What is considered a ‘fully responsive’ patent amendment?

A fully responsive patent amendment is one that clearly points out the patentable novelty of the claims in view of the cited references or objections. According to MPEP 714.04:

An amendment failing to point out the patentable novelty which the applicant believes the claims present in view of the state of the art disclosed by the references cited or the objections made may be held to be not fully responsive

To ensure your amendment is fully responsive, you should:

  • Address all rejections and objections
  • Explain how your amendments overcome the prior art
  • Highlight the novel features of your claims

Failing to do so may result in your amendment being considered non-responsive, potentially leading to delays in the examination process.

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Tags: patent amendment