Seriously, Bro

Frequently, an Applicant will amend an independent claim based on a feature from a dependent claim.  The next Office communication seems to consider more thoroughly the modified feature in the independent claim.  Why?  And can Applicants form a strategy based on this trend?

The independent claims are the most important claims in a patent application.  The application cannot be allowed until all of the independent claims are allowable.  For that reason, appeals almost always consider the rejections of the independent claims.  So, it makes sense for an Examiner to focus their time on the features of the independent claims. 

Correspondingly, Applicants rarely appeal only the rejection of a dependent claim.  If the Applicant appeals on only a dependent claim, then the Examiner simply can issue a new Office Action that updates only the rejection of that claim.  Issuing such an Office Action might not require much work.

So, an Examiner could conduct a cost-benefit analysis that suggests a lax examination of the dependent claims.

This approach might frustrate some Applicants.  How can an Applicant decide which feature to pursue, if the rejections of the dependent claims are weak?

Simply, an Applicant is likely to pursue only one technical feature at a time.  (We are trying to distinguish a “technical feature” from a “claim feature.”  An amendment incorporating a “technical feature” might require the incorporation of a few dependent claims.)  So, an Applicant merely must prioritize the technical features, rather than conduct a broad consideration of the dependent claims.

Then, to potentially overcome the rejection, the Applicant only need present a sightly different phrasing of the features than is present in the dependent claim.  Note this strategy encounters difficulties if the Applicant pursues the exact same language as in the dependent claim.

Modifying these features of the dependent claim can be easy.  The dependent claims typically were written without knowledge of the interpretation or art applied by the Examiner.  So, the claim features probably can be clarified slightly in view of that interpretation or art.

Thus, the biggest obstacle to advancing prosecution in this way is the Applicant maintaining the precise (or overly similar) wording of the dependent claim.  If the Applicant does so, the Examiner is incentivized to maintain their rejection.  So, an Applicant can promote prosecution by merely modifying their position slightly.

If you are interested in seeing what this strategy might look like in one of your US patent applications, please contact us.

Leave a Reply

Your email address will not be published.