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|Top of Notices (304) December 27, 2011||US PATENT AND TRADEMARK OFFICE||Print This Notice 1373 CNOG 1608|
|Amendments, Drawings, CPA Practice||Referenced Items (300, 301, 302, 303, 304, 305, 306, 307)|
(304) Treatment of Amendments that if Entered Would Cancel All of the Claims in an Application Before June of 1998, it was the practice of the United States Patent and Trademark Office (USPTO) to treat an application filed with an amendment (preliminary amendment) canceling all of the claims and presenting no new or substitute claims by denying entry of the amendment. See Manual of Patent Examining Procedure 711.01 and 714.19 (7th ed. 1998) (MPEP). In Baxter Int'l Inc. v. McGaw Inc., 149 F.3d 1321, 47 USPQ2d 1225 (Fed. Cir. 1998), the U.S. Court of Appeals for the Federal Circuit (Federal Circuit) held that a divisional application that included instructions to cancel all of the claims in the specification, but did not present any new claims, did not contain at least one claim as required by 35 U.S.C. 112, 2, and, thus was not entitled to a filing date under 35 U.S.C. 111(a) until the date an amendment including at least one claim was filed in the application. Following Baxter, the USPTO changed its practice and no longer accorded a filing date to any application that was accompanied by a preliminary amendment which cancels all claims and fails to simultaneously submit any new claims. See Any Application Filed With Instructions to Cancel All of the Claims in the Application is Not Entitled to a Filing Date, 1216 Off. Gaz. Pat. Office 46 (Nov. 10, 1998). Recently, in Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001), the Federal Circuit affirmed that the USPTO may refuse to enter an improper amendment that would cancel all of the claims in an application to avert harm (loss of a filing date) to an applicant. The Federal Circuit distinguished its decision in Baxter since in Baxter the USPTO did enter the amendment that canceled all of the claims in the application (contrary to the provisions of MPEP 711.01 and 714.19 then in effect), thus resulting in the application not being entitled to a filing date. In contrast, in Exxon the USPTO refused to enter the amendment and thus the claims were never canceled. Consistent with Exxon and MPEP 711.01 and 714.19, the USPTO will deny entry of any amendment (whether submitted with the filing of the application or after the filing date of the application) that seeks cancellation of all claims but does not present any new or substitute claims. For fee calculation purposes, however, the USPTO will treat such an application as containing a single claim. The USPTO plans to codify this modification of the USPTO's current practice in the rules of practice. While some period of time will elapse before any final rule change can be promulgated, this modification of the USPTO's current practice (which is also consistent with the current rules of practice) is effective immediately. In addition, the provision in MPEP 601.01(e) concerning the treatment of a nonprovisional application accompanied by a preliminary amendment which cancels all claims and fails to simultaneously submit any new claim(s) will be revised consistent with this notice in due course. Inquiries concerning this notice may be addressed to Fred A. Silverberg, Senior Legal Advisor, Office of Patent Legal Administration, at 703-305-8986. January 9, 2002 STEPHEN G. KUNIN Deputy Commissioner for Patent Examination Policy [1254 OG 827]