United States Patent and Trademark Office OG Notices: 25 February 2003
Amendments in a Revised Format Now Permitted
The United States Patent and Trademark Office (USPTO or Office)
is permitting applicants to submit amendments in a revised format as
set forth herein. The revised amendment format is essentially the same
as the amendment format that the Office is considering adopting via a
revision to 37 CFR 1.121 (Manner of Making Amendments). The
revision to 37 CFR 1.121 (if adopted) will simplify amendment
submission and improve file management. The Office plans to adopt such
a revision to 37 CFR 1.121 by July of 2003, at which point compliance
with revised 37 CFR 1.121 will be mandatory.
The revised amendment format is an expansion of the special
amendment process instituted for a prototype Electronic File Wrapper
program described in USPTO ANNOUNCES PROTOTYPE OF IMAGE
PROCESSING, 1265 Off. Gaz. Pat. Office 87 (Dec. 17, 2002)
("Prototype Announcement"). The special amendment process (which
was limited to claims) has proven overwhelmingly acceptable to
applicants participating in the prototype and beneficial to examiners.
The revised amendment format provides for amendments to be made to the
specification and the drawings in addition to the claims.
Effective immediately, all applicants, including
applicants participating in the prototype, may submit amendments using
the revised amendment format set forth herein. Applicants may wish to
submit all amendments in the revised amendment format because: (1) it
will facilitate transition to a revised amendment format when it
becomes mandatory, (2) inconsistent versions of claim amendments (clean
and marked-up) will be avoided, and (3) time and resources will be
saved.
WAIVER of 37 CFR 1.121
The provisions of 37 CFR 1.121(a), (b), (c) and (d) are waived
for amendments to the claims, specification, and drawings in
all applications in all Technology Centers where the amendments comply
with the revised amendment format detailed below. Note: The revised
amendment format (and the waiver) does not apply to 37 CFR
1.121(h) and (i) which indicate that amendments to reissue applications
and reexamination proceedings are governed by 37 CFR 1.173 for reissue
applications and 37 CFR 1.530 (d)-(k) for ex parte and
inter partes reexaminations.
In addition, the WAIVER indicated in the above mentioned
Prototype Announcement for the limited (claims only) amendment process
of that prototype is also expressly continued and amendments in
applications (other than reissue applications) in all Technology
Centers that comply with the requirements in that announcement will be
acceptable.
REVISED AMENDMENT FORMAT
I. Begin Sections on Separate Sheets:
Each section of an amendment paper (e.g., Amendments to the
Specification, Amendments to the Claims, Remarks) shall begin on a
separate sheet to facilitate separate indexing and electronic scanning
of the document.
For example, each of the following four sections of an
amendment paper must start on a separate sheet:
a.) Introductory Comments
b.) Amendments to the Specification
c.) Amendments to the Claims
d.) Remarks
II. Submit Only One Version (with markings) of an Amended
Part:
The requirement to provide two versions of a replacement paragraph,
section, or claim (a clean version and a marked up version), as set
forth in current 37 CFR 1.121, is waived where the format set forth
below is followed.
III. Amendments to the Claims
A. A Complete Listing of Claims is Always Required:
If an amendment adds, changes or deletes any claim, a detailed
listing of all claims that are, or were, in the application,
irrespective of whether the claim(s) remains under examination in the
application, must be presented, and the amendment to the claims is
expressed in the listing. The listing shall be presented as follows:
1. Ascending Order and Status Identifier Required
The listing shall be provided in sequential ascending numerical
order (beginning with claim 1). A status identifier shall be provided
for every claim in a parenthetical expression following the claim
number (e.g., "Claim 1. (original)"). A list of acceptable status
identifiers is set forth in part B, below. The text of all
claims under examination shall be submitted each time any claim is
amended. Cancelled and withdrawn claims should be indicated by only the
claim number and status. The text of cancelled or withdrawn claims
should not be presented.
2. Markings in Currently Amended Claims Required
All claims being currently amended shall be submitted with
markings to indicate the changes that have been made relative to the
immediate prior version of the claims. The changes in any amended claim
should be shown by strikethrough (for deleted matter) or underlining
(for added matter). No separate "clean" version should be submitted
for currently amended claims, as this requirement has been eliminated.
Markings should only be made in claims being currently amended in
an amendment paper.
3. Only Clean Text Required for Other Claims Under
Examination.
The text of pending claims not being currently amended
that are under examination shall be presented in a clean version
in the listing. Any claim presented in clean version constitutes an
assertion that it has not been changed relative to the immediate prior
version.
4. Status to Effect Claim Cancellation or Addition.
A claim may be cancelled by merely indicating the status of the
claim as cancelled. Any new claim added by amendment must be indicated
by the appropriate status identifier and shall not be underlined. Thus,
added new claims of status (new), (reinstated - formerly claim #_) and
(re-presented - formerly dependently claim #_) must be presented in
clean version. Additional claims may be subject to additional fees, as
appropriate.
5. When Grouping of Claims is Permitted.
Consecutive cancelled or withdrawn claims may be aggregated into
one line of the listing (e.g. Claims 1 - 5 (cancelled)).
6. Use "Currently Amended" Status Where Applicable.
If any "previously reinstated" or "previously
re-presented" claim is being amended, the status shall be indicated
as "currently amended" with markings as indicated in paragraph A2,
above. Multiple status identifiers should not be used for any single
claim.
B. Status Identifiers that May be Used:
In order to promote uniformity and consistency, only the following
eleven (11) defined status identifiers should be used to indicate the
status of the claims (in parentheses after the claim number):
1. (Original): Claim filed with the application following the
specification (i.e., not added by preliminary amendment).
2. (Currently amended): Claim being amended in the current
amendment paper.
3. (Previously amended): Claim not being currently amended, but
which was amended in a previous amendment paper.
4. (Cancelled): Claim cancelled or deleted from the application.
5. (Withdrawn): Claim still in the application, but in a
non-elected status.
6. (Previously added): Claim added in an earlier amendment paper.
7. (New): Claim being added in the current amendment paper.
8. (Reinstated - formerly claim # _): Claim deleted in an
earlier amendment paper, but re-presented with a new claim number in
current amendment.
9. (Previously reinstated): Claim deleted in an earlier amendment
and reinstated in an earlier amendment paper.
10. (Re-presented - formerly dependent claim # _): Dependent
claim re-presented in independent form in current amendment paper.
11. (Previously re-presented): Dependent claim re-presented in
independent form in an earlier amendment, but not currently amended.
C. Example of Listing of Claims:
Claims 1-5 (cancelled)
Claim 6 (withdrawn)
Claim 7 (previously amended): A bucket with a handle.
Claim 8 (currently amended): A bucket with a green blue handle.
Claim 9 (withdrawn)
Claim 10 (original): A bucket with a wooden handle.
Claim 11 (cancelled)
Claim 12 (new): A bucket with plastic sides and bottom.
Claim 13 (previously added): A bucket having a circumferential upper
lip.
Claim 14 (re-presented - formerly claim 11): A black bucket with a
wooden handle.
IV. Amendments to the Specification
Amendments to the specification are to be made by presenting
replacement paragraphs, sections or a substitute specification marked
up to show changes made relative to the immediate prior version, as set
out in 37 CFR 1.121(b). The changes should be shown by strikethrough
(for deleted matter) or underlining (for added matter). No accompanying
"clean" version shall be supplied. The amendments to the
specification shall be presented only one time, and will not appear in
successive amendment documents.
V. Amendments to the Drawings
Amendments to the drawing figures shall be made by presenting
replacement figures which include the desired changes, without
markings, and which comply with \s 1.84. The changes shall be explained
in the accompanying remarks section of the amendment paper. If the
amended drawings are not approved, the applicant will be notified in
the next Office action. Any amended drawing sheet should include all of
the figures appearing on the immediate prior version of the sheet, even
though only one figure may be amended. The figure number in the amended
drawing should not be labeled as "amended."
For further information on the prototype image electronic
processing of patent applications, please contact the Search and
Information Resources Administration at:
image.processing@uspto.gov. Any questions regarding the
submission of amendments pursuant to the revised practice set forth in
this notice should be directed to Elizabeth Dougherty
(Elizabeth.Dougherty@uspto.gov), Gena Jones
(Eugenia.Jones@uspto.gov) or Joe Narcavage
(mailto:Joseph.Narcavage@uspto.gov). For information on
the waiver or legal aspects of the program, please contact Jay Lucas
(Jay.Lucas@uspto.gov) or Rob Clarke (Robert.Clarke@uspto.gov).
January 31, 2003 STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy