Issue 05/22 | June 22, 2005
USPTO Relaxes Claim Status Identification Requirements

On June 6, 2005, the U.S. Patent and Trademark Office published a pre-OG notice on "Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c)" announcing that the Office will now accept non-compliant amendments under 37 CFR 1.121(c) where the non-compliance is limited to: 1) the inclusion of text of a canceled claim, or a not entered claim, and 2) use of certain variations of status identifiers in a claim listing. The Office will also now accept claim listings that include the alternative status identifiers set forth below if the amendment otherwise complies with 37 CFR 1.121:

  1. Original - Original Claim; and Originally Filed Claim
  2. Currently amended - Presently amended; and Currently amended claim
  3. Canceled - Canceled without prejudice; Cancel; Cancelled; Canceled herein; Previously cancelled; Canceled claim; and Deleted
  4. Withdrawn - Withdrawn from consideration; Withdrawn – new; Withdrawn claim; and Withdrawn-currently amended
  5. Previously presented - Previously amended; Previously added; Previously submitted; and Previously presented claim
  6. New - Newly added; and New claim
  7. Not entered - Not entered claim

Additionally, the Office may also accept other variations of the status identifiers provided in 37 CFR 1.121(c) when the examiner determines that the status identifier used by applicant clearly and accurately designates the status of the claim.

The Office revised the amendment practice set forth in 37 CFR 1.121 in a final rule that became effective July 30, 2003. See Changes to Implement Electronic Maintenance of Official Patent Application Records, 68 Fed. Reg. 38611 (June 30, 2003), 1272 Off. Gaz. Pat. Office 197 (July 29, 2003). Although the revised amendment practice has been in effect for over 18 months, the Office is still receiving an unexpectedly high number of non-compliant amendments. Correction of the non-compliant items causes extra work for applicants, examiners and the Office’s Technical Support Staff, delays prosecution and increases pendency of applications. Upon review, the Office has determined that some of the requirements of 37 CFR 1.121 are not essential and that waiver of certain provisions of 37 CFR 1.121 will still allow an examiner to clearly understand exactly what amendments have been made in an Image File Wrapper application. The Office will propose changes to 37 CFR 1.121 consistent with this notice in a rule making in due course.

For the latest information on patent application amendment formatting go to http://www.uspto.gov/web/offices/pac/dapp/opla/ preognotice/moreinfoamdtprac.htm. If you are interested in staying current with the latest USPTO happenings, contact William F. Heinze (bill.heinze@tkhr.com) at Thomas, Kayden, Horstemeyer & Risley LLP in Atlanta, Georgia USA.

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