How are dependent claims treated after a Board decision in reexamination?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

The treatment of dependent claims after a Board decision in reexamination depends on the status of the independent claim and whether the claims were amended:

• If a rejected amended independent claim has a dependent claim that was previously objected to as being allowable except for its dependency, both claims will be canceled.
• If an unamended patent claim is rejected but its dependent claim (amended or unamended) is found allowable, the dependent claim will be confirmed or deemed patentable.

The MPEP provides specific examples:

Example 1: Amended claim 1 is rejected in the examiner’s answer and claim 2 was objected to prior to appeal as being allowable except for its dependency from amended claim 1. If the Board affirms a rejection of amended patent claim 1, the examiner should prepare a “Notice of Intent to Issue Ex Parte Reexamination Certificate” (NIRC) indicating that claims 1 and 2 are canceled.

Example 3: Unamended patent claim 1 is rejected in the examiner’s answer, claim 2 was objected to prior to appeal as being allowable except for its dependency from unamended patent claim 1 and independent claim 3 was allowed prior to the appeal. Dependent claim 2 may be either unamended or amended. If the Board affirms a rejection of unamended patent claim 1, the examiner should issue the NIRC with claim 1 as canceled and claims 2 and 3 as confirmed or patentable.