Assembling the Dependent Claims

• Author: Ronald D. Slusky
• Pages: 147-162

CHAPTER ELEVEN

Assembling the Dependent Claims

A claim, be it in independent or dependent form, may recite any number

of features, each worthy of a fallback feature claim.1 It may also include

any number of terms, each worthy of being backstopped by a definition

claim.2

How are all these claims to be arranged? They could all be made to

depend as peers from the parent claim. Or they could be strung out in a

chain, each claim depending from the next. Mix-and-match combinations

of these are also possible. The number of claims required to cover all the

possibilities is usually prohibitive, however, and so choices need to be

made. This chapter presents guidelines for making those choices and, in

so doing, implementing a successful Planned Retreat for the invention.

The Chaining Dilemma

Figure 11–1(A) depicts a claim family comprising claims 1–4. The broad

invention is claimed in independent claim 1. A terminology definition X

is recited in dependent claim 2. Fallback features A and B are recited in

1. See Chapter Six.

2. See Chapter Ten.

147

FIGURE 11–1Dependent claims can be chained or nonchained.

148 CHAPTER ELEVEN

claims 3 and 4, respectively.3 This is referred to as a claim chain because

the claims are linked one to the next. Claim 4 depends from claim 3,

which depends from claim 2, which depends from claim 1.

Figure 11–1(B) depicts a claim family in which the same dependent

claims are arranged as peers in a nonchained arrangement. Claims 5, 6,

and 7 are identical to claims 2, 3, and 4, respectively, except that claims

5, 6, and 7 all depend from claim 1 instead of being dependent from one

another.

The nonchained approach of Figure 11–1(B) maximizes the possibility

that a competitor’s product will infringe at least one valid claim of the

claim family. If claim 1 proves to be invalid, infringement occurs as long

as the competitor’s product includes any one of the limitations X, A, and

B in conjunction with the limitations of claim 1. For example, claim 6 is

infringed as long as the competitor’s product includes fallback feature A

in conjunction with the limitations of claim 1. If the product also meets

limitations X or B, then that many more claims are infringed.

The chained approach of Figure 11–1(A), by contrast, does not maxi-

mize the possibility that a competitor’s product will infringe at least one

valid claim of the family. A competitor’s product that does not meet

terminology definition X will not infringe any of the dependent claims,

even if that product includes features A or B, because claims 2, 3, and 4

each incorporate terminology definition X. If claim 1 were to be invalid

in this situation, this family would contain no claim that is both valid and

infringed.

The chained approach does have an advantage, however. It provides

more robust protection against unforeseen prior art or indefiniteness.

Claim 4, for example, encompasses not only its own limitations but those

of claims 1 through 3. With the nonchained approach of Figure 11–1(B),

by contrast, none of the dependent claims benefit from the potentially

enhanced patentability afforded by the others.

If the total number of fallback features and terminology definitions is

small, we can cover all bases with a reasonably small number of claims.

In that case, the “chain-or-not-chain” (aka the “wide-or-deep”) problem

goes away. For example, Figure 11–2 shows that only seven dependent

claims are required to cover all ways of combining any one or more of

limitations X, A, and B with the limitations of claim 1.

The number of possible combinations doubles for each additional

claim, however. Accommodating all the combinations of four, five, or

six fallback feature claims and/or definition claims within a single claim

3. A particular claim may recite more than one fallback feature or terminology defini-

tion. For simplicity, this discussion assumes that is not the case.