What should I include in my patent amendment to ensure it’s considered fully responsive?

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.

To ensure your patent amendment is considered fully responsive, you should include several key elements. According to MPEP 714.04 and related sections, a fully responsive amendment should:

• Address all rejections and objections raised by the examiner
• Clearly point out the patentable novelty of the claims in view of the cited references
• Explain how the amendments overcome the prior art
• Provide arguments supporting the patentability of the claims
• If applicable, include any necessary claim amendments

The MPEP states:

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

By addressing these points comprehensively, you increase the likelihood that your amendment will be considered fully responsive, potentially expediting the examination process.