United States Patent and Trademark Office OG Notices: 23 September 2003
Amendments Permitted under the
Revised Amendment Practice and
Treatment of Non-Compliant Amendments
SUMMARY:
Amendments submitted prior to July 30, 2003 in compliance with the
previous version of 37 CFR 1.121 or the revised version promulgated in
the Notice of Final Rule Making: Changes To Implement Electronic
Maintenance of Official Patent Application Records, 68 Fed.
Reg. 38611 (June 30, 2003) (Revised Amendment Practice) will be
accepted. Amendments filed on or after July 30, 2003, must
be submitted in compliance with revised 37 CFR 1.121. The
previously announced limited waivers permitting submission of
amendments in the voluntary revised amendment format terminate on July
29, 2003. If a preliminary amendment or a reply under 37 CFR 1.111
filed on or after July 30, 2003 includes one or more non-compliant
sections, applicant will be notified via a Notice of Non-Compliant
Amendment that the non-compliant section(s) needs to be re-submitted in
compliant form within a period set by the Office.
BACKGROUND
The United States Patent and Trademark Office (Office) previously
announced a prototype program to evaluate the electronic image
processing of patent applications using the image file wrapper system
(IFW). See USPTO Announces Prototype of Image
Processing, 1265 Off. Gaz. Pat. Office 87 (December
17, 2002). The notice included a limited waiver of 37 CFR 1.121
(available in applications being examined in the prototype program)
which permitted amendments to be submitted in a voluntary revised
amendment format. The limited waiver was later extended to all
applications. See Amendments in a Revised Format Now
Permitted, 1267 Off. Gaz. Pat. Office 106 (February
25, 2003). The Office revised its rules of practice to implement image
file wrapper processing, including the Revised Amendment Practice,
taking into account public comments, in the above-noted notice of final
rule making, which is effective on July 30, 2003. Many members of the
public have requested that the Office permit amendments to be submitted
in compliance with the revised version of 37 CFR 1.121 before the
effective date of July 30, 2003 in order to provide for a smoother
transition to the new practice. This Notice adopts the suggestion.
WAIVER OF 37 CFR 1.121 UNTIL JULY 29, 2003
The provisions of 37 CFR 1.121(a), (b), (c) and (d) are hereby waived
for amendments to the claims, specification, and drawings, filed before
July 30, 2003 in all applications where the amendments comply with 37
CFR 1.121 effective on July 30, 2003. Note: The revised amendment rules
(and this waiver) do 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 and 37 CFR
1.530(d)-(k), respectively.
TREATMENT OF NON-COMPLIANT AMENDMENTS
All amendments received by the Office on or after July 30, 2003
must be in compliance with the rules as required by the
Revised Amendment Practice. This practice requires the submission of an
amendment document that includes separate sections for amendments to
the claims, drawings, specification and abstract, each beginning on a
new sheet of paper. If an amendment is received as a preliminary
amendment or as a bona fide reply under 37 CFR 1.111, that
has compliant amendments to one or more separate section(s), but also
includes one, or more, separate section(s) with non-compliant
amendments, the Office will mail a Notice of Non-Compliant Amendment
requiring correction to the non-compliant section(s) within a time
period set by the Office. When making corrections, applicant should
just resubmit the needed corrected section(s), and correspondingly,
should not resubmit the entire amendment document. For example, if the
amendment included compliant amendments to the specification and
claims, and non-compliant amendments to the drawings, a notice
requiring resubmission of compliant amendments to the drawings would be
sent. In reply to the notice, applicant should only submit a compliant
amendment to the drawings, and not the previously compliant amendments
to the specification and claims. If any additional, or further,
amendments to the claims are desired, the changes must be made relative
to the previous compliant amendment to the claims. The Office will
consider both the previous compliant amendment to the claims, and the
supplemental compliant amendment to the claims, after the Office
receives the compliant amendment to the drawings.
An amendment submitted on or after July 30, 2003 as part of a
reply after the close of prosecution (e.g., as a reply under
37 CFR 1.116) that is not compliant with the Revised Amendment Practice
will not act to toll the outstanding time period. See 37
CFR 1.135(c). A notice (e.g., an advisory action) may be
mailed by the Office specifying which section(s) of the amendment was
not in compliance with the Revised Amendment Practice, but no new time
period will be given to provide a compliant section.
FOR FURTHER INFORMATION CONTACT:
Questions concerning this notice may be submitted to Joseph Narcavage,
Elizabeth Dougherty or Eugenia Jones by e-mail at
joseph.narcavage@uspto.gov or by telephone at (703) 305-1622.
July 11, 2003 STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy