2

In the EU its customary to have claims like

  1. Method for...

  2. Method from claim 1 plus ...

  3. Method from claim 1 or 2 plus ...

... (only dependent claims here)

  1. Method from one of the previous claims plus ...

  2. Method from claim 16 plus ... (Because 17 works only with the additional stuff from 16, for example 16 introduces means for showing something to the user and 17 describes how it's shown which can't happen without means for showing).

  3. Method from claim 16. or 17. Plus ...

Recently (for a PCT national phase), I saw US attorneys removing the “multiple dependencies“ (citing their explanation) leaving the claims with something like:

  1. Method for...

  2. Method from claim 1 plus ...

  3. Method from claim 1 plus ...

... (only dependent claims here)

  1. Method from claim 1 plus ...

  2. Method from claim 16 plus ...

  3. Method from claim 16. Plus ...

My question is: Why?

(I suppose it's equivalent and they aren't messing up, but then there needs to be a reason why this differs between US and EU).

  • As an aside, there's no EU patent (though I'm certain you were just using it as shorthand - I merely mention it for other readers). After all, Turkey, Tunisia and Morocco belong to the EPO system, but are unlikely to ever become EU members. – Maca Jan 21 '18 at 23:57
  • This looks trivial in my field (pharmaceuticals). As far as I have seen, it relates to the concept of unity. – chempatent1981 Jan 24 '18 at 22:09
  • @chempatent1981 Your field is .. uhm .. special ;) – DonQuiKong Jan 25 '18 at 7:36
2

In the US, there is an extremely punitive fee of USD 820 for each multiple dependent claim. Moreover, since the US isn't so strict with added matter arising from combining claims independent of each other, there is not a huge benefit in multiple dependencies anyway.

In contrast, the EPO doesn't charge for multiple dependent claims, but does generally require claims to be dependent on each other to be inserted into the same independent claim (or otherwise you better include a lot of argument in support).

Because of this, it makes a lot of sense to use multiple dependencies at the EPO, and to omit them at the USPTO.

  • Do you know why the US doesn't want multiple dependencies? – DonQuiKong Jan 22 '18 at 6:57
  • 1
    I've never got a clear answer to that. I can only guess that it's to limit the number of combinations that are actually claimed. "The system of claims 1-20, wherein..." is actually 20 different dependent claims. Then if you have multiple-on-multiple claims, you get into the hundreds or thousands. In principle (though obviously not in practice), an examiner would need to search every combination to have a thorough office action, so you want to discourage it. But this is only speculation. – Maca Jan 22 '18 at 8:08
  • 2
    The U.S. thinks multiple dependencies lead to confusion. You can achieve the same coverage/combinations without multiple dependency by using many dependent claims with a lot of repetitive wording and potentially paying for excess claims. – George White Jan 23 '18 at 19:57

Your Answer

By clicking “Post Your Answer”, you agree to our terms of service, privacy policy and cookie policy

Not the answer you're looking for? Browse other questions tagged or ask your own question.