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~ July 2003~
U.S. PTO Adopts New Amendment Format
Effective
July 30, 2003, the U.S. PTO will adopt certain changes to the
Rules relating to the manner in which Amendments are made in
pending patent applications. A complete discussion of the
final rules package is available on the U.S. PTO website (www.uspto.gov).
The Final
Rules are not significantly different from the Proposed Rules
that were published March 25, 2003. One difference in Rule
1.121(c), however, is that the number of claim status
identifiers has been reduced from 11 to 7, as follows:
|
(Original): |
Claim filed with the
application. |
|
(Currently Amended): |
Claim being amended in the
current amendment document. |
|
(Canceled): |
Claim deleted from the
application. |
|
(Withdrawn): |
Claim still in the
application, but in a non-elected status. |
|
(Previously Presented): |
Claim added or amended in
an earlier amendment document. |
|
(New): |
Claim being added in the
current amendment document. |
|
(Not Entered): |
Claim presented in a
previous amendment document but which has either not
been entered or the status of entry is unknown to
applicant when a subsequent amendment to the claims is
filed. |
The “Not
Entered” status identifier was not part of the Proposed
Rules. It should be used in a subsequent Amendment to
identify “new claims” that were filed in a previous Amendment
but not entered by the PTO.
The PTO has
also indicated that, where appropriate, more than one status
identifier can be used for any given claim. For example, if
there is a claim that is withdrawn due to an election of
species requirement, but the applicant would like to amend the
claim, the status identifier used for that claim should be
“Withdrawn - Currently Amended.”
The Final Rules
also require that any amendments to the drawings must be
submitted on a replacement sheet as an attachment to the
Amendment itself, and must be labeled “Replacement Sheet” (see
Rule 1.121(d)). The Amendment must also include a section
that explains, in detail, all of the changes that are being
made to the drawing(s). The rule also allows for a marked-up
copy of the drawing to be filed with the Amendment, provided
it is labeled “Annotated Marked-Up Drawing.” The marked-up
copy may assist the Examiner in understanding all of the
changes made to the drawing on the “Replacement Sheet.” |
