Multiple Dependent Claims in a Patent Application: Role and Importance

December 26, 2022
- Patent Drafting & Illustrations
- Patent Prosecution

The restrictions listed in a patent’s claims govern the extent of the protection it provides. Independent claims and dependent claims are the two different categories of patent claims. A dependent claim depends on preceding claims and adds further limits to elements that have already been recited, whereas an independent claim stands alone and contains all the limitations required to define an invention.

Multiple Dependent Claims

A dependent claim may also be a multiple dependent claim, which depends on two or more prior claims, or a single dependent claim, which depends on a single preceding claim. Despite the fact that most nations permit multiple dependent claims, many do not permit multiple dependent claims to depend on other multiple dependent claims because this could lead to intricate variations in claim scopes.

Requirements for Drafting Multiple Dependent Claims

A claim with multiple dependents cannot rely on another claim with multiple dependents.

For instance,

Claim 1: A process for the production of……

Claim 2: The process of claim 1, wherein….

Claim 3: The process of any preceding claims, wherein…..

Claim 4: The process of claim 2 or 3, wherein…..

The way claim 4 has been drafted is improper because it dependent on claim 3 which is in turn depends on multiple claims.

A claim with multiple dependents should have acceptable wording. In other words, the multiple dependent claims should refer to the preceding claims in alternative wording only. Multiple dependent claims in applications are permitted by US patent law’s statutory provision 35 U.S.C. 112(e), provided they are presented in the alternative form.

Examples of acceptable language include:

according to claims 2 or 3….
according to any one of the preceding claims….
according to any of the preceding claims….

according to any of claims 1-3 or 5-8

Will improper multiple dependent claims get a comprehensive investigation?

No, the patent examiner will raise an objection and ask you to format the claims correctly. The claims will only be substantively reviewed when they have been properly formatted. Make sure your claims are in the correct format before the examiner picks up your case to start their evaluation if you want to minimize delay in the patent application process.

Fee Calculation

Any claim in the application that lists multiple dependents is subject to a specific one-time cost. For calculating fees, any dependent claim that is dependent upon multiple dependent claims is treated as having the same number of dependent claims. In the US, it is preferable to have a single dependent claim as opposed to several dependent claims for minimization fee and claim clarity reasons. However, the claim drafter is free to use as many valid dependent claims as they choose.

In the USA, if a non-provisional application includes accurate multiple dependent claims, a multiple dependent claim fee of US$ 860 is assessed for large entities. If there are more than twenty claims, there is also an excess claim cost of US$ 100 per excess claim.

Let us understand this concept with an example:

Claim 1 (An independent claim)

A writing device comprising:

a body;

a base; and

a nib

Claim 2 (A dependent claim)

The writing device of claim 1 further comprises a detachable cap attached to the body.

Claim 3 (A dependent claim and multiple dependent claims)

The writing device of claim 1 or 2, wherein the body is made of plastic.

Claim 4 (A dependent claim and A multiple dependent claim depending on Another multiple dependent claims)

The writing device of any one of claims 1 to 3, wherein the body is attached to the base.

Claim 5 (A dependent claim)

The writing device of claim 3, wherein a holder is attached to the body.

In the above case, the official fee is calculated for seven claims (1+1+2+1+2) and not as five claims. This is because claim 3 depends on two claims i.e., claim 1 or 2, so would be counted as two claims. Next, claim 4 is drafted as an improper multiple-dependent claim depending on another multiple-dependent claim, it would still be counted as one claim. Lastly, claim 5 which depends on claim 3 is considered as two claims because claim 3 depends on two claims, claim 1 or claim 2. Due to these issues, it is advised that a claim set be submitted with just independent claims and single dependent claims—not numerous dependent claims—when submitting an application to the USPTO.

In contrast, other nations, like Japan and Europe, permit an unlimited number of dependent claims, the official fees are determined depending on the actual number of claims. As a result, it is preferable to construct all dependent claims to depend on their preceding claims when it is practicable to do so, given that the claimed elements are stated in the claims in order to widen the scope of rights. In Europe, an additional official fee must be paid if the number of patent claims reaches fifteen.

PCT Application

There are no additional costs for making restricted or unlimited multiple dependent claims for a PCT international application. Additionally, the price of submitting a PCT foreign application is independent of the number of claims. However, it is advised that claims be written using an unlimited multiple dependent claim format if an applicant intends to enter the national or regional phase of Japan, Europe, Korea, China, or the U.S.

Additionally, it is advised that a voluntary amendment be submitted at the time of a national phase entry in nations where unlimited multiple dependent claims are not permitted, such as the U.S., Korea, and China. This is crucial because in some nations, a voluntary change that, after an office, action is taken, undoes numerous dependencies. Increasing the number of claims may not be permitted on the basis that it adds new substance.

Conclusion

There are many things to take into account when drafting claims, but by being aware of the many claim types that can be employed as well as the ways that fee calculations vary by nation, it is possible to considerably lower the cost of claiming a patent.

It is always advisable to amend all claims with numerous dependents to single dependant claims before deleting certain claims with a narrower scope. Please take note that these revisions must be submitted on the filing date. The fees will not be waived in any other case.

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