Claims That Reference Other Claims – Issues Regarding Fees and Multiple Dependencies
In earlier pieces regarding claims that reference other claims I tackled the history of such claims in the U.S. (here), and the legal effect of such claims (here), specifically the question under what circumstances they count as dependent claims. In this final piece of the series, I address a couple of smaller issues regarding claims that reference that other claims: how such claims are counted for fee purposes; and the treatment of multiple dependent claims.
Fee Calculations for Claims Referencing Other Claims
Prior to 1965 there was no distinction for fee purposes between independent claims and dependent claims. The distinction for fee purposes between independent claims and dependent claims only came into being in only with the passage of a law that provided that excess independent claims cost five times as much in government fees as excess total claims (whether dependent or independent).[1] An Official Gazette notice at the time indicated that claims that referenced other would count as dependent claims for fee purposes (although improper dependent claims would later be required to be canceled).[2]
That any initially-filed claim referencing another claim would be treated as a dependent claim for fee purposes was made explicit in a 1967 revision to the MPEP.[3] That MPEP language has carried over ever since.[4]
The only attempt to change this approach was part of a 2006 proposal strictly to limit the number of claims (independent and total) that could be included in a single application. Under that approach a claim would have been treated as an independent claim if it referred to another claim but did “not incorporate by reference all of the limitations to which such claim refers,” or if it referred “to a claim of a different statutory class of invention.”[5] In responding to comments on the proposed rule change, the USPTO characterized such claims as “claims in dependent form that are effectively independent claims.”[6] The rule change never went into effect, being withdrawn in 2009 after being blocked by litigation.[7] (The USPTO recently made a similar distinction among claims that reference other claims, between those that are proper dependent claims and those that merely reference other claims, without being in dependent form.[8])
So is there any downside to taking advantage of the USPTO’s treatment (for fee purposes) of any claims that reference other claims as dependent claims? There isn’t much evidence of a downside, but dicta in Washington Res. Found. v. Sanofi[9] suggests one possibility. In Sanofi a patentee was arguing that a claim referencing another claim should be interpreted as an independent claim, rather than as a dependent claim. The court found otherwise, relying mainly on the form of the claims to find that the claim in question was a dependent claim. But it also mentioned that the patentee had not counted the claim in question as an independent claim in its transmittals to the USPTO, and considered that fact (along with the examiner’s similar treatment of the claim) supported the finding that the claim in question was a dependent claim.[10]
Treatment of Multiple Dependent Claims
A claim in multiple dependent form is required to “contain a reference, in the alternative only, to more than one claim previously set forth.” 35 USC 112(e). But how should such a claim be interpreted? As one claim with containing a number of alternative formulations (in the form of referenced claims), the teaching or suggestion of any which in the prior art, along with the claim’s recited features, renders the claim invalid?[11] Or as separate claims, corresponding to respective of the referenced claims, with the separate claims having independence regarding validity?
The answer to this question was not provided until 2023, in an opinion issued by Director Vidal in Nested Bean, Inc. v. Big Beings USA Pty Ltd. [12] After surveying the language of the relevant statutes and rules,[13] prior cases, legislative history, and USPTO guidance,[14] the Director concluded that the law required the separate consideration the limitations of each claim referenced in a multiple dependent claim.
[1] Pub. Law 89-83, 79 Stat. 259, Sect. 4 (1965).[2] Effect of Recently Enacted Statute Increasing Statutory Fees Payable to the Commissioner of Patents, 818 OG 1207 (Sept. 28, 1965) (“For the purposes of this statute, a claim is in dependent form if it incorporates by reference a single preceding claim, … and includes all the limitations of the claim incorporated by reference. If [during examination] a claim purporting to be in dependent form is determined not to be a proper dependent claim, that claim will be required to be canceled”).[3] MPEP 608.01(n) (3d Ed., Rev. 12, April 1967) (“the initial determination, for fee purposes, as to whether a claim is dependent must be made by persons other than examiners; it is necessary, at that time, to accept as dependent virtually every claim which refers to another claim, without determining whether there is actually a true dependent relationship”).[4] See MPEP 608.01(n)(II).[5] Changes to Practice for the Examination of Claims in Patent Applications, 71 FR 61, 67 (Jan. 3, 2006)[6] Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 72 FR 46716, 46724 (Aug. 21, 2007).[7] See Changes to Practice for Continued Examination Filings, Patent Applications Containing Patentably Indistinct Claims, and Examination of Claims in Patent Applications, 74 FR 52686 (Oct. 14, 2009). [8] Streamlined Claim Set Pilot Program, 90 FR 48579, 48580 (Oct. 27, 2025).[9] 302 F.Supp.3d 1240 (W.D. Wash. 2018).[10] Id. at 1249.[11] Cf. MPEP 2173.05(h) and 2143.03.[12] IPR2020-01234, Paper 42 (Feb. 24, 2023).[13] See Pre-AIA 35 USC 112, fifth paragraph (now 35 USC 112(e)), 37 CFR 1.75(c), and 35 USC 282(a).[14] See MPEP 608.01(n)(I) for the present guidance (citing Nested Bean): “a multiple dependent claim … does not contain all the limitations of all the claims to which it refers, but rather contains in any one embodiment only those limitations of the particular claim referred to for the embodiment under consideration. Hence, a multiple dependent claim must be considered in the same manner as a plurality of single dependent claims.”