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[Alternative text: Letterhead of the Commissioner for Patents United States Patent and Trademark Office including USPTO seal. P.O. Box 1450, Alexandria, Virginia 22313-1450 – www.uspto.gov]

Date: June 1, 2005

To: Technology Center Directors

Patent Examining Corps

/s/

From: Joseph J. Rolla

Deputy Commissioner for Patent Examination Policy

Subject: Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c)

Effective immediately, the Office will waive certain provisions of 37 CFR 1.121(c)1 so that the Office may accept amendments that include: (1) the text of canceled claims or not entered claims, and (2) certain variations of status identifiers. Although revised 37 CFR 1.1212 has been in effect for over 18 months, the Office is still receiving an unexpectedly high number of non-compliant amendments. The cycle for correcting non-compliant amendments causes extra work for applicants, examiners and the Office’s Technical Support Staff, delays in prosecution and increased pendency of applications. Upon review, the Office has determined that certain requirements of 37 CFR 1.121 are not deemed essential in the Image File Wrapper (IFW) environment and that waiver of certain provisions of 37 CFR 1.121(c) will still allow examiners to clearly understand exactly what amendments have been made in IFW applications.

The following amendment submissions are now acceptable:

  • Claim listings that include the text of a canceled claim or a not entered claim if the amendment otherwise complies with 37 CFR 1.121, including use of the proper status identifier “canceled” or “not entered,” respectively.
  • Claim listings that include status identifiers as set forth in the following table if the amendment otherwise complies with 37 CFR 1.121.

Table of status identifiers set forth in 37 CFR 1.121(c) and acceptable alternatives

Status Identifiers Set Forth in 37 CFR 1.121(c)

Acceptable Alternatives

1. Original

Original Claim; and Originally Filed Claim

2. Currently amended

Presently amended; and Currently amended claim

3. Canceled

Canceled without prejudice; Cancel; Cancelled; Canceled herein; Previously cancelled; Canceled claim; and Deleted

4. Withdrawn

Withdrawn from consideration; Withdrawn – new; Withdrawn claim; and Withdrawn-currently amended3

5. Previously presented

Previously amended; Previously added; Previously submitted; and Previously presented claim

6. New

Newly added; and New claim

7. Not entered

Not entered claim

The Office may also accept other variations of the status identifiers provided in 37 CFR 1.121(c) when the examiner determines that the status of the claims is accurate and clear. The Technical Support Staff (TSS) and examiners should liberally accept variations where the intent of the status identifiers is accurate and clear in view of the record of the application. If the TSS reviews an amendment (other than an after-final amendment) that includes status identifiers not listed in the above table and the amendment otherwise complies with 37 CFR 1.121, the TSS should only mail out a Notice of Non-Compliant Amendment where the status of the amended claim is not accurate and clear in view of the application file record. If the TSS enters an amendment and the examiner thereafter determines that the status of the claims is not accurate and clear in view of the application file record, a Notice of Non-Compliant Amendment must be mailed to the applicant. The examiner may request the TSS to mail out the Notice. Amendments filed after final rejection should continue to be forwarded to the examiner for the usual review of the amendment, including compliance with 37 CFR 1.121. When accepting alternative status identifiers, the examiner is not required to correct the status identifiers using an examiner’s amendment, nor shall applicant be notified, and 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.

Inquiries concerning this memorandum may be directed to Elizabeth Dougherty or Eugenia Jones, Senior Legal Advisors in the Office of Patent Legal Administration, at (571) 272-7703 or PatentPractice@uspto.gov.

1 The Office shall waive the provision of 37 CFR 1.121(c)(4)(i) that no claim text shall be presented for any claim with the status of “canceled” or “not entered” and the provisions of 37 CFR 1.121(c) which requires usage of one of the following identifiers: Original, Currently amended, Canceled, Withdrawn, Withdrawn-currently amended, Previously presented, New, and Not entered.

2 The Office revised the amendment practice set forth in 37 CFR 1.121 in a final rule that became effective July 30, 2003. See Changes to Implement Electronic Maintenance of Official Patent Application Records, 68 Fed. Reg. 38611 (June 30, 2003), 1272 Off. Gaz. Pat. Office 197 (July 29, 2003).

3 37 CFR 1.121(c) sets forth that “Withdrawn–currently amended” is an acceptable variation of the status identifier “Withdrawn” for a withdrawn claim that is currently amended.

 

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