Anticipate obstacles and be prepared – fallback positions in patent applications

Photo: Brian A. Jackson

Anticipate obstacles and be prepared – fallback positions in patent applications

The office action you have received contains a negative opinion on your patent application, stating that the independent claims are already disclosed in the prior art. The publication referred to in the office action does indeed appear to contain all the features of the independent claims. How unfortunate! Should we raise a white flag at this stage and abandon the application? In most cases, no.

The Examiner uses the independent claims as a starting point for the examination because they define the scope of protection of the invention in its broadest form. The patent attorney tries to draft an independent claim in such a way that it has at least one distinguishing feature over the prior art. Nevertheless, as it is not desirable to limit the scope of protection of an invention unnecessarily, it is advisable to avoid adding excessive distinguishing features to an independent claim when drafting claims.

However, when drafting a patent application, it is practically impossible to be aware of all the material constituting the state of the art and it is therefore advisable to be prepared in advance for the possibility that the Examiner will probably find publications which were not known by the patent attorney when the patent application was drafted. Moreover, once filed, no new content can be added to the patent application, which poses its own challenges in overcoming the objections to patentability.

Fallback positions as a guarantee for patentability

When drafting a patent application, potential obstacles to patentability are anticipated by creating so-called fallback positions, which can be used if it appears that the obstacles identified by the Office cannot be overcome without limiting the scope of protection of the independent claims. The most common form of fallback positions are therefore dependent claims.

In addition to the obstacles regarding patentability, the office action may also indicate which claims are new. If the novelty assessment in the office action is correct, and one of the dependent claims considered to be novel contains a feature or features which, when added to an independent claim, do not excessively limit the scope of protection, it is worth considering limiting the independent claim to such feature or features.

As a general practice, the drafted independent claim contains all the features necessary for the invention, and the optional features of the various embodiments of the invention will be the fallback positions in the dependent claims. In addition, it is possible to include in the specification of the patent application, separately, advantageous embodiments which may be later useful in limiting the independent claims.

What is a good fallback position?

When preparing fallback positions, it is good to take care that the dependent claims are not too narrow, which could unacceptably reduce the scope of protection of the invention. The ideal fallback position limits the scope of protection only to what is needed to distinguish the independent claim from the prior art and to make the independent claim inventive. On the other hand, scattering obvious features as dependent claims may not be the most effective way to ensure patentability. Often, a feature of an invention has, in addition to its broadest form, several narrower forms, each of which provides some additional advantage (which advantageously is also disclosed in the application), and such narrower forms are typically presented as preferred embodiments. Of these preferred embodiments, the most appropriate may be used as a limiting feature if the fallback position of the broadest scope of protection is not enough to provide a sufficient difference to the state of art. However, when limiting the scope of the claims, it should be noted that if two different features are limited, some Offices may require that all the limitations selected must be from the same so-called preference level.

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