In view of our continued emphasis on the importance of dependent claims during US patent prosecution, we often receive questions regarding what sort of features should be presented in a dependent claim set for US examination. Because most of these questions are received from Japan, we will consider the topic relative to that context.
In Japan, each dependent claim results in an additional governmental fee. Partly in view of how the Japan Patent Office (JPO) handles obviousness rejections, JPO Applicants typically use dependent claims to set forth features having an advantageous effect. Accordingly, JPO Applicants often enter the US with maybe 4-5 dependent claims per independent claim.
In the US, the basic filing fee covers the submission of 20 total claims and 3 independent claims. Thus, many US-domestic Applicants submit 3 independent claims, with 5-6 dependent claims per independent claim. However, an Applicant instead could submit 1 independent claim with 19 dependent claims for no additional fee.
Realistically, most electrical, mechanical, and software inventions (whether from the US, Japan, or any other country) are not so complex as to merit 6 inventive dependent claims depending from Claim 1, let alone an extraordinary set including 15+ dependent claims depending from Claim 1.
Although any dependent claim has some value, many dependent claims have little value. If inventions typically do not support 6 inventive dependent claims, how can an Applicant take advantage of the USPTO’s fee structure? More to the point, how can a Japanese patent agent draft another 2 claims for US practice?
Perhaps the clearest strategy is to pursue groups of features that detail how the broad structures of the independent claim are arranged and how the broad operations of the independent claim are performed.
For example, a typical Japan-origin application might set forth the invention very broadly in Claim 1, and dependent Claim 2 might include some implementation details as to that invention. Still, such a Claim 2 often is not allowable in the US, even if it is allowable at the JPO. The difference is that, in the JPO, the specification might be considered for aspects of how the structures are arranged and operate, the way in which the structures are arranged and operate, and the result of this arrangement and operation. (We are not Japanese patent agents. So, please do not rely on this explanation for JPO procedure.) In the US, the specification generally is not considered for these aspects. Thus, a US application would benefit from dependent claims explicitly reciting these aspects, particularly the “how” and “the way in which.”
Another strategy, especially for computer-implemented inventions, is to pursue groups of features illustrated in a key figure, but not yet explicitly claimed. This strategy sounds similar to many ineffective strategies, so skepticism is understandable.
Without detailing the ineffective strategies, there are two key distinctions. First, our suggestion is to add these claims at the time of entry into the US, before the Examiner’s position as to inventiveness is known. Simply, these kinds of claims often address issues raised by Examiners during prosecution, even if a particular claim might not address an Examiner’s position in a particular application (especially after the Examiner applies particular references). Second, the recommendation is specifically directed to groups of features, not individual features. Thus, a dependent claim that explains how a piece of data is received, processed, and affects an outcome is a substantially different claim than one that simply recites the receipt of the data.