What are the limitations on examiner’s amendments for allowed applications?
Examiner’s amendments for allowed applications have certain limitations to ensure the integrity of the patent prosecution process. According to MPEP 1302.04, some key limitations include:
- Substantive changes to the written portions of the specification, including the abstract, require applicant’s approval.
- Examiners cannot cancel claims based on an amendment that argues for certain claims and alternatively authorizes their cancellation if other claims are allowed.
- Changes to the abstract must be done by an examiner’s amendment after obtaining approval from the applicant, due to its potential use in claim interpretation.
- Examiners should not add references to prior applications in the specification without the applicant’s approval.
The MPEP states: “Examiners will not cancel claims on the basis of an amendment which argues for certain claims and, alternatively, purports to authorize their cancellation by the examiner if other claims are allowed.”
These limitations ensure that significant changes to the application are made with the applicant’s knowledge and consent, maintaining the collaborative nature of the patent prosecution process.
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