Can new evidence be submitted in a reply brief during a patent appeal?
No, new evidence is not permitted in a reply brief during a patent appeal. The MPEP 1208 clearly states: “New or non-admitted affidavits, and/or other evidence are not permitted in a reply brief.” Any new amendments must be submitted separately from the reply brief, and their entry is subject to the provisions of 37 CFR…
Read MoreWhat issues can trigger a Printer Rush in patent applications?
Several issues can trigger a Printer Rush in patent applications after they have been allowed. According to MPEP 1309.02: “Issues which may prevent publication until they are resolved include but are not limited to: amendments under 37 CFR 1.312, a Request for Correction of Inventorship under 37 CFR 1.48 and Information Disclosure Statements which have…
Read MoreHow are unacceptable substitute specifications handled in amendments?
When an amendment includes an unacceptable substitute specification along with other amendatory matter, the USPTO handles it as follows: The substitute specification is denied entry and marked as such. The rest of the paper, including amendments to claims or new claims, is entered. The application is acted on in its turn, with the applicant being…
Read MoreHow are amendments handled in the written opinion of the IPEA?
The handling of amendments in the written opinion of the International Preliminary Examining Authority (IPEA) is detailed in the MPEP. Key points include: Amendments filed during Chapter I proceedings and stamped “SUBSTITUTE SHEET (RULE 26)”, “RECTIFIED SHEET (RULE 91)”, and “INCORPORATED BY REFERENCE (RULE 20.6)” are considered originally filed/furnished pages and should be listed as…
Read MoreHow does the USPTO handle amendments accompanying partially granted motions?
When an amendment accompanies a motion that is only partially granted, the USPTO handles it as follows: According to MPEP 714.20: “In an amendment accompanying a motion granted only in part, the amendment is entered only to the extent that the motion was granted.” This means that only the portions of the amendment related to…
Read MoreHow are amendments handled in applications with closed prosecution on the merits?
In applications where prosecution on the merits is closed (e.g., after an Ex Parte Quayle action), amendments are handled as follows: Amendments curing noted formal defects are entered. New claims or amendments requiring further search or consideration are not entered. According to MPEP 714.20: “In an application in which prosecution on the merits is closed,…
Read MoreWhat is the general rule regarding entering amendments in part?
The general rule is that an amendment should not be entered in part to avoid confusion of the record. As stated in MPEP 714.20: “To avoid confusion of the record the general rule prevails that an amendment should not be entered in part.” However, there are exceptions to this rule when strict adherence might cause…
Read MoreHow does an examiner respond to amendments filed after an appeal has been taken?
Examiners are required to respond to all amendments filed after an appeal has been taken and prior to the transfer of jurisdiction to the Board. The response process is outlined in MPEP 1206: If the examiner denies entry of an amendment, they should use form PTOL-303 (“Advisory Action Before the Filing of an Appeal Brief”)…
Read MoreHow are amendments to design patent applications evaluated for new matter?
Amendments to design patent applications are carefully evaluated to ensure they do not introduce new matter not supported by the original disclosure. Key points include: Any changes must have support in the original disclosure Converting solid lines to broken lines (or vice versa) is generally not new matter Adding or removing surface ornamentation may be…
Read MoreWhat happens if PCT Article 34 amendments are not properly filed?
What happens if PCT Article 34 amendments are not properly filed? Improperly filed PCT Article 34 amendments can have significant consequences. The MPEP 1864.01 provides guidance on this issue: “If the applicant files an amendment with the demand (PCT Article 34), the amendment shall be referred to in the appropriate place in the report (PCT…
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