Any Application Filed With Instructions to
                Cancel All of the Claims in the Application is
                         Not Entitled to a Filing Date
In view of the Federal Circuit decision in Baxter Int'l. Inc. v. McGaw
Inc., 149 F.3d 1321, 47 USPQ2d 1225 (Fed. Cir. 1998), decided June 30,
1998, the PTO is revising its treatment of applications deposited with
instructions contained in preliminary amendments or transmittal letters
to cancel all of the claims in the application.

MPEP      711.01 and 714.19 currently indicate that an amendment
canceling all of the claims and presenting no new or substitute claims
is ordinarily denied entry. The MPEP does not, however, differentiate
between amendments submitted with the filing of an application and all
other amendments. Baxter involved a patent granted on an application
filed as a divisional application under former 37 C.F.R.    1.60 with
instructions to cancel all of the claims in the specification without
presenting any new claims. The PTO accorded the application a filing
date (as of the date of receipt of the copy of the specification and
drawings) and sent applicant a notice that the instructions were
improper because they would leave the application without claims for
examination. In response to the notice, applicant subsequently filed an
amendment adding replacement claims.

The court held that the (divisional) application was not entitled to the
original filing date because the requirements of 35 U.S.C.    112,
second paragraph, had not been met, i.e., the application was
effectively filed without a claim. The court concluded that the earliest
filing date that could be accorded was the date a claim was filed (which
was the date the amendment was filed in response to the notice from the
PTO). The court also stated that the lack of a claim was a statutory
defect which the PTO could not waive.

As a result of Baxter, the PTO will no longer accord a filing date to
any application (original, continuation, divisional or
continuation-in-part) submitted under 37 C.F.R.    1.53(b) or Continued
Prosecution Application (CPA) (continuation or divisional) submitted
under 37 C.F.R.    1.53(d) where the application is accompanied by a
preliminary amendment which cancels all claims and fails to
simultaneously submit any new claims. MPEP      711.01 and 714.19 will
be revised to state that an amendment filed after the filing date of an
application which cancels all of the claims and presents no substitute
claim or claims is ordinarily denied entry. In addition, MPEP    601.01
(e) will be revised to call attention to Baxter.

When filing an application under 37 C.F.R.    1.53(b) or CPA request
under 37 C.F.R.    1.53(d), applicants and practitioners are reminded to
carefully review the application papers, including any preliminary
amendments to be filed with the application, to ensure that the
application will contain at least one claim after the preliminary
amendments are entered.

Questions or comments concerning this notice should be forwarded to John
F. Gonzales, Senior Legal Advisor, by facsimile at (703) 308-6916, by
telephone at (703) 305-9285, or by e-mail at

September 28, 1998                                         STEPHEN G. KUNIN
                                              Deputy Assistant Commissioner
                                             for Patent Policy and Projects