How is an improper Markush grouping rejection addressed?
An improper Markush grouping rejection can be addressed in several ways: Amend the claim so that the Markush grouping includes only members that share a single structural similarity and a common use. Present convincing arguments explaining why the members of the Markush grouping share a single structural similarity and common use. Show that the alternatives…
Read MoreWhat are the requirements for amending claims in a national phase application?
The requirements for amending claims in a national phase application include: A complete listing of all claims ever presented, including the text of all pending and withdrawn claims. Indicating the status of every claim after its claim number using specific identifiers. Proper markings to show changes in “currently amended” claims. As stated in the MPEP,…
Read MoreWhat markings are required for “currently amended” claims in a national phase application?
For “currently amended” claims in a national phase application, specific markings are required to indicate changes. The MPEP states: “All “currently amended” claims must include markings to indicate the changes made relative to the immediate prior version of the claims: underlining to indicate additions, strike-through or double brackets for deletions (see 37 CFR 1.121(c) for…
Read MoreHow should the status of claims be indicated in a national phase application amendment?
The status of claims in a national phase application amendment should be indicated using specific identifiers. According to the MPEP: “The status of every claim in such listing must be indicated after its claim number by one of the following identifiers in a parenthetical expression: (Original), (Currently Amended), (Canceled), (Withdrawn), (Previously Presented), (New), and (Not…
Read MoreUnder what circumstances might an examiner permit a shift to claim another invention?
While applicants generally cannot shift from claiming one invention to another as a matter of right, examiners have some discretion in permitting such shifts. The MPEP 819 provides guidance on when an examiner might allow a shift: “While applicant, as a matter of right, may not shift from claiming one invention to claiming another, the…
Read MoreWhat happens if proposed amendments are not submitted in compliance with the applicable regulations?
If proposed amendments are not submitted in compliance with the applicable regulations, they will not be entered into the application. The MPEP clearly states: “Proposed amendments that are not submitted in compliance with the applicable regulations will not be entered. For example, the submission with the national phase documents of a revised set of claims,…
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