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There is, of course, no excuse for submitting a poorly-worded patent application.

However, while knowing that more than 20 claims costs extra but is allowable, coupled with the fact that upon PTO Action we can only remove from, not add to claims, plus the Examiner is directed to be "helpful" to per se applicants, so as a wild strategy:

Can we add multiple similar claims with slight wording "tweaks" as a per se applicant in the hopes the Examiner will strike the "least applicable" ones while also aiding the Examiner? What would actually happen to such an application?

For example (putting aside patentability and connecting parts):

Claim 1. A toy boat comprising a hull and a fan.
    Claim 2. The toy boat of Claim 1, wherein said fan propels said hull.
    Claim 3. The toy boat of Claim 1, wherein said fan urges said hull.
    Claim 4. The toy boat of Claim 1, wherein said fan imparts thrust on said hull.
                                                   ... drives ...
                                                   ... acts as an engine for ...
                                                   ... behaves as an engine for ...
                                                   ... characterizes an engine for ...

More about that "being helpful" comment:

Manual of Patent Examining Procedure, Section 707.07(j), states: When, during the examination of a pro se [no attorney] application it becomes apparent to the examiner that there is patentable subject matter disclosed in the application, the examiner should draft one or more claims for the applicant and indicate in his or her action that such claims would be allowed if incorporated in the application by amendment.

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  • You can edit claims during prosecution of the application.
    – Eric S
    Commented Nov 3, 2022 at 22:24

1 Answer 1

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Claims can be added. It will cost you excess claim fees unless an equal number of claims are canceled at the same time or earlier. If you add claims on Tuesday and cancel the equal number of claims on Wednesday, you are charged for the claims. If you withdraw instead of cancel you are charged for the claims.

Also, you can amend any of your examples into any other one of your examples - no claims added or canceled.

Examiners are encouraged to, if asked, draft one allowable independent claim for a pro se applicant. However, it is a should and - 1. They are not systematically taught how to draft claims, only how to evaluate claims which is not the same skill, 2. They have little practice doing it, 3. Most importantly - it will be extremely narrow since it needs to be something they allow without further back-and-forth.

If you take that path you should be able to add a few dependent claims to the allowable independent claim.

One thing sometimes done is add a section called "aspects of invention". It includes an unlimited number of non-claims. They are written like claims but would be 2. An aspect of the invention is the invention of aspect 1 with . . .

The advantage is if one of the "aspects" is later turned into a new or amended claim, there is no question that it was "new matter".

It is pro se, not per se.

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