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I am trying to decide if adding a lot of extra claims is worthwhile; in this case it would add about 15 more over just using the Markush group, due to repeating in context of 3 different independents.

Apparently there are arguments about "closed-ness" regarding how a Markush group is introduced, e.g. "...consisting of" or "...selected from the group consisting of" or maybe "...which may include". Assume for now that one of the latter two would be used, as they are less closed. Assume the group as currently written claims a method having 6 components a) thru f), followed by a final component

g) combinations of any elements comprising those set forth in (a)-(f), inclusive;

Would this be stronger, or in general be a better strategy, if all of a) through f) are rewritten as dependents? Or is using less-restrictive language for introducing the group sufficient to cover future issues that may come up – such as finding that another option outside the a) thru f) group can also apply?

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  • Regarding "such as finding that another option outside the a) thru f) group can also apply?" No way of writing it will cover the case where none of the a) - f) are present but something else "like" them is present.
    – George White ♦
    Aug 26, 2019 at 21:18

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Written as a long group, the claim will be invalidated by finding something in the prior art with anything on the list (and otherwise satisfying the claims). Written individually, only the single claim with that item will be invalidated and the rest will still be enforceable.

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  • Does that mean that US claims can't be changed during litigation or invalidity proceedings?
    – user18033
    Aug 30, 2019 at 19:13
  • Amendments are allowed in IPR proceedings but are severely restricted
    – George White ♦
    Aug 30, 2019 at 19:24
  • But removing the invalid alternative should be fine?
    – user18033
    Aug 30, 2019 at 19:47
  • The IPR process would, inherently, result in the removal of any claims found to be invalid. What is hard is amending a claim that the PTAB sees as invalid to make it something they will see as valid.
    – George White ♦
    Aug 31, 2019 at 4:12

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