Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
MPEP 200 – Types and Status of Application; Benefit and Priority (1)
The process for deleting a benefit claim depends on when your application was filed:
- For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
- For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.
However, be aware of the following considerations:
- The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
- If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
- If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
- Deleting a benefit claim may affect the publication date of the application.
The MPEP also notes an important caveat:
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.
This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.
To learn more:
Patent Law (5)
Applicants can avoid the need for preliminary amendments in patent applications by following the guidance provided in MPEP 608.04(b):
Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application.
This approach involves directly including any necessary changes or additions in the original specification text when preparing the application. By doing so, applicants can ensure that all desired content is present from the initial filing, eliminating the need for separate preliminary amendments. This method is recommended for all types of applications, including continuations and divisionals, to streamline the application process and reduce potential processing delays.
To learn more:
Antecedent basis in patent claims refers to the presence of support for claim terms in the specification. It is important because it ensures clarity and consistency between the claims and the specification. MPEP 608.01(o) states:
This is necessary in order to insure certainty in construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103.
Proper antecedent basis helps prevent ambiguity in claim interpretation and strengthens the overall patent application. If the examiner finds that claims lack proper antecedent basis, they may object to the specification using form paragraph 7.44.
To learn more:
‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a):
Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.
This can include adding specific percentages, compounds, or even omitting steps from a method that were present in the original disclosure.
To learn more:
If examiners find that drawings are inconsistent with the specification in a patent application, they should:
- Identify the specific inconsistencies
- Object to the drawings and/or specification as appropriate
- Provide clear explanations of the inconsistencies in the Office action
- Require the applicant to correct the inconsistencies
MPEP 608.02(e) states: ‘The examiner should see to it that the drawings are correct, complete, and consistent with the specification and claims.’ This responsibility includes ensuring that the drawings accurately reflect the invention described in the specification and that there are no contradictions between the textual description and the visual representation.
To learn more:
The process for deleting a benefit claim depends on when your application was filed:
- For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
- For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.
However, be aware of the following considerations:
- The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
- If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
- If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
- Deleting a benefit claim may affect the publication date of the application.
The MPEP also notes an important caveat:
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.
This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.
To learn more:
Patent Procedure (5)
Applicants can avoid the need for preliminary amendments in patent applications by following the guidance provided in MPEP 608.04(b):
Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application.
This approach involves directly including any necessary changes or additions in the original specification text when preparing the application. By doing so, applicants can ensure that all desired content is present from the initial filing, eliminating the need for separate preliminary amendments. This method is recommended for all types of applications, including continuations and divisionals, to streamline the application process and reduce potential processing delays.
To learn more:
Antecedent basis in patent claims refers to the presence of support for claim terms in the specification. It is important because it ensures clarity and consistency between the claims and the specification. MPEP 608.01(o) states:
This is necessary in order to insure certainty in construing the claims in the light of the specification. See 37 CFR 1.75, MPEP § 608.01(i) and § 1302.01 and § 2103.
Proper antecedent basis helps prevent ambiguity in claim interpretation and strengthens the overall patent application. If the examiner finds that claims lack proper antecedent basis, they may object to the specification using form paragraph 7.44.
To learn more:
‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a):
Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.
This can include adding specific percentages, compounds, or even omitting steps from a method that were present in the original disclosure.
To learn more:
If examiners find that drawings are inconsistent with the specification in a patent application, they should:
- Identify the specific inconsistencies
- Object to the drawings and/or specification as appropriate
- Provide clear explanations of the inconsistencies in the Office action
- Require the applicant to correct the inconsistencies
MPEP 608.02(e) states: ‘The examiner should see to it that the drawings are correct, complete, and consistent with the specification and claims.’ This responsibility includes ensuring that the drawings accurately reflect the invention described in the specification and that there are no contradictions between the textual description and the visual representation.
To learn more:
The process for deleting a benefit claim depends on when your application was filed:
- For applications filed on or after September 16, 2012: File a corrected Application Data Sheet (ADS) in compliance with 37 CFR 1.76(c) that deletes the reference to the prior-filed application.
- For applications filed prior to September 16, 2012: Amend the specification (if the benefit claim is in the specification) or submit a supplemental ADS in compliance with pre-AIA 37 CFR 1.76(c) to delete references to prior applications.
However, be aware of the following considerations:
- The examiner will consider whether any new prior art may become available if a benefit claim is deleted.
- If submitted after final rejection or action, the amendment or ADS will be treated under 37 CFR 1.116.
- If submitted after the application has been allowed, it will be treated under 37 CFR 1.312.
- Deleting a benefit claim may affect the publication date of the application.
The MPEP also notes an important caveat:
A cancellation of a benefit claim to a prior application may be considered as a showing that the applicant is intentionally waiving the benefit claim to the prior application in the instant application.
This means that if you later try to reinstate the benefit claim, the USPTO may not accept it as an unintentional delay.
To learn more: