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Making Amendments to a Patent Application

What kind of amendments can you make to a patent application.

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You may make amendments before or after the first examination of your patent application. Certain rules to making any amendments will apply.

What Amendments Can Be Made

You will probably want to make amendments in response to any adverse actions the USPTO takes. An "action" is a USPTO decision or ruling, for example; the patent application examiner can require you to change your patent application, or your patent application gets rejected. You are always notified about any actions.

What If I Make My Amendments Later

After final rejection or action, amendments may be made canceling claims or complying with any requirement that has been made in an USPTO action.

Amendments do not guarantee that you will save your patent application.

When amendments are made after final rejection, or after an appeal has been taken, or anytime an amendment might not otherwise be proper, they can still be admitted with good and sufficient reasons for why they are necessary and why they not presented before.

You do not automatically have the right to make amendments in appealed cases, When the USPTO makes a decision during an appeal, amendments can only be made as provided in the rules.

Correcting Specifications, Claims, and Drawing

The specifications, claims, and drawing must be amended and revised when required, to correct inaccuracies of description and definition or unnecessary words, and to provide substantial correspondence between the claims, the description, and the drawing.

No New Matters

All amendments of the drawings or specifications must not include any new matter (i.e. claims) beyond the original disclosure. New matter must be claimed only in a separate patent application.

How To Format Amendments

Amendments to the specification must be made by the submission of clean new or replacement paragraph(s), section(s), specification, or claim(s). This practice will provide a specification (including claims) in clean, or substantially clean, form that can be effectively captured and converted by optical character recognition (OCR) scanning during the patent printing process.

Applicant must provide in addition to the clean version of a replacement paragraph/section/claim, a marked-up version using applicant’s choice of a conventional marking system to indicate the changes, which will aid the examiner in identifying the changes that have been made.

The marked-up version must be based on the previous version and indicate (by markings) how the previous version has been modified to produce the clean version submitted in the current amendment. The term previous version means the latest version on record of the patent application as originally filed or from a previously entered amendment.

In addition, when presenting new or amended claims, the applicant must point out how they avoid any reference or ground rejection of record, which may be pertinent, in a remarks/arguments section.

The following format is suggested in an amendment paper:

  • a clean version of each replacement paragraph/section/claim with clear instructions for entry[/li
  • starting on a separate page, any remarks/arguments according to USPTO rules (see right sidebar)
  • starting on a separate page, a marked-up version entitled “Version with markings to show changes made.”

Treating Drawings

No change in the drawing may be made except by permission of the USPTO. Changes in the construction shown in any drawing may be made only by submitting new drawings. First a sketch in permanent ink showing the proposed changes (the sketch will be kept in your permanent record) must be submitted for approval by the USPTO, before any new drawings are filed. The paper requesting amendments to the drawing should be separate from other papers.

Treating Claims

The original numbering of the claims must be preserved. When claims are canceled, the remaining claims must not be renumbered. When claims are added by amendment or substituted for canceled claims, they must be numbered by the applicant consecutively beginning with the number next following the highest numbered claim previously presented. When the application is ready for allowance, the examiner, if necessary, will renumber the claims consecutively in the order in which they appear or in such order as may have been requested by applicant.
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