How are preliminary amendments handled in continuation applications?

Preliminary amendments in continuation applications are subject to specific rules and considerations. The MPEP provides guidance on this topic:

Any preliminary amendment that is present on the filing date of an application filed under 37 CFR 1.53(b) is part of the original disclosure.

This means that preliminary amendments submitted with the application are treated as part of the original filing. However, there are important requirements and considerations:

1. Compliance with 37 CFR 1.121:
   

   Amendments must be filed in compliance with the requirements of 37 CFR 1.121 (e.g., the amendment must include a complete claim listing whenever a claim is added, canceled, or amended).

2. Possible Requirement for Substitute Specification:
   

   The Office may require a substitute specification for preliminary amendments.

3. Classification and Assignment:
   

   Applications should be classified and assigned to the proper Technology Center (TC) by taking into consideration the claims that will be before the examiner upon entry of such a preliminary amendment.

4. New Matter Considerations: If the preliminary amendment introduces new matter, it may affect the application’s status as a continuation. The MPEP advises:
   

   Where a copy of the oath or declaration from a prior application was filed in a continuation or divisional application, if the examiner determines that new matter is present relative to the prior application, the examiner should so notify the applicant in the next Office action (preferably the first Office action). The examiner should require applicant to delete the benefit claim or redesignate the application as a continuation-in-part.

Applicants should carefully consider the content and timing of preliminary amendments in continuation applications to ensure compliance with USPTO requirements and to maintain the desired relationship with the parent application.

For more information on continuation application, visit: continuation application.

For more information on new matter, visit: new matter.