Can examiners make changes to the abstract of a patent application?
Examiners can make changes to the abstract of a patent application, but there are specific guidelines to follow. According to MPEP 1302.04:
“At the time of allowance, substantive changes made by the examiner to the abstract must be done by an examiner’s amendment after first obtaining approval from the applicant.”
This cautious approach is due to the legal significance of the abstract, as noted in court decisions:
“As noted by the court the abstract may be used to determine the meaning of claims. See Pandrol USA, LP v. Airboss Railway Products, Inc., 320 F.3d 1354, 1363 n.1, 65 USPQ2d 1985, 1996 n.1 (Fed. Cir. 2003), Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.1, 54 USPQ2d 1437, 1443 n.1 (Fed. Cir. 2000).”
Examiners should review the abstract for compliance with 37 CFR 1.72(b) and point out defects to the applicant early in the prosecution process to allow for necessary changes.
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