Overcoming the Problem of Multiple Dependencies in China
date: 2021-10-25 Fangming Chen Read by:

    For the sake of cost and the broadest protection scope, European applicants generally file an application in which a multiple dependent claim depends on another multiple dependent claim, as allowed by the European Patent Office. 

    However, when a PCT application based on a European application enters China or when an application claiming priority of a European application enters China through the Paris Convention, one of the primary formality issues that an applicant often encounters is claims being objected to as multi-dependent claims, in which multiple dependent claims refer back to multiple dependent claims. 

    Usually, similar to what is required for applications in the USA, the CNIPA in China will allow a dependent claim to refer back in the alternative to more than one preceding dependent claim, but such a multiple dependent claim referring back to another multiple dependent claim is not allowed. 

    In such cases, the applicant will be required to adapt or rewrite the dependencies of the claims before filing the application in China or in response to the objections raised in the Office Action. To avoid the aforementioned formality issue during the examination, we generally prompt the applicant or our clients to make proper adaptations to the claims prior to the application, so as to allow for the whole process to be expedited. 

    To be specific, a straightforward way is to rewrite all the concerned dependent claims so that they solely refer back to the independent claim. If there is a dependent claim referring back to any of the preceding claims, for example, when adapting the claim, the dependency may be rewritten so that it refers back to claim 1 or an independent claim only. 

    Nevertheless, if the intention of the applicant or client is to preserve the scope of the dependent claims in a better way, there is currently a different practice in tackling the same issue by adding new dependent claims. In doing so, any dependent claim that refers back to another multiple dependent claim will be divided into two dependent claims, with one referring back solely to an independent claim to have the broadest scope, while the other refers back to a dependent claim that was referred to and has the narrowest scope. By illustration, considering a dependent claim depending on any of claims 1 to 3, when adapting the dependency, the concerned claim may be amended so that it refers back to claim 1, and at the same time, a new dependent claim that refers back to claim 3 may be added. 

    For a cost-efficient application, straightforward adaptations always seem to be the better choice. On the other hand, applicants may still keep their intentions while overcoming the issues by adopting the alternative procedure.