What is the difference between a non-responsive amendment and a non-compliant amendment?
It’s important to distinguish between a non-responsive amendment and a non-compliant amendment in patent prosecution:
- Non-responsive amendment: This occurs when the amendment fails to address the substance of the previous Office action, such as by canceling all elected claims and presenting only non-elected claims. It is a matter of substance.
- Non-compliant amendment: This refers to amendments that fail to meet the formal requirements for amendments, such as improper markings or formatting. It is a matter of form.
The MPEP 821.03 advises examiners:
“Examiners should take care to correctly designate the issue as a non-responsive amendment, which is not to be confused with a notice of non-compliant amendment.”
A non-responsive amendment typically requires a substantive correction, while a non-compliant amendment usually requires formal corrections. Understanding this difference is crucial for properly responding to Office actions and maintaining the prosecution of your patent application.
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