What is the procedure for canceling claims after filing an appeal brief?

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.

Canceling claims after filing an appeal brief follows a specific procedure. According to MPEP 1206:

“An amendment canceling claims may be admitted even if it includes no other changes to the claims.”

Here’s the procedure:

1. The applicant submits an amendment canceling one or more claims.
2. The examiner has the discretion to enter the amendment.
3. If entered, the examiner must issue a supplemental examiner’s answer addressing the change in the status of the claims.
4. The applicant then has the opportunity to file a reply brief.

It’s important to note that while claim cancellations are generally entered, any other changes to the claims in the same amendment may not be entered as a matter of right and are subject to the examiner’s discretion.