4

Is it allowable in US patent applications to have a claim dependent on a later claim in an amendment? For example:

  1. (previously presented) The system of claim 17 where ....

....

  1. (currently amended) A system where ....

    I can't find this specifically disallowed in the MPEP. I work on software that analyzes patents and a customer is claiming our software is wrong because it flags this as an error.

5

You have asked about patents. However, your use of status identifiers (like "previously presented") implies you actually mean to ask about applications.

For applications, this is permitted (and in fact near unavoidable in certain cases).

MPEP § 714 provides:

The original numbering of the claims must be preserved throughout the prosecution.

Thus if an original claim is made dependent on a later claim, it would be seemingly improper to renumber it.

This is actually made explicit in the case of reissues (although this is only a very niche area, and is not necessarily comparable to prosecution generally) by MPEP § 1455:

No renumbering of the original patent claims is permitted, even if the dependency of a dependent patent claim is changed by reissue so that it is to be dependent on a subsequent higher numbered claim.

In any case, the examiner will renumber the claims themselves when the application is issued. So even if claim 1 is a dependent claim during prosecution, it will most likely be an independent claim in the issued patent.

  • Thanks for the quick response. Very much helped my understanding. I edited my original question to say "patent applications". – Craig Morris Dec 9 '16 at 2:49
3

Provided the dependency is clear, it is permissible for a dependent claim in an application to dependent on a subsequent claim during examination. In such cases, claims are to be renumbered by Examiner's amendment upon allowance. MPEP 608.01(n)(F) explicitly states so: "Pursuant to 35 U.S.C. 112 and 37 CFR 1.75(c), a claim in dependent form must refer only to a claim or claims previously set forth. The following procedures are to be followed by examiners when faced with claims which refer to numerically succeeding claims: If any series of dependent claims contains a claim with an improper reference to a numerically following claim which cannot be understood, the claim referring to a following claim should normally be objected to and not treated on the merits. However, in situations where a claim refers to a numerically following claim and the dependency is clear, both as presented and as it will be renumbered at issue, all claims should be examined on the merits and no objection as to form need be made. In such cases, an examiner’s amendment should be prepared if the order of the claims is changed."

0

MPEP 608.01(N) simply reminds the Examiner or Applicant to carefully check the numbering of dependent claims to avoid improper dependence on later claims. In other words, it proves my point that you cannot claim dependence to a later claim. Improper dependence on a later claim is NEVER unavoidable since claims can always be renumbered by canceling and/or adding new claims

  • While personally I do think discussing this point is very valid, this should be an edit to your answer and/or an answer to the comment. If it is improper to do so, there should be an section of the MPEP, law or case law proving this. – DonQuiKong Apr 24 '18 at 6:27
-2

The answer you received is TOTALLY WRONG. It is improper for a claim to depend from a later claim. 37 CFR 1.75(c) states:

(c) One or more claims may be presented in dependent form, referring back to and further limiting another claim or claims in the same application

So dependent claims must refer back to an earlier claim. The MPEP even gives examples of such improper dependent claims:

  1. CLAIM DOES NOT REFER TO A PRECEDING CLAIM

Claim 3. A gadget as in any of the following claims, in which ---

Claim 5. A gadget as in either claim 6 or claim 8, in which ---

  • MPEP 608.01(N): "During prosecution, the order of claims may change and be in conflict with the requirement that dependent claims refer to a preceding claim. Accordingly, the numbering of dependent claims and the numbers of preceding claims referred to in dependent claims should be carefully checked when claims are renumbered upon allowance." While it is improper for dependent claims to be out of order initially, it can be unavoidable during prosecution. – Maca Apr 20 '18 at 4:18
  • How is it unavoidable? – Dan Eisenberg Apr 22 '18 at 19:41

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