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714    Amendments, Applicant’s Action

MPEP SECTION SUMMARY This section covers amendments and the applicant's action including when an applicant may amend and the manner of making amendments under 37 C.F.R. 1.121. There are many rules governing amendments that are discussed in 37 C.F.R. 1.121 and this section. These consist of amendments to the specification and amendments to the claims including status identifiers, markings to show the changes, claim text, claim numbering, and acceptable alternative status identifiers. In addition, amendments in reexamination proceedings and reissue applications are also discussed.

  Section Frequency Chart

I.    WHEN APPLICANT MAY AMEND

The applicant may amend:

• before or after the first Office action and also after the second Office actions;
• after final rejection, if certain criteria are met;
• after the date of filing a notice of appeal, if the amendment meets certain criteria; and
• when and as specifically required by the examiner.

Amendments in provisional applications are not normally made.

• Any amendments to a provisional application will be placed in the provisional application file, but may not be entered.

II.   MANNER OF MAKING AMENDMENTS UNDER 37 CFR 1.121

All amendments filed on or after July 30, 2003 must comply with 37 CFR 1.121.

A.   Amendment Sections

Each section of an amendment document (e.g., Specification Amendments, Claim Amendments, Drawing Amendments, and Remarks) must begin on a separate sheet to facilitate separate indexing and electronic scanning of each section of an amendment document for placement in an image file wrapper.

B.   Amendments to the Specification

Amendments to the specification, other than the claims, computer listings and sequence listings, must be made by adding, deleting or replacing a paragraph, by replacing a section, or by a substitute specification.

In order to delete, replace or add a paragraph to the specification of an application, the amendment must unambiguously identify the paragraph to be modified either by paragraph number, page and line, or any other unambiguous method and be accompanied by any replacement or new paragraph(s).

• Replacement paragraphs must include markings to show the changes.
• A separate clean version of any replacement paragraphs is not required.

Any new paragraphs must be presented in clean form without any markings (i.e., underlining).

• Where paragraph numbering has been included in an application, applicants can easily refer to a specific paragraph by number when presenting an amendment.
• If a numbered paragraph is to be replaced by a single paragraph, the added replacement paragraph should be numbered with the same number of the paragraph being replaced.

Where more than one paragraph is to replace a single original paragraph, the added paragraphs should be numbered using the number of the original paragraph for the first replacement paragraph, followed by increasing decimal numbers for the second and subsequent added paragraphs.

• If a numbered paragraph is deleted, the numbering of the subsequent paragraphs should remain unchanged.

The full text of any replacement paragraph must be provided with markings to show all the changes relative to the previous version of the paragraph.

• The text of any added subject matter must be shown by underlining the added text.

The text of any deleted subject matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show the deletion of five or fewer consecutive characters (e.g., [[eroor]]).

• The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived (e.g., deletion of the number “4” must be shown as [[4]]).
• As an alternative to using double brackets, however, extra portions of text may be included before and after text being deleted, all in strike-through, followed by including and underlining the extra text with the desired change.

For added paragraphs, the full text of any added paragraph(s) be presented in clean form without any underlining.

• Similarly, a marked up version does not have to be supplied for any deleted paragraph(s).
• It is sufficient to merely indicate or identify any paragraph that has been deleted.
• The instruction to delete may identify a paragraph by its paragraph number, page and line number, or include a few words from the beginning, and end, or the paragraph, if needed for paragraph identification.

Applicants are also permitted to amend the specification by replacement sections.

• As with replacement paragraphs, the amended version of a replacement section is required to be provided with markings to show all the changes relative to the previous version of the section.
• The text of any added subject matter must be shown by underlining the added text.
• The text of any deleted subject matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show the deletion of five or fewer consecutive characters.
• The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived.

Specifically regarding amendments to the abstract of the disclosure, where the amendments to the abstract are minor in nature, the abstract should be provided as a marked-up version using strike-through and underlining as the methods to show all changes relative to the immediate prior version.

Where the abstract is being substantially rewritten and the amended abstract bears little or no resemblance to the previously filed version of the abstract, a new (substitute) abstract may be provided in clean form accompanied by an instruction for the cancellation of the previous version of the abstract.

• The text of the new abstract must not be underlined.
• It would be counterproductive for applicant to prepare and provide an abstract so riddled with strike-through and underlining that its meaning and language are obscured from view and comprehension.
• Whether supplying a marked-up version of a previous abstract or a clean form new abstract, the abstract must comply with 37 CFR 1.72(b) regarding the length and placement of the abstract on a separate sheet of paper.

Applicants are also permitted to amend the specification by submitting a substitute specification.

• A clean version of the substitute specification, a separate marked up version showing the changes in the specification relative to the previous version, and a statement that the substitute specification contains no new matter are required.

Any previously deleted paragraph or section can only be reinstated by a subsequent amendment presenting the previously deleted subject matter.

• A direction by applicant to remove a previously entered amendment will not be permitted.

C.   Amendments to the Claims

Each amendment document that includes a change to an existing claim, including the deletion of an existing claim, or submission of a new claim, must include a complete listing of all claims ever presented (including previously canceled and non-entered claims) in the application.

After each claim number, the status identifier of the claim must be presented in a parenthetical expression, and the text of each claim under examination as well as all withdrawn claims (each with markings if any, to show current changes) must be presented.

• The listing will serve to replace all prior versions of the claims in the application.

Status Identifiers: The current status of all of the claims in the application, including any previously canceled or withdrawn claims, must be given.

• Status is indicated in a parenthetical expression following the claim number by one of the following status identifiers: (original), (currently amended), (previously presented), (canceled), (withdrawn), (new), or (not entered).
• The status identifier (withdrawn – currently amended) is also acceptable for a withdrawn claim that is being currently amended.

Claims added by a preliminary amendment must have the status identifier (new) instead of (original), even when the preliminary amendment is present on the filing date of the application and such claim is treated as part of the original disclosure.

• If applicant files a subsequent amendment, applicant must use the status identifier (previously presented) if the claims are not being amended, or (currently amended) if the claims are being amended, in the subsequent amendment.
• Claims that are canceled by a preliminary amendment that is present on the filing date of the application are required to be listed and must have the status identifier (canceled) in the preliminary amendment and in any subsequent amendment.
• The status identifier (not entered) is used for claims that were previously proposed in an amendment (e.g., after-final) that was denied entry.

In an amendment submitted in a U.S. national stage application, claims that were present on the international filing date or rectified must have the status identifier (original); claims that were amended or added with effect in the U.S. national stage application must have the status identifier (previously presented); and claims that were canceled with effect in the U.S. national stage application must have the status identifier (canceled).

• If the amendment submitted in the U.S. national stage application is making a change in a claim, the status identifier (currently amended) must be used for that claim.

For any amendment being filed in response to a restriction or election of species requirement and any subsequent amendment, any claims which are non-elected must have the status identifier (withdrawn).

• Any non-elected claims which are being amended must have either the status identifier (withdrawn) or (withdrawn – currently amended) and the text of the non-elected claims must be presented with markings to indicate the changes.
• Any non-elected claims that are being canceled must have the status identifier (canceled).

Markings to Show the Changes: All claims being currently amended must be presented with markings to indicate the changes that have been made relative to the immediate prior version.

• The changes in any amended claim must be shown by strike-through (for deleted matter) or underlining (for added matter) with 2 exceptions:
  • (1) for deletion of five or fewer consecutive characters, double brackets may be used (e.g., [[eroor]]);
  • (2) if strike-through cannot be easily perceived (e.g., deletion of number “4” or certain punctuation marks), double brackets must be used (e.g., [[4]]).
• As an alternative to using double brackets, however, extra portions of text may be included before and after text being deleted, all in strike-through, followed by including and underlining the extra text with the desired change (e.g., number 4 as number 14 as).
• An accompanying clean version is not required and should not be presented.
• Only claims of the status “currently amended” or “withdrawn” will include markings.

Any claims added by amendment must be indicated as “new” and the text of the claim must not be underlined.

Claim Text: The text of all pending claims under examination and withdrawn claims must be submitted each time any claim is amended.

• The text of pending claims not being currently amended, including withdrawn claims, must be presented in clean version, i.e., without any markings.
• Any claim presented in clean version will constitute an assertion that it has not been changed relative to the immediate prior version except to omit markings that may have been present in the immediate prior version of the claims.
• A claim being canceled must be indicated as “canceled;” the text of the claim must not be presented.
  • Providing an instruction to cancel is optional.
• Canceled and not entered claims must be listed by only the claim number and status identifier, without presenting the text of the claims.
• When applicant submits the text of canceled or not-entered claims in the amendment, the Office may accept such an amendment, if the amendment otherwise complies with 37 CFR 1.121, instead of sending out a notice of non-compliant amendment to reduce the processing time.

Claim Numbering: All of the claims in each amendment paper must be presented in ascending numerical order.

• Consecutive canceled or not entered claims may be aggregated into one statement (e.g., Claims 1 – 5 (canceled)).

A canceled claim can be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number.

• The original numbering of the claims must be preserved throughout the prosecution.
• When claims are canceled, the remaining claims must not be renumbered.

Acceptable Alternative Status Identifiers: To prevent delays in prosecution, the Office will waive certain provisions of 37 CFR 1.121 and accept alternative status identifiers not specifically set forth in 37 CFR 1.121(c).

• Accordingly claim listings that include alternative status identifiers as set forth below may be accepted if the amendment otherwise complies with 37 CFR 1.121.

The Office may also accept additional variations of the status identifiers provided in 37 CFR 1.121(c) not listed above if an Office personnel determines that the status of the claims is accurate and clear.

• When accepting alternative status identifiers, the examiner is not required to correct the status identifiers using an examiner’s amendment.
• Applicant will not be notified and will not be required to submit a corrective compliant amendment.
• The examiner does not need to make a statement on the record that the alternative status identifiers have been accepted.

D.   Amendments to the Drawing

Any changes to an application drawing must be submitted on a replacement sheet of drawings, even when applicant is only submitting better quality drawings without any substantive changes.

• Any additional new drawings must be submitted on a new sheet of drawings.
• The replacement or new sheet of drawings must be an attachment to the amendment document and must be identified in the top margin as “Replacement Sheet.”
• The new drawing sheet must be identified in the top margin as “New Sheet.”
• The replacement drawing sheet must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended.
• The figure or figure number of the amended drawing(s) must not be labeled as “amended.” A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included.
• The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change to the drawings.
• A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.

An explanation of the changes made must be presented in the “Amendments to the Drawings” or the remarks section of the amendment document.

• If the changes to the drawing figure(s) are not approved by the examiner, applicant will be notified in the next Office action.
• Applicant must amend the brief and detailed description of drawings sections of the specification if they are not consistent with the changes to the drawings.
• For example, when applicant files a new drawing sheet, an amendment to the specification is required to add the brief and detailed description of the new drawings.

The proposed drawing correction practice has been eliminated.

• For any changes to the drawings, applicant is required to submit a replacement sheet of drawings with the changes made. No proposed changes in red ink should be submitted.

Any proposed drawing corrections will be treated as non-compliant under 37 CFR 1.121(d).

• In response to any drawing objections, applicant should submit drawing changes by filing a replacement sheet of drawings or a new sheet of drawings with the corrections made.
• A letter to the official draftsman is no longer required.

Drawing submissions without any amendments to the specification and claims after allowance should be forwarded to the Office of Data Management.

E.   Examiner’s Amendments

37 CFR 1.121(g) permits the Office to make amendments to the specification, including the claims, by examiner’s amendments without paragraph/section/claim replacement in the interest of expediting prosecution and reducing cycle time.

• Additions or deletions of subject matter in the specification, including the claims, may be made by instructions to make the change at a precise location in the specification or the claims.

If a non-compliant amendment would otherwise place the application in condition for allowance, the examiner may enter the non-compliant amendment and provide an examiner’s amendment to correct the non-compliance (e.g., an incorrect status identifier).

• Similarly, if an amendment under 37 CFR 1.312 after allowance is non-compliant under 37 CFR 1.121 and the entry of the amendment would have been otherwise recommended, the examiner may enter the amendment and correct the non-compliance (e.g., an incorrect status identifier) using an examiner’s amendment.

For example, if some of the status identifiers are incorrect in an amendment, the examiner may enter the non-compliant amendment and:

• provide a claim listing presenting all of the claims with the proper status identifiers in an examiner’s amendment;
• print a copy of the claim listing of the non-compliant amendment, cross out the improper status identifiers, write in the correct status identifiers and include it as an attachment to an examiner’s amendment; or
• correct the improper status identifiers by instructions in an examiner’s amendment.

The examiner’s amendment should include the reason why the amendment is non-compliant and indicate how it was corrected.

• Authorization from the applicant or attorney/agent of record and appropriate extensions of time are not required if the changes are not substantive (e.g., corrections of format errors or typographical errors).
• Such an examiner’s amendment may be made after the time period for reply, or after the shortened statutory period without any extensions of time, as long as the non-compliant amendment was timely filed.

Authorization and appropriate extensions of time are required if the changes made in the examiner’s amendment are substantive (e.g., the examiner’s amendment would include a cancellation of a claim or change the scope of the claims).

F.   Non-Compliant Amendments

If an amendment submitted on or after July 30, 2003, fails to comply with 37 CFR 1.121 (as revised on June 30, 2003), the Office will notify applicant by a Notice of Non-Compliant Amendment, that the amendment fails to comply with the requirements of 37 CFR 1.121 and identify:

• which section of the amendment is non-compliant (e.g., the amendments to the claims section);
• items that are required for compliance (e.g., a claim listing in compliance with 37 CFR 1.121(c)); and
• the reasons why the section of the amendment fails to comply with 37 CFR 1.121 (e.g., the status identifiers are missing).

H.   Amendment of Amendments

When a replacement paragraph or section of the specification is to be amended, it should be wholly rewritten and the original insertion canceled.

III.   AMENDMENT IN REEXAMINATION PROCEEDINGS AND REISSUE APPLICATIONS

In patent-owner-filed ex parte reexaminations, the patent owner may amend at the time of the request for ex parte reexamination. In any ex parte reexamination proceeding, no amendment or response can be filed between the date of the request for ex parte reexamination and the order for ex parte reexamination.

Following the order for ex parte reexamination and prior to the examination phase of ex parte reexamination proceeding, an amendment may be filed only with the patent owner’s statement.

During the examination phase of the ex parte reexamination proceeding, an amendment may be filed:

• after the first examination;
• after final rejection or an appeal has been taken, if the amendment meets the criteria of 37 CFR 1.116; and
• when and as specifically required by the examiner.

 

» 714.01 Signatures to Amendments