The USPTO published revised procedures for presenting preliminary amendments upon filing of a patent application. If on filing an application, an applicant includes a preliminary amendment to the specification, then the publication of the application must be based on the specification and drawings as amended by the preliminary amendment.

The only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125. As a result, the USPTO has revised its procedures to mail a notice (e.g., “Notice to File Corrected Application Papers”) requiring a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125, if an applicant included a preliminary amendment to the specification (other than the claims) on filing.

The specific reference to the prior application required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78(a) can be submitted in an application data sheet (ADC) under 37 CFR 1.76 rather than in a preliminary amendment to the first sentence(s) of the specification. See 37 CFR 1.78(a)(2)(iii) and (5)(iii). If the specific reference is submitted in a preliminary amendment, however, a substitute specification will not be required if the preliminary amendment only adds or amends a benefit claim to a prior-filed application under 35 U.S.C. 120,121, 365(c), or 119(e).

Because a preliminary amendment to the claims or abstract in compliance with 37 CFR 1.121 (c) or 1.121 (b)(2) would include a complete claim listing or replacement abstract, the PTO can publish the amended claims or a replacement abstract as submitted in the preliminary amendment without a substitute specification being filed.

Note, however, that there is no need to file a preliminary amendment to the claims on filing. By making the new claim set part of the originally filed specification, applicant may avoid having to pay an application size fee, as both the specification (including the claims) and any preliminary amendment are used in counting the number of pages for purposes of 37 CFR 1.16(s).

The claim set submitted should be the set of claims intended to be examined, and when the claims submitted on filing are part of the specification (on sequentially numbered pages of the specification), no status identifiers and no markings showing the changes need to be used. A preliminary amendment filed upon the entry of the national stage of an international application under 35 U.S.C. 371 is not part of the original disclosure so the patent application publication need not include such an amendment.

See the Notice here.

  Print This Post Print This Post  

Comments are closed.