentable, doesn’t mean it isn’t what applicants considers to be their invention. All 112 2nd paragraph requires is that applicant unambigously (with a reasonable precision) draw a line around the subject matter sought to be claimed, and that the line be distinguishing (i.e., over the prior art).”

    That’s all very nice, but the applicant, according to what I’m saying, can only claim either a. a wheel, or b. a wheel made of rubber. Put in your terms of a line around the subject matter, you’re right, that’s what is required, but he only gets one line, and every claim must describe that line and not any other line, the line cannot move around as it does with current deps.

    “You’d presumably already have searched the invention (or should have) so your “burden” argument is out the door.”

    Nah, not really. Again, all I have to say is “my bad, I didn’t understand that limitation well, now that I do, it is classified here, and it is an additional burden”. I’m well aware of what I would have to do should the situation arise, not that I would likely do it anyway. Oh and yes, I would have to be a pretty big prick to pull it off. I’d just have to make sure the attorney was the same guy that argued that my reference didn’t show a couple of claim limitations that are blatant on the front of the reference and all throughout to give me motivation.

    “Anyway, since nobody believes that you or any other examiner is short of time and letting close issues slide in the applicants favor a mere “1 out of 1000 times””

    Um, no what I said was that the situation not of simply letting things slide arises one out of a thousand, I said the situation of having a dep that would be eligible for combo/subcombo and letting that slide is 1 in a thousand. That’s ~1 in 10 like you said, multiplied by 1 in 100 that has a dep (or an ind with amended subject matter not in a previous dep) eligible for combo/subcombo. Sure, the actual number might be one in 500 to one in 1500 rather than 1 in 1000, but somewhere in that neighborhood. You simply seem to gloss over the fact that the only type of restrictions that subject matter would be eligible for would be either species (which WOULD be made in either situation, hardly any no doubt about it, it’s very rare I let a species go anymore) or combo/subcombo, which is the one I’m talking about.

    But either way all in all MM it depends squarely on the subject matter. If all else is equal (my time restraints/gf bitcing) then it has an equal chance of sneaking through either as dep on first action, or amended ind on second action. That is what it boils down to. If you start considering that maybe you snuck a dep by then it’s the same thing as if you snuck an amended ind by. And that part of the argument you don’t really have anyway around, you’re just throwing in an extra variable (sneaking a dep by) on one portion of examination to throw the numbers, and even then the chances of it helping you are very low as I just got through pointing out.

  17. 90

    “Funny how those products are protected and that protection didn’t promote the progress at all isn’t it? Thanks for destroying any hope you might ever have of arguing the patent system accomplishes its one goal.”

    Yet again, grammar and/or logic eludes you. Next time, try to write comprehensible sentence(s).

    “I counter by saying if you are to eat a sandwhich that you own, do I really need to say that you are only to eat sandwhichs that you do not own or do you take that as being understood?”

    Next time, try an analogy that even remotely makes sense. I’ve seen examiner-speak like this before. In responding to an argument, instead of responding to your argument, he/she goes off on some random direction that has questionable relevance to the issues being debated. 112 has been around for a long time … it has been construed by much more educated/experienced/exacting minds than yours. However, nobody goes where you go (not even defendants in patent infringement suits that will try any argument to get a patent invalidated).

    “You’d presumably already have searched the invention (or should have) so your “burden” argument is out the door.”
    Yet again, your comments evidence your ignorance. You either just don’t get it or are just willfully ignorant. If applicant, in 2008, invented a wheel, that is his invention. It doesn’t matter if it has been invented for thousands of years, it is still his invention. Patent law has never required that applicant determine whether or not the invention is patentable. Instead, patent law requires that the inventor describe the invention and particularly point out and distinctly claim the invention. YOUR JOB, as the examiner, is to establish the facts that lead to a conclusion as to whether that invention is patentable. Just because it isn’t patentable, doesn’t mean it isn’t what applicants considers to be their invention. All 112 2nd paragraph requires is that applicant unambigously (with a reasonable precision) draw a line around the subject matter sought to be claimed, and that the line be distinguishing (i.e., over the prior art).

    Simple, simple, simple, simple, simple. Tens of thousands of attorneys get it. Hundreds of judges get it. Thousands of patent examiners get it, but you don’t get it.

  18. 89

    “So your position is that if you can sneak a dep through then you gain a better position on not having subject matter that should have been restricted not restricted. Eh, I suppose”

    Thank you. And your position is far worse than you make out. You’d presumably already have searched the invention (or should have) so your “burden” argument is out the door. Seriously, in order to pull it off at that point you’d have to engage in supervillain-like prickitude. Compared to the other situation in my hypo where I am relying solely on my spec for support, I’d be feeling positively golden.

    Anyway, since nobody believes that you or any other examiner is short of time and letting close issues slide in the applicants favor a mere “1 out of 1000 times” (more like 1 out of ten), there’s your irrefutable reason for including dependent claims.

  19. 87

    “Assuming, for a second, that China and India have made substantial strides in their R&D, these substantial strides have been accompanied by a tightening up of their IP laws.”

    Yes, except notably the tightening up trails, rather than preceds the strides. Funny how that works isn’t it? Maybe someone is promoting as much progress as they think?

    “However, even if China and India didn’t have IP laws at all, the strong IP laws in the US/Europe/Japan protect the vast amount of products being consumed in those respective regions.”

    Funny how those products are protected and that protection didn’t promote the progress at all isn’t it? Thanks for destroying any hope you might ever have of arguing the patent system accomplishes its one goal.

    “Why don’t you do one of your killer, knock out, all word, 5 second google searches and find it?”

    I tried and upon not finding it on the first page I decided to ask, and you have refused. Np.

    “Can you quote language from the MPEP (or other source) to explain this please.”

    Sure can. 112 2nd. “The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.” Noticably we see that all of the claims are to particularly point out and distinctly claim the subject matter which the applicant regards as his invention, no more, no less by any of them. Last I checked, subject matter doesn’t morph into different subject matter and still be the same subject matter does it? PDS counters that “ONLY” is not in the language of 112. I counter by saying if you are to eat a sandwhich that you own, do I really need to say that you are only to eat sandwhichs that you do not own or do you take that as being understood? How specifically do you need it spelled out for you in the statute before you will do it? This is especially ivo of the contitutional articles enabling the entire statute that say “To promote the Progress of Science and useful Arts, by securing for limited Times to Authors and Inventors the exclusive Right to their respective Writings and Discoveries”. Congress hasn’t even enabled itself to grant to you the exclusive right to any but your writing or discovery. I believe it is unquestionable what 112 states to someone not being willfully against what it says.

  20. 86

    I can read.

    I told you it was from J. Newman.

    Why don’t you do one of your killer, knock out, all word, 5 second google searches and find it?

  21. 85

    “Take a good look at China and India sometime. I certainly wouldn’t say that either of those countries has ‘strong IP law.'”

    Assuming, for a second, that China and India have made substantial strides in their R&D, these substantial strides have been accompanied by a tightening up of their IP laws. However, even if China and India didn’t have IP laws at all, the strong IP laws in the US/Europe/Japan protect the vast amount of products being consumed in those respective regions.

    “the USA had massive investment in software R&D prior to software being patentable. And the EPO has massive investment in software R&D today.”

    Software, in some form, has been patentable at least since the early 80s. I don’t know about you, but I remember the computer systems and software available back in the early 80s. To compare software available today versus what was available then is like comparing an F1 racing car to one of Henry Ford’s model-Ts … it isn’t even remotely close. You need to come up with some numbers that back your assertion that the US had massive investment in software R&D prior to software being patentable.

    As for software in Europe, you can still get patents that cover “software,” you just need to claim it properly. Like I’ve written probably a dozen times on this board, nobody claims “software.” Instead, any reasonably competant patent attorney will claim the patentable idea so that the claims fall within one of the statutory classes of subject matter.

  22. 84

    e6k — you say that dependent claims “must be statutorily proper, i.e. directed to ONLY the exact same subject matter as the rest of the claims in the application, not smaller, and certainly not larger.” I don’t know what this means. Can you quote language from the MPEP (or other source) to explain this please.

  23. 83

    6K

    “As before, my position is still that the deps should be evaluated on their merits but that they must be statutorily proper, i.e. directed to ONLY the exact same subject matter as the rest of the claims in the application, not smaller, and certainly not larger.”

    I’ve been reading your running diatribe about dependent claims for awhile, and I don’t have the couple of hours it would take to disabuse you of all your incorrect notions about dependent claims.

    I don’t see anything in 35 USC 112 that requires the claims to be directed to “ONLY the exact same subject matter as the rest of the claims.” The problem with all your arguments is that you are “importing limitations” into the language of 35 USC 112 that are entirely absent from the plain language of the code.

  24. 82

    “My hypothetical plainly set forth that scenario: when you made the initial restriction requirement you could arguably have made it more stringent, but (in my hypothetical) you did NOT do so.”

    Ok, so you’re saying that I decide not to make the restriction req because I’m pressed for time or other considerations, but magically I wouldn’t have those considerations at the time of and amendment that happens to bring in that matter, for the first time, into the claims. I thought your “all other considerations being equal” encompassed random sht like that happening in the other situation if it happened in the other. My bad, I misunderstood the question. So your position is that if you can sneak a dep through then you gain a better position on not having subject matter that should have been restricted not restricted. Eh, I suppose if the stars align then it could happen, in about 1 case out of a thousand (or more).

    But, even with that said, the restriction would likely still be made after the amend to move up the dep was moved up whether my position was strong or not. What would be the basis? “Well I thought I searched the invention (deps) good at the time of sending out the FOAM, but come to think of it those limitations to different subject matter create a burden that I hadn’t thought of (and probably a different classification) sorry, restricted”. So even in your 1 in a thousand hypothetical it wouldn’t avail you if I took a notion to restrict down the line. I suppose though theoretically it could help to avert my ever taking such a notion. That having happened would be something quite difficult to point out in an actual RL encounter, but it is a theory. In any event, it hardly justifies writing literally most likely thousands of extra deps to cover that one in a thousand case scenario to do something that likely wouldn’t avail you. Especially considering how much $$$ goes into filing a div for one unlucky client and how many $$$ goes into filing thousands of claims spread across different clients. This might justify being in the “neither disagree nor agree” category if you hadn’t thought through the $$$ of what is involved, rather than the disagree categories, but so far as I can see it would not justify in any way agreeing.

    How often do you get combo/subcombo (the only type of restriction I can see as being relevant to the situation at hand, i.e. subject matter that could be deped in) election by original presentationed MM? How many of those are over subject matter you feel could have been written as a dep that would have slipped past being combo/subcomboed? Be honest. The number of the first is very small, and the number of the second is even smaller.

  25. 81

    “No what I’m saying is that if I was going to make a restriction req for a case such as that one then I would have made it before first action.”

    This may come as a surprise, e6k, but you don’t get to introduce your own facts into other people’s hypotheticals. You keep avoiding the question and I suppose a reasonable person can discern your “answer” in that behavior.

    You admitted in other threads here that sometimes when you don’t have time you let stuff slide that you might otherwise argue if you had the time. My hypothetical plainly set forth that scenario: when you made the initial restriction requirement you could arguably have made it more stringent, but (in my hypothetical) you did NOT do so.

    Again: you admitted that you sometimes let close calls slide. My point is that when you do that (and it certainly happens in “real life”; even if you hadn’t admitted it, which you did, we all know that it happens) there are circumstances such as the one I identified where your failure to make the case initially weakens your position should you be inclined to make the argument down the line.

    I’m not sure why you so resistant to this concept. You did admit, effectively, that you weren’t the ultimate in perfection when it comes to being a hardass examiner. Perhaps you would like to retract that statement and substitute it with an argument that you are the perfect examiner.

    Do let us know.

  26. 80

    Seriously: read the hypo. You get the case, you issue a restriction requirement and I pursue invention A. In the case where invention A includes independent claim 1 and 9 dependent claims, you are telling me that when I later amend claim 1 to recite the limitation in claim 9, you are going to issue a NEW restriction requirement?

    No what I’m saying is that if I was going to make a restriction req for a case such as that one then I would have made it before first action. If the subject matter of that dep warrents a restriction (whether it is in dep form or whether it is amended into ind. form is irrelevant) then a restriction will be made. I wouldn’t just go around restricting cases amended claims from the original claims where you moved up a dep that wasn’t originally restricted away from the original ind. Who would even consider doing that? Further, if you hadn’t have made that a dependent claim, and you then amend the ind. to include that subject matter (where it wasn’t in the dep to begin with) then unless that dep reclassifies the whole shebang and appears, bases on the record, to not be an obvious variation then I wouldn’t restrict it either. IF however that dep or theoretical omitted dep subject matter ind. would reclassify the claim (and be a non-obvious variation) then you would get a restriction post haste, either before first action for the dep, or after amendment for the ind. that got additional previously uncliamed subject matter. Bottom line is that it is the subject matter that controls, NOT when the subject matter was entered. Like it or not, that’s how it works. If you feel like you’ve been getting restrictions where this is not the case then you likely have a petitionable situations on your hands. Though I understand if you are loathe to pursue that option.

    Oh but btw, yes my restrictions are equally defensible in every situation where I make them because they are based on the subject matter rather than solely on my personal desire to restrict them.

    JD, apparently you have trouble reading, I was asking for the specific publication/decision by Newman where you got it from. Also, I give you that congress wanted to specifically state how deps should be treated, but the fact that such an amendment was needed shows all too well what the proper pre-amendment interpretation was, that there was no particular lawful need for them to be treated on the merits. And, even after having made that showing, I’m then still left with the “where the nature of the case allows” portion that apparently means nothing and should never have been written (according to you and yours?). As before, my position is still that the deps should be evaluated on their merits but that they must be statutorily proper, i.e. directed to ONLY the exact same subject matter as the rest of the claims in the application, not smaller, and certainly not larger. “more limiting” is blatantly a reference to not adjusting the size of the subject matter to be smaller, but is instead directed towards clarifying just wtf that same subject matter is. Now, if you’d like to try to say that that is exactly what they’re doing now then we can all have a good hearty laugh.

  27. 79

    Re:
    “Like so many times before, you’re really in over your head. You have a complete lack of understanding of how statutes and case law interact. Didn’t you claim once that you understood our common law system quite well?”

    Gentlemen, I don’t mean to interfere with your dialogue, but there is an excellent primer on equity (common law) versus statutes (law, such as laid down in the Constitution or legislated in accord therewith) graciously offered to Jaoi™ by “step back” on this link:

    link to patentlyo.com

    ———— * * * * * ————

    Also, help Celebrate Memorial Day weekend—see two comments back to back by Jaoi:

    link to patentlyo.com

  28. 78

    “That’s an outstanding piece of reading you have there JD, can I ask where you lifted it from?”

    I told you it was from J. Newman. You may want to read some of her stuff instead of trolling through old “flash of creative genius” case law that was statutorily overruled 56 years ago.

    “Apparently they felt that there was need to make sure that everyone understood that the dependent claims needed to be considered individually on their merits, since presumptively the office had been taking the correct view on deps in that they were either not further limiting of the subject matter which the applicant regarded as his invention or the ind was invalid since it did not particulary point out and claim the subject matter which the applicant regards as his invention.”

    Uhm, no. The PTO was taking the incorrect view on dependent claims. So Congress amended sections 112 and 282 to tell the PTO, “You’re doing it all wrong. To ensure that you do it right, we’ve written it down for you and inserted it directly into the code.”

    Like so many times before, you’re really in over your head. You have a complete lack of understanding of how statutes and case law interact. Didn’t you claim once that you understood our common law system quite well?

    You are too funny.

  29. 77

    “Do you think companies/univs(gov) in countries without strong IP don’t invest in research? Have you done any research on that?”

    PDS wrote: Please start naming those countries, without strong IP law, with companies/universities doing a lot of R&D the last 10 years … this should be amusing.

    Take a good look at China and India sometime. I certainly wouldn’t say that either of those countries has “strong IP law.”

    For that matter, the USA had massive investment in software R&D prior to software being patentable. And the EPO has massive investment in software R&D today.

  30. 76

    “I don’t believe it makes any difference if you put it in as a dep at first or not, I will restrict it if the subject matter warrants whether or not it’s a dep at first or new ind. later.”

    You think you will have any luck with that?

    Seriously: read the hypo. You get the case, you issue a restriction requirement and I pursue invention A. In the case where invention A includes independent claim 1 and 9 dependent claims, you are telling me that when I later amend claim 1 to recite the limitation in claim 9, you are going to issue a NEW restriction requirement? And you think that your position, in that instance, is as solid and defensible as your position would be if (all other things being equal) I made the same amendment to claim 1 but had NO dependent claims pending at the time of the amendment (relying instead solely on the spec for support)?

    Get off it, man.

  31. 75

    My bad lowly I skipped ya, and I still can’t get over the part about there being a reason for why “attorneys claim more than the inventor often thinks his “invention” is.”, or i.e. attorneys intentionally violate 112. And then that due to poor interpretation of the law that “Actually, the right thing is to try to get the largest monopoly that I reasonably can for my client based upon his invention, not to write a 1 claim application directed to a very specific embodiment to make examination easier on you.” Stating in no uncertain terms that his job is not to comply with the law, but rather to flaunt it and try to obtain the largest “monopoly” that he can, through any means which are not blatantly dishonest and that are necessary. He probably also is a firm believer in the office’s recent effort to create rules that would just happen to have the side effect of bringing out what the inventor regards as his invention sooner are illegal.

    Then he even goes on about his methods of not complying with the law “Once you explain how the law works and ask the inventor some questions, they generally will understand and regard that extra subject matter to be part of their invention.” even though the inventor, by himself, does not regard that subject matter as part of their invention and instead sees an opportunity provided by the law to section off a broad swath of stuff he did not invent, didn’t beleive he invented, should not be able to section off, and in fact was invented by none other than the attorney with the inspiration of the applicants disclosure.

    He then goes on about the he feels that I’m suggesting that applications should be filed in accordance with 112 rather than what they may be entitled to under other sections of the law. He then suggests that ignorance of your legal rights in other situations where the law doesn’t specifically countermand you having a right to things you don’t think are your rights is analogous to the situation at hand. Of course he is mistaken since the statute goes out of its way to make it apparent specifically what claims are claim.

    Then we see that he asserts that he complies with 112 even though he just provided a detailed accout as to his not complying.

    Then we see that he feels that if inventors could only patent their prototype then our patent system would suck and nobody would use it (except for people wanting to protect what they invented of course). He fails to take into account the fact that just because claims are to only encompass what the inventor believes to be the subject matter which is their invention doesn’t mean there is any limitation on having to file broad claims.

    Then he asserts taht the client is the assignee rather than the applicant. I concur. That still doesn’t excuse drafting claims broader than what the applicant regards as the subject matter that is his invention. In addition to this he brings up that it is a rarity indeed that what the inventor believes to be his invention is ever actually claimed.

    As we get towards the end lowly feels as if I’m telling him he shouldn’t be allowed to advise clients about the law and how patents “work”. That would be something that I would not say. He also bemoans that people might actually feel the patent system should do exactly what is set out in the statute rather than what it has morphed into. To end us off he concedes that many topics I might touch upon may have merit, but that in this case his and his clients (the assignee) self interest outweigh the merit of these particular topics.

    Overall, that’s not very impressive lowly. Saying that the law is rarely abided by doesn’t help your position. In any event Lowly, don’t be so hard on yourself. Just because you honestly admit to not adherring to 112 (or at least rarely doing so) doesn’t mean all your patents are invalid, because the courts have got your back yo yo. And just because the statute says things that contrast with procedures you undertake that are in your interest doesn’t mean you’re an outlaw. Or does it? It could go either way since the courts are so generous, so maybe you can use that to pick up girls at bars while keeping a reg. no. It’s like having your cake and eating it too!

  32. 74

    That’s an outstanding piece of reading you have there JD, can I ask where you lifted it from? It shows in no uncertain terms how the bad interpretations of 112 started. Even which presumptions made back then are false. Apparently it used to be where deps were making the case short, clear, and convienent rather than the exact arse opposite of what they do today. That is, make the case long, convoluted, and horribly inconvienent by making it a simpler matter to handle very complex issues in a small amount of space/time/writing. They even think that use of deps “reduces” the number of claims, an assumption that, among other things, even this very survey countermands. Heck, they even go so far as to imply that the deps are necessarily classified with the ind and that is certainly not always true.

    Perhaps the most remarkable thing about this peice of reading it that it, once and for all, explains why the amendment to 112 contradicts the portions in the 2nd paragraph. Apparently they felt that there was need to make sure that everyone understood that the dependent claims needed to be considered individually on their merits, since presumptively the office had been taking the correct view on deps in that they were either not further limiting of the subject matter which the applicant regarded as his invention or the ind was invalid since it did not particulary point out and claim the subject matter which the applicant regards as his invention. Unfortunately, that band-aid of an amendment did nothing but confuse the issue by supposedly mandating in a round about way that the deps are to be addressed on their merits instead of be treated as they would be under the statute. Then we notice that one small portion in the paragraph that says … “if the nature of the case admits”. Thanks for making my entire case for me JD.

    I thank you for bringing this to my attention JD, I admit, I was ignorant of how this fallacy was born, and it was very difficult to argue against it without a proper understanding thereof. It is enlightening to read a second hand accounting of the actions taken and the false justifications made in support thereof. Perhaps now that we can see that the justifications made are indeed false then awareness will increase and we can get the courts to overthrow this remnant of badly worded, horrendously counter-productive to the advancement of the arts, law.

  33. 73

    That’s an outstanding piece of reading you have there JD, can I ask where you lifted it from? It shows in no uncertain terms how the bad interpretations of 112 started. Even which presumptions made back then are false. Apparently it used to be where deps were making the case short, clear, and convienent rather than the exact arse opposite of what they do today. That is, make the case long, convoluted, and horribly inconvienent by making it a simpler matter to handle very complex issues in a small amount of space/time/writing. They even think that use of deps “reduces” the number of claims, an assumption that, among other things, even this very survey countermands. Heck, they even go so far as to imply that the deps are necessarily classified with the ind and that is certainly not always true.

    Perhaps the most remarkable thing about this peice of reading it that it, once and for all, explains why the amendment to 112 contradicts the portions in the 2nd paragraph. Apparently they felt that there was need to make sure that everyone understood that the dependent claims needed to be considered individually on their merits, since presumptively the office had been taking the correct view on deps in that they were either not further limiting of the subject matter which the applicant regarded as his invention or the ind was invalid since it did not particulary point out and claim the subject matter which the applicant regards as his invention. Unfortunately, that band-aid of an amendment did nothing but confuse the issue by supposedly mandating in a round about way that the deps are to be addressed on their merits instead of be treated as they would be under the statute. Then we notice that one small portion in the paragraph that says … “if the nature of the case admits”. Thanks for making my entire case for me JD.

    I thank you for bringing this to my attention JD, I admit, I was ignorant of how this fallacy was born, and it was very difficult to argue against it without a proper understanding thereof. It is enlightening to read a second hand accounting of the actions taken and the false justifications made in support thereof. Perhaps now that we can see that the justifications made are indeed false then awareness will increase and we can get the courts to overthrow this remnant of badly worded, horrendously counter-productive to the advancement of the arts, law.

  34. 72

    Time is too short to address the deps atm, but pds’s little antics are all too hilarious. Because a wiki says that 103 directly refutes the flash of genius test (or more likely some new variation thereof) it must be so …

    I’m aware that such has fallen into disfavor pds, you hardly have to cite anything. Even so 103 saying what it does will hardly stop a SC determined to implement more of the same should they become so once again. It’s very hard indeed to pull anything of substance out of “patentability shall not be negatived by the manner in which the invention was made.” that is so set in stone and relevant to making a showing of something beyond the skill of the calling mandatory and it would take but the stroke of a couple of judicial pens to set it to be so once again.

    What’s really funny is this wiki’s section on obviousness in the US

    link to en.wikipedia.org

    “One of the main requirements of patentability is that the invention being patented is not obvious, meaning that a “person having ordinary skill in the art” would not know how to solve the problem at which the invention is directed by using exactly the same mechanism.” L O L, all this time I never knew that was what it was, in that case, nearly all my cases are completely obvious!

    As for countries with strong developing investment in R&D without strong patent protection in place one only need to look to China as they emerge from communism of the worst sorts into a more free market. There is massive investment, many of our companies are jumping ship to go there despite hardly any protection. Perhaps you hadn’t heard, they’re one of the stronger cases for showing that strong protection (they are trying to implement it and have it enforced better) follows strong innovation rather than spurring such. I wonder how long it will be before they get their act together and join us in the league of legal monopoly nations? Truth of the matter is, companies will always be pouring in $$$, the only question is do they keep it secret or not?

    MM, just put your hypo in real example form. Doesn’t have to be a drawn out one. Just make an example. I don’t believe it makes any difference if you put it in as a dep at first or not, I will restrict it if the subject matter warrants whether or not it’s a dep at first or new ind. later. Same goes for new matter situations, except that a dep could help you to not be a du mb ar se and forget to provide original writen desc of some part of your invention. In that sense sure, they can help you, I don’t believe I’ve suggested that they wouldn’t help in the instance that you are so stupd you can’t even write down the invention in the spec.

  35. 71

    “”David J. French,

    I would note one danger of dependent claims in EPO practice.
    It is my understanding that if your claims are, say:

    1. widget A.
    2. the widget of claim 1, plus B.
    3. the widget of claim 1, plus C.

    and you want to amend to recite widget A plus B plus C, that this particular amendment might be considered as not described.””

    If widget a + b + c is a feasible combination, then claims as filed should have read

    1. A
    2. A + B
    3. A + C or A + B + C = A + (B and/or C) = A plus any of B and C

    1. A
    2. the thing of claim 1 + B (= a + b)
    3. the thing of claim 1 or 2 + C (=a+(bORc)) [non-exclusive OR, in accordance with conventional practice)
    [ie = (a + c) or (a + b + c)

    A + B and A + C do not specifically include (although not excluding) A + B + C.
    b and c could be alternatives rather then complementary

  36. 70

    “Do you think companies/univs(gov) in countries without strong IP don’t invest in research? Have you done any research on that?”

    Please start naming those countries, without strong IP law, with companies/universities doing a lot of R&D the last 10 years … this should be amusing. Face it 6K … rational people/companies don’t share your i diotic ideas.

    “You cite that patentability is not to be negatived by the manner in which the invention was made. And that’s completely consistent with the holding in Cuno. In Cuno all they say is that it must show the flash of genius instead of ordinary skill. That doesn’t say anything about negativing patentability, but merely a lack of positiving patentability and a lack of showing what an application must show (i.e. a quality which is to be inherent to all patentable applications, i.e. whatever it is you have there is not an invention if it doesn’t show x). There are attorneys that agree with this view. There are even some that agree with this view that I get apps from. I really like these apps because they 1. make me feel like I Might even be contributing to the progression of disclosed knowledge and 2. show right up front what I’m looking for. In any event, I remember one big thing that the courts had to hold before it made it into the law: obviousness. Further it would be all too easy to interpret the part of 103 you cite as to meaning that it shall not be negatived by the physical circumstances or any other number of such things, if such a thing were needed, it just hasn’t been done yet.”

    6K … sniffing the cheese … scurries around a bit … looks left, looks right … sniffs the cheese again … slowly takes a bite, likes what he tastes, starts to gobble it up … and then WHAM!!

    link to en.wikipedia.org

    Tooooo easy.

  37. 69

    “Now now Malcolm, you didn’t specify that you were going to be adding new matter or generalizing your invention afresh. If you’d have said so then I would have given you a straight up answer.”

    I didn’t “specify”, dude, because whether an amendment is “new matter” or not is a call that you, as the “examiner,” would be making. That was the point I was making with the hypothetical: how would the presence of dependent claims at that point in prosecution affect that call. I know the answer and so do you. Unfortunately for you, the answer contradicts your previous statements about the benefits of dependent claims.

  38. 68

    “So much to go over. So little time. I’ll give a post to each important one.”

    Must you?

  39. 66

    Mutual incomprehension, as between USA and Europe. For example: how can a “multiple dependent on a multiple dependent” be “clear”? How can a plurality of independent apparatus claims constitute a clear and concise definition of a single “invention”? Why can’t I widen during examination, to a scope not contemplated in the WO publication? One thing is for sure. With a serious business requirement (FTO) for clarity within the metes and bounds of the 18 month publication, and with mutual exclusivity separating USA and ROW claim set drafting practice, it’s a problem for international filers.

  40. 65

    As J. Newman explained:

    “In earlier practice, the Patent Office required that ‘each claim should be drawn complete in itself.’ In re Sexton, 1873 C.D. 66 (Comm’r Pat. 1873). By the early twentieth century the Office recognized that for clarity, brevity, and convenience the use of dependent clams ‘would reduce the number of claims and make division between independent inventions clear and easy’ because ‘such a claim would be self-analyzing and self-classifying, and therefore make the examination of the claim easier.’ Ex parte Brown, 1917 C.D. 22 (Comm’r Pat. 1917). Statutory recognition of dependent claims occurred in 1965, amending §112 to recognize dependent claims, amending §282 to state the presumptive validity of dependent claims, and §41 to reduce the fee for dependent claims. Act of July 24, 1965, Pub. L. 89-83, 79 Stat. 259. The legislative Report stated that the purpose was ‘to make clear that dependent claims are to be considered individually on their merits.’ S. Rep. No. 89-301 at 4 (1965), reprinted in 1965 U.S.C.C.A.N. 2315, 2319. In 1975 Title 35 was further amended in connection with the Patent Cooperation Treaty ‘to take account of a more liberal claim drafting practice in permitting multiple dependent claims as provided by the Treaty.’ H.R. Rep. No. 94-592, at 4 (1975), reprinted in 1975 U.S.C.C.A.N. 1220, 1224 (referencing Act of Nov. 14, 1975, Pub. L. 94-131 §§3, 7, 10, 89 Stat. 685, 690-92).”

    So, yes, being able to write “2. An apparatus according to claim 1, further comprising…” is a shorthand method of claim drafting that permits applicants to dispense with having to recite verbatim everything previously recited in claim 1.

    And it permits you to dispense with re-reading everything previously recited in claim 1.

    But you’re too invincibly ignorant to understand that.

    Sigh.

  41. 64

    for the record, having regard to the usual level of banter hereintofore exhibited in the present cyber-spatial context, my PS re e#6k was intended in the spirit of robust fatherly advice, rather than ad hominem abuse, of which there is quite enough around here. I get the feeling that there are few effective father figures in the USPTO these days. All incoming professionals need mentors and examiners are, or should be, professionals. There is a very simple reason why we are seeing issues with both drafting quality and examining quality – it’s a function of volume and complexity, in both the legal and technological spheres.

    If you value and respect Patently-O and its esteemed author, then due respect should be shown in the threads.

    God forbid that a forum of this distinguished nature should require a moderator, like some no-rent chat-room

  42. 63

    Sorry for the wait. Now, to present a brief analysis of D’s survey.

    We have:

    6% of attorney’s that do not significantly recognize the benefit of dependent claims to point the way towards likely allowable subject matter.

    We have 90% of prosecutors significantly relying on dependent claims to actually be the subject matter which is their invention.

    A full 84% of prosecutors appreciate how the doctrine of claim differentiation is brought into play by dependents and presumptively utilize them for doing so.

    73% of prosecutors file dependents to make it easier to explain claims to a jury.

    64% of prosecutors file dependents primarily to specify further non-obvious limitations.

    A FULL 60 mo fin’ percent of prosecutors file dependent claims BECAUSE they were taught to.

    60% of prosecutors file dependents for shts n giggles.

    26% like deps for foreign claim structure filing purposes.

    A mere 29% of prosecutors use dependents as “shorthand” so that claims are easily drafted and managed. (Deps are just shorthand amirite JD?)

    21% are bozos practicing law how uneducated clients feel they should.

    15% of prosecutors do not understand restriction requirements.

    15% of prosecutors are just plain dumb, have forgotten that loose correlation does not equal causation, and believe that longer=more valuable. (this appears that this might be the same 15% that do not understand restriction req’s or, in the alternative, haven’t been getting the best ones and have gotten the wrong impression about them).

    Some attorneys feel like they need to explain the invention to the examiner in the claims rather than just writing it out plain as day in the spec in language that is not convoluted. And some attorney’s feel that deps make it easier to read claims. Finally, some attorneys capture entirely new inventions, that they deem minor, in dependents (these are the guys getting deps ripped away from inds by people like me). Finally some attorneys like tradition and keep in mind international concerns.

    So much to go over. So little time. I’ll give a post to each important one.

  43. 62

    “And I deplore any commentator who descends into ‘ad hominem’ criticism of another commentator.”

    And I deplore any commentator who misuses fancy Latin phrases. (I’m on a mission now…) Mr. French, by misusing the term “ad hominem,” you expose yourself to actual ad hominem arguments. For example, I might say, “Arguments made by those who don’t know what ‘ad hominem’ means are necessarily incorrect.”

    Check out link to plover.net for more fun and games on ‘ad hominem.’

  44. 61

    David J. French,

    I would note one danger of dependent claims in EPO practice.
    It is my understanding that if your claims are, say:

    1. widget A.
    2. the widget of claim 1, plus B.
    3. the widget of claim 1, plus C.

    and you want to amend to recite widget A plus B plus C, that this particular amendment might be considered as not described.

  45. 60

    David French writes:

    As a preliminary observation, I embrace the initiatives of Examiner e#6K to contribute to these commentaries. Right or wrong, I am enriched by having a better understanding of his point of view.

    And I deplore any commentator who descends into “ad hominem” criticism of another commentator. Please, criticize their ideas and not who they are.

    Considering EuroDisney’s observations:

    “Thinking in the wake of the newly increased claims fees is to have as many claims as you are willing to pay for and to include fully worked up language for alternative/additional claims in the description – you might still have to file a divisional if you try to bring such material out of the description and into the claims (unsearched matter…), but at least you should avoid added subject matter objections.”

    I note in particular the statement: “but at least you should avoid added subject matter objections.”

    This is a powerful reason to have dependent claims: they serve as a check-off list to make sure that you have disclosed adequately every feature that might form an integer of a valid claim. If you’re going to claim it, make sure you have disclosed it. So easy with cut-and-paste!

    Of course the independent claim is critical. Of course the independent claim defines the broadest monopoly. Of course dependent claims are redundant, (except for claim differentiation purposes), if the independent claims are valid. Hopefully the independent claim is also infringed.

    But the dependent claims serve as a backup if the independent claim fails for want of novelty or lack of inventive step.

    I have been shocked, however, in European prosecution to find out that, after filing, it is very difficult to broaden claim coverage beyond the boundaries of the claim coverage originally sought. I do not understand how a “new matter” objections can be raised when a claim is modified after filing, for example, to delete “central” from a phrase “central hole” when the invention functions perfectly well with a hole, whether central or not. After all, there was always a hole described in the original disclosure.

    Perhaps my shortcoming was a failure to move such a modifier as “central” out of the independent claim and into a dependent claim during the original drafting. That may be another reason for having dependent claims, to serve as a catch-bucket for over-specifying elements in an independent claim. Move such elements to a dependent claim.

    Then, having used this interim dependent claim as a guide to ensuring that there is support in the disclosure, I can subsequently drop the claim as not likely introducing a limitation that would survive invalidation of the preceding claim(s).

  46. 59

    “Exactly. I raised this exact point in the previous dependent claim thread in a hypothetical question to e#6k and he provided an answer that was incomprehensible to the extent it was not glib.”

    Now now Malcolm, you didn’t specify that you were going to be adding new matter or generalizing your invention afresh. If you’d have said so then I would have given you a straight up answer.

  47. 58

    Your exercise will not be necessary since I already do precisely what you refer to. Abstracts and summaries (I usually ha te summaries btw, they’re either the claims rewritten, or are verbose and hard to read) are often bothersome to read up front and many times get tagged into the middle of examination. Many times I’ll read the spec first, and many times I’ll read the claims first. When I read the spec first I can usually anticipate what the claims will be, every now and again I makeup in my mind a claim that ends up being more broad than their ind. and sometimes I make one that is less broad. Now, I’m pretty sure that even in the instances where I make one that is less broad I could have made a broader one. But even if I did make a more narrow one then I hardly feel that your malpractice thing would hold up since I see new cases filed making up for the failings of other cases all the time. Some people do it intentionally even. I’m pretty sure that I could do the claiming just fine, what I would not be so good at is believing what I was doing was a good thing.

    For instance tonight I examined a case and happened to read the claims first (which usually pays off since I’ll probably have to restrict the case) there were very few claims and looking through the drawings I still wonder why they didn’t file more claims under the current policies and I could point out exactly what subject matter I would have claimed and even decent wording to claim it. I’ll not lie to you, if I were an attorney I would file more deps for answer “other”: giggles, and in some instances shts, if no other reason. And also, in my art it’s not really much of a separation from the “commercial” embodiment, it’s always is what it is.

    Alright lets keep this thread on deps.

  48. 57

    Eurodisney:

    I appreciate your comments, and they match my observations (at a former in-house position I was responsible for concurrent patent prosecution in dozens of countries). As I am sure you are well aware, the realities of prosecution before the U.S. Patent Office, and the realities of subsequent patent enforcement in the U.S. Courts, do not allow us to conduct preparation or prosecution much different than the “best practices” discussed above. Further, to an extent even those outside the U.S. are entrenched in the idiosyncracies of their own systems. For example, I would assert that the scope of multiple dependent claims depending on other multiple dependent claims, sometimes resulting in hundreds if not thousands of “groups of claimed features” (for lack of a better term), are not easily (or even at all) understood. Further, of course there is not anything inherently confusing resulting from the existence of multiple independent claims for the same class of invention – U.S. practitioners, patent examiner, courts and juries have shown countless times that this is true.

    On a somewhat European related note, the rumor is that the U.S. Patent Office’s new Appeal Rules will be published around June 1. Ultimate implimentation of the rules is expected to resemble filing a paper in the chancery courts. I am not looking forward to filing my next appeal brief in “in re Jarndyce.” Get ready to file your “drawing analysis section” appendix!

  49. 56

    You’re taking the base of what I say and construing it in too narrow terms. Trolls are abusing the system, as you well know, by getting patents on One clicks and methods for displaying jpegs etc. etc. and then asserting them for $ against someone who just happened to have the exact same obvious idea and turn it into something useful. Corporations are by just slinging money and whatever ideas they happen to have against the pto until it issues. As well as practicing the good ol’ spend money and overclaim until you get it down to where he can’t find art method. There are other people in line you know, claim an invention and get out of line eventually please. My example of someone coming in and wanting to register a truck that they don’t really know anything about and having to go in iterative steps until his form is filled out is all too applicable.

    The “proper” inventors can be any of the above, and are any of the above. When they treat the system right and stop playing expensive games etc.

    Yes I think they’d put $ into research if they couldn’t protect it. Do you think companies/univs(gov) in countries without strong IP don’t invest in research? Have you done any research on that?

    Yes, we’d be in quite a predicament if the Chinese could just make all our products and ship them in. You know why? Hardly any tariffs, the things that are there to protect US markets.

    As to your best points, SC being misguided stands out. You cite that patentability is not to be negatived by the manner in which the invention was made. And that’s completely consistent with the holding in Cuno. In Cuno all they say is that it must show the flash of genius instead of ordinary skill. That doesn’t say anything about negativing patentability, but merely a lack of positiving patentability and a lack of showing what an application must show (i.e. a quality which is to be inherent to all patentable applications, i.e. whatever it is you have there is not an invention if it doesn’t show x). There are attorneys that agree with this view. There are even some that agree with this view that I get apps from. I really like these apps because they 1. make me feel like I Might even be contributing to the progression of disclosed knowledge and 2. show right up front what I’m looking for. In any event, I remember one big thing that the courts had to hold before it made it into the law: obviousness. Further it would be all too easy to interpret the part of 103 you cite as to meaning that it shall not be negatived by the physical circumstances or any other number of such things, if such a thing were needed, it just hasn’t been done yet.

  50. 55

    “Good dependent claims are vital – if your initial independent claim falls then it’s much easier to amend by combining in an existing dependent claim and increasingly difficult to amend based on the content of the description. Two reasons: amending to bring in subject matter that hasn’t already been searched will likely require the filing of a divisional; trying to generalise from features of the described embodiments will likely fall foul of “added subject matter” (embracing embodiments not disclosed in the application as filed).”

    Exactly. I raised this exact point in the previous dependent claim thread in a hypothetical question to e#6k and he provided an answer that was incomprehensible to the extent it was not glib.

  51. 54

    Other European patent attorneys reading this discussion will probably, like myself, find it very interesting, if a little bizarre. That being as it may, I offer the following for the benefit of our US colleagues.

    It should be well understood that claims drafted for the USPTO often don’t fit well with European Patent Office practice – multiple independent claims in the same category, repetition of dependent claims (avoidable using multiple dependencies), different ideas about unity of invention, sheer number etc.

    Since 1 April 2008, the EPO official fees for “extra claims” are now EUR 200 for each claim over 15. From 1 April 2009, it will be EUR 200 per claim for claims 16- 50 and EUR 500 per claim in excess of 50.

    “Rule 43(2)
    Without prejudice to Article 82, a European patent application may contain more than one independent claim in the same category (product, process, apparatus or use) only if the subject-matter of the application involves one of the following:

    (a) a plurality of interrelated products,
    (b) different uses of a product or apparatus,
    (c) alternative solutions to a particular problem, where it is inappropriate to cover these alternatives by a single claim.”

    [Article 82
    Unity of invention
    The European patent application shall relate to one invention only or to a group of inventions so linked as to form a single general inventive concept.]

    So – what you need is a compact, cohesive claim set that gets to the nub of what you think is the inventive concept. US reluctance to discuss the nature, object or relationship to the prior art of an invention, or even to use the word “invention”, in a specification is no help at all in EPO examination, which is deeply entrenched in identifying the differences between the claim and the closest prior art, identifying the “objective problem” solved by those differences, and then asking whether the solution is obvious. The shotgun approach of throwing many different combinations of features at the wall and seeing what sticks just doesn’t cut it at the EPO (it doesn’t seem to cut it at the USPTO any more either…).

    Good dependent claims are vital – if your initial independent claim falls then it’s much easier to amend by combining in an existing dependent claim and increasingly difficult to amend based on the content of the description. Two reasons: amending to bring in subject matter that hasn’t already been searched will likely require the filing of a divisional; trying to generalise from features of the described embodiments will likely fall foul of “added subject matter” (embracing embodiments not disclosed in the application as filed).

    Thinking in the wake of the newly increased claims fees is to have as many claims as you are willing to pay for and to include fully worked up language for alternative/additional claims in the description – you might still have to file a divisional if you try to bring such material out of the description and into the claims (unsearched matter…), but at least you should avoid added subject matter objections.

    Hope this is of some interest/help to those filing and prosecuting outside the USA.

    PS. As a long-time reader of this blog, a message to e#6K: son, you need to look up the word “humility” then get down to your nearest convenience store and buy the biggest bottle of it that you can find. We’ve all been to adult social events where there’s some precocious kid who insists on trying to participate in grown-up conversations. They’re cute for a while and might even provide a fresh perspective on some things, but if they don’t know when to quit they eventually become an intolerable annoyance until the urge to commit infanticide becomes all but overwhelming… I recommend ostracism with extreme prejudice.

  52. 52

    “So now doing the right thing conflicts with money. Seems an ethical consideration to me, and one that’s completely up to you to make.”

    Actually, the right thing is to try to get the largest monopoly that I reasonably can for my client based upon his invention, not to write a 1 claim application directed to a very specific embodiment to make examination easier on you.

    “I’m not going to say that it isn’t. But that doesn’t mean that the inventor regards that extra subject matter as his invention now does it? I see you don’t knowingly draft claims that read on the prior art. Do you knowingly draft claims that do not comply with 112 2nd? Have you knowingly assisted in changing what the subject matter the applicant regards as his invention to be something different? All ethical considerations.”

    Once you explain how the law works and ask the inventor some questions, they generally will understand and regard that extra subject matter to be part of their invention. If I explain a bit about patent law to an inventor and ask him some simple questions and as a result he changes the scope of what he tells me his invention to be, I haven’t done anything wrong. You’re suggesting that inventors be limited to the rights they THINK they have, not what they’re entitled to under the law (but may not realize).

    Perhaps we can apply this to other areas of the law. If someone thinks they have no legal recourse against their employer for wrongful termination, then they should have no legal recourse. If someone thinks they can’t sue for breach of contract, then they can’t. As you will see, this is ridiculous.

    Of course I comply with 112.

    “Now lowly, you know I understand how you lawyers have manufactured value out of a patent system meant to protect what inventors regard as their invention. No need to bring that up.”

    If inventors could only protect the one specific embodiment they prototyped, we’d have no patent system because nobody would file. Everything would be kept as a trade secret. We grant a monopoly to inventors that is supposed to be worth something in exchange for their public disclosure. No value to that monopoly (because it’s ridiculously limited and anybody can design around it) = no incentive to file patents = no public disclosure = bad.

    “I.e. some clients feel the subject matter which they regard as their invention is broad. No problem, but that doesn’t excuse making claims broader than what the applicant regards as his invention, nor putting the idea in his head that the subject matter that he regards as his invention is broader than what he says he believes it is. It’s a darn shame the courts haven’t managed to discourage this somehow yet.”

    You aren’t seeing the reality that the client is usually the assignee, not the inventor. The assignee may want the broadest possible patent that can be drafted from the inventor’s disclosure. Rarely does the inventor himself dictate how broadly we draft claims or the strategies we use in prosecution. Also, as to your comments about the subject matter the inventor regards as his invention, read my above comments.

    “To date I’ve not been “hostile” to any prosecutor except when they’re willfully displaying a greedy attitude towards subject matter that isn’t their applicants.”

    Is this your new thing to harp on? You want attorneys to NOT advice clients about the law and how patents work? I’m NOT supposed to tell a client that if I only write claims directed to one specific embodiment that someone could make simple changes and he would have no protection? They don’t usually realize this at all.

    Your schtick about subject matter of the invention and dependent claims shows a clear misunderstanding of why there is a patent system, how it works, how litigation works, etc. If the current crop of examiners all think like you do, I am worried about the future of innovation in this country.

    There are plenty of things you could harp on and have a real point about. Not these two. Attorneys who knowingly draft claims that read on prior art. Attorneys who knowingly misrepresent the prior art. Attorneys who write claims that aren’t enabled and don’t comply with written description requirements. The pathetic search software used by the USPTO as opposed to the EPO.

  53. 51

    One of the things that we (examiners) always hear is how little examiners know about the law & that the lawyers really know what the laws are.

    Agent double-naught 7, above, is a very clear example that all you lawyers out there also have a lot of people that do not know the basics, never mind a lot of the more esoteric things.

    Election of species is something that is VERY basic & most of the PTA examiners (been here 2-3 months) that I have talked with already understand.

    Yet, double-naught 7 ranted:

    “I’ve been seeing incredibly annoying restriction requirements based on the figures rather than any analysis of the claims. E.g. “Election of one of the species of Figs. 5-16 is required” in an apparatus case.

    This kind of nonsense seems procedurally improper to me, but I’m not aware of a clean kill in the MPEP/rules/laws.

    Has anyone had success in traversing this kind of BS? Or is it just one of those things that examiners can get away with because nobody wants to spend years dorking around in the office of petitions.”

    This is the kinds of things that we examiners have to deal with from your side. Keep it in mind next time you complain about what an examiner is doing. We get garbage & incompetence from your side as well.

    thanks,

    LL

  54. 50

    E6k wrote:

    “In the mean time, let’s have some prosecutors defend putting deps in . . . [because the] PO does not charge extra fees (so why NOT add more claims lol?) I’d love to hear about that.”

    E6k, as I said, when large patent portfolios are valued by some commercial entities, every thing else being equal, higher values are assigned to patents with more dependent claims. As far as I know, no valuation is lowered as a result of more dependent claims. I keep this in mind when I am prosecuting patent applications for large companies. If you are HP, GE, IBM, etc., this can make a huge difference in the value of the company, stock, etc. Thus, it is good practice, all things being equal, to include 20 claims because the Patent Office allows you to file 20 claims without additional fees. Otherwise, it is money left on the table, so to speak.

    Unlike some of the others, who I think are wrong to do so, I won’t try to insult you or criticize you. I was only at the Patent Office for one year, but at the end of that year, I thought I had a pretty good understanding of what it would be like to be a patent attorney. I didn’t. Experience is the real teacher. Even if one makes a career out of the Patent Office, he still won’t understand “the other side” of prosecution. You are inexperienced because you have not seen the other side. That may change or it may not. Neither is better.

    I do think it is disingenuous to argue that “free” dependent claims contribute to any backlog. We both know that virtually all Examiners perform a “backward” calculation to determine how many cases are going to be examined by them in a biweek. The backward calculation uses the number of work hour and number of hours paid overtime the Examiner would like to work, and the desired production level the Examiner would like to obtain that biweek (95%, 100%, 110%, 130%), to determine the number of counts the Examiner needs. The Examiner paces himself and/or “slacks” a sufficient amount to obtain that many counts. In the vast majority of cases, filing cases with fewer claims would result in the Examiner increasing one or both of the time spend preparing an Office Action (with I believe little or no increase in quality or thoroughness, perhaps more solitaire or web browsing between sections of the OA) or more time “slacking.” This is not a condemnation on you – when I was at the Patent Office, fellow Examiner’s used to say that if there was an explosion at the Patent Office in the middle of the day, at least no one would get hurt since everyone would be somewhere else (in Crystal City, the gym and the movies were very popular).

  55. 49

    From your cite: “Indeed in 1941, in Cuno Engineering v. Automatic Devices Corp.[35] the Supreme Court suggested that to be patentable an invention must “reveal the flash of creative genius not merely the skill of the calling”.

    Just shows how misguided the Supreme Court can be. Once doesn’t need to be a genius to be an inventor, nor have a flash of genius. Also remember that “[p]atentability shall not be negatived by the manner in which the invention was made.”

    BTW: Exactly how do corporations and trolls abuse the system?

    Just so we’re clear, a corporation invests money in R&D (e.g., IBM, based upon this article from 2003, spent $5.1B in research in 2000 link to interesting-people.org) to make a return on that money

    Do you really think IBM, or any big company is going to spent billions!!! on R&D if they cannot protect their research? The manufacturing bases in countries like China and India can reproduce just about any product in short order for much cheaper than it can be produced in the U.S. Some of the patents that are obtained are very narrow, some are very broad. However, if a corporation is entitled to the patent, then it isn’t abusing the system.

    As for “trolls” (which I take it to mean non-practicing entities that assert patents against others), who do you think most of these people are??? From the article I just cited, universities, in 2000, $28.1B in research. Do you think that the universities would spent that money if they had no expectation of a return on investment. Granted, universities likely don’t get the money they’ve invested back, but that doesn’t mean that are OK with giving away freebies either.

    Funny, you critize corporations (i.e., entities typically with enough resources to practice the invention) and trolls (i.e., entities, such as solo inventors and universities that don’t have the resources and/or mission to practice the invention). You don’t leave much in the way of “proper” inventors do you???

    “Likewise it would have been cake for a court to hold that structural limitations in a method claim do not contribute to the “method” but rather to the thing that is either being used to perform the method or the thing being made by the method and thus are not encompassed in “method steps” which must be used to distinguish a method claim.”

    You really don’t have an internal filter when you write? Without relating the method to something tangible or recognizable (e.g., structure), what is left is just an abstract concept? A new use (i.e., method) for an old tool is patentable. However, it is very difficult (if not impossible) to claim the method without also referring to the tool.

    Since you are so interested in patent law and trying to expand your horizons, perhaps a good exercise for you (which would be more productive than reading or posting on this board) would be to take the next new application you get (don’t read the abstract, summary of the invention, or the claims) and try your hand at drafting claims to the invention described. When you draft those claims, remember that if the application gets allowed and the client later determines that broader claims could have been obtained that you may have a malpractice suit coming your way, and see what you come up with. If you are good, as you are writing the claims, you are going to want to balance putting too many claim limitations (which will make it harder to enforce) versus putting too little claim limitations, which will bring in more art than intended. You should also think about how somebody might do something slightly different than the commercial embodiment proposed by the inventor and how you can claim that as well.

  56. 48

    I stand corrected. MPEP 809.02 is perfectly clear.

    The case at hand has generic independents and species-specific dependents, and a RR can be made in such cases (which is undone if the generic claim is allowed).

  57. 47

    Agent 007

    It looks like the election of species requirement may have been proper. You may want to consider (if you don’t already have them) adding independent generic claims and dependent claims to the species.

  58. 46

    You know pds, I’ll be honest, I would expect that to happen too. Except for one thing. I pretty much already understand the position that you take on most issues, and I understand in some cases some of the caselaw on which they are founded. He11 I can even figure it out when I don’t know which you’re talking about. Problem is, no matter if it’s 100 yrs old, if I disagree with it I disagree with it. I’m quite persuadable on issues if you can show me a not-shaky reason why your position is justified rather than someone just saying “oh, well I’ve decided this is how it should be”. Just because it’s established, relied on every day, and ingrained in every person in the whole industry does not mean that differing positions cannot be taken.

    It would have been cake for a court to have overturned the current use of deps long ago, but there was no real need, they were not abused (often), usually you were looking at 1 maybe 2 deps in the applications that had them. Then we wouldn’t be seeing 100+ deps in cases. Likewise it would have been cake for a court to hold that structural limitations in a method claim do not contribute to the “method” but rather to the thing that is either being used to perform the method or the thing being made by the method and thus are not encompassed in “method steps” which must be used to distinguish a method claim. Then we wouldn’t be seeing method claims to go along with every product someone produces that differs only in that the method is done with the materials of the new product.

    Oh hey, btw, does anyone know where I could get a copy of the patent laws that were in effect around 1940? From what I can tell it would be these (slightly amended):

    /media/docs/2008/03/Patent_Act_of_1836.pdf

    I know how you love caselaw, what do you say about Cuno Engineering v. Automatic Devices Corp? I was reading about some history the other day: link to ladas.com

    All the basic underpinnings were decided in a time quite different from the one we inhabit. Corporations and trolls had not started to abuse the system as badly (so far as I know, correct me with citations if you like, hopefully from before 1960 or so). Time to market objects on a scale of the whole US would have been huge, etc. etc.

    Oh and you know pds, even if I did suddenly do a flip flop, I would never give up being e6k. If it turns out as you suggest, perhaps I’ll even become synonymous with “getting older and wiser” or something. As in you tell some fresh examiner “you’re such an e6k”.

    Agent 007, if they’re separate not overlapping designs then guess what? They’re a species and they can be restricted (unless the differences are obvious and you’d like to tell us so). I’m not sure how you plan to get a clean kill on something that was a clean kill to your overreaching app. claims and turned them into one invention. Perhaps you’re just a bit new and you’re just starting to get those?

  59. 45

    “agent007″ (maybe that should be agent naught naught 7” (check your Beverly Hillbillies),

    That sounds like an ELECTION OF SPECIES!!! See MPEP 806.04, 806.04(b)-(i), 808.01(a) and particularly 809.02(a) and Form paragraph 8.01.

    A species can be made in an apparatus case or method or about anything else.

    The examiner is NOT required to identify which claims correspond to which disclosed species (see the FP examiner notes). The examiner is only required to point out the different figures that correspond to the different disclosed embodiments. While the examiner “can” suggest which claims they think read on which fig (and corresponding species) it is not at all required.

    So, assuming that the examiner did say “Election of one of the species of Figs. 5-16 is required” and nothing more (e.g., something like ID figs 5-8 as one species, 9-13 as a 2nd and 14-16 as a 3rd species) that would mean that you have 12 different disclosed species and that each fig corresponds to a different disclosed species.
    Oh, also it is not necessary that you have claims for each of those species, only that you have multiple species claimed. You might disclose 14 species and only be claiming 2. It is up to you to explain which claims are supposed to read on which species.

    Based on what you said, it sounds perfectly by the book.

    Read the above sections of the MPEP. You might be surprised.

    thanks,

    LL

  60. 44

    I have a question that’s somewhat related to dependent claims.

    I’ve been seeing incredibly annoying restriction requirements based on the figures rather than any analysis of the claims. E.g. “Election of one of the species of Figs. 5-16 is required” in an apparatus case.

    This kind of nonsense seems procedurally improper to me, but I’m not aware of a clean kill in the MPEP/rules/laws.

    Has anyone had success in traversing this kind of BS? Or is it just one of those things that examiners can get away with because nobody wants to spend years dorking around in the office of petitions.

  61. 43

    Can a damages expert step in here? Can’t dependent claims be used to enlarge the scope of damages? If claim 1 is directed to a new ratcheting mechanism, then wouldn’t a dependent claim 2 directed to a wrench incorporating the ratcheting mechanism of claim 1 enlarge the scope of damages? Damages are to compensate for infringement of the invention. Infringing the ratchet mechanism would result in less lost profit than infringing the wrench, no?

  62. 42

    “in your case, that would be a waste of perfectly good dynamite.”

    I respectfully disagree. I couldn’t think of a better use … not that I’m advocating violence towards 6k … he just needs a good wakeup call as to reality and to patent law. One day he is going to wake up from his Dudas-induced dream world and realize that the positions he is constantly taking go against decades-old case law and that he sounds like a complete i diot when he does so.

    My guess is that we are stuck with him until he finally decides to go to law school. I suspect that he’s going to be so pumped about showing those layers a thing or too that his posts will be just bubbling with excitement. Anyway, sometime between his first and second semesters of his first year, we’ll get this one sentence post “I am soooooo sorry, I am an i diot.” and that will be the last thing he ever posts under e#6k.

  63. 41

    Perhaps you’re right about that somebody, perhaps I’m wrong about the contractual obligations under different contracts etc. but, in either case, the applicant /= the assignee. And also, there’s very little required to change my mind. I’m much like the jury here: link to youtube.com just show whatever it is to me straight from the law and you’re golden. Look at that vid, it’s about a lawyer that didn’t even pay his taxes and got off scott free. Now, tell me, did he twist the system or do no private citizens HAVE to pay taxes?

  64. 40

    you remind me of an associate i knew at a previous firm. it was said of this associate, “it takes dynamite to change his mind.”

    in your case, that would be a waste of perfectly good dynamite.

    “if for some reason his legal obligation to assign the right to the assignee is disolved (for who knows what reason) then the patent rights go to him, not to an assignee that applied for the patent in lieu of the inventor.”

    not content with rewriting patent law? gonna move on to rewriting contract and property law?

    LOL

  65. 39

    also I was going to say “countries around the world…” but changed it later lol, contries /= country’s.

  66. 38

    “In that case, you may have to determine whether the attorney is suggesting/recommending nothing more than obvious variants that one of ordinary skill would suggest/recommend.”

    What if he was SF? Does that justify the leading question/suggestion and another taking credit for the results thereof? Bottom line is, we have some of the countries most intelligent people (presumably the best of the best lawyers) adding in all the “obvious” variants and making the office do the work to find art to refute them, as well as make a legal case against them. W T F is that? That’s attorneys being the cancer that eats at the expeditious resolution of this huge a backlog.

  67. 37

    “I’d be drafting low value patents if I did anything but.”

    So now doing the right thing conflicts with money. Seems an ethical consideration to me, and one that’s completely up to you to make.

    “The invention is more than just the one specific embodiment the inventor prototyped.”

    I’m not going to say that it isn’t. But that doesn’t mean that the inventor regards that extra subject matter as his invention now does it? I see you don’t knowingly draft claims that read on the prior art. Do you knowingly draft claims that do not comply with 112 2nd? Have you knowingly assisted in changing what the subject matter the applicant regards as his invention to be something different? All ethical considerations.

    “I don’t think you really understand what gives a patent value — it’s broadness, both in terms of subject matter and in terms of who it enables you to sue / grant a license to.”

    Now lowly, you know I understand how you lawyers have manufactured value out of a patent system meant to protect what inventors regard as their invention. No need to bring that up.

    “Some clients are gung-ho about going as broad as possible and if I don’t want to do that, they’d just find someone who would. ”

    I.e. some clients feel the subject matter which they regard as their invention is broad. No problem, but that doesn’t excuse making claims broader than what the applicant regards as his invention, nor putting the idea in his head that the subject matter that he regards as his invention is broader than what he says he believes it is. It’s a darn shame the courts haven’t managed to discourage this somehow yet.

    “I also am saddened by your hostility toward prosecutors. It’s not prosecutors vs. examiners. We’re supposed to work TOGETHER to further technology and innovation in this country, not against each other.”

    To date I’ve not been “hostile” to any prosecutor except when they’re willfully displaying a greedy attitude towards subject matter that isn’t their applicants. Well, to be complete I should say “or otherwise not abiding by the law, or otherwise displaying hostility towards the officially office sanctioned methods of dealing with issues in cases”.

    “The answer might then be … “well, now that you invented it, I use Z” but any species within the genus Z could be used; I just happen to use Z” because of this certain advantage.” “Thanks Mr. attorney for inventing that for me.”

    fixt that for you pds.

    “A good attorney will take a description of an invention and then tease out from the inventor the important parts, the somewhat important parts, the necessary parts, the optional parts, the preferred parts and the various uses of the invention. Most inventors, particularly those that are not experienced with the process, don’t understand the difference between the subject matter they regard as their invention and the inventive concept.”

    also fixt.

    “Who exactly are you arguing with?”

    Free Agent iirc then Somebody.

    “Someone else pointed out that the U.S.’s failure to consider assignees as “applications” is willful blindness.”

    Maybe that’s what free agent pointed out, sorry I didn’t get that from what he said. Guess what though, the US system is designed that way for one reason, because we want to reward the inventor not the assignee, and if for some reason his legal obligation to assign the right to the assignee is disolved (for who knows what reason) then the patent rights go to him, not to an assignee that applied for the patent in lieu of the inventor.

    This thread is about dep claims and the ridiculousness or ridiculous justifications thereof. To help ensure this thread stays on track I will not be entertaining responses to this post by other than lowly and only in re the comments I made to him. Also, the rest of the lambasting of the OP will commence later.

    In the mean time, let’s have some prosecutors defend putting deps in to “help stop restriction lol” or PO does not charge extra fees (so why NOT add more claims lol?) I’d love to hear about that.

  68. 36

    “When the attorney suggests the specific alternatives (e.g., in a leading question or just a flat-out statement), the inventorship line blurs.”

    Which is another reason not to get too excited about the applicant/assignee distinction. (I say this at the risk of raising the ire of Michael R. Thomas, possibly the world’s only inventor of signifence.[sic])

    In a world where the assignee is the applicant (i.e., the rest of the world), this doesn’t raise any concerns at all. The attorney is (usually) the assignee’s agent – his contribution accrues to the benefit of the assignee. With regards to U.S. law, it seems to me that hyper-attention to inventorship does nothing to further the policies behind our patent law.

  69. 35

    “Simple, simple stuff, but apparently neither you nor MM understand this.”

    In your hypo, the attorney is asking the inventor for alternatives using an open ended question. In the other hypo, the attorney is suggesting the specific alternatives. When the attorney suggests the specific alternatives (e.g., in a leading question or just a flat-out statement), the inventorship line blurs. In that case, you may have to determine whether the attorney is suggesting/recommending nothing more than obvious variants that one of ordinary skill would suggest/recommend.

  70. 34

    “I would agree with that as well, and now that lowly does as well I presume that he’ll start drafting applications with claims that ONLY particularly point out and distinctly claim what the inventor regards as his invention rather than what the scope of his monopoly may or may not include. If he wasn’t already, since he is one of the better attorneys on this board.”

    EK6,

    I appreciate your kind words. In any case, I may have to lower your opinion of me, because I draft claims to obtain for my client the largest monopoly reasonably possible. I’d be drafting low value patents if I did anything but. I do however never knowingly draft a claim that reads on the prior art.

    The invention is more than just the one specific embodiment the inventor prototyped. Note that I said reasonably possible: if my client manufactures tires, I’m probably not going to draft claims that try to get protection for running shoes as well. That can make prosecution a nightmare and can result in angry clients when they have spent $30k and don’t get a patent. Then again, it can result my client being angry when a running shoe manufacturer uses the same rubber composition as my client and the client wants to know why I didn’t draft the claims broadly enough. It’s a balancing act deciding how broad to go, and sometimes it’s not my call at all. Some clients are gung-ho about going as broad as possible and if I don’t want to do that, they’d just find someone who would.

    I don’t think you really understand what gives a patent value — it’s broadness, both in terms of subject matter and in terms of who it enables you to sue / grant a license to. A very narrow patent that only claims one specific embodiment would be worthless because it would be easy to design around.

    I also am saddened by your hostility toward prosecutors. It’s not prosecutors vs. examiners. We’re supposed to work TOGETHER to further technology and innovation in this country, not against each other.

  71. 33

    “If the applicant doesn’t want to section off an entire area of research/innovation then so be it, don’t make/coerce him.”

    6K … you are an i diot, plain and simple. One of the questions any good patent attorney should ask of their client is comparable to “could this X, Y, Z”, FGH inventive idea be used for another application?” In many instances, the question is: “why, as a matter of fact, it could be used for other things. For example, X, Y, Z” could be used with MNB and IOP.” Another question, “you say you use Z”, is there any alternatives you could use for Z that would still work?” The answer might then be … “well, now that you mention it, I use Z” but any species within the genus Z could be used; I just happen to use Z” because of this certain advantage.”

    Thus, wheras the inventor once thought the invention was Z, Y, Z”, FGH, you’ve now developed the following claims:
    1. A device comprising Z, Y, and Z.
    2. The device of claim 1, further comprising FGH.
    3. The device of claim 1, further comprising MNP.
    4. The device of claim 1, further comprising IOP.
    5. The device of claim 1, wherein the Z is Z”.

    Simple, simple stuff, but apparently neither you nor MM understand this. Actually, I think MM understands it, he is just throwing out his useless comments because that is what he enjoys doing.

    A good attorney will take a description of an invention and then tease out from the inventor the important parts, the somewhat important parts, the necessary parts, the optional parts, the preferred parts and the various uses of the invention. Most inventors, particularly those that are not experienced with the process, don’t understand the difference between the commercial embodiment and the inventive concept. When you ask them to describe the invention, they give you the commercial embodiment and not the underlying invention.

    This is why having inventors and examiners work together to write the claims is a BAD, BAD idea. In the above example, the eventual independent claim mightread Z, Y, Z”, FGH, wherein the FBH is connected to Z” with a counter-sunk philips-head screw having a M10 thread. As I noted in a prior thread, just any i diots can write pictures, any i diots can design around picture claims.

  72. 32

    e6k,
    Who exactly are you arguing with? Nobody here has claimed that assignees qualify as “applicants” as the term is defined by U.S. law. Rather, someone pointed out that in the rest of the world, the “applicant” includes the assignees. I believe the point, which seems to have been lost on you, was that the assignees are almost always the interested party during prosecution. Someone else pointed out that the U.S.’s failure to consider assignees as “applications” is willful blindness.

    What WAS claimed above is that your assertion that assignees were ineligible to receive a patent under the terms of Section 101 is ridiculous. As far as I can tell, you’ve attempted to change the subject, rather than to bolster your assertion. Nice strategy. I often see a similar approach in the 3rd, 4th, or 5th office action.

  73. 29

    Hmmm strangly usc 261 further backs me up. “The applicant, patentee, or his assigns or legal representatives may in like manner grant and convey an exclusive right under his application for patent, or patents, to the whole or any specified part of the United States.”

    So now what it should say according to you is “the applicant, or patentee or legal representatives may in like manner grant …”

    where do you get your ideas from? Assignees as applicants. Rofls.

    Notice even in 307 o mpep “Patents may be granted to the assignee of the inventor of record in the Patent and Trademark Office, upon the application made and the specification sworn to by the inventor, except as otherwise provided in this title.” so that a patent may be granted on an APPLICATION made by the inventor. Notice even 37 CFR 3.71. Prosecution by assignee doesn’t say that the assignee is the applicant, they’re merely prosecuting the case. Heck, the owners can even file an application when the inventor is not available, and even THEN I still don’t see them magically becoming the applicant. Why? Because they’re only taking action on the inventor’s behalf.

    Dear god you guys could contort “Yee shall not” into “Yee shall” and get it through a court. A shame really.

  74. 28

    If we want to maximize stock price, we had to know how companies would evaluate our portfolio, and prepare and prosecute based on that knowledge.

  75. 26

    MadProsecutor,

    Who does this evaluation? Are they patent attorneys?

    I don’t see how they could arrive at the conclusion that more claims necessarily means more value if they were in consultation with a patent attorney.

  76. 25

    e6k. You may consider reading 35 USC 261. Your own MPEP section 300 should help in understanding it. Or, you can continue to live in ignorance. Your choice, really.

    Assignment is a transfer of all patent rights. Obtaining a patent, subject to the provisions and requirements, is such a right. My “ridiculous assertion” is written right into the law.

    In the case of the corporate assignee, failing to consider the assignee as the applicant is willful blindness. The rest of the world is way ahead of us on this one.

  77. 24

    somebody,

    What do you disagree with? An assignee is the owner of patent rights but not the one who conceived the invention. If there are dependent claims which recite subject matter not invented by the named inventor(s) the patent could be invalidated.

  78. 23

    One follow up – when I was in-house at a large corporation, we drafted applications based on the understanding that our portfolio would be evaluated by such services. And we adjusted for that. It would have hurt the value of the company if we did not take such things into consideration when preparing and prosecuting applications.

  79. 22

    Please also keep in mind, it is my understanding that some patent valuation groups include number or claims in their analysis, to the point that more claims are better than fewer. You do your client a disservice if, as a result of your patent strategy, their intellectual property portfolio is valued lower than a competitor. This can translate into all sorts of problems for the company (lower stock price, etc.).

    To summarize, I guess the point is this – whether or not more is really better, more is potentially perceived as better (by investors, shareholder, etc.), so therefore, more *is* better. To put it another way, if two companies are otherwise exactly equal, and you help company A prosecute applications with 2 claims, and someone else helps company B prosecute applications with 22 claims, and as a result company B gets the funding and interest that otherwise would have gone to company A, how did you help company A by filing applications with two claims?

  80. 21

    “According to 101 assignees aren’t even eligable to obtain a patent. The inventor is the applicant even if he chooses to assign the rights to another. End of story. That’s an argument I’m prepared to win 100%. Assignees as the applicant is the most absurd thing I’ve been hearing around the way lately.”

    Your knowledge of contracts and property is as scary as your knowledge of patents.

    LOL

  81. 20

    “Inventors understand what they’ve invented. What they don’t understand is the scope of their monopoly. These two concepts are very different.”

    I would agree with that as well, and now that lowly does as well I presume that he’ll start drafting applications with claims that ONLY particularly point out and distinctly claim what the inventor regards as his invention rather than what the scope of his monopoly may or may not include. If he wasn’t already, since he is one of the better attorneys on this board.

  82. 19

    “Capture “minor inventions””

    Lol, so now we have more than one invention being claimed amirite? Hmmm, sounds suspiciously like restriction fodder to me.

    “not the inventors. read this in the ‘rest of the world’ sense, in the vast majority of cases, the applicants are the assignees)”

    Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.

    According to 101 assignees aren’t even eligable to obtain a patent. The inventor is the applicant even if he chooses to assign the rights to another. End of story. That’s an argument I’m prepared to win 100%. Assignees as the applicant is the most absurd thing I’ve been hearing around the way lately. The rest of your pathetic excuse for an explanation for what D said is based upon this ridiculous assertion and falls with it. Check out 605[R-2] for what appears to be the final smack down. Just because you’re authorized to deliver an application doesn’t make you the applicant.

    Just admit it, I took D’s comment out of “context” or “the way he meant it” but none the less it stands just as true. You are the cancer that eats away at the expeditious protection of what the applicant regards as their invention. Last time I checked, an assignee didn’t invent sht.

    “Assignees and attorneys save them from themselves.”

    The most ridiculous statement I see in all of your bs. You do nothing but make them overclaim and hopefully pretty up the app (which is nice). If the applicant doesn’t want to section off an entire area of research/innovation then so be it, don’t make/coerce him.

  83. 17

    Lowly said: “Half the time, inventors don’t understand what they have actually invented”

    This is a common view, but an intellectually dishonest one.

    Most of the time an inventor knows exactly what his invention is: it’s the specific design he drew up. It’s the attorney who generalizes the invention, usually by presenting broad claims that set up rejections in view of art further afield from the original design. Years later the attorney tells the inventor that he didn’t invent a new brake after all, he invented a certain kind of fastening mechanism for a certain kind of brake shoe, which in all likelihood the inventor himself considered to be in the realm of ordinary skill at the time of invention.

    If I may humbly propose a correction to your statement: Inventors understand what they’ve invented. What they don’t understand is the scope of their monopoly. These two concepts are very different.

  84. 16

    George,

    I just ask the inventor questions about his invention. Sometimes, a question may prompt him to realize that the invention could be embodied in an alternative fashion, but all I’m doing is asking questions to discover the scope of what he has invented.

    At least that’s how I’ve been taught to look at it.

  85. 15

    Malcolm & Lowly,
    It is the dirty little secret of patent attorneys that they conceive of the invention in ways that the inventor never did. And it is the mark of a good patent attorney to do so.

  86. 14

    Dependent claims also help others understand the claims. For example, what does the term “a resilient assembly” in an independent claim mean? The dependent claims often help explain it.

  87. 13

    It’s nice to see this blog getting back into a substantive debate …

    I think the question between Lowly and Malcolm is whether we’re looking at an apparatus claim (lowly’s assumption) or a method-of-use claim (MM’s assumption). Am I wrong?

  88. 12

    [E]stablishing conception requires evidence that the inventor actually made the invention and understood the invention to have the features that comprise the inventive subject matter at issue Invitrogen, Corp. v. Clontech Laboratories, Inc., 429 F.3d 1052, 1064, 77 USPQ2d 1161, 1169 (Fed. Cir. 2005)

    Exactly. The inventive subject matter is the brake assembly itself, not whether it slows a motorcycle’s wheel or a car’s wheel.

  89. 11

    “I didn’t invent the brake assembly. He did.”

    No, he invented a brake assembly for a car. Conception is a requirement for proving invention.

  90. 10

    “Half the time, inventors don’t understand what they have actually invented”

    That’s unfortunate.

    Conception is the “formation in the mind of the inventor, of a definite and permanent idea of the complete and operative invention, as it is hereafter to be applied in practice.”

    [E]stablishing conception requires evidence that the inventor actually made the invention and understood the invention to have the features that comprise the inventive subject matter at issue Invitrogen, Corp. v. Clontech Laboratories, Inc., 429 F.3d 1052, 1064, 77 USPQ2d 1161, 1169 (Fed. Cir. 2005)

  91. 9

    Malcom,

    That doesn’t make me an inventor. I didn’t invent the brake assembly. He did. I’m just claiming what he actually invented — a brake assembly — rather than JUST the one embodiment he built a prototype of — a brake assembly for a car.

  92. 8

    “Perhaps an inventor has come up with a new type of brake assembly for a car and considers that to be his invention. What he doesn’t realize is that this brake assembly can be applied to airplanes, motorcycles, steamrollers, and even conveyor belts.”

    And then you list yourself as an inventor on the divisional drawn to the method claims … right?

  93. 7

    From e6k:

    “Dependent claims provide an easy way to satisfy the inventor’s desire to claim their invention without limiting legal rights.”

    So according to Dennis the applicants WANT to do the right thing, only the attorneys are to be blamed for it not happening.

    No. You’re confusing some things here. And I dare say, intentionally.

    “Dependent claims provide an easy way to satisfy the INVENTOR’S (the engineers who actually invented something) desire to claim their invention without limiting legal rights.” Here, we’re talking about an engineer’s desire to see exactly what he created, not the ideas behind it (which he’s entitled to)

    e6k: “So according to Dennis the APPLICANTS (no. the inventors. read this in the ‘rest of the world’ sense, in the vast majority of cases, the applicants are the assignees) want to do the right thing, only the ATTORNEYS (should be applicants/assignees) are to be blamed for it not happening.” Here, dennis is saying that the INVENTORS want to see the picture claim. The assignees and attorneys want to secure the rights to the broader ideas used to arrive at the particular embodiment the inventor is holding in his hand. You’re intentionally or naively missing that distinction.

    Inventors are not typically very patent savvy and don’t “want to do the right thing”. They want to do exactly what they would do when submitting a technical paper – show the specific results they currently have. If they invented a flying bicycle, they want want to see an independent claim that recites a flying bicycle with two upper thrusters and two lower thrusters, all of the same diameter, and a headlight – because that’s what their prototype looks like. the fact is, they invented a flying bicycle and they know that any size thruster would work and that just 2 would work. THAT’s the invention and public contribution, not the narrow claim they want to see.

    Assignees and attorneys save them from themselves.

    You’re being difficult for difficulties sake or have a really poor grasp of the patent system – which is monumentally frightening considering your job.

  94. 5

    E6K,

    You don’t get it. Half the time, inventors don’t understand what they have actually invented. Perhaps an inventor has come up with a new type of brake assembly for a car and considers that to be his invention. What he doesn’t realize is that this brake assembly can be applied to airplanes, motorcycles, steamrollers, and even conveyor belts. So, what he has invented isn’t just a brake assembly for a car, but rather a much more generalized brake assembly to stop something from rotating.

    To ONLY seek protection for a brake assembly for a car would be almost malpractice, in my opinion. How angry would this inventor be if he later learned that some large manufacturing company put brakes on its conveyor belts modeled 100% after HIS design, yet he has no recourse because the patent only claimed a brake assembly for a vehicle?

    This is why attorneys claim more than the inventor often thinks his “invention” is.

    In such a situation as described above, it may not add much value to the claim set to include the brake assembly being for a car, but I would of course add there in there to make the inventor happy.

  95. 4

    “Dependent claims provide an easy way to satisfy the inventor’s desire to claim their invention without limiting legal rights.”

    So according to Dennis the applicants WANT to do the right thing, only the attorneys are to be blamed for it not happening. Strange.

    I could go on and on and on but I have limited time. Tonight.

  96. 3

    Re length, while studies may show that a longer patent is more valuable, the key for drafting the patent is that it not be too short. Therefore, there is no reason to make it longer than necessary, but every reason to make sure that you don’t leave anything out.

    In other words, overly short applications are worthless, but excessively long applications are typically no more valuable than sufficiently complete applications.

  97. 2

    I find most interesting the number of persons who disfavor the theory that a longer patent is more valuable. I can recall reading at least one study that suggests this is, in fact, statistically the case.

  98. 1

    From Europe: a set of dependent claims that spotlights the inventive core of the claimed scope will help the Applicant towards allowance of a relatively wide main claim (Exr thinks intuitively: if the core is so clever, why shouldn’t the inventor be rewarded with generous scope? Big contributions to the art deserve a relatively generous reward from the public). I realise that what I assert is contrary to the prevailing wisdom, that if you show a USPTO Exr any claim that is narrower than your ind. you increase the chances of suffering a rejection of your wider claim. But then I do always try to provoke dialogue in these threads.

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