2

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

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 Jun 25 at 2:40
3

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

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