How does the USPTO handle preliminary amendments in continuation applications?

The USPTO’s handling of preliminary amendments in continuation applications depends on when the application was filed and the nature of the amendment:

• For applications filed on or after September 21, 2004: A preliminary amendment that is present on the filing date of the application is considered part of the original disclosure.
• All preliminary amendments: Must be filed in compliance with 37 CFR 1.121, which includes providing a complete claim listing whenever a claim is added, canceled, or amended.
• Substitute specification: The Office may require a substitute specification for preliminary amendments.

The MPEP states:

Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

It’s important to note that the USPTO advises against filing a continuation application with a preliminary amendment that makes all desired changes. Instead, they recommend:

Filing a continuing application under 37 CFR 1.53(b) with a new specification containing only the desired set of claims.

This approach ensures that the published application contains the intended set of claims, rather than those from the prior application.

For more information on continuation application, visit: continuation application.