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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
ChaPter 9 | Now for the LEGALESE—The CLAIMS | 247 dependent upon an apparatus claim and vice versa, but most examiners will allow an apparatus claim that is dependent upon a method claim. If the parent claim is a method claim, each of its dependent claims must recite an additional step, or recite a previously recited step (or structure in such a step) more specifically. For example, suppose your parent, independent claim recites: 1. A method of heating comprising irradiating a foodstuff in a chamber with microwaves. You can provide a dependent claim which recites one element of claim 1 (the microwaves) more specifically as follows: 2. The method of Claim 1 wherein said microwaves have a frequency of 2250 megahertz. Alternatively (or in addition) you can provide a dependent claim which recites an additional step as follows: 2A. The method of Claim 1, further including freezing said foodstuff after it is irradiated. Or as another alternative (or in addition) you can combine both dependent claims to provide a narrower dependent claim as follows: 2B. The method of claim 1 wherein said microwaves have a frequency of 2250 megahertz and further including freezing said foodstuff after it is irradiated. You can see that many variations and permutations are possible. Although I used letter suffixes to distinguish the above claims, you must use numbers for each set of your claims (an independent and its dependents). An independent apparatus claim (means or structural) requires that you recite a part or a series of parts. In a claim that is dependent upon an apparatus claim you must recite an additional part or modify a previously recited part. In an independent method claim you must recite a step or a series of steps. In a claim which is dependent upon a method claim you must recite an additional step or modify a previously recited step or part. Here are some dependent claims for Claim 11 (set out in Section H, above). Note that each dependent claim either recites an additional element or recites an already recited element more specifically. 11. An article of furniture (etc.). 12. The article of furniture of Claim 11 wherein said sheet of rigid material is made of wood. 13. The article of furniture of Claim 12 wherein said sheet of rigid material of wood is made of chipboard. 14. The article of furniture of Claim 13 wherein said sheet of chipboard has a rectangular shape. 15. The article of furniture of Claim 11 wherein said means for joining comprises a set of flanges, each of which joins a respective one of said support members to the underside of said sheet of rigid material. 16. The article of furniture of Claim 15 wherein each of said flanges is made of iron and includes a cylinder with female threads and wherein one end of each of said elongated members has male threads and is threadedly mated with the female threads of a respective one of said flanges. 17. The article of furniture of Claim 11, further including a layer of a rigid plastic laminate bonded to a top side of said sheet of rigid material. Note that a dependent claim may be dependent upon the parent claim or another dependent claim. I advise making almost all dependent claims directly dependent upon an independent claim, (rather than another dependent claim), since this will make the dependent claims broader: a dependent claim that depends from another dependent claim incorporates the other dependent claim and the independent claim from which the other dependent claim depends. A dependent claim should be numbered as closely as possible to the number of its parent claim (independent or dependent). Note also how I’ve made a physical indication of claim dependency by indenting (nesting) each dependent claim under its parent claim(s) as shown above. This is optional, but makes things clearer for you and the examiner. Also, you should always skip a line between claims (we didn’t do it here in order to conserve space). Multiple Dependent Claims A dependent claim may be made directly dependent upon several previous claims. This is called “multiple dependent claiming” (MDC) and is common in Europe. Example: “3. The widget of claims 1 or 2 wherein …”. However I recommend that you do not use MDC since the PTO’s examiners dislike the practice, there’s a stiff surcharge for the privilege, and for fee purposes each MDC counts as the number of claims to which it refers. (See Appendix 4, Fee Schedule.) A dependent claim will be read and interpreted by examiners and judges as if it incorporated all the limitations of its parent claim(s). Thus suppose your independent and dependent claims read, respectively, as follows:
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N O LO ® “The best roll-up-your-
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Products & Services Books & Softwar
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15th edition Patent It Yourself You
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Acknowledgments My deep thanks go t
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2 3 4 The Science and Magic of Inve
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8 9 E. Make and Sell Your Invention
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13 14 J. The Patent Laws of Other C
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Appendixes 1 2 Abbreviations Used i
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Your Legal Companion A. You Don’t
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Your Legal COMPANION | 3 D. Should
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Your Legal COMPANION | 5 E. New Mat
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C H A P T E R 4 Will Your Invention
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C H A P T E R 7 What Should I Do Ne
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Fig. 7A—Invention Decision Chart
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ChaPter 7 | What SHOULD I do Next?
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482 | Patent it YOURSELF A. Patent
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Nondisclosure Agreement 1. Parties.
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Invention Disclosure Sheet of Inven
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Form 3-4: Application Data Sheet—
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Form 3-4: Application Data Sheet—
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Positive and Negative Factors Evalu
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In the United States Patent and Tra
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Design Patent Application—Preambl
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whether or not any royalty payment
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Bestsellers The Small Business Star
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Online Legal Forms Nolo offers a la
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Keep Up to Date 1 Go to Nolo.com/ne
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About the Author David Pressman is
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