What should be included in the amendment to the specification when adding a “Sequence Listing XML”?
When adding a “Sequence Listing XML” to a patent application, the amendment to the specification must include an incorporation by reference statement. This statement should contain: The name of the XML file containing the “Sequence Listing XML” The date of creation of the file The size of the file in bytes According to 37 CFR…
Read MoreWhat is required when submitting a replacement “Sequence Listing XML” under 37 CFR 1.835(b)?
When submitting a replacement “Sequence Listing XML” under 37 CFR 1.835(b), the following items are required: A compliant replacement “Sequence Listing XML” file An amendment to the specification incorporating the new file by reference A statement identifying the location of all changes A statement identifying the basis for all changes A statement that no new…
Read MoreWhat are the time requirements for submitting a joint research agreement amendment?
The time requirements for submitting a joint research agreement amendment are specified in 37 CFR 1.71(g)(2). An amendment to disclose the names of the parties to a joint research agreement must be accompanied by the processing fee set forth in 37 CFR 1.17(i) if not filed within one of the following time periods: Within three…
Read MoreWhat are the requirements for adding a “Sequence Listing” after the application filing date?
According to 37 CFR 1.825(a), adding a “Sequence Listing” after the application filing date requires: Submission of the “Sequence Listing” in one of three formats: ASCII plain text file, PDF file, or physical sheets of paper A request to make the amendment by incorporation by reference or insertion into the specification A statement indicating the…
Read MoreWhat is required when adding an initial “Sequence Listing XML” to a patent application after the filing date?
When adding an initial “Sequence Listing XML” to a patent application after the filing date, the following are required: A compliant “Sequence Listing XML” submitted as an XML file via the USPTO Patent Electronic Filing System or on a read-only optical disc. An amendment to the specification incorporating the “Sequence Listing XML” by reference. A…
Read MoreWhat happens if I add claims for a different invention after receiving an Office action?
If you add claims for a different invention after receiving an Office action, the examiner will likely require you to restrict the claims to the previously claimed invention. This is outlined in 37 CFR 1.145, which states: “If, after an office action on an application, the applicant presents claims directed to an invention distinct from…
Read MoreWhat options does an examiner have if an amendment is approved for entry after a Notice of Allowance?
If an examiner approves an amendment for entry after a Notice of Allowance has been issued, they have two main options according to the MPEP: “If the amendment is approved for entry, the examiner may enter the amendment and provide a supplemental notice of allowance, or withdraw the application from issue and provide an Office…
Read MoreWhat is the difference between reinstating canceled text and canceled claims in a patent application?
While both processes involve restoring previously removed content, there are key differences in reinstating canceled text versus canceled claims in a patent application. MPEP 608.01(s) outlines these differences: Canceled Text in Specification: “Canceled text in the specification can be reinstated only by a subsequent amendment presenting the previously canceled matter as a new insertion.” Canceled…
Read MoreUnder what circumstances will an application not be withdrawn from issue for an amendment entry?
An application will not be withdrawn from issue for the entry of an amendment in certain circumstances. The MPEP specifies: “The application will not be withdrawn from issue for the entry of an amendment that would reopen the prosecution if the Office action next preceding the notice of allowance closed the application to further amendment.”…
Read MoreCan an amendment filed before the Notice of Allowance but received after its mailing be approved for entry?
An amendment filed before the Notice of Allowance but received by the examiner after its mailing may not be approved for entry. The MPEP states: “If the amendment is filed in the Office prior to the mailing of the notice of allowance, but is received by the examiner after the mailing of the notice of…
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