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[patentdog]

Is there a risk in making an independent patent claim too broad?  If I make an independent patent claim that is fairly broad, probably broader than I can reasonably expect and narrow it down in dependent claims, and the independent claim is rejected, then can I make the narrower, first dependent claim independent.  Or can I modify the language of the independent claim to make it narrower in prosecution?

[khazzah]

If I make an independent patent claim that is fairly broad, probably broader than I can reasonably expect and narrow it down in dependent claims, and the independent claim is rejected, then can I make the narrower, first dependent claim independent.  Or can I modify the language of the independent claim to make it narrower in prosecution?

You can amend independent claims by adding limitations not yet claimed.

You also can amend independent claims to incorporate limitations of existing dependent claims.

Or you can amend a dependent claim to make it independent claim. (Functionality equivalent to previous sentence.)

[Yak]

One thing you may want to be aware of is that I have had instances where I have done a similar thing.  The independent claim was drafted as broad as I thought was possible, and maybe a little broader, with dependent claims used to narrow the scope.  The OA may reject the independent claim due to the prior art and the dependent claims may be deemed allowable but are objected to as depending from a rejected claim.  It is possible that even after you make the claim amendments by, as khazzah mentioned, amending the independent claim to incorporate limitations of existing dependent claims or amending the dependent claim to make it independent claim the examiner could raise a new rejection.

[Alistair]

The OA may reject the independent claim due to the prior art and the dependent claims may be deemed allowable but are objected to as depending from a rejected claim.

I'm not an authority on this, far from that, so I have to rely on books, Prior Art, and the net. Wikipedia does say " As it is impossible to gain an absolute and complete knowledge of every publication on earth, not to mention unpublished patent applications, there is always some degree of uncertainty. If the independent claim is determined to be invalid, however, a dependent claim may nevertheless survive, and may still be broad enough to bar competitors from valuable commercial territory."

[dbmax]

... If the independent claim is determined to be invalid, however, a dependent claim may nevertheless survive, and may still be broad enough to bar competitors from valuable commercial territory.

If an independent claim is found invalid in litigation for being indefinite, but the dependent claim is more definite, then what?

For example,

1) A widget comprising a dorfbar and two gleeps where said dorfbar is positioned approximately between said two gleeps. 

2) A widget according to claim 1
where the center of said dorfbar is located between first and second planes,
where each said plane is constructed normal to a vector connecting the centers of the two said gleeps,
where first and second planes pass through the centers of first and second gleeps respectively.

3) A widget according to claim 1
where said approximate position is satisfied
when the center of said dorfbar is located between first and second planes,
when each said plane is constructed normal to a vector connecting the centers of the two said gleeps, and
when first and second planes pass through the centers of first and second gleeps respectively.

Are claims 2 and 3 indefinite because they rely on claim 1 (presuming claim 1 is found indefinite)?

db

[NJ Patent1]

dbmax; In my view, the short answer is no, claims 2 and 3 should not be held invalid as indefinite solely because they depend from indefinite claim 1.  Each and every claim of an issued US patent is presumed to be valid. Dependent claims can cure 112 defects in their parent independent claim, and their validity must be independently evaluated.

[khazzah]

Are claims 2 and 3 indefinite because they rely on claim 1 (presuming claim 1 is found indefinite)?

I say that claims 2 and 3 will be found to be indefinite if they don't correct the problem with claim 1. So if the problem with claim 1 is that "approximately between" is indefinite, *and* the limitations of claim 2 or 3 make it definite, then claim 2 or 3 is not indefinite. OTOH, I can imagine a dependent claim that adds a limitation not related to the positioning, and it would be found indefinite because it has the same problem as its parent.

[Alistair]

I'm waiting for a few books on how to patent stuff, in the meantime Internet has to make do, on ehow.com:

"Claims are evaluated individually, so some of your claims might not be approved and others may be approved. This makes it a good idea to write as many claims as possible to avoid a complete rejection."

Is this true in every case? If not, when is this practice not advisable in your view?

[MYK]

I'm waiting for a few books on how to patent stuff, in the meantime Internet has to make do, on ehow.com:

"Claims are evaluated individually, so some of your claims might not be approved and others may be approved. This makes it a good idea to write as many claims as possible to avoid a complete rejection."

Is this true in every case? If not, when is this practice not advisable in your view?

For a U.S. filing, if you file more than 20 claims, and/or more than 3 independent claims, you will pay extra fees for every single one of those "excess" claims.  You may as well file your 3/20, but beyond that you have to decide whether it's worth it to you to pay the extra.

More generally, though, you have to decide what your invention is really about.  A single claim is just fine if that's all you need, and if that's all you have.  A complex invention might call for dozens of claims (mostly dependents), especially if there's a lot of prior art out there to work around.

For a good example of a simple, very novel, invention, see if you can find the two patents for Bounce in-dryer fabric softener sheets.  Those applications were tiny, and they protected a billion-dollar invention.  IIRC, the first was "apply fabric softener to a piece of cloth, let dry," and the second was "cut slits in the cloth so it's less likely to get stuck against the dryer vent."

[Alistair]

More generally, though, you have to decide what your invention is really about.  A single claim is just fine if that's all you need, and if that's all you have.  A complex invention might call for dozens of claims (mostly dependents), especially if there's a lot of prior art out there to work around.

For a good example of a simple, very novel, invention, see if you can find the two patents for Bounce in-dryer fabric softener sheets.  Those applications were tiny, and they protected a billion-dollar invention.

I feel the same way, yet I've seen quite simple applications having loads of, somehow repeating, claims, a bit confusing to me, but maybe they just tried their luck...
Another quite simple and novel invention was the 3M's Post-It, I bet 3M went to a lot of trouble to secure as many claims as possible while I would've just tried to protect the not-too-sticky glue on the back of a paper probably on a single claim...
Generally speaking, can you write the abstract, description, drawing, etc.. yourself and then pay a Patent Lawyer to draw the claims or is that an absolute no-no? Of the whole application claims are what daunt me the most..

[Wiscagent]

Another quite simple and novel invention was the 3M's Post-It, I bet 3M went to a lot of trouble to secure as many claims as possible while I would've just tried to protect the not-too-sticky glue on the back of a paper probably on a single claim...

Are you thinking about a particular patent?  Spencer Silver's work on adhesive microsphere's was important to the development of Post-It notes, and many of Silver's patents have complex chemical claims.  Art Fry's patents on the repositionable sheets are quite specific too, because they need to differentiate from the prior art.

Generally speaking, can you write the abstract, description, drawing, etc.. yourself and then pay a Patent Lawyer to draw the claims or is that an absolute no-no? Of the whole application claims are what daunt me the most..

Many or most patent practitioners would be reluctant to go along with that plan.  Before I put my name on an application I want to make sure that it meets my standards.  And in many situations that would require a lot of review, discussion, and editing - so it would probably be better for me to just use your draft as a well-written disclosure, and to write a new application.