Patent It Yourself - PDF Archive

246 | Patent it YOURSELF
“final.” (See Chapter 13.) Thus, you should include every
possibly novel feature (or novel combination of features)
of your invention in your dependent claims.
5. Provide Broader Base for Infringement Damages. By
providing dependent claims that add more elements,
you define your invention (in these claims) as a more
comprehensive structure, thereby providing a broader
base upon which a judge can calculate infringement
damages.
6. Provide a Specific, Descriptive Recitation. This reason is
slightly different than Item 2 above. If the recitation in
the independent claim is broad and abstract, such as,
“urging means for …,” I strongly recommend that you
provide dependent claims with a descriptive, definite
recitation (for example, “wherein said urging means is
a coil spring”) to hit the nail on the head, or provide a
specific hardware recitation so a judge won’t have to use
his or her imagination.
7. Preserve Right to Rely Upon Doctrine of Equivalents.
Traditionally patent owners have been able to rely on a
“Doctrine of Equivalents” (DoE) to effectively expand
a claim beyond its literal wording if it didn’t cover an
infringing device. However, the U.S. Supreme Court
in Festo v. Shoketsu, 122 S.Ct. 1831 (2002), held that a
patentee who amended (narrowed) a claim when it was
before the PTO may no longer be able to rely on the
DoE. (See Chapter 13 for a more detailed explanation.)
To preserve your right to rely on the DoE, draft as many
dependent claims as possible to cover all aspects of
your invention. In this way you’ll have some claims that
won’t have to be amended (narrowed) if the PTO cites
relevant prior art against these claims, and thus you’ll
preserve your right to use the DoE to expand these
claims if necessary.
8. Litigators Prefer Them. Litigators prefer narrower
and more specific claims (provided they cover the
infringing device) because they provide a broader base
for infringement damages—see Item 5 above—and
are more difficult to invalidate since they read on less
prior art. Furthermore, it’s easier for a litigator to prove
infringement since the claim is less abstract and recited
the specific structure that is infringed—see Item 6 above.
2. The Drafting
For the reasons above, when you’re satisfied with your
first, basic, and broadest independent claim, you should
write as many dependent claims as you can think of. Each
dependent claim should begin by referring to your basic
claim, or a previous dependent claim, using its exact title.
EXAMPLE:
Independent claim:
1. A cellular telephone having a hinged body and a coiled
antenna.
Improper dependent claim:
2. The hinged body of claim 1 wherein said hinge has five
knuckles. [The preamble or beginning of the claim
does not correspond with claim 1 and there’s no
antecedent for “said hinge.”]
Proper dependent claim:
2. The cellular telephone of claim 1 wherein said hinged
body includes a hinge with five knuckles.
If the dependent claim recites one or more elements
of the independent claim more narrowly, it should use
the word “wherein”—for example, “The bicycle of Claim
1 wherein”—and then continue by reciting one or more
elements of the independent claim.
Note that a dependent claim does not narrow the scope
of any previous claim from which it depends; it merely
provides an alternative, narrower recitation in a shorthand
manner.
If the dependent claim recites additional elements, it
should use the words, “further including”—for example,
“The bicycle of Claim 1, further including ...”—then
continue by reciting the additional feature(s) of your
invention. The additional features can be those you
eliminated in broadening your basic claims and all
other subsidiary features, including all combinations
and permutations of such features of your invention you
can think of. The features recited more narrowly or the
additional elements recited by the dependent claims can be
specific parameters (such as materials and temperatures)
or other specifics of your invention (such as specific shapes,
additional elements, or specific modes of operation). Refer
to your prior art patents for guidance on how to draft these.
Note that a dependent claim must either recite the
elements of its parent claim more specifically, or recite
additional elements. It may not change any element to
a different type or kind. Thus if the parent claim is an
apparatus claim, each of its dependent claims must recite
additional structure or recite some previously recited
structure more specifically. For example, if your parent
claim recites “1. A house made of red bricks,” its dependent
claim can say “2. The house of Claim 1 wherein said
bricks are made of clay” (recites bricks more specifically)
or “2. The house of Claim 1, further including a layer of
paint over said bricks” (recites additional structure). The
dependent claim can’t say “2. The house of Claim 1 wherein
said bricks are yellow.” A method claim may not be made