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According to decision T 1857/07 (2.4.2) of the EPO boards of appeal, a combination of dependent claims (e.g. 2 and 3) that are both/all dependent on the same independent claim but not each other is not disclosed by the claims (and can therefore not be claimed later rule 123(2) unless disclosed otherwise in the description).

Example

claim 1: xyz

claim 2: xyz as in 1 + a

claim 3: xyz as in 1 + b

Not disclosed: xyz + a + b.

However multiple dependencies cost a lot of money in the US. What's an easy solution to avoid a rule 123(2) when writing a US application so that claiming priority to a the application in Europe doesn't provide grounds for rejection on basis of 123(2) if a combination of the dependent claims needs to be claimed?

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    I do not know if it is a preferred solution, but practitioners can have pseudo claims in the description. I have seen lists of "Aspects of the Invention" written like claims but without the word "claim". People do it to avoid excess claim fees but have support in the application as filed to introduce claims later in prosecution or in corresponding applications.
    – George White ♦
    Mar 22, 2018 at 17:57
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    Or file a provisional in the US the same day as the nonprovisional with the claims exactly as you plan to have them in rest of the world and use it for priority. Since it is not examined, no claims-specific fees.
    – George White ♦
    Mar 23, 2018 at 1:34
  • @GeorgeWhite I think both of those would make a good answer, if you'd be inclined to do so. The former especially has been very common in the firms I've worked in.
    – Maca
    Mar 24, 2018 at 2:07
  • @Maca I agree and edited the question to indicate that I'm not looking for the one perfect solution
    – user18033
    Mar 24, 2018 at 7:25

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One option is to file provisional in the US the same day as the nonprovisional with the claims exactly as you plan to have them in rest of the world and use it for priority. Since it is not examined, there are no claims-specific fees. Another approach is to add pseudo claims in the description. I have seen lists of "Aspects of the Invention" written like claims but without the word "claim". People do it to avoid excess claim fees but have support in the application-as-filed to introduce claims later in prosecution or in corresponding applications.

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