Up to 20 claims, including three independent claims, are paid
for in the standard filing fee for a US non-provisional patent
application. Some clients prefer matching claims in the claim
set, others prefer varied claims. What are the pros and cons
of each?
Matching claims have identical or near-identical claim language
across the independent claims and again across the dependent
claims, and near identical scope. Varied claims have
different words, phrasing, punctuation and/or scope. For
example, a claim set could have a method for the first independent
claim, a tangible, computer-readable media with instructions for a
processor to perform a method as the second independent claim, and
a system in which components perform actions of a method, as the
third independent claim. Clearly, these claims have at least
slightly different scope, as one is to a method, one is to a media
and one is to a system. In a matching claim set, these three
types of claims would have different preambles, and the bodies of
the independent claims would have identical or near-identical claim
language tailored to meet the preamble. In a varied claim
set, different claim terms, nouns, verbs, adjectives, structures,
connections among elements, actions, relationships among elements,
etc., can be employed to capture various novel aspects.
Matching claim sets have the advantage that they may be relatively
easier to prosecute, since the arguments need be made only once
(e.g., for the first independent claim and the first of any
dependent claims argued). Arguments for subsequent
independent claims and dependent claims can just reference the
earlier arguments. Amendments, similarly, need be crafted
only once for the first independent claim and any dependent claims
that depend from it, as needed, and then copied (or slightly
modified) for the other two independent claims and respective
dependent claims. This can save costs for a client, since it
should take less time to write amendments and arguments.
Varied claim sets have the advantage that they cover more scope for
the invention. They can also allow for exploration of
different amendments, to see which one has better success during
examination. For example, if one independent claim has
allowed subject matter, and the other two don't, the strategy
followed in the successful independent claim can be propagated to
the other two independent claims. A varied claim set may have
a (slightly) better chance of surviving legal challenge, with one
branch of claims surviving, although claims often stand or fall
together in the courts.
A varied claim set can get restricted during examination.
This isn't necessarily good or bad, just something to be
aware of. A restriction requirement, and the paperwork to
elect an invention and select corresponding claims, followed by
submitting additional claims to fill out the claim set again for
examination, can add to costs and delays for a client.
Matching claim sets can be easier to handle for PCT (patent
cooperation treaty) and foreign applications. It is easier to
meet the unity requirement, and likely also easier to communicate
across different languages, with a matching claim set. There
are also licensing considerations, however licensing issues are
beyond the scope of this article. Ultimately, with all the
above considerations, it can also just come down to personal
preference. Write them the way they want them. All part
of the art of patenting.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.