I have plenty of dependent claims.

I wanna rearrange claims if the main claim rejected by examiner.

For example, Claim 4 and 5 depends on claim 3. Claim 3 and 2 depends on the main claim.

Claim 1
  Claim 2
  Claim 3
    Claim 4
    Claim 5

Can I rearrange like this later?

Claim 1 + Claim 2 (merged to make it novel)
  Claim 3
    Claim 4
    Claim 5

2 Answers 2


Your change to the claims introduces a new combination of elements by combining the elements of claim 2 and claim 3. That is allowed if the specification makes clear that the elements of claim 2 and claim 3 can be combined.

In the US multiple dependencies in claims (such as “the apparatus from any preceding claim + x) aren't allowed (technically they are allowed, but there is a hefty fee). Therefore the requirement above is often a mere formality.

In the EU however, you may have multiple dependencies. Therefore, if claim 3 depends on claim 1 and not claim 1 or claim 2, the specification needs to make clear that the elements of claim 2 and claim 3 are optional and can be combined.

For example, if claim 2 is claim 1 + b and claim 3 is claim 1 + c, the specification might say “the invention can have b and/or c“. In that case, your rearrangement is fine. However, if the specification says, “the invention can have b or c“, then introducing claims saying “invention + b“ (claims 1 + 2) and optionally + c (claim 3) might be introducing the new combination of b AND c and might not be allowed.

  • 1
    The need for the specification to have been explicit about a previously unclaimed combination of elements is very important in Europe, not so much in the U.S.
    – George White
    Commented Jun 25, 2019 at 2:40

Yes, you can rearrange such claims as the modification would be including new limitations in claims.

You must log in to answer this question.

Not the answer you're looking for? Browse other questions tagged .