Can a patent examiner suggest amendments to claims to address written description issues?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice. Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward. The MPEP 2163.04 states: “When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.” However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues. This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Amendments to Claims Supported by Description Required MPEP 2163.04 Permitted Amendments to Claims Supported by Description Required MPEP 2163 Permitted Claims Must Be Supported by Original Disclosure MPEP 2163 Required Claims Must Be Supported by As-Filed Disclosure MPEP 2163 Written Description Requirement Can Be Met with Function and Minimal Structure MPEP 2163 Permitted Claim Limitations Must Be Supported by Original Disclosure MPEP 2163 Required Claims Must Be Supported by Description MPEP 2163 Written Description Requirement for Genus Species MPEP 2163 Written Description Requirement Must Be Satisfied By Broad Disclosure MPEP 2163 Claims Must Be Supported by Specific Invention Location MPE...