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…
Read MoreCan I cancel all claims to the elected invention and present only claims to the non-elected invention?
No, you cannot cancel all claims to the elected invention and present only claims to the non-elected invention after an election by original presentation. Such an amendment is considered non-responsive and will not be entered. The MPEP 821.03 clearly states: “An amendment canceling all claims drawn to the elected invention and presenting only claims drawn…
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