How the examination of dependent claims can guide decisions
When examining Freedom-To-Operate for a new product, both granted patents and applications are examined. Frequently project managers come up with a dilemma regarding patent👉 A legal right granting exclusive control over an invention for a limited time. applications under examination whose claims may present infringement👉 Unauthorized use or exploitation of IP rights. risks. A challenge comes about when an independent claim presents an infringement risk👉 The probability of adverse outcomes due to uncertainty in future events. but somehow this independent claim feels too generic and unlikely to be granted as is.
There are three situations where the challenge is found:
- A patent application under examination has a claim that presents an infringement risk, and it is uncertain or even feels unlikely that the claim may eventually be granted.
- A patent application has a first claim that presents an infringement risk, and this claim may be challenged through relevant prior art, but dependent claims present good fallback positions.
- An INPADOC family includes a member in one jurisdiction that has claims slightly different from applications in other jurisdictions and these claims present an infringement risk whereas claims of other members of the family do not present an infringement risk.
- Utility models, granted, have a first claim that presents an infringement risk, and this claim is too general and feels not novel or obvious.
So how do we deal with infringement risks? The situations described above are situations where we are forced to make decisions in the face of uncertainty, in other words we are forced to make an informed guess and then select the best course of action based upon this guess. Why are we forced? Because the product development process cannot wait; design needs to be frozen, tooling needs to be committed, launch dates need to be met.
The process of making informed guesses and taking key design decisions is explained through a series of examples as given below.
Example 1: KR1020230072943A
This patent application concerns dishwashers and focuses on the drying function by injecting a stream of drying air. Claim 1 of this patent application is quite generic representing an architecture whereby air flows from the bottom of the tub. The claim describes a “an internal flow space for changing the flow direction of the drying air”. This is too general. Any type of air outlet potentially changes the flow direction of the drying air. When our design is adopting this architecture of injecting air from the bottom of the tub, we have a high infringement risk. Knowledge of prior art indicates that claim 1 is unlikely to be accepted as is. How is it likely to be amended if the examiner questions novelty👉 Requirement that an invention must be new and not previously disclosed. or inventive step? In this example, claim 2 in conjunction with patent figures suggests that a possible amendment of claim 1 could be one that incorporates the constraint of claim2 characterized in that “the air flow guide is disposed outside the rotation range of the lower spray arm”.
In this example, insights about likely amendment of claim 1 can be found in the file wrapper of other members of the family. Specifically, US20230148827A1 has an independent claim1 very similar to the Korean family member and also presents an infringement risk. However, the file wrapper includes a disclosure of a European Search Report that identified relevant prior art. On the basis of this prior art, the European application EP4183306A1, even though not granted yet, had in its file history a filing of amended claims wherein the amendment included the constraint “characterized in that the airflow guide is disposed outside a rotation range of the spray arm”.
Therefore, it is reasonable, and highly probable that claim1 of KR1020230072943A is also likely to me amended. In this case, if we remain within the architecture of injecting drying air from the bottom of the tub, one key element to avoiding infringement is to NOT be disposed outside the rotation range of the spray arm, i.e. be within the rotation range of the spray arm.
Example 2: CN114831583A
This patent application claims an “air cleaning assembly” and this air cleaning assembly according to claim1, “at least a portion of the air inlet”. Unfortunately, both the terms “air cleaning assembly” and “closes at least a portion of the air inlet” are rather vague and could potentially, present an infringement risk. The term “at least a portion” can be interpreted in different ways and the key is the purpose of the blocking of a portion of the inlet. The generality of claim 1 could be challenged, but the fallback position in claim 2 referring to an “auxiliary opening” is meaningful. The specification section of the patent provides the needed insight “the accumulation of dust in the air will block the surface of the air purifying assembly, causing the gas to not flow smoothly and affecting the normal operation of the hot air device. Therefore, in the present invention👉 A novel method, process or product that is original and useful., the air purification assembly can also be set to close a part of the air inlet, so that when the air purification assembly is blocked by dust, the air can enter the fan from the unclosed part of the air purification assembly”.
An informed guess about practical infringement risk and an action to avoid this risk can then reasonably be based on the informed guess that an amendment is possible, and likely to happen, that will include “an auxiliary opening”. This would then be the element that needs to be avoided in our design.
Example 3: WO2019068405A1
This patent application claims an “at least one electric drive wheel… for assisting movement of the transport device”. The reference to the control device in claim 1 just specifies the purpose of “controlling the at least one electric drive wheel in response to a transport acting user force”. This is very general and captures a big range of these types of devices. Therefore claim1 would be presenting a high infringement risk if our design satisfies the same general functionality.
Ignoring this patent application because claim 1 is too general is unwire. Equally unwise is to shy away from the intended function. A closer examination of fallback positions as reflected in claims 2-4 are helpful in considering possible outcomes of the examination process. In this case we can consider several future realities of a granted claim after the examination process. One such reality could be the incorporation of the elements of claim 2 as further constraints into claim1, and specifically the reference to “a friction value of the at least one drive wheel”. It would therefore be key that in our implementation, a prudent approach in avoiding infringement risks may be focused on a control algorithm that does not consider friction values.
Example 4: US20080289736A1
This patent application is concerned with the placement of an electronic component in a tyre. In this example claim1 claims the position of the electronic member at the interface of two rubber materials. This interface extends from a free edge of the folded portion of the carcass. This is one of the few possible topologies of possible positions of the electronic component. The claim is therefore rather general and would present in infringement risk if the position of the electronic component in your design is also at the said interface.
Examination of prior art suggests that this topology of electronic component position is already known and hence claim 1 is unlikely to be granted as is. The challenge is how to handle the infringement risk since there are potentially meaningful fallback positions in dependent claims that narrow down the claimed space through further constraints. Inevitably, the current design adopting the general topology of position could also be in infringement of other narrower parameters as disclosed in dependent claims. So how would you adjust your design while you still have enough flexibility.
One challenge is to identify which of the many dependent claims may be the most relevant fallback position for the applicant of this patent application. At the same time, we need to consider which of these dependent claims, as fallback positions, could be relevant to our design. In this example we have eleven dependent claims. Many of these are inconsequential or irrelevant or secondary. One approach to this challenge is to map the claims and mark the ones that are most likely to be most valuable to the applicant and the ones most relevant to us and to the design parameters that we control in our design. We need to phrase our key design decision as a question. In this case the question is “where shall we place the electronic component”. When we examine dependent claims with regards to the key design decision that we need to make, this decision phrased as a question, we see that claim 4 is the most critical. Claims 4, 6, 9, 10 all refer to a third rubber mass and “the second mass being axially interposed locally between the rubber first and third masses”. If this is also the one most likely to be relevant to the applicant, this is the dependent claim that we need to focus on for working around. So, in seeing claim 1 and claim 4 together, then we have a focus to what design changes we may need to make to minimize possible infringement risks.
One may be tempted to consider that dependent claims 2 and 3 are likely to be most relevant fallback positions. However, these claims refer to specific positions in mm, Claim 4 on the other hand, refers to a system architecture. This is an assessment that needs to be done, and frequently domain knowledge needs to be the guide to this assessment. When there is significant doubt there, we can consider both alternative possibilities.
