Check this out. We analyzed 10,442,614 office actions issued by the USPTO in order to determine how often examiners provide an indication of allowable subject matter limited to one or more allowed dependent claims. This scenario is consistent with that notorious examiner text blip that goes something like: “…claim x is rejected as being dependent upon a rejected base claim but would be allowable if rewritten in independent form including all of the limitations of the base claim and any intervening claims.” As is shown in the chart above, just over 14% of all office actions were found to include this allowable dependent claim scenario.
Fascinating! But let’s drill down. What might the trend look like through the lens of one specific corporate patent portfolio? To answer that question, we limited the data to the patent portfolio owned by Boston Scientific, as in the medical device company with headquarters located in our favorite state of Minnesota. The allowable subject matter pattern for this company followed a relatively similar trend line:
Now. let’s go one step further. Let’s drill down to one single examiner who often handles Boston Scientific applications. That examiner is Christine Hopkins Matthews. Here are some interesting numbers for Ms. Hopkins:
2087 = Total number office actions written across her entire docket of 802 applications
303 = Total number of office actions she has written across the 73 Boston Scientific applications that she has handled
34% = Percentage of the 303 Boston Scientific office actions in which she included an allowable dependent claim (104 of the 303 office actions)
BEST PRACTICE? This begs the question: Would it not be a good idea to proactively optimize every dependent claim pending in front of an examiner prone to frequently allowing dependent claims? It is certainly possible now to know which examiners demonstrate such a propensity. So, should you not flag applications assigned to such an examiner for a dependent claim review during the earliest stages of prosecution? How much claim value may Boston Scientific have given away unnecessarily by accepting allowance of less than ideal dependent claims?