We are currently developing a new site to host the Patent Manual of Practice and Procedure. The BETA version of this site is now available for you to review. The information and content displayed in the BETA site is only available for testing purposes. Do not use or reference the information in the BETA site when making any decisions or actions regarding IP rights. Consideration of Independent and Dependent Claims

Date Published

Where an independent claim lacks novelty, examiners will also have to consider the novelty of the dependent claims, as in all likelihood the applicant will promote a feature in a dependent claim into the independent claim, in order to overcome the novelty objection.

Where a dependent claim adds a trivial feature that does not materially affect the working of the invention, it is unlikely that the feature will constitute an essential feature of the claim. In such situations, an objection of lack of novelty taken against an independent claim should also be taken against the relevant dependent claims.

Where a dependent claim adds a feature which materially affects the working of the invention, it is likely that the feature is an essential feature of that claim, i.e. if that feature is not in the citation, the claim will be novel and the novelty objection should not be raised against that claim, or claims dependent thereon. Moreover, it should be noted that features may be present in the dependent claim which, while conferring novelty on the claim may not establish its inventiveness.  When formulating objections in such circumstances, examiners should bear in mind the principles at Novelty and Inventive Step.

Where the statement of claims involves a complex set of dependencies, it may be that:

  • the novelty of a particular claim depends upon to which claim it is appended; and
  • there may be more than one claim potentially containing a novelty-conferring feature to which that claim is appended.

In this situation, examiners should make a judicious assessment of which features of the claim are essential and assess novelty on that basis.

Back to top