Tuesday, 9 November 2010

T 1857/07 – The Importance Of Being Dependent

A little bonus especially for my American readers, who now rank third (!) in pageviews behind my readers from France and Germany.

[2.4.2] Claim 11 as originally filed refers to Claim 1, which has no limitation as to the wavelength used for irradiating the photoresist. Only Claim 2 cites “below about 200 nm” and Claim 3 mentions 193 nm. However, as Claims 2 and 3, like Claim 11, exclusively refer to Claim 1, a combination of the features of Claims 1, 3 and 11 is not disclosed.

[…] The requirements of A 123(2) are not met.

This is something that applicants from countries where multiple dependent claims are not usual or even forbidden should be aware of. In Europe, multiple dependent claims may provide a basis for claiming combinations that might otherwise be rejected as contrary to A 123(2). So when drafting PCT applications that are to enter, inter alia, into the European regional phase, you might consider drafting the application with an original set of claims comprising multiple dependencies, so as to create a basis for combinations that might prove useful during the examination in Europe. When entering into the U.S., Chinese, etc. national phases, you then eliminate the multiple dependencies. Overall, you should be better off: you gain some “freedom to combine” in Europe but you do not lose anything elsewhere. 

If you start with a PCT application without any multiple dependent claims, you might not have to amend the claims when entering the U.S., Chinese, etc. national phases, but in Europe you could face the same problem as the patentee in the decision above.

An alternative would be to provide cookie-cutter sentences stating that all the particular embodiments can  be combined in all possible ways, but this is less explicit and more risky, given the EPO’s harsh line on A 123(2).

Should you wish to download the whole decision, just click here.