37 CFR § 1.125 — Substitute specification. (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.125 Substitute specification.
This page consolidates MPEP guidance interpreting 37 CFR § 1.125, including 83 rules 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.
Summary
This section outlines the requirement for a substitute or rewritten specification when interlineations or cancellations would lead to confusion and mistake, ensuring compliance with 37 CFR 1.125.
What this section covers
- Defines the requirement and process for substituting a rewritten specification due to interlineations or cancellations in the original document.
- Provides guidance on when and how to submit a substitute specification, including the requirements for compliance.
Key obligations
- Requires the applicant to submit a substitute specification if interlineations or cancellations would lead to confusion and mistake.
- Instructs the applicant to include a statement that the substitute specification complies with all applicable requirements and is necessary due to the nature of amendments.
- Mandates compliance with 37 CFR 1.125 for the substitute specification to be considered valid.
Practice notes
- Advises practitioners to ensure that any substitute specification is clearly marked and includes all necessary amendments to avoid confusion.
- Warns against submitting a substitute specification without addressing the underlying issues that led to interlineations or cancellations.
Official MPEP § 1.125 — Substitute specification.
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.125 Substitute specification.
- (a) If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten.
- (b) Subject to § 1.312 , a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter.
- (c) A substitute specification submitted under this section must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown pursuant to this paragraph.
- (d) A substitute specification under this section is not permitted in a reissue application or in a reexamination proceeding.
[48 FR 2696, Jan. 20, 1983, effective Feb. 27, 1983; revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; paras. (b)(2) and (c) revised, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; paras. (b) and (c) revised, 68 FR 38611, June 30, 2003, effective July 30, 2003]
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