(184) Patent Application Publications
May Now Include Amendments
As a consequence of the use of Image File Wrappers (IFW), the
United States Patent and Trademark Office (Office) has begun to publish
patent applications with amendments that expedite the publication
process. For example, the patent application publication may be based
upon amendments to the specification that are reflected in a substitute
specification, an amendment to the abstract, amendments to the claims
that are reflected in a complete claim listing, and amendments to the
drawings that are reflected in replacement drawing sheets, provided
that such substitute specification or amendment is submitted in
sufficient time to be entered into the application file wrapper before
technical preparations for publication of the application have begun.
Technical preparations for publication of an application generally
begin between fourteen and nine weeks prior to the projected date of
publication (the projected publication date is indicated on the filing
receipt for the patent application). Accordingly, the provisions 37 CFR
1.215(a) are waived to the extent that they are inconsistent with this
change in practice. 37 CFR 1.215(a) will be revised consistent with
this change in practice, when the rule changes proposed in
Changes To Support Implementation of the United States Patent and
Trademark Office 21st Century Strategic Plan, 68 Fed.
Reg. 53816 (Sept. 12, 2003), 1275 Off. Gaz. Pat. Office Notices
23 (Oct 7, 2003) are made final.
Although the Office has begun to include amendments in patent
application publications, applicants desiring to ensure that a patent
application publication reflects an amendment should submit the
application, as amended, through the Electronic Filing System (EFS).
See 37 CFR 1.215(c). See also Helpful Hints Regarding
Publication of Patent Applications, 1249 Off. Gaz. Pat.
Office Notices 83 (August 21, 2001). In addition, if the
application is not maintained in an IFW, and the amended application is
not submitted through EFS, a petition under 37 CFR 1.182 will continue
to be necessary for certain drawings to be included in the patent
application publication. See Manual of Patent Examining
Procedure, Section 507 (8th ed. 2001, rev. 1, Feb. 2003).
General questions regarding publication of patent applications
should be directed to the Customer Service Center, Office of Patent
Publication, by telephone at (703) 305-8283. Questions regarding the
Electronic Filing System should be directed to (703) 305-3028.
Questions of a legal nature should be directed to the Office of Patent
Legal Administration at (703) 308-6906.
March 16, 2004 STEPHEN G. KUNIN
Deputy Commissioner for
Patent Examination Policy
[1281 OG 53]