United States Patent and Trademark Office OG Notices: 05 July 2005
Acceptance of Certain
Non-Compliant Amendments
Under 37 CFR 1.121(c)
Effective immediately, the Office is waiving certain
requirements set forth in 37 CFR 1.121(c) and may accept non-compliant
amendments under 37 CFR 1.121(c) where the non-compliance is limited
to: 1) the inclusion of text of a canceled claim, or a not entered
claim, and 2) use of certain variations of status identifiers in a
claim listing. The Office revised the amendment practice set forth in
37 CFR 1.121 in a final rule that became effective July 30, 2003.
See Changes to Implement Electronic Maintenance of Official Patent
Application Records, 68 Fed. Reg. 38611 (June30, 2003), 1272 Off. Gaz.
Pat. Office 197 (July 29, 2003). Although the revised amendment practice
has been in effect for over 18 months, the Office is still receiving an
unexpectedly high number of non-compliant amendments. Correction of the
non-compliant items causes extra work for applicants, examiners and the
Office's Technical Support Staff, delays prosecution and increases
pendency of applications. Upon review, the Office has determined that some
of the requirements of 37 CFR 1.121 are not essential and that waiver of
certain provisions of 37 CFR 1.121 will still allow an examiner to clearly
understand exactly what amendments have been made in an Image File Wrapper
application. The Office will propose changes to 37 CFR 1.121 consistent
with this notice in a rule making in due course.
37 CFR 1.121(c)(4)(i) provides that no claim text shall be
presented for any claim in the claim listing with the status identifier
"canceled" or "not entered." Claims that are indicated as
"canceled" or "not entered" are not pending in the application
and such text will be disregarded by the Office. Therefore, the Office
hereby waives the provision of 37 CFR 1.121(c)(4)(i) that no claim text
shall be presented for "canceled" or "not entered" claims.
Accordingly, the Office will accept amendments that include the text of
a canceled claim, or a not entered claim, if the amendment otherwise
complies with 37 CFR 1.121, including use of the proper status
identifier "canceled" or "not entered," respectively. Even
though the Office will accept an amendment that includes the text of a
canceled claim, or a not entered claim, applicants should comply with
37 CFR 1.121(c)(4)(i) by not providing the text of a canceled claim or
a not entered claim.
37 CFR 1.121(c) provides that, in the complete claim listing of
all claims ever presented, the status of every claim must be indicated
after its claim number by using one of the following identifiers in
parentheses: Original, Currently amended, Canceled, Withdrawn,
Withdrawn-currently amended, Previously presented, New, and Not
entered. Many applicants continue to use status identifiers that are
not provided for in 37 CFR 1.121(c). The Office wants to reduce the
burden on both the applicants and the Office and avoid delays in
processing that result from holding an amendment non-compliant when the
only non-compliance is the use of certain status identifiers that are
not provided in 37 CFR 1.121(c) and which are determined to be clear
and accurate by the Office. Therefore, the Office hereby waives the
provision in 37 CFR 1.121(c) that the status of the claims must be
indicated by one of the status identifiers listed in 37 CFR 1.121(c) to
the extent permitted in this notice.
The Office will accept claim listings that include the alternative
status identifiers set forth in the following table if the amendment
otherwise complies with 37 CFR 1.121.
Table of status identifiers set forth in 37 CFR 1.121(c) and acceptable
alternatives
Status Identifiers Set
Forth in 37 CFR 1.121(c) Acceptable Alternatives
1. Original Original Claim; and
Originally Filed Claim
2. Currently amended Presently amended; and
Currently amended claim
3. Canceled Canceled without prejudice;
Cancel; Cancelled; Canceled herein;
Previously cancelled; Canceled
claim; and Deleted
4. Withdrawn Withdrawn from consideration;
Withdrawn - new; Withdrawn claim;
and Withdrawn-currently amended
(see note below)
5. Previously presented Previously amended; Previously
added; Previously submitted; and
Previously presented claim
6. New Newly added; and New claim
7. Not entered Not entered claim
Note: 37 CFR 1.121(c) sets forth that "Withdrawn - currently amended"
is an acceptable variation of the status identifier "Withdrawn" for a
withdrawn claim that is currently amended.
Additionally, the Office may also accept other variations of
the status identifiers provided in 37 CFR 1.121(c) when the examiner
determines that the status identifier used by applicant clearly and
accurately designates the status of the claim.
Applicants should make every effort to comply with all of the
requirements of 37 CFR 1.121, such as the use of the status identifiers
provided in 37 CFR 1.121(c) in a complete claim listing, to reduce
processing delays. The Office may continue to refuse to accept an
amendment that does not otherwise comply with 37 CFR 1.121 or includes
a status identifier which, in the opinion of the examiner, fails to
clearly and accurately designate the status of a claim.
Inquiries concerning this memorandum may be directed to
Elizabeth Dougherty or Eugenia Jones, Senior Legal Advisors in the
Office of Patent Legal Administration, at (571) 272-7703 or
PatentPractice@uspto.gov.
June 6, 2005 JOSEPH J. ROLLA
Deputy Commissioner for
Patent Examination Policy