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[bakhus]

Suppose there is a device that is described in claim 1, and has 10 optional elements, and all combination/subsets of these elements group are valid devices. Does one have to write 2^10=1024 claims in order to cover all options? Or is there a short way of doing that? What would happen if some of the dependent claims would be invalidated after issue due to prior art? If there would be 1023 dependent claims, then only the ones relevant to the prior art would be invalidated, and the rest would survive. However, if there is a short way of writing it, then invalidating something from it may invalidate much more than is necessary, right? Is there a way to overcome that?

(For example, with 3 elements {1,2,3} there are the following subsets: {},{1},{2},{3},{1,2},{2,3},{1,3},{1,2,3})

[Isaac]

Generally you won't need 1024 claims.  By the time the examiner has looked at the independent claims and the 10 dependent claims having a single one of the optional elements, he'll have looked at all of your claimed elements.  Unless some of the particular combinations are still difficult to reject after finding all of the elements, there is no gain from a patentability standpoint in reciting combinations with two or more options.

If some of the combinations are specially patentable, consider drafting them as independent claims.  There probably won't be a lot of such combinations.

[khazzah]

Suppose there is a device that is described in claim 1, and has 10 optional elements, and all combination/subsets of these elements group are valid devices.

If some of the combinations are specially patentable, consider drafting them as independent claims.  There probably won't be a lot of such combinations.

I second Isaac's answer. And further add that the fact that a device includes elements is not, in and of itself, a reason to include those elements in a claim.

For example, my cell phone has a microphone, a battery, some buttons, and tons of other parts. Yet if I'm claiming an inventive cell phone and the novelty has nothing to do with those parts, there is no reason to add them to the claims.

[bakhus]

Generally you won't need 1024 claims.  By the time the examiner has looked at the independent claims and the 10 dependent claims having a single one of the optional elements, he'll have looked at all of your claimed elements. 

OK, but what will happen, if later on, after the patent issues some prior art would be found, and 5 of the dependent claims would be invalidated, and suppose that some combinations of the 5 invalidated dependent claims are novel? (And that at the time of writing it is not known which 5 are prior art)

Unless some of the particular combinations are still difficult to reject after finding all of the elements, there is no gain from a patentability standpoint in reciting combinations with two or more options.

I don't understand what does "still difficult to reject" means :s ?

If some of the combinations are specially patentable, consider drafting them as independent claims.  There probably won't be a lot of such combinations.

What if, say, half of the combinations are specially patentable? Is there a need for 512 claims then? or is there a short way of writing it? Or is it allowed to add claims after the patent issue, in case of invalidation of one, or more, of the claims?

[Isaac]

What if, say, half of the combinations are specially patentable? Is there a need for 512 claims then? or is there a short way of writing it? Or is it allowed to add claims after the patent issue, in case of invalidation of one, or more, of the claims?

If that were the case, you might need 512 claims.  But its rarely the case you have hundreds of independently patentable combinations.  I'm sure you won't need that many for whatever it is that your thinking about. 

As a short cut you could use multiple dependent claims but in the US at least that costs more in fees than writing out 512 claims.