Can I cancel all claims to the elected invention and present only claims to the non-elected invention?
No, you cannot cancel all claims to the elected invention and present only claims to the non-elected invention after an election by original presentation. Such an amendment is considered non-responsive and will not be entered. The MPEP 821.03 clearly states: “An amendment canceling all claims drawn to the elected invention and presenting only claims drawn…
Read MoreWhat is C-STAR (C*) information in CPC classification and why is it important?
C-STAR (C*) information is a crucial aspect of CPC classification that identifies claimed concepts within a patent application. According to MPEP 905.03(a): “A C-STAR (C*) is applied to an allocated symbol from the classification picture on an application when that symbol represents at least one concept that is claimed.” C* designations are important because they:…
Read MoreHow does Box No. VIII address unity of invention in the Written Opinion?
How does Box No. VIII address unity of invention in the Written Opinion? Box No. VIII in the Written Opinion of the International Searching Authority addresses the important concept of unity of invention in patent applications. According to MPEP 1845, “Box No. VIII is used to indicate a lack of unity of invention.” Key aspects…
Read MoreCan the assignee sign a reissue declaration, and under what circumstances?
Yes, the assignee can sign a reissue declaration under specific circumstances. According to MPEP 1414.01: “The assignee of 100% of the entire right, title and interest in the patent (who must be named as the reissue applicant) may sign the declaration if: The application does not seek to enlarge the scope of the claims in…
Read MoreHow are Article 19 amendments handled in the US national stage application?
Article 19 amendments made during the international phase are handled as follows in the US national stage application: The amendments are forwarded to the US Designated Office by the International Bureau for inclusion in the national stage application. English language amendments will be entered by replacing the original claims with the amended claim set. If…
Read MoreHow does the Antares Pharma case impact the original patent requirement?
The Antares Pharma Inc., v. Medac Pharma Inc. case significantly impacted the interpretation of the original patent requirement. According to MPEP 1412.01: “To satisfy the original patent requirement where a new invention is sought by reissue, ‘… the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.’” This means that…
Read MoreWhat 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 happens if I add claims for a different invention after receiving an Office action?
If you add claims for a different invention after receiving an Office action, the examiner will likely require you to restrict the claims to the previously claimed invention. This is outlined in 37 CFR 1.145, which states: “If, after an office action on an application, the applicant presents claims directed to an invention distinct from…
Read MoreWhen can a first Office action be made final in a continuing application?
A first Office action can be made final in a continuing application when: The new application is a continuing application of, or a substitute for, an earlier application, and All claims of the new application are either identical to or patentably indistinct from the claims in the earlier application, and The claims would have been…
Read MoreHow should examiners handle early allowance of claims in patent applications?
Patent examiners are encouraged to allow claims early in the examination process when appropriate. The MPEP 707.07(j) provides guidance on this matter: Where the examiner is satisfied that the prior art has been fully developed and some of the claims are clearly allowable, the allowance of such claims should not be delayed. This approach helps…
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