International Patent Matters from a Canadian Patent Lawyer’s Perspective

Patent Claims

I once had an examiner ask me on the phone at the end of an interview why so many applicants file applications with so many claims. He is right: most of those claims are inappropriate.

I explain to my clients that dependent claims are “embellishments” on the main invention represented by the independent claim(s) and are there only as back-ups. Dependent claims are irrelevant if the preceding independent claim is valid (except for the small exception below). If the preceding independent claim is invalid then the dependent claims become relevant. But dependent claims are only really relevant if they add a patentable distinction. So don’t bother adding a dependent claim that says that the tire tread comprises a rubber compound.

Another analogy that I use is that of the Gatling gun. If the first barrel has a dud cartridge, then you rotate to the second barrel. But by the time you get to a barrel that fires, you may not be aiming at your original target.

The small exception? Occasionally a dependent claim can be used to clarify a preceding claim. Thus if the preceding claim stipulates for: “scissors having multiple openings to receive fingers” and a subsequent dependent claim stipulates that: “the multiple openings consist of two openings specifically”, then this can help infer that the preceding claim presumably covered scissors having more than two openings to receive fingers. But dependent claims used for this purpose are in the minority.

As long as clients are impressed by the number of claims in their patents, I suspect that patent attorneys will continue to deliver what the clients seem to want.