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. The term "brackets" set forth in 37 CFR 1. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived e.
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. For added paragraphs, 37 CFR 1. Similarly, under 37 CFR 1. 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 e. 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 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 under 37 CFR 1. 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. Applicants are also permitted to amend the specification by submitting a substitute specification, provided the requirements of 37 CFR 1. Under 37 CFR 1. 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.
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.
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. For example, when applicant cancels all of the claims in the original specification and adds a new set of claims, the claim listing must include all of the canceled claims with the status identifier canceled the canceled claims may be aggregated into one statement.
The new claims must be numbered consecutively beginning with the number next following the highest numbered claim previously presented whether entered or not in compliance with 37 CFR 1. Canceled without prejudice; Cancel; Cancelled; Canceled herein; Previously cancelled; Canceled claim; Deleted; and Previously canceled. Previously amended; Previously added; Previously submitted; and Previously presented claim.
The Office may also accept additional variations of the status identifiers provided in 37 CFR 1. 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. Any changes to an application drawing must comply with 37 CFR 1. 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 figure or figure number of the amended drawing s must not be labeled as "amended. 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. 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. 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.
Similarly, if an amendment under 37 CFR 1. See subsection "F. Non-Compliant Amendments" for more information on non-compliant amendments. For example, if some of the status identifiers are incorrect in an amendment, the examiner may enter the non-compliant amendment and:. The authorization must be given within the time period for reply set forth in the last Office action.
If an amendment submitted on or after July 30, , fails to comply with 37 CFR 1. If the noncompliant amendment is:. Any amendments including after-final amendments that add new claims in excess of the number of claims previously paid for in an application must be accompanied by the payment of the required excess claims fees. Failure to pay the excess claims fees will result in non-entry of the amendment. The directions for the entry of an amendment may be defective.
If the correct place of entry is clear from the context, the amendatory paper will be properly amended in the Technology Center and notation thereof, initialed in ink by the examiner, who will assume full responsibility for the change, will be made on the margin of the amendatory paper. In the next Office action, the applicant should be informed of this alteration in the amendment and the entry of the amendment as thus amended.
The applicant will also be informed of the nonentry of an amendment where defective directions and context leave doubt as to the intent of applicant. When a replacement paragraph or section of the specification is to be amended, it should be wholly rewritten and the original insertion canceled. A marked-up version of the replacement paragraph or section of the specification should be presented using underlining to indicate added subject matter and strike-through to indicate deleted subject matter.
Matter canceled by amendment can be reinstated only by a subsequent amendment presenting the canceled matter as a new insertion. A claim cancelled by amendment deleted in its entirety may be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number. Amendments in reissue applications must be made in accordance with 37 CFR 1. Amendments in ex parte and inter partes reexamination proceedings must be made in accordance with 37 CFR 1.
In patent-owner-filed ex parte reexaminations, the patent owner may amend at the time of the request for ex parte reexamination in accordance with 37 CFR 1. 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.
See 37 CFR 1. Following the order for ex parte reexamination under 37 CFR 1. During the examination phase of the ex parte reexamination proceeding, an amendment may be filed:. An amendment must be signed by a person having authority to prosecute the application. An unsigned or improperly signed amendment will not be entered. To facilitate any telephone call that may become necessary, it is recommended that the complete telephone number with area code and extension be given, preferably near the signature.
An unsigned amendment or one not properly signed by a person having authority to prosecute the application is not entered. This applies, for instance, where the amendment is signed by only one of two joint inventors and the one signing has not been given a power of attorney by the other inventor. When an unsigned or improperly signed amendment is received the amendment will be listed in the contents of the application file, but not entered.
The examiner will notify applicant of the status of the application, advising him or her to furnish a duplicate amendment properly signed or to ratify the amendment already filed. In an application not under final rejection, applicant should be given a two month time period in which to ratify the previously filed amendment 37 CFR 1. Applicants may be advised of unsigned amendments by use of form paragraph 7.
The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO 2 MONTHS within which to supply the omission or correction in order to avoid abandonment. Sometimes problems arising from unsigned or improperly signed amendments may be disposed of by calling in the local representative of the attorney or agent of record, since he or she may have the authority to sign the amendment.
An amendment signed by a practitioner who has been suspended or excluded from practice under the provisions of 37 CFR Part 11 is not entered. The file and unentered amendment are submitted to the Office of Enrollment and Discipline for appropriate action. A registered attorney or agent acting in a representative capacity under 37 CFR 1. If an amendment signed by the applicant is received in an application in which there is a duly appointed attorney or agent, the amendment should be entered and acted upon.
Attention should be called to 37 CFR 1. Two copies of the action should be prepared, one being sent to the attorney and the other directly to the applicant. The notation: "Copy to applicant" should appear on the original and on both copies. A preliminary amendment is an amendment that is received in the Office on or before the mail date of the first Office action under 37 CFR 1.
For applications filed on or after September 21, the effective date of 37 CFR 1. For applications filed before September 21, , a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first executed oath or declaration under 37 CFR 1.
Any amendment filed after the filing date of the application is not part of the original disclosure of the application. When the Office publishes the application under 35 U.
If a preliminary amendment is filed in a format that cannot be included in the publication, the Office of Patent Application Processing OPAP will issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes.
The only format for an amendment to the specification other than the claims that is usable for publication is a substitute specification in compliance with 37 CFR 1. As a result, the Office has revised its procedures to mail a notice e. For applications filed prior to September 16, , where applicant intends to claim the benefit of a prior application under 35 U.
If the specific reference is submitted in a preliminary amendment, a substitute specification will not be required if the preliminary amendment only adds or amends a benefit claim to a prior-filed application under 35 U.
If an applicant receives a notice from OPAP e. In order to avoid abandonment, applicant should file a reply with the required substitute specification or an explanation that the substitute specification is not necessary because the preliminary amendment only adds or amends a benefit claim.
If the preliminary amendment contains other amendments to the specification other than the claims , a substitute specification will be required, and a reply to a notice requiring a substitute specification without the substitute specification will be treated as an incomplete reply with no new time period for reply being provided. Note that the above does not apply to applications filed on or after September 16, , because the reference to a prior application as required by 35 U.
Requiring a substitute specification with all preliminary amendments made therein is also important to ensure that applicants do not circumvent the limitations upon redacted publications set forth in 35 U.
As preliminary amendments to the specification, excluding the claims, cannot be easily published, the Office must require a substitute specification whenever an application is filed with a preliminary amendment to the specification, excluding the claims, in order to ensure that the application, including any new matter added by way of a preliminary amendment included on the filing date of the application, is published.
Because a preliminary amendment to the claims or abstract in compliance with 37 CFR 1. Applicants should note, however, that there is no need to file a preliminary amendment to the claims on filing. By making the new claim set part of the originally filed specification, applicant may avoid having to pay an application size fee, as both the specification including the claims and any preliminary amendment are used in counting the number of pages for purposes of 37 CFR 1.
The claim set submitted should be the set of claims intended to be examined, and when the claims submitted on filing are part of the specification on sequentially numbered pages of the specification see 37 CFR 1. A preliminary amendment filed with a submission to enter the national stage of an international application under 35 U. Accordingly, a "Notice to File Corrected Application Papers" requiring a substitute specification will not ordinarily be mailed in an international application even if the national stage submission includes a preliminary amendment.
Since a request for continued examination RCE is not a new application, an amendment filed before the first Office action after the filing of the RCE is not a preliminary amendment. Any amendment canceling claims in order to reduce the excess claims fees should be filed before the expiration of the time period set forth in a notice that requires excess claims fees.
Such an amendment would be effective to reduce the number of claims to be considered in calculating the excess claims fees. Any preliminary amendment, regardless of when it is filed, must comply with 37 CFR 1.
Preliminary amendments made in a transmittal letter of the application will not comply with 37 CFR 1. For example, applicants should include the reference to a prior filed application in the first sentence s of the specification following the title for applications filed prior to September 16, or in an application data sheet in compliance with 37 CFR 1.
If a preliminary amendment filed after the filing date of the application fails to comply with 37 CFR 1. If the applicant takes no corrective action, examination of the application will commence without consideration of the proposed changes in the non-compliant preliminary amendment. If a preliminary amendment that is present on the filing date of the application fails to comply with 37 CFR 1. Filing a preliminary amendment is not recommended because the changes made by the preliminary amendment may not be reflected in the patent application publication even if the preliminary amendment is referred to in an oath or declaration.
If there is insufficient time to have the preliminary amendment be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun, the preliminary amendment will not be reflected in the patent application publication.
Technical preparations for publication of an application generally begin four months prior to the projected date of publication. Applicants may avoid preliminary amendments by incorporating any desired amendments into the text of the specification including a new set of claims, even where the application is a continuation or divisional application of a previously filed patent application.
In such a continuation or divisional application, a clean copy of a specification i. Applicants are strongly discouraged from submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application. For applications filed before September 21, , a preliminary amendment that was present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first oath or declaration in compliance with 37 CFR 1.
If the preliminary amendment was not referred to in the oath or declaration, applicant should submit a supplemental oath or declaration under 37 CFR 1. A surcharge under 37 CFR 1. Any preliminary amendments should either accompany the application or be filed after the application has received its application number and filing date so that the preliminary amendments would include the appropriate identifications e.
Any amendments filed after the mail date of the first Office action is not a preliminary amendment. If the date of receipt 37 CFR 1.
A preliminary amendment filed in compliance with 37 CFR 1. A preliminary amendment will be disapproved by the Director if the preliminary amendment cancels all the claims in the application without presenting any new or substitute claims. A preliminary amendment may also be disapproved by the Director if the preliminary amendment unduly interferes with the preparation of an Office action.
If applicant files a preliminary amendment whether submitted prior to, on or after the filing date of the application seeking cancellation of all claims in the application without presenting any new claims, the Office will not enter such an amendment. See Exxon Corp. Phillips Petroleum Co. Thus, the application will not be denied a filing date merely because such a preliminary amendment was submitted on filing.
For fee calculation purposes, the Office will treat such an application as containing only a single claim. In most cases, an amendment that cancels all the claims in the application without presenting any new claims would not meet the requirements of 37 CFR 1.
The Office will send a notice of non-compliant amendment 37 CFR 1. Once the examiner has started to prepare a first Office action, entry of a preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of the first Office action. Applicants are encouraged to file all preliminary amendments as soon as possible. Entry of a preliminary amendment will not be disapproved under 37 CFR 1.
Even if the examiner has spent a significant amount of time preparing the first Office action, entry of a preliminary amendment filed within these time periods should not be disapproved under 37 CFR 1. These time periods are not extendable. The factors that will be considered for denying entry of preliminary amendments under 37 CFR 1.
The entry of a preliminary amendment that would unduly interfere with the preparation of an Office action may be denied if the following two conditions are met:. For example, if the examiner has spent a significant amount of time to conduct a prior art search or draft an Office action before a preliminary amendment is received by the Office, the first condition is satisfied.
Entry of the amendment may be denied if it:. This list is not an exhaustive list, and the entry of a preliminary amendment may be denied in other situations that satisfy the two conditions set forth above. Once these conditions are met, the examiner should obtain the approval of the SPE before the entry of the amendment may be denied. Denying entry of a preliminary amendment under 37 CFR 1.
For example, if before the preliminary amendment is received in the Office, the examiner has not started working on the Office action or has started, but has merely inspected the file for formal requirements, then the examiner should enter and consider the preliminary amendment.
Furthermore, even if the examiner has devoted a significant amount of time to prepare an Office action prior to the date the preliminary amendment is received in the Office, it is not appropriate to disapprove the entry of such an amendment if it:. Form paragraph 7. The preliminary amendment filed on [1] was not entered because entry of the amendment would unduly interfere with the preparation of the Office action. The examiner spent a significant amount of time on the preparation of an Office action before the preliminary amendment was received.
On the date of receipt of the amendment, the examiner had completed [2]. Furthermore, entry of the preliminary amendment would require significant additional time on the preparation of the Office action. Specifically, entry of the preliminary amendment would require the examiner to [3]. A responsive reply under 37 CFR 1. If this is not a final Office action, applicant may wish to resubmit the amendment along with a responsive reply under 37 CFR 1. In all cases where reply to a requirement is indicated as necessary for further consideration of the claims, or where allowable subject matter has been indicated in an application, a complete reply must either comply with the formal requirements or specifically traverse each one not complied with.
Drawing and specification corrections, presentation of a new oath and the like are generally considered as formal matters, although the filing of drawing corrections in reply to an objection to the drawings cannot normally be held in abeyance.
However, the line between formal matter and those touching the merits is not sharp, and the determination of the merits of an application may require that such corrections, new oath, etc.
The claims may be amended by canceling particular claims, by presenting new claims, or by rewriting particular claims as indicated in 37 CFR 1. The requirements of 37 CFR 1. An amendment submitted after a second or subsequent non-final action on the merits which is otherwise responsive but which increases the number of claims drawn to the invention previously acted upon is not to be held not fully responsive for that reason alone.
The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims.
Applicant should also specifically point out the support for any amendments made to the disclosure. An amendment which does not comply with the provisions of 37 CFR 1. An examiner may treat an amendment not fully responsive to a non-final Office action by:.
Where an amendment substantially responds to the rejections, objections, or requirements in a non-final Office action and is a bona fide attempt to advance the application to final action but contains a minor deficiency e. The new Office action may simply reiterate the rejection, objection, or requirement not addressed by the amendment or otherwise indicate that such rejection, objection, or requirement is no longer applicable.
This course of action would not be appropriate in instances in which an amendment contains a serious deficiency e. In either event, the examiner should not further examine the application on its merits unless and until the omission is timely supplied. The Beckton, Dickinson decision, however, did not further elaborate on how those factors should be analyzed. That has changed. If reasonable minds can disagree regarding the purported treatment of the art or arguments, it cannot be said that the Office erred in a manner material to patentability.
Advanced Bionics , however, offers two points of clarification that may help the patent owner in that regard. Second, if the PTAB determines that substantially the same art previously was presented to the Patent Office, it need not address whether substantially the same argument previously was presented, or vice versa; upon either determination, the focus of the inquiry shifts to whether material error occurred.
The facts of Advanced Bionics itself illustrate this. There, the patent owner successfully argued that three new references raised by the petitioner disclosed substantially the same information as the fourth, previously presented Zimmerling reference.
The PTAB in turn relied upon the substantial sameness of the references to conclude that the Patent Office did not materially err, because any allegedly material information in the new references was duplicative of Zimmerling, which the Office already had considered. Another example can be found in Oticon Medical AB v. He practices complex patent litigation in the areas of pharmaceuticals, biotechnology, and chemistry.
As lead or co-counsel, Chris has litigated patent cases involving oncology therapies, anti-HIV therapies, anti-hepatitis drugs, antidepressants, and statins. For more information or to contact Christopher, please visit his Firm Profile Page. Read more. It states that a two-thirds majority vote in Congress is required to allow public officials who had engaged in rebellion to regain the rights of American citizenship and hold government or military office.
It states that: "No person shall be a Senator or Representative in Congress, or elector of President and Vice-President, or hold any office, civil or military, under the United States, or under any state, who, having previously taken an oath, as a member of Congress, or as an officer of the United States, or as a member of any State legislature, or as an executive or judicial officer of any State, to support the Constitution of the United States, shall have engaged in insurrection or rebellion against the same, or given aid or comfort to the enemies thereof.
Section Four of the 14th Amendment prohibited payment of any debt owed to the defunct Confederate States of America. It also banned any payments to former enslavers as compensation for the loss of human "property" enslaved people. In giving Congress power to pass laws to safeguard the sweeping provisions of Section One, in particular, the 14th Amendment effectively altered the balance of power between the federal and state governments in the United States.
Nearly a century later, Congress used this authority to pass landmark civil rights legislation, including the Civil Rights Act of and the Voting Rights Act of In its early decisions involving the 14th Amendment, the Supreme Court often limited the application of its protections on a state and local level.
In Plessy v. Ferguson , the Court ruled that racially segregated public facilities did not violate the equal protection clause of the 14th Amendment, a decision that would help establish infamous Jim Crow laws throughout the South for decades to come. But beginning in the s, the Supreme Court increasingly applied the protections of the 14th Amendment on the state and local level. Ruling on appeal in the case Gitlow v. New York , the Court stated that the due process clause of the 14th Amendment protected the First Amendment rights of freedom of speech from infringement by the state as well as the federal government.
And in its famous ruling in Brown v. Ferguson , ruling that segregated public schools did in fact violate the equal protection clause of the 14th Amendment. Fourteenth Amendment, HarpWeek.
But if you see something that doesn't look right, click here to contact us! Subscribe for fascinating stories connecting the past to the present. The 15th Amendment, which sought to protect the voting rights of African American men after the Civil War, was adopted into the U. Constitution in Despite the amendment, by the late s discriminatory practices were used to prevent Black citizens from exercising their The 13th Amendment to the U.
Constitution, ratified in in the aftermath of the Civil War, abolished slavery in the United States. The Second Amendment, often referred to as the right to bear arms, is one of 10 amendments that form the Bill of Rights, ratified in by the U.
Differing interpretations of the amendment have fueled a long-running debate over gun control legislation and the
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