How do patent attorneys and inventors keep track of claim changes during prosecution?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

Patent attorneys and inventors can keep track of claim changes during prosecution by following the guidance provided in MPEP 1302.04(g). The MPEP states:

“To identify a claim, an examiner’s amendment should refer to it by the original number and, if renumbered in the allowed application, also by the new number.”

This practice helps in tracking claim changes in several ways:

• Maintaining a prosecution history that references both original and new claim numbers
• Using claim tracking software that can map original claims to their amended versions
• Creating claim charts that show the evolution of claims throughout prosecution
• Carefully reviewing all office actions and examiner’s amendments for claim modifications
• Keeping detailed notes on claim amendments and their corresponding office actions

By utilizing these methods and paying close attention to how examiners identify claims in their amendments, patent attorneys and inventors can effectively monitor claim changes throughout the examination process.