| Revised Amendment Practice under 37 CFR 1.121 (Claims and Specifications) |
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A. Amendments to Claims
A1. What are the permissible status identifiers?
The seven permissible status identifiers set forth in 37 CFR 1.121(c) are: (Original), (Currently
amended), (Canceled), (Previously presented), (New), (Not entered), and (Withdrawn).
(Withdrawn-currently amended) is also acceptable.
A2. If the examiner made a restriction requirement and applicant elected with traverse and filed an
amendment to the claims, what status identifiers should be used for the non-elected claims that are
being amended, the non-elected claims that are not amended, and new claims that are drawn to the
non-elected invention?
The non-elected claims that are amended must have the status identifier (withdrawn) or
(withdrawn-currently amended). The non-elected claims that are not amended must have the status
identifier (withdrawn). Any new claims that are drawn to a non-elected invention must have the status
identifier (new).
A3. When an application with several previously filed amendments and an after-final amendment that
has been entered is being allowed, which set of claims would be used in printing the patent?
The claims in the claim listing of the latest amendment will be used in printing the patent because the
claims in the claim listing of the current amendment will replace all prior claim listings and versions of
claims in the application.
A4. Can the status identifier be presented before the claim number?
No, the status identifier must be presented after the claim number. See 37 CFR 1.121(c).
A5. When is a claim listing required?
Any amendment document that includes a change to an existing claim, cancellation of an existing
claim or addition of a new claim, must include a complete listing of all claims ever presented.
A6. Can applicant use "allowed" as the status identifier for claims that are previously indicated
allowable by the examiner?
No, applicant must use one of the permissible status identifiers. See question A1. If the claims that
are indicated as allowable are not being amended in the current amendment, applicant may use
either (original) or (previously presented), whichever is appropriate.
A7. If the amendment would be compliant other than one incorrect status identifier and the examiner
clearly knows the status of the claim, should the amendment be treated as a non-compliant
amendment?
Yes, a notice of noncompliant amendment (37 CFR 1.121) should be mailed to applicant to require
correction. If the amendment otherwise places the application in condition for allowance, however,
the examiner should correct the status identifier using an examiner's amendment.
A8. How can an applicant reinstate a canceled claim?
Applicant can reinstate a canceled claim by presenting the text of the canceled claim with any
desired changes in a new claim with a new claim number and use the status identifier, (new).
A9. When would applicant use the status identifier, (not entered)?
When applicant submitted a new claim (e.g., Claim 10 (new)) in an after-final amendment that was
denied entry, applicant should use the status identifier (not entered) for the new claim (e.g., Claim
10 (not-entered)) in any subsequent amendment.
A10. May I submit a complete claim listing in a reply when I am not making any changes to the
claims, such as responding to a restriction requirement or merely arguing a rejection?
Yes. Although a complete claim listing is only required whenever changes are made to any claims,
one may be submitted in a reply to an Office action where no changes are being made. It is
beneficial to the examiner (and all viewers of the electronic file) to have the most up-to-date set of
claims in the most recent paper submitted by the applicant. Note that the claim listing in this situation
would not include any claims with markings or any claims with the status identifiers of (new) or
(currently amended).
A11. How should I amend a formula in a claim?
Applicants may use one of the following methods, for example, change "H4" to "H2" in a chemical
formula:
(1) Strikethrough and underlining the whole formula.
Claim 1 (currently amended) A curing agent for epoxy resins comprising pyromellitic dianhydride,
C6H4 (C2O3)2 C6H2 (C2O3)2 .
(2) Doublebrackets and underlining the whole formula.
Claim 1 (currently amended) A curing agent for epoxy resins comprising pyromellitic dianhydride,
[[C6H4(C2O3)2]] C6H2 (C2O3)2 .
(3) Delete the claim and replace it with a new claim.
Claim 1 (canceled).
Claim 2 (new) A curing agent for epoxy resins comprising pyromellitic dianhydride, C6H2 (C2O3)2.
Do not use strikethrough or doublebrackets to delete only subscript "4" and use underlining to add
only subscript "2" in the formula.
A12. In the past, I have included claim status that indicates how many times a claim has been
amended, i.e., "Claim 1 (Twice Amended)." Is it proper to indicate that a claim has been "previously
amended twice" or "currently amended for the third time?"
No, under the revised amendment practice, it would NOT be appropriate to indicate how many times
a claim has been amended. Only the following seven status identifiers are permitted: "original",
"currently amended", "canceled", "new", "withdrawn", "previously presented", and "not entered".
B. Amendments to Specification (not including claims)
B1. What are the requirements for filing a substitute specification?
When applicants file a substitute specification, the following are required under 37 CFR 1.125: (1) a
statement that the substitute specification includes no new matter; (2) a marked-up version of the
specification with markings to show all the changes relative to the immediate prior version; and (3) a
clean version of the substitute specification.
B2. Does the Office scan both the clean version of the substitute specification and the marked-up
version into the image file wrapper (IFW)?
Yes, both versions should be scanned into IFW.
SOURCE: Patent Office Website November 2010.
A1. What are the permissible status identifiers?
The seven permissible status identifiers set forth in 37 CFR 1.121(c) are: (Original), (Currently
amended), (Canceled), (Previously presented), (New), (Not entered), and (Withdrawn).
(Withdrawn-currently amended) is also acceptable.
A2. If the examiner made a restriction requirement and applicant elected with traverse and filed an
amendment to the claims, what status identifiers should be used for the non-elected claims that are
being amended, the non-elected claims that are not amended, and new claims that are drawn to the
non-elected invention?
The non-elected claims that are amended must have the status identifier (withdrawn) or
(withdrawn-currently amended). The non-elected claims that are not amended must have the status
identifier (withdrawn). Any new claims that are drawn to a non-elected invention must have the status
identifier (new).
A3. When an application with several previously filed amendments and an after-final amendment that
has been entered is being allowed, which set of claims would be used in printing the patent?
The claims in the claim listing of the latest amendment will be used in printing the patent because the
claims in the claim listing of the current amendment will replace all prior claim listings and versions of
claims in the application.
A4. Can the status identifier be presented before the claim number?
No, the status identifier must be presented after the claim number. See 37 CFR 1.121(c).
A5. When is a claim listing required?
Any amendment document that includes a change to an existing claim, cancellation of an existing
claim or addition of a new claim, must include a complete listing of all claims ever presented.
A6. Can applicant use "allowed" as the status identifier for claims that are previously indicated
allowable by the examiner?
No, applicant must use one of the permissible status identifiers. See question A1. If the claims that
are indicated as allowable are not being amended in the current amendment, applicant may use
either (original) or (previously presented), whichever is appropriate.
A7. If the amendment would be compliant other than one incorrect status identifier and the examiner
clearly knows the status of the claim, should the amendment be treated as a non-compliant
amendment?
Yes, a notice of noncompliant amendment (37 CFR 1.121) should be mailed to applicant to require
correction. If the amendment otherwise places the application in condition for allowance, however,
the examiner should correct the status identifier using an examiner's amendment.
A8. How can an applicant reinstate a canceled claim?
Applicant can reinstate a canceled claim by presenting the text of the canceled claim with any
desired changes in a new claim with a new claim number and use the status identifier, (new).
A9. When would applicant use the status identifier, (not entered)?
When applicant submitted a new claim (e.g., Claim 10 (new)) in an after-final amendment that was
denied entry, applicant should use the status identifier (not entered) for the new claim (e.g., Claim
10 (not-entered)) in any subsequent amendment.
A10. May I submit a complete claim listing in a reply when I am not making any changes to the
claims, such as responding to a restriction requirement or merely arguing a rejection?
Yes. Although a complete claim listing is only required whenever changes are made to any claims,
one may be submitted in a reply to an Office action where no changes are being made. It is
beneficial to the examiner (and all viewers of the electronic file) to have the most up-to-date set of
claims in the most recent paper submitted by the applicant. Note that the claim listing in this situation
would not include any claims with markings or any claims with the status identifiers of (new) or
(currently amended).
A11. How should I amend a formula in a claim?
Applicants may use one of the following methods, for example, change "H4" to "H2" in a chemical
formula:
(1) Strikethrough and underlining the whole formula.
Claim 1 (currently amended) A curing agent for epoxy resins comprising pyromellitic dianhydride,
C6H4 (C2O3)2 C6H2 (C2O3)2 .
(2) Doublebrackets and underlining the whole formula.
Claim 1 (currently amended) A curing agent for epoxy resins comprising pyromellitic dianhydride,
[[C6H4(C2O3)2]] C6H2 (C2O3)2 .
(3) Delete the claim and replace it with a new claim.
Claim 1 (canceled).
Claim 2 (new) A curing agent for epoxy resins comprising pyromellitic dianhydride, C6H2 (C2O3)2.
Do not use strikethrough or doublebrackets to delete only subscript "4" and use underlining to add
only subscript "2" in the formula.
A12. In the past, I have included claim status that indicates how many times a claim has been
amended, i.e., "Claim 1 (Twice Amended)." Is it proper to indicate that a claim has been "previously
amended twice" or "currently amended for the third time?"
No, under the revised amendment practice, it would NOT be appropriate to indicate how many times
a claim has been amended. Only the following seven status identifiers are permitted: "original",
"currently amended", "canceled", "new", "withdrawn", "previously presented", and "not entered".
B. Amendments to Specification (not including claims)
B1. What are the requirements for filing a substitute specification?
When applicants file a substitute specification, the following are required under 37 CFR 1.125: (1) a
statement that the substitute specification includes no new matter; (2) a marked-up version of the
specification with markings to show all the changes relative to the immediate prior version; and (3) a
clean version of the substitute specification.
B2. Does the Office scan both the clean version of the substitute specification and the marked-up
version into the image file wrapper (IFW)?
Yes, both versions should be scanned into IFW.
SOURCE: Patent Office Website November 2010.
Go to:
Amendment Practice
Amendment for Non-Final Rejection
Claim Structure
Claim, Form of
Filing a Provisional Patent
Response to Rejection
What is a patent?
Amendment Practice
Amendment for Non-Final Rejection
Claim Structure
Claim, Form of
Filing a Provisional Patent
Response to Rejection
What is a patent?