What effect does a preliminary amendment have on fees in a PCT national stage application?

A preliminary amendment filed with the initial national stage submission can affect the fees due for a PCT national stage application. MPEP 1893.01(c) states: “A preliminary amendment accompanying the initial national stage submission under 35 U.S.C. 371 that is effective to cancel claims and/or eliminate multiple dependent claims will be effective to reduce the number…

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What happens if both an application data sheet and a preliminary amendment are submitted for a PCT national phase application?

When both an application data sheet (ADS) and a preliminary amendment are submitted for a PCT national phase application, the following rules apply: If the ADS and preliminary amendment are filed at different times, the later filed document will govern. As stated in the MPEP: If applicant submits both an application data sheet and a…

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What should applicants do if their pre-July 1, 2009 Article 19 Amendments were not entered correctly?

If an applicant’s pre-July 1, 2009 Article 19 Amendments were not entered correctly in the U.S. national stage application, the USPTO recommends submitting a preliminary amendment. According to MPEP 1893.01(a)(2): “In such situations, applicants are encouraged to submit a preliminary amendment in accordance with 37 CFR 1.121 to obtain entry of the desired changes.” This…

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How should a preliminary amendment be formatted?

A preliminary amendment must comply with the formatting requirements set forth in 37 CFR 1.121. The MPEP states, Any preliminary amendment, regardless of when it is filed, must comply with 37 CFR 1.121, e.g., the preliminary amendment must include a complete listing of all of the claims and each section of the amendment must begin…

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Can a preliminary amendment be disapproved by the USPTO?

Yes, a preliminary amendment can be disapproved by the USPTO under certain circumstances. According to 37 CFR 1.115(b), A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. The MPEP further explains that factors considered for disapproval include: The state of preparation…

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