What are the requirements for amending claims in a US national stage application?
When amending claims in a US national stage application, applicants must follow these requirements: Provide a complete listing of all claims ever presented, including pending and withdrawn claims. Indicate the status of every claim using appropriate identifiers (e.g., Original, Currently Amended, Canceled). Include markings to show changes in currently amended claims (underlining for additions, strike-through…
Read MoreWhat are the requirements for amending claims in a reissue application?
When amending claims in a reissue application: Present the entire text of each amended claim Underline any added matter Enclose any deleted matter in brackets For new claims, present the entire claim with underlining Cancel claims by stating “Cancel claim X” without presenting the text Do not renumber original patent claims The MPEP states: “37…
Read MoreHow can a patent owner amend claims in an inter partes review or post-grant review?
Patent owners have the opportunity to amend claims during inter partes review (IPR) or post-grant review (PGR) proceedings before the Patent Trial and Appeal Board (PTAB). According to MPEP 1002.02(j): “Motions by patent owners to amend a patent in an inter partes review or post-grant review proceeding. 37 CFR 42.121(a), 42.221(a).” The process for amending…
Read MoreIs increasing the number of claims in a response considered not fully responsive?
Increasing the number of claims in a response to a second or subsequent non-final action on the merits is not, by itself, a reason to consider the response not fully responsive. The MPEP states: An amendment submitted after a second or subsequent non-final action on the merits which is otherwise responsive but which increases the…
Read MoreWhat is the general rule for entering amendments under 37 CFR 1.312?
The general rule is that an amendment cannot be entered in part and refused in part. However, there are exceptions to this rule. As stated in the MPEP, “when, under 37 CFR 1.312, an amendment, for example, is proposed containing a plurality of claims or amendments to claims, some of which may be entered and…
Read MoreCan an examiner suggest claim amendments during an interview prior to first official action?
Yes, an examiner can suggest claim amendments during an interview prior to the first official action. The MPEP 713.02 states: ‘In appropriate circumstances, the examiner may suggest a reasonable number of potential amendments which, if presented, would appear to overcome the apparent rejections. This may be done in the spirit of a constructive approach to…
Read MoreWhat should I include in my patent amendment to ensure it’s considered fully responsive?
To ensure your patent amendment is considered fully responsive, you should include several key elements. According to MPEP 714.04 and related sections, a fully responsive amendment should: Address all rejections and objections raised by the examiner Clearly point out the patentable novelty of the claims in view of the cited references Explain how the amendments…
Read MoreWhat are the time limits for prioritized examination requests?
The time limits for prioritized examination requests vary depending on when the request is filed. According to MPEP 708.01: For original applications: The request must be present upon filing. However, the applicant has a one-month period from the first decision on the request to cancel any claims exceeding the limits (4 independent claims, 30 total…
Read MoreWhat should be discussed in an interview prior to first official action in patent examination?
An interview prior to first official action in patent examination can cover several important topics. According to MPEP 713.02, the following subjects may be discussed: The invention and its relation to the prior art Potential rejections or objections that may arise Possible amendments to define the invention over the prior art Any other matters that…
Read MoreWhat are the requirements for amending claims in response to a rejection?
When amending claims in response to a rejection, an applicant must: Clearly point out the patentable novelty they believe the claims present in view of the state of the art disclosed by the cited references or objections made Show how the amendments avoid such references or objections As stated in 37 CFR 1.111(c): In amending…
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