Assembling the Dependent Claims

• Author: Slusky, Ronald D.
• Pages: 123-137

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.1It 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

claims 3 and 4, respectively.3This 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 non-chained 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 non-chained approach of Figure 11-1(B) maximizes the possibil-

ity 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.

123