Can amendments be submitted with a reply brief in response to a new ground of rejection?
No, amendments cannot be submitted with a reply brief in response to a new ground of rejection. According to MPEP 1207.03(c): “A reply brief may not be accompanied by any amendment, affidavit (§§ 1.130, 1.131 or 1.132 of this of this title) or other Evidence. If a reply brief filed pursuant to this section is…
Read MoreHow should amendments be made in reissue applications?
How should amendments be made in reissue applications? Amendments in reissue applications should be made in accordance with MPEP 1453. The MPEP states: “Amendments in reissue applications are made pursuant to 37 CFR 1.121(i).” This means that amendments in reissue applications follow specific rules: All amendments must be made relative to the patent specification and…
Read MoreHow are amendments handled in the International Preliminary Examination Report?
The International Preliminary Examination Report (IPER) takes into account amendments made to the international application. The MPEP states: “The international preliminary examination report identifies the basis on which it is established, i.e., whether, and if so, which amendments have been taken into account.” Amendments are handled as follows: Replacement sheets containing amendments under PCT Article…
Read MoreCan amendments be included in a patent application publication?
Yes, amendments can be included in a patent application publication if they are submitted in sufficient time and in the correct format. According to MPEP 1121: “The patent application publication may also be based upon amendments that expedite the publication process, provided that such amendments are submitted in sufficient time to be entered into the…
Read MoreWhat is the impact of amendments under 37 CFR 1.116 or 41.33 on new grounds of rejection?
Amendments submitted under 37 CFR 1.116 or 41.33 can affect whether a rejection in an examiner’s answer is considered a new ground of rejection. According to MPEP 1207.03(a): If: An amendment under 37 CFR 1.116 or 41.33 proposes to add or amend one or more claims; The applicant was advised (through an advisory action) that…
Read MoreHow are amendments to the claims treated in U.S. national stage applications?
How are amendments to the claims treated in U.S. national stage applications? Amendments to the claims in U.S. national stage applications are treated differently depending on when they are submitted. The MPEP provides specific guidance: “Amendments to the claims submitted after completion of the requirements for entry into the national stage will be considered for…
Read MoreWhat happens if an amendment is filed after the date the appeal brief is filed?
If an amendment is filed after the date the appeal brief is filed, it will not be entered as a matter of right. According to MPEP 1206: “Amendments filed after the date the appeal brief is filed will not be entered as a matter of right.” Such amendments are treated as described in 37 CFR…
Read MoreHow do amendments affect the start of international preliminary examination?
Amendments can affect the start of international preliminary examination in several ways, as outlined in MPEP 1879.01: If amendments under Article 19 are to be considered, the examination won’t start until the International Preliminary Examining Authority receives a copy of these amendments. If the applicant indicates that the start should be postponed (Rule 53.9(b)), the…
Read MoreHow do amendments affect fees in reissue applications?
Amendments in reissue applications can affect fees, particularly excess claims fees. Key points to consider: Excess claims fees, if any, must be paid before the examiner considers the amendment. Fees are calculated based on the claims that would be present if the amendment were entered. If an amendment only revises existing claims without adding new…
Read MoreCan sequence listings be amended after the international filing date in PCT applications?
Sequence listings furnished after the international filing date are generally not considered part of the international application. However, amendments to sequence listings may be possible under certain conditions: Amendments can be made under PCT Article 34 if the applicant files a Demand for international preliminary examination. Any amendments must not go beyond the disclosure in…
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