United States Patent and Trademark Office OG Notices: 08 November 2005
Revised Procedure for Preliminary Amendments
Presented on Filing of a Patent Application
The publication of a patent application under 35 U.S.C. 122(b)
is based, in part, upon the specification and drawings deposited on the
filing date of the application filed under 35 U.S.C. 111(a).
See 37 CFR 1.215(a). A preliminary amendment that is present on the filing
date of a patent application filed under 35 U.S.C. 111(a) is part of the
original disclosure of the application. See 37 CFR 1.115(a)(1). Thus, if on
filing an application includes a preliminary amendment to the specification,
then the publication of the application must be based on the specification
and drawings as amended by the preliminary amendment. See 37 CFR 1.215(a).
Accordingly, the United States Patent and Trademark Office (Office) has
indicated that if a preliminary amendment is filed in a format that cannot
be included in the publication, the Office of Initial Patent Examination
(OIPE) will issue a notice to the applicant requiring the applicant to
submit the amendment in a format useable for publication purposes. See
Changes to Support Implementation of the United States Patent and Trademark
Office 21st Century Strategic Plan, Final Rule, 69 Fed. Reg. 56482,
56517-18, and 56524 (September 21, 2004), 1287 Off. Gaz. Pat. Office 67,
95-96, and 100-101 (October 12, 2004) (Strategic Plan Final Rule); 37 CFR
1.115(a)(1) and 1.215. The only format for an amendment to the specification
(other than the claims) that is usable for publication is a substitute
specification in compliance with 37 CFR 1.121(b)(3) and 1.125. As a result,
the Office has revised its procedures to mail a notice (e.g., "Notice to
File Corrected Application Papers") requiring a substitute specification
in compliance with 37 CFR 1.121(b)(3) and 1.125, if an applicant
included a preliminary amendment to the specification (other than the
claims) on filing.
Since 1997, the Office has encouraged applicants to file patent
applications under 35 U.S.C. 111(a), especially continuation and
divisional applications, without preliminary amendments by including
any desired changes as part of the specification and drawings of the
new application. A copy of the declaration from the prior application
can still be filed in a continuation or divisional application even if
the specification filed in the continuation or divisional application
is different from the prior application so long as the continuation or
divisional application contains no new matter. See
Changes to Patent Practice and Procedure, Final Rule, 62
Fed. Reg. 53132, 53148 (October 10, 1997), 1203 Off. Gaz. Pat. Office
63, 77 (October 21, 1997); 37 CFR 1.63(d)(1). Moreover, when the Office
began to publish patent applications, the Office urged applicants to
file clean copies of the specifications, including any desired or
required amendments, so that the published application will include the
amended text. See Pre-Grant Publication Helpful Hint:
File Continuation or Divisional Application with a New Specification
and Copy of Oath or Declaration from Prior Application, 1251 Off.
Gaz. Pat. Office 54 (October 9, 2001); Helpful Hints Regarding
Publication of Patent Applications, 1249 Off. Gaz Pat. Office 83
(August 21, 2001). Filing clean copies of application papers, without
preliminary amendments, will reduce the amount of processing done by
the Office, thus reducing Office costs, and will help to ensure that
patent application publications and patents are printed correctly. The
specific reference to the prior application required by 35 U.S.C. 120
or 119(e) and 37 CFR 1.78(a) can be submitted in an application data
sheet (ADS) under 37 CFR 1.76 rather than in a preliminary amendment to
the first sentence(s) of the specification. See 37 CFR
1.78(a)(2)(iii) and (5)(iii). If the specific reference is submitted in
a preliminary amendment, however, a substitute specification will not
be required if the preliminary amendment only adds or amends a benefit
claim to a prior-filed application under 35 U.S.C. 120, 121, 365(c), or
119(e). If an applicant receives a notice from OIPE (e.g., "Notice to
File Corrected Application Papers") requiring a substitute
specification because a preliminary amendment was filed that only adds
or amends a benefit claim, applicant may reply to the notice explaining
that a substitute specification should not have been required because
the amendment was only to add or amend a benefit claim. In order to
avoid abandonment, applicant should file a reply with the required
substitute specification or an explanation that the substitute
specification is not necessary because the preliminary amendment only
adds or amends a benefit claim. If the preliminary amendment contains
other amendments to the specification (other than the claims), a
substitute specification would be required, and a reply to a notice
requiring a substitute specification without the substitute
specification will be treated as an incomplete reply with no new time
period for reply being provided.
Because a preliminary amendment to the claims or abstract in
compliance with 37 CFR 1.121(c) or 1.121(b)(2) would include a complete
claim listing or replacement abstract, the Office can publish the
amended claims or a replacement abstract as submitted in the
preliminary amendment without a substitute specification being filed.
Applicants should note, however, that there is no need to file a
preliminary amendment to the claims on filing. By making the new claim
set part of the originally filed specification, applicant may avoid
having to pay an application size fee, as both the specification
(including the claims) and any preliminary amendment are used in
counting the number of pages for purposes of 37 CFR 1.16(s).
See "H.R. 4818 Questions and Answers" concerning the
Patent Fee Related Provisions of the Consolidated Appropriations Act,
2005 posted on the Office's Internet web site at:
http://www.uspto.gov/web/patents/hr4818/qna.htm#B. The claim
set submitted should be the set of claims intended to be examined, and
when the claims submitted on filing are part of the specification (on
sequentially numbered pages of the specification (see 37
CFR 1.52(b)(5))), no status identifiers and no markings showing the
changes need to be used. A preliminary amendment filed upon the entry
of the national stage of an international application under 35 U.S.C.
371 is not part of the original disclosure (because the filing date of
the national stage application is the international filing date and not
the national stage entry date) so the patent application publication
need not include such an amendment.
Requiring a substitute specification (with all preliminary
amendments made therein) is also important to ensure that applicants do
not circumvent the limitations upon redacted publications set forth in
35 U.S.C. 122(b)(2)(B)(v). As preliminary amendments to the
specification, excluding the claims, cannot be easily published, the
Office must require a substitute specification whenever an application
is filed with a preliminary amendment to the specification, excluding
the claims, in order to ensure that the application, including any new
matter added by way of a preliminary amendment included on the filing
date of the application, is published.
Questions regarding this notice may be e-mailed to
PatentPractice@uspto.gov, or directed to the Office of Patent Legal
Administration by telephone at (571) 272-7701.
October 11, 2005 JOSEPH J. ROLLA
Deputy Commissioner for
Patent Examination Policy