Patent Dependent Claim: Everything You Need to Know
A patent dependent claim is one that references and helps to narrow and define an independent claim.3 min read
Intellectual property law requires a patent applicant to demonstrate and lay claim to the subject matter he or she has invented in order to exercise exclusive rights to it. Patent claims may be the most important part of the application because they define the invention to which the Patent Office has issued protection. Patent claims outline the exclusive rights held by the patent applicant. The rest of the documentation helps readers understand the nature of the invention.
Patent applications are complicated documents with multiple sections used to gather extensive information. The standard parts are specifications, drawings, and patent claims.
It is risky to file a patent application without drawings because they convey more information than text alone can accomplish. Drawings are almost always required, and adding them later is difficult if not impossible.
The patent claims section must start on its own page after the detailed description and has some specific requirements.
- While there is no set format for claims, the Patent Office insists that each one must be the object of a sentence beginning with "I claim" or "The invention claimed is." You may also use a substantial equivalent. The sentences must begin with a capital letter and end with a period. Other than abbreviations, periods cannot be used anywhere else in the claims.
- No matter what it means for sentence structure, each claim can only be one sentence.
- If a patent claim includes multiple elements or steps, each one can be separated by a line indentation.
- Reference characters related to elements in the detailed description and drawings may be used to refer to the same element in the claims. However, they should be in parentheses to prevent confusion with other characters in the claims.
- Claims should be arranged in the order of scope, so the first one should be the broadest.
- Dependent claims should be grouped with the claim to which they refer. Product and process claims should be grouped separately for easier classification and examination. While this is important, it's not a fatal error in your application. An examiner may issue an objection to an incorrect arrangement.
- Claims can be added to an application if the original disclosure supports them. However, you should not rely on your ability to do that because you may end up wanting to add something later that wasn't included in the original specifications. Best practice is to include sufficient claims in the initial filing to cover variations on the original.
The Patent Law Treaty Implementation Act specifies that claims and drawings are not required to get a filing date on a nonprovisional patent application. However, it's advisable to file with claims, though they don't have to be exhaustive. The claims that accompany a nonprovisional application are considered original claims. They can support themselves as part of the overall disclosure. Having the claims present at filing helps ensure that you've disclosed sufficiently, so it's worth the effort to spend quality time on them.
35 USC 112 and Title 35
A particular part of the law, 35 USC 112, requires patent applicants to clearly describe and claim the invention. This part of the application is the patent claim or claims.
Title 35 does not give details on how its directives are to be implemented. A claim is necessary, as described in 35 USC 112, but no specific format or structure is outlined for the claim. Instead, Title 37 of the CFR provides what is actually required. Specifically, section 37 CFR 1.75 provides this guidance.
The Initial Filing
When the patent claim is filed with the Patent Office, it should include a thorough description of the invention. While you can rearrange the contents of an application, you may not add new material. The applicant may rely on the description given in the specification section, drawings, or the original claims to establish the breadth of what is covered.
Objections and Rejections
An objection is related to the form of your application and not the substance of the requirements. It can only be reviewed by petitioning the Commissioner.
A rejection is a refusal to grant claims because the subject is considered unpatentable. A rejection is subject to review by the Patent Trial and Appeals Board.
An objection and a rejection may be related to the same issue. If that is the case, an appeal can be taken to the Board.
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