I frequently like to hedge my bets while prosecuting patent applications before the USPTO. If an examiner is arguably wrong in rejecting claims based on the prior art, I will often suggest to my clients to argue the rejection without amending the claims, but also to add new dependent claims that distinguish over the cited art.
As experienced patent prosecution attorneys know, examiners are much more willing to allow an application where the claims have been amended, as opposed to when the applicant simply argues that the rejection is incorrect. Examiners generally put a decent amount of effort and thought into rejecting claims, and they are accordingly hesitant to simply admit they are wrong unless a rejection is blatantly incorrect (and some will not even then). Anyone with the remotest understanding of human psychology knows that it is difficult to convince people they are wrong by simply arguing with them, even if there is supporting evidence.
Because of this, there is a general consensus among patent attorneys and patent agents that it is a superior strategy to amend the claims in response to prior art rejections, even when the examiner is wrong. The theory goes that even minor amendments are better than simply arguing rejections because it allows the examiner to save face and fosters a good relationship with the examiner.
I have a reasonable fear of amending claims that do not have to be amended. In the back of my mind, I am always looking forward in time and envisioning that sacrificing of claim scope allows a competitor to design around the resulting patent. There have been a number of times where I have amended the independent claims while preparing a response to a prior art rejection, then second guessed myself. I then move my amendments into one or more new dependent claims, and argue the prior art rejection without any amendments.
This gives the Examiner the option to allow the dependent claims and save face, without giving up on the original scope. If the Examiner maintains the rejection of the independent claims and allows one or more of the allowed dependent claims, the client then has the option of taking the allowable claims, or fighting for broader protection. It also combines two possible strategies – (1) arguing the original claim language and (2) pursuing different scope – into a single response, which helps to expedite prosecution compared to proceeding with option (1) in a first response, then moving on to option (2) in a second response.
Such a strategy also prevents the client from narrowing claims where there is no chance that the examiner will grant a patent of a scope desired by the client. When this happens, the client will have to appeal to obtain a patent. Would you rather appeal broader independent claims (and have fall back positions in dependent claims) or appeal independent claims that were unnecessarily narrowed? I’m going with the former.
New dependent claims can also allow a patent attorney to pursue a number of different features of varying scope that are distinguishable from the cited prior art. Giving the Examiner a number of different options for granting a patent in my experience increases the chances of obtaining an allowance. But what do the patent analytics say?
The data says that adding new dependent claims during prosecution increases allowance rates in every single technology center at the USPTO.
Well, at least the data that I was able to find using LexisNexis PatentAdvisor.
Using PatentAdvisor’s File Wrapper search, I searched responses to Office Action filed with the USPTO that used the language “new dependent claims” or “new dependent claim.” I assumed that if this language was mentioned, the applicant was adding new dependent claims. It is of course possible that responses adding new dependent claims could use other language, but it is my assumption that a majority of responses adding new dependent claims used this language.
After obtaining the results for “new dependent claims” or “new dependent claim,” I then narrowed the results to applications disposed (patented or abandoned) since 2019 and that included a prior art rejection, then sorted by technology center for allowance rates and compared these results to the average allowance rates in each technology center for disposed applications during this same time period that included a prior art rejection.
The results show that adding new dependent claims is not detrimental in any of the technology centers in terms of allowance rate. In fact, it is beneficial for increasing allowance rates, especially in technology centers having the lowest allowance rates.
Technology centers 1600, 1700, 3600 and 3700 are the most difficult tech centers at the USPTO and adding new dependent claims in an application with a prior art rejection results in the biggest jumps in allowance rates in these art units. In contrast, in the easier technology centers, 2100, 2400, 2600 and 2800, adding new dependent claims in an application with a prior art rejection still appears to have a meaningful benefit, but not as much as the more difficult art units.
Thus, I suggest following the data and adding new dependent claims early and often to increase the chances subject matter is presented that an examiner will find to be allowable.