We often discuss our view that many non-US Applicants should add dependent claims via Preliminary Amendment when filing utility patent applications at the United States Patent and Trademark Office (USPTO). We recently developed an example that might clarify our view of the issue.
Let’s assume a typical foreign- (i.e., non-US-) origin application includes independent Claim 1 and dependent Claims 2-7. Claim 1 is directed to an apparatus including elements A, B, and C. Although Claims 2-7 might recite valuable features, they were prepared for examination in a foreign patent office. That is, these claims were not specifically prepared for prosecution under the broadest reasonable interpretation (BRI) standard at the USPTO.
Let’s assume a Preliminary Amendment can add dependent Claims 8-11, respectively covering features D, E, F, and G.
If no Preliminary Amendment is filed, the first Office Action will consider the patentability of only features A + B + C and original Claims 2-7. Perhaps the Applicant then amends Claim 1 to incorporate feature D. Therefore, the second Office Action will be the first to consider the patentability of A + B + C + D. Further, the second Office Action is not obligated to consider features E-G, because they are not recited in the claims in this instance.
On the other hand, if the Preliminary Amendment is filed, the first Office Action must consider claims directed to features A + B + C + D (i.e., Claim 8), A + B + C + E (i.e., Claim 9), A + B + C + F (i.e., Claim 10), and A + B + C + G (i.e., Claim 11). Claim 8 ensures we know the Examiner’s view of the patentability of A + B + C + D at the time of the first Office Action.
Perhaps this first Office Action rejects Claim 8, and the Applicant amends Claim 1 to include both feature D and new feature H. In this situation, we still avoided filing an ineffective amendment including only feature D, as occurred in the situation without the Preliminary Amendment. Thus, the Preliminary Amendment has clearly saved an Office Action. (And by also presenting Claims 9-11, the Preliminary Amendment might save additional, future Office Actions, as well.)
Of course, this situation assumes the Examiner rejects Claim 8. If the Examiner indicates Claim 8 as allowable, then the Applicant gains flexibility to amend Claim 1 with a broader version of feature D. This flexibility is difficult to achieve when feature D is initially presented in an independent claim, rather than a dependent claim.
Because Claim 8 was specifically prepared for the BRI standard, such a claim might be allowed more frequently than the original, foreign-drafted claims. Certainly, one of our previous clients routinely had allowable subject matter indicated in our added claims.
If Modal PLLC can assist you by preparing dependent claims specifically for prosecution at the USPTO, please contact us.