What is a multiple dependent claim?
A multiple dependent claim is a dependent claim that refers to more than one claim. The USPTO will not object to proper multiple dependent claims. Unfortunately, most specifications originating from foreign countries contain multiple dependent claims that would be improper under US patent rules.
For foreign associates and applicants planning to file in the US, this is a helpful summary of what makes such claims proper or improper.
What is an improper multiple dependent claim?
Let’s deal with the easier requirement first. A multiple dependent claim cannot depend on another multiple dependent claim. For example, suppose your first multiple dependent claim is Claim 3 which reads:
3. The apparatus according to any of the preceding claims, further comprising . . .
Now suppose your Claim 5 depends on Claim 3 and/or another claim:
5. The apparatus of claim 3 or claim 4, wherein . . .
Claim 5 is improper because it is a multiple dependent claim that depends on another multiple dependent claim (i.e., Claim 3).
There is a second requirement that relates to acceptable wording in a multiple dependent claim. This condition requires that a multiple dependent claim refer back in the alternative only. Examples of acceptable language include:
- according claims 2 or 3 . . .
- according to any one of the preceding claims . . .
- according to any of the preceding claims . . .
- according to any of claims 1-3 or 5-8 . . .
What are examples of unacceptable multiple dependent claim wording?
Below are examples of claim language you want to avoid:
- according to claims 2 and 3 . . .
- according to claims 1-3 . . .
- according to the preceding claims . . .
- as in claims 1, 2 and/or 3 . . .
What should you do if you have improper multiple dependent claims?
One simple solution is to remove all multiple dependencies. Not only can this save you a great deal of USPTO excess claims fees, you will also save the one-time multiple dependent fee which is $860 for a large entity or $430 for a small entity (as of the date of this post).
If you prefer to keep multiple dependent claims, you must ensure that they are in the proper format. If your claims are currently improper, you must file a Preliminary Amendment with marked-up claim amendments.
Will multiple dependent claims increase your USPTO fees?
Yes, if you intend to move forward with proper multiple dependent claims. It is possible to avoid any additional USPTO fees even if you submit an initial filing with multiple dependent claims, whether proper or improper. After the initial filing, you should promptly file a Preliminary Amendment to remove the multiple dependencies which will then avoid any additional USPTO fees.
Will improper multiple dependent claims be substantively examined?
No, you will receive an objection from the patent examiner requiring you to place the claims in proper format. Only after the claims are in proper format will they be substantively examined. So if you wish to minimize delay in your patent application process, make sure your claims are in the proper format before the examiner picks up your case to begin their review.
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