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I have an independent claim in my application for software patent that could be rejected on grounds like "abstract idea". There are a few dependent claims with limitations that hopefully pass the bar. Still I want to keep independent claim in case if somebody will try to patent it and I won't have any recourse because it is less limiting. So assume my independent claim is rejected, but dependent claims are granted, does it mean that the independent claim will be excluded from the grant? Then somebody would be able to patent it if his reviewer is more lenient.

  • I just wanted to add the notion of genus (superset) and species (subset) claims. Generally, species claims (i.e. your dependent claim) invalidate future genus claims as obvious. (Though the converse is often not the case.) So there are three obstacles preventing others from acquiring the broad genus claim (i.e. your independent claim): (1) your species claim, (2) your specification, which should render such claims non-novel or obvious, and (3) your prosecution history estoppel specifically denying such a claim. – user132162 Sep 3 '17 at 14:34
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I will come to the point that how the patent is examined, see examiner first check application for NOVELTY and finds some document he comes back with few references as you said its already disclosed or abstract idea. This leads to NON FINAL REJECTION you try to amend it with dependent claim and he comes with OBVIOUSNESS based FINAL REJECTION you file RCE request (good fee) with your reply and hopefully he comes with response which requires more amendment and that make you case more weaker and costly.

it has been always great to make it fair and wise that you put your best foot forward. Put claim you feel novel its going to create good case and at least two good chances to convince examiner.

Now since you have disclosed 'matter' it in your specification it cant be used as such to get a patent on. yes it becomes prior art.

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If you're working with a patent lawyer, you should speak with her or him about this because this is the kind of thing that patent lawyers are quite good at navigating.

Here is the way to think about patent claims: The independent claim must stand on its own. The claim must be novel, not obvious, useful, and must satisfy the section 101 requirements for patentable subject matter. Dependent claims incorporate all of the limitations of the independent claim from which they depend, so if the independent claim is patentable, the dependent claims should also be patentable. However, a dependent claim cannot depend from a non-patentable independent claim.

So if your independent claim is rejected, but the limitations in a dependent claim would overcome the reasons for rejection (for example, the independent claim is obvious, but the dependent claim adds a non-obvious element), you will probably get an office action from the USPTO saying basically that if you rewrite the independent claim to incorporate the limitations of the dependent claim, they'll allow it to issue.

With regard to the other part of your question, once you have filed for a patent on a claim, it becomes "prior art" to subsequently filed patent applications and it will prevent them from issuing (assuming no errors in the examination process).

  • "assuming no errors in the examination process", I think it is very bold assumption. In the past I authored a patent on behalf of my then employer which was justly rejected because of prior art I wasn't aware of. Anyway my employer's agency was able to resubmit the application with cosmetic changes and get the patent. So if I limit my claim, get the patent, but then somebody submits an application with non-limiting claim which gets approved I will lose my rights. – Pol99 Mar 23 '15 at 20:58
  • First off, "assuming no errors in the examination process", absolutely right, bold assumption. With the new re-examination procedures, though, errors are easier to get corrected (still not a good thing though). But the use of a patent as prior art has nothing to do with approval. So as long as you describe the invention in the application, nobody can later successfully file for a patent on that same thing (absent error in the examination). Under the old first to invent rules, I had exactly what you describe happen (since they claimed prior inventorship). It was super disappointing. – Gary S Mar 23 '15 at 21:26

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