Claims dependent

The discovery that the rate of reaction of the desulfurization of fossil fuels is enhanced by the addition of a flavoprotein to the biocatalyst was then claimed in the other two family patents. So, the patents are related to the use of a flavoprotein, particularly FMN reductase, in addition to the biocatalytic material for increasing the rate of desulfurization. In the World patent, ten more claims were allowed, compared to the US issued patent. The excess claims include a set of dependant claims in which the microorganism containing the recombinant DNA molecule is considered. However, in the invention a two-step process is stated, it is just the contact between the fossil fuel with an aqueous phase containing a biocatalyst and a rate-enhancing amount of a flavoprotein. There is no indication whatsoever on how much that amount could be. 

Case History In an attempt to protect Lipitor from generic competition, Pfizer sued Ranbaxy in district court asserting, in part, that Ranbaxy infringed upon dependent Claim 6 of U.S. Patent No. 5,273,995 ( 995). 

Analysis The active ingredient in Lipitor is atorvastatin calcium. Pfizer lost because of a deficiency in the way dependent Claim 6 related to Claims 1 and 2. The following chart is presented to help understand how this happened ... 

To avoid legal glitches when claiming compounds, claim important compounds individually in independent claims. It costs more up front, but helps avoid expensive and potentially catastrophic patent defeating legal glitches later. If you do use dependent claims, make them all dependent on a broad, independent Claim 1. 

Scrutinize all claim interrelationships to ensure, where appropriate, overlapping subject matter. For example, if a dependent claim is drawn to a salt, make sure the claim from which it depends includes a salt. 

There are parallel ligand-dependent (claimed to be associative) and ligand-independent paths in the reactions of [Cu(bigH)]2+, big=bigua-nide, with aminoacids (aaH) rate-limiting formation of the intermediate [Cu(bigH)(aa)]+, is followed by rapid formation of [Cu(aa)2] (307). 

The V(OH)2/Mg(OH)2 gel is believed to be a solid solution with a lattice similar to Cdl2, and the yield of hydrazine reaches a maximum with the magnesium to vanadium ratio in the range 1 5-10 (133). Shilov finds (1) no 14N isotope effect corresponding to the Schrauzer mechanism, (2) that there is no evidence for vanadium IV), (3) that the reduction of allyl alcohol is independent of, and competitive with, dinitrogen reduction, and (4) a different dependence on P 2 from the square dependence claimed. In short, no evidence for diazene, but much more for a direct reduction to hydrazine (136). 

The inventors of the patents-in-suit claimed an efficient method of producing paclitaxel from 10-deacetylbaccatin in the eventually issued patent US 4,924,011. The broadest claim of the patent (claim 1), together with the first dependent claim (claim 2) are reproduced for your reference in Figure 2.15. 

Borg Indak asserts that Benson was the inventor of the sole feature added by claim 11. However, a dependent claim adding one claim limitation to a parent claim is still a claim to the invention of the parent claim, albeit with the added feature it is not a claim to the added feature alone. Even if Benson did suggest the addition of the prior art extender to what Nartron had invented, the invention of claim 11 was not the extender, but included all of the features of claims 1,5, and 6, from which it depends. It has not yet been determined whether Benson contributed to the invention of claim 1 (although he does not claim to be a co-inventor with respect to claims 5 and 6). If Benson did not make those inventions, he does not necessarily attain the status of co-inventor by providing the sole feature of a dependent claim. See [Hess v. Advanced Cardiovascular Sys., Inc., 106 F.3d 976, 980-81 (CAFC 1997)] (emphasis added). 

Using correct patent terminology means that one should say that dependent claims depend from another claim and not on. We are not really sure why this convention is used, but if you want to sound really smart and patent savvy, make sure you follow this convention whenever possible. 

In this example claim set, claim 1 is independent since it does not depend from any other claim—the claim stands alone. In contrast, you can see that the claims 2 and 3 are each dependent, they incorporate the terms of another claim and then provide further limitation to the claim that they are dependent from. Whereas independent claim 1 allows selecting a compound with a possibility of 3 different groups at X, dependant claim 2 allows only one (hydrogen) so dependent claim 2 is narrower than claim 1 that it depends from. Finally, claim 3 depends from claim 2, meaning that it incorporates all of the definitions from claim 2 and then provides a further limitation. As a result, the compound of claim 3 will have the compound of formula I as defined in claim 1 except that X and Y are both set to hydrogen. 

A simpler but equivalent way of presenting these three claims is illustrated in Figure 5.2. The Markush structure is not repeated because it is understood that the dependent claim is importing the entire Markush that it is dependent from, and then further limiting that structure according to the specified language. 

FIGURE 5.3 Claim set with improperly dependent claim. 

You may ask, Why bother to include dependent claims in the first place If someone is infringing a dependent claim she will also be infringing the independent claim from which it is derived. There are at least a few practical reasons. First, it is often easier for someone in the future to try to have your broadest claims declared invalid for a lack of novelty or for being obvious broader claims are more likely to read on the prior art because they occupy more turf. Second, it is generally harder to enable one to make and use a broader claim because a patent claim needs to be enabled throughout its... 

The existence of dependent claim 2 points out specifically that claim 1 includes salt forms. This is important because in some instances, claims might be read more narrowly then the drafter intends. The use of dependent claims helps more clearly define the breadth of the claim it is dependent from as well as provide additional, narrower protection. 

This does not resolve the question of specifically how much of the compound of formula I is required in the pharmaceutical tablet. Normally, the person drafting the claim would have drafted additional dependent claims further narrowing the invention to increase its clarity and limit its scope. For example, claims 2 and 3 give a much clearer picture as to how the pharmaceutical tablet of the previous claim could be further delineated. Notice that claim 1 is independent and claims 2 and 3 are dependent claims since claim 1 can stand alone but claims 2 and 3 borrow all of the limitations from the claim they depend from and then limit the scope further. 

Claim 1 is not allowed, claims 2-5 are allowable if rewritten as properly independent and/or dependent claims. 

Since the applicant did not argue the separable patentability of the dependent claims, it was not further evaluated in the court s opinion those claims were not put into issue by the applicants. 

After these is the heart of the patent, the claims. There is no limitation on how many claims are made however, redundant and superfluous claims are frowned upon by the examiners and should be avoided. It is important to know that all dependent claims are narrower in scope and written exclusively for the purpose of protecting the invention, or any part of it, should the broader claim or claims be knocked out in court proceedings. 

Claim can be dependent or independent a dependent claim incorporates by reference all the limitations of the claims to which it refers and is always narrower must depend on a preceding claim and not on a following claim (numbering of claims is readjusted during prosecution). 

Cannot serve as a basis for another multiple dependent claim may refer to other dependent claims, and a dependent claim may depend on a multiple dependent claim. 

It takes the place of writing several dependent claims—in its spirit. 

A flat special fee is charged at the time of filing application if multiple dependent claim or claims are included. 

Commonly used for temperature, pressure, time, and dimensional limitations. Up to" means from zero to the top limit at least" means not less than (does not set upper limit, which must be fully disclosed in specification) specification must support eventual ranges. A dependent claim cannot broaden the range. Range within range is indefinite in a claim, but acceptable in specification. 

The claims are critically important. They require careful drafting, preferably by highly qualified and experienced patent counsel, to cover the invention as broadly and comprehensively as appropriate. Normally the claims should be drafted as broadly as the prior art and the specification allow. Allowable claim scope will, of course, depend in large part on the state of the art. Inventions in a crowded art (i.e., technology with a relatively large amount of closely related prior art) can generally only be claimed relatively narrowly. Inventions for which there is relatively little prior art can be claimed more broadly. Generally, one attempts to draft one or more independent claims that describe the invention as broadly as the prior art will allow and then narrower, dependent claims specific to pre-... 

---