How are unacceptable substitute specifications handled in amendments?
When an amendment includes an unacceptable substitute specification along with other amendatory matter, the USPTO handles it as follows:
- The substitute specification is denied entry and marked as such.
- The rest of the paper, including amendments to claims or new claims, is entered.
- The application is acted on in its turn, with the applicant being informed that the substitute specification was not entered.
As stated in MPEP 714.20: “An ‘amendment’ presenting an unacceptable substitute specification along with amendatory matter, as amendments to claims or new claims, should be entered in part, rather than refused entry in toto.”
For more information on substitute specifications, refer to 37 CFR 1.125 and MPEP § 608.01(q).
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