0

As I understand it, a dependent claim would be invalidated if the cited independent claim is found invalid by the authority (examiner or judge).

QUESTIONS

Scenario 1: USPTO examiner finds an invalid dependent claim and for this conversation irrefutable (be it merit or rules). Does the examiner provide the option to grant the patent without the defective claims or does the patent application completely denied?

Scenario 2: USPTO examiner finds an invalid independent claim and for this conversation irrefutable. Does the examiner provide the option to grant the patent without the invalid claim or does is the patent application completely denied?

Scenario 3: An American patent court judge finds a single claim invalid: does this mean that the entire patent does not hold (other independent claims fail)?

After submitting the non provisional application, is (if any) any negotiating of the scope claims performed if the USPTO examiner rejects a claim?

3

No. First, you have it backwards. A dependent claim found not novel or obvious means the independent claim is even worse, not the other way around. A reason for having dependent claims is to fall back on them if the independent claim they depend from is found not novel or obvious. As a narrower claim, the dependent claim might hold up. During prosecution it is fundamental that the applicant can amend the claims in response to the examiner's findings and arguments. While you can't amend claims in court (at least in the U.S.), an independent claim being found too broad does not automatically mean a narrower dependent version of the claim is also too broad.

  • "While you can't amend claims in court" - thats a US thing then. – DonQuiKong Mar 7 '18 at 19:44
  • @DonQuiKong - in other jurisdiction do a judge/jury act as an examiner doing a re-examination? – George White Mar 7 '18 at 19:47
  • Yes. EPO, Germany, you can change your claims in the opposition proceedings and national inavlidity suits. However, they are separated from infringement claims. – DonQuiKong Mar 7 '18 at 20:26
  • So the answer that claims can't be changed after your claims are found invalid in an infringement suit would still hold in those jurisdictions. And is a national invalidity suit held in a "regular" court or is the patent office involved somehow? – George White Mar 7 '18 at 23:30
  • Not exactly. I can't speak for other countries, but in germany the infringement court doesn't find claims invalid but presumes vailidity due to the grant. Invalidity is a different suit. The patent office is not involved in that, but a patent court and many of the judges started their careers as examiners and are technical judges. The system ... is complex ;) – DonQuiKong Mar 8 '18 at 7:51

Your Answer

By clicking "Post Your Answer", you acknowledge that you have read our updated terms of service, privacy policy and cookie policy, and that your continued use of the website is subject to these policies.

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