APLF.org
 AboutMembersEventsNewsContactJobs
Issue 51 | February 20, 2003
USPTO Encourages New Amendment Format
 In a pre-OG notice dated January 31, 2003, the United States Patent and Trademark Office ("USPTO") is waiving certain provisions of 37 CFR 1.121(a), (b), (c) and (d) ("Manner of Making Amendments") and encouraging all patent applicants to submit amendments in a revised format which, if adopted, will become mandatory by July 2003. However, the waiver and revised amendment format do not apply to amendments in reissue applications and reexamination proceedings under 37 CFR 1.121(h) and (i) which are governed by 37 CFR 1.173 for reissue applications and 37 CFR 1.530(d)-(k) for ex parte and inter partes reexaminations.

Under the revised format, each section of an amendment paper (e.g., Introductory Comments, Amendments to the Specification, Amendments to the Claims, and Remarks) must begin on a separate sheet in order to facilitate separate indexing and electronic scanning of the document. If an amendment adds, changes or deletes any claim, a detailed listing of all claims that are, or were, in the application, irrespective of whether the claim(s) remains under examination in the application, must be presented, and the amendment to the claims is expressed in the listing. The listing must be provided in sequential ascending numerical order along with one of the following status identifiers provided for every claim in a parenthetical expression following the claim number:
  1. (Original): Claim filed with the application following the specification (i.e., not added by preliminary amendment).
  2. (Currently amended): Claim being amended in the current amendment paper.
  3. (Previously amended): Claim not being currently amended, but which was amended in a previous amendment paper.
  4. (Cancelled): Claim cancelled or deleted from the application.
  5. (Withdrawn): Claim still in the application, but in a non-elected status.
  6. (Previously added): Claim added in an earlier amendment paper.
  7. (New): Claim being added in the current amendment paper.
  8. (Reinstated - formerly claim # _): Claim deleted in an earlier amendment paper, but re-presented with a new claim number in current amendment.
  9. (Previously reinstated): Claim deleted in an earlier amendment and reinstated in an earlier amendment paper.
  10. (Re-presented - formerly dependent claim # _): Dependent claim re-presented in independent form in current amendment paper.
  11. (Previously re-presented): Dependent claim re-presented in independent form in an earlier amendment, but not currently amended
Multiple status identifiers should not be used for any single claim. However, consecutive cancelled or withdrawn claims may be aggregated into one line of the listing (e.g. Claims 1 - 5 (cancelled)).

Claims which are currently being amended must also be submitted with strikethrough for deleted matter and/or underlining for added matter. However, no separate "clean" version of the amended claims is required. Similarly, any new claim added by amendment must be indicated by the appropriate status identifier and shall not be underlined. Thus, newly added claims must be presented only in clean version.

The currently amended status should be used where applicable. Consequently, any "previously reinstated" or "previously re-presented" claims which are currently being amended must be indicated as "currently amended" with the appropriate markings.

The following example is provided in the notice.
Claims 1-5 (cancelled)
Claim 6 (withdrawn)
Claim 7 (previously amended): A bucket with a handle.
Claim 8 (currently amended): A bucket with a blue handle.
Claim 9 (withdrawn)
Claim 10 (original): A bucket with a wooden handle.
Claim 11 (cancelled)
Claim 12 (new): A bucket with plastic sides and bottom.
Claim 13 (previously added): A bucket having a circumferential upper lip.
Claim 14 (re-presented - formerly claim 11): A black bucket with a wooden handle.
Amendments to the specification are to be made by presenting replacement paragraphs, sections, or a substitute specification which have been marked up to show changes made relative to the immediate prior version. As with claims, a clean version of the amendments to the specification is not required.

Amendments to the drawings are to be made by presenting replacement figures which include the desired changes, without markings, and which comply with 37 C.F.R. 1.84. The figure number in the amended drawing should not be labeled as "amended," but the amended drawing sheet should include all of the figures appearing on the immediate prior version of the sheet, even though only one figure may be amended. The changes to the drawings must be explained in the accompanying remarks section of the amendment paper and, and, if not approved, the applicant will be notified in the next Office action.

To discuss this topic further, please contact the author, Bill Heinze, at Thomas, Kayden, Horstemeyer & Risley. The information contained in this email is provided for informational purposes only and does not represent legal advice. Neither the APLF nor the author intends to create an attorney client relationship by providing this information to you through this message.

 AboutMembersEventsNewsContactJobs