Can new claims be added during ex parte reexamination?
Can new claims be added during ex parte reexamination? Yes, new claims can be added during ex parte reexamination, subject to certain conditions. According to MPEP 2250: New claims must be numbered consecutively beginning with the number next following the highest numbered patent claim. New claims must be completely underlined. New claims must not contain…
Read MoreHow does the USPTO handle amendments in applications with special status?
The USPTO has specific procedures for handling amendments in applications that have been granted special status, such as those under the accelerated examination program. The MPEP 821.03 notes: “This form paragraph should not be used for an application filed on or after August 25, 2006 that has been granted special status under the accelerated examination…
Read MoreHow are amendments made in reissue applications?
Amendments in reissue applications must be made in accordance with 37 CFR 1.173. The key points are: All changes must be made relative to the original patent Matter to be omitted must be enclosed in brackets Matter to be added must be underlined For specification changes, submit the entire paragraph with markings For claim changes,…
Read MoreWhat is MPEP § 130 and why is it important for amendments after D-10 Notice?
MPEP § 130 is a section of the Manual of Patent Examining Procedure that provides guidance on handling amendments received after the D-10 Notice has been issued. Its importance is highlighted in MPEP Section 1304, which states: “For amendments received after D-10 Notice, see MPEP § 130.” This reference indicates that MPEP § 130 contains…
Read MoreWhat is the purpose of the statement accompanying an Article 19 amendment?
An optional statement can accompany an Article 19 amendment. The MPEP explains its purpose: Any amendment may be accompanied by a brief statement by the applicant explaining the amendment and indicating any impact it might have on the description and the drawings. Such a statement is published together with the international application itself. This statement…
Read MoreHow should claims be numbered in an Article 19 amendment?
When submitting an Article 19 amendment, proper numbering of claims is important. The MPEP provides guidance on this matter: All the claims appearing on a replacement sheet must be numbered in Arabic numerals (corresponding to the order of the claims). Where a claim is cancelled, no renumbering of the other claims is required. However, where…
Read MoreHow should amendments be made in a reissue of a previously reissued patent?
When amending a reissue of a previously reissued patent: Additions from the first reissue should remain in italics New additions should be presented as double underlined text Deletions from the first reissue should be shown in double brackets The MPEP states: “When a copy of a first reissue patent is presented as the specification of…
Read MoreHow should amendments be made in a reissue application if the patent was previously reexamined?
When amending a reissue application for a patent that was previously reexamined: Present the amendment as if changes from the reexamination certificate are part of the original patent Do not use italics for text that was italicized in the reexamination certificate Omit any text that was in brackets in the reexamination certificate Line through claims…
Read MoreWhat types of amendments can an examiner permit after the Notice of Allowance?
After the Notice of Allowance is mailed, an examiner can still permit certain limited amendments under 37 CFR 1.312. According to MPEP 1305: “The examiner may permit amendments under 37 CFR 1.312 which are confined to matters of form in the specification or claims, or to the cancellation of a claim or claims.” These amendments…
Read MoreWhat is the process for addressing rejections in design patent applications?
The process for addressing rejections in design patent applications involves a dialogue between the examiner and the applicant. According to MPEP 1504: “If the examiner determines that the claim of the design patent application does not satisfy the statutory requirements, the examiner will set forth in detail, and may additionally summarize, the basis for all…
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