(357) Treatment of Amendments that if
Entered Would Cancel All of the
Claims in an Application
Before June of 1998, it was the practice of the United States
Patent and Trademark Office (USPTO) to treat an application filed with
an amendment (preliminary amendment) canceling all of the claims and
presenting no new or substitute claims by denying entry of the
amendment. See Manual of Patent Examining Procedure 711.01 and 714.19
(7th ed. 1998) (MPEP). In Baxter Int'l Inc. v. McGaw Inc., 149 F.3d 1321,
47 USPQ2d 1225 (Fed. Cir. 1998), the U.S. Court of Appeals for the Federal
Circuit (Federal Circuit) held that a divisional application that
included instructions to cancel all of the claims in the specification,
but did not present any new claims, did not contain at least one claim
as required by 35 U.S.C. 112, 2, and, thus was not entitled to a
filing date under 35 U.S.C. 111(a) until the date an amendment
including at least one claim was filed in the application. Following
Baxter, the USPTO changed its practice and no longer accorded a filing date
to any application that was accompanied by a preliminary amendment which
cancels all claims and fails to simultaneously submit any new claims. See
Any Application Filed With Instructions to Cancel All of the Claims in the
Application is Not Entitled to a Filing Date, 1216 Off. Gaz. Pat. Office 46
(Nov. 10, 1998).
Recently, in Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60
USPQ2d 1368 (Fed. Cir. 2001), the Federal Circuit affirmed that the USPTO
may refuse to enter an improper amendment that would cancel all of the
claims in an application to avert harm (loss of a filing date) to an
applicant. The Federal Circuit distinguished its decision in Baxter since
in Baxter the USPTO did enter the amendment that canceled all of the claims
in the application (contrary to the provisions of MPEP 711.01 and
714.19 then in effect), thus resulting in the application not being
entitled to a filing date. In contrast, in Exxon the USPTO refused to enter
the amendment and thus the claims were never canceled.
Consistent with Exxon and MPEP 711.01 and 714.19, the USPTO will
deny entry of any amendment (whether submitted with the filing of the
application or after the filing date of the application) that seeks
cancellation of all claims but does not present any new or substitute
claims. For fee calculation purposes, however, the USPTO will treat such
an application as containing a single claim.
The USPTO plans to codify this modification of the USPTO's
current practice in the rules of practice. While some period of time
will elapse before any final rule change can be promulgated, this
modification of the USPTO's current practice (which is also consistent
with the current rules of practice) is effective immediately. In
addition, the provision in MPEP 601.01(e) concerning the treatment
of a nonprovisional application accompanied by a preliminary amendment
which cancels all claims and fails to simultaneously submit any new
claim(s) will be revised consistent with this notice in due course.
Inquiries concerning this notice may be addressed to Fred A. Silverberg,
Senior Legal Advisor, Office of Patent Legal Administration, at
703-305-8986.
January 9, 2002 STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
[1254 OG 827]
Top of Notices (357) December 31, 2013