Intellectual Property Forum The Intellectual Property Forum

Please login or register.

Login with username, password and session length
Advanced search  

News:

The forum software has been upgraded.  New registrations are not currently permitted while we iron out any bugs and other matters.  Please report any problems you find.

Author Topic: Claim drafting, independent claim refers to other independent claims  (Read 1027 times)

patentbuddy

  • Newbie
  • *
  • Posts: 1
    • View Profile

Likely a softball for this audience:

6. A blah apparatus comprising:
   the X according to any one of claims 1 and 5; and
   a Y.

What if an independent claim references multiple other independent claims?  Is this improper?
Logged

DogDayPM 9er9er9er

  • Lead Member
  • *****
  • Posts: 999
    • View Profile

Likely a softball for this audience:

6. A blah apparatus comprising:
   the X according to any one of claims 1 and 5; and
   a Y.

What if an independent claim references multiple other independent claims?  Is this improper?


Um, check me if I'm wrong, but by very definition an independent claim does not reference (depend from) other claims.  So it's either improper, or it's a dependent claim masquerading as an indep.

Sometimes particularly with EP practice you'll see claims that appear to be independent but are dependent usage type claims.  For example, independent claim 1 and its dependent claims 2-9 are drawn to a manufacturing apparatus.  Then you'll see claim 10 reciting, "A method for forming widget X, comprising the steps of providing widget precursors, manipulating widget precursors in fashions A, B, and C, performing (insert 4 more process steps), [then finally it gets around to] wherein said later process steps are performed on an apparatus according to any of the preceding claims." 

Claim 10 is a dependent claim.  It could have been made independent by reciting in the last clause "performed on an apparatus comprising ____" (____ = all the elements in the independent claim 1 apparatus).  Then write 8 more dependent claims 11-18 adding the apparatus elements in claims 2-8. 

But in EPO, I think claim 10 (dependent on any of claims 1-9) only counts for fee purposes as 1 claim, not as 9 claims the way it does in the US. 
Logged
Any and all disclaimers you may see on this forum used by members more experienced and/or smarter than I, are hereby incorporated by reference as if fully set forth herein.

JimIvey

  • Forum Moderator
  • Lead Member
  • *****
  • Posts: 5413
    • View Profile
    • IveyLaw -- Turning Caffeine into Patents(sm)

Any claim that requires reading of another claim for its definition is dependent.  It doesn't matter whether the claim begins with "A" or "The".

Regards.
Logged
--
James D. Ivey
Law Offices of James D. Ivey
http://www.iveylaw.com
Friends don't let friends file provisional patent applications.

PatentDave

  • Full Member
  • ***
  • Posts: 72
    • View Profile
    • My Company

What you have there in particular (and you almost state it exactly as such in describing it yourself) is a multiple dependent claim. 

If there is anything which makes your claim "improper," it is your recital of "any one of claims 1 and 5" which might be an improper multiple dependent claim format.  Check the MPEP on that one for proper formats.

But as stated by Jim, any claim which is dependent upon another claim is - by definition - a dependent claim.
Logged
David Oppenhuizen
Registered Patent Attorney
The Weintraub Group

Information provided in this post is not legal advice and does not create any attorney-client relationship.
 



Footer

www.intelproplaw.com

Terms of Use
Feel free to contact us:
Sorry, spam is killing us.

iKnight Technologies Inc.

www.intelproplaw.com

Page created in 0.158 seconds with 18 queries.