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Archived updates for Wednesday, October 19, 2005

Revised Preliminary Amendment Procedure for U.S. Patents

In a pre-OG notice entiled "Revised Procedure for Preliminary Amendments Presented on Filing of a Patent Application (signed 11Oct2005)" the United States Patent and Trademark Office (Office) announced that it will require a substitute specification whenever an application is filed with a preliminary amendment to the specification (excluding the claims) in order to ensure that the application is correctly published.

The specific reference to a priior application that is required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78(a) can be submitted in an application data sheet (ADS) under 37 CFR 1.76 rather than in a preliminary amendment to the first sentence(s) of the specification. Nontheless, if the specific reference to a prior application is submitted in a preliminary amendment, 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).

If an applicant receives a notice from OIPE (e.g., "Notice to File Corrected Application Papers") requiring a substitute specification because a preliminary amendment was filed that only adds or amends a benefit claim, applicant may reply to the notice explaining that a substitute specification should not have been required because the amendment was only to add or amend a benefit claim. If the preliminary amendment contains other amendments to the specification (other than the claims), a substitute specification would be required, and a reply to a notice requiring a substitute specification without the substitute specification will be treated as an incomplete reply with no new time period for reply being provided.

Because a preliminary amendment to the claims or abstract in compliance with 37 CFR 1.121(c) or I.121(b)(2) would include a complete claim listing or replacement abstract, the Office can publish the amended claims or a replacement abstract as submitted in the preliminary amendment without a substitute specification being filed. Applicants should 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).
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