Recent Patent-Related Rule Making and Changes in USPTO Practice Philadephia IPLA 9/25/03 (Text Version)


Alternative Text Version on Topic 1: Image File Wrapper (IFW) - Final Rule including Revised Amendment Practice of Training Slides entitled: "Recent Patent-Related Rule Making and Changes in USPTO Practice Philadelphia IPLA 9/25/03 "

Prepared September 25, 2003 by:
Office of Patent Legal Administration (OPLA)
Robert J. Spar, Director
(703) 308-5107

Image File Wrapper (IFW) – Final Rule

Effective date: July 30, 2003

Changes to Implement Electronic Maintenance of Official Patent Application Records, 1272 Off. Gaz. Pat. Office 197 (July 29, 2003), 68 Fed. Reg. 38611 (June 30, 2003)(final rule) [PDF] .

IFW Implementation

The Office is implementing the Image File Wrapper (IFW) system which is an image technology system for storage and maintenance of records associated with patent applications.

Paper components of the application file contents (including the specification, oath or declaration, drawings, information disclosure statements, amendments, Office actions, and file jacket notations) of pending applications will be scanned into the IFW system as electronic image files.

All processing and examination will be performed with the electronic image files, instead of paper source documents, by all Office personnel.

The electronic image files in the IFW system will be the official records of the applications (the transition started on 6/30/03).

See Notification of United States Patent and Trademark Office Patent Application Records being Stored and Processed in Electronic Form, 1271 Off. Gaz. Pat. Office 100 (June 17, 2003).

The image technology system will replace the standard paper processing of applications.

Electronic Maintenance of Application Records

Increases the integrity of the Office records;
Reduces the potential for loss of records and misfiling;
Allows parallel processing of the application by various parts of the Office; and
Facilitates intra-Office access to an application file and to other authorized parties.

Applicants may continue to file applications and correspondence in paper form.

Alternatively, applicants may use the Office electronic filing system (EFS) for new application filings and certain information disclosure statement (IDS) submissions.

Copies of U.S. patents and U.S. patent application publications are not required under §1.98 if the references are being submitted in an e-IDS.

The Office will supply copies of U.S. patents and U.S. patent application publications cited by the examiner to applicants for applications in IFW until the Office implements a system to permit applicants via Patent Application Information Retrieval (PAIR) system to access these documents electronically.

Foreign patent documents and non-patent literature will still be provided.

U.S. patents and application publications are currently available on the USPTO website at

Applicants may electronically access their applications in the IFW system via private side of PAIR.

The contents of published applications that are in the IFW system will be viewable by the public through the public side of PAIR in FY04.

The system is consistent with the data processing system used by the European Patent Office (EPO). The Office plans to increase information exchange by leveraging common storage architecture.

The backfile of existing applications will be scanned, and indexed, into the IFW system.

A schedule for capturing the backfile of existing applications linked to the movement of art units to the Office's new location at Carlyle has been established.

When a paper for an existing application in a designated art unit is recognized, the paper and the application will be scanned into the IFW system.

By December of 2003, 1,700 examiners (from TCs 1600, 1700 and 2800) are expected to be working in IFW environment with all their applications scanned into the IFW system.

IFW Rule Making

The Office received 20 written comments from intellectual property organizations, law firms, and patent practitioners in response to the notice of proposed rulemaking.

The comments are posted at

37 CFR 1.3, 1.59, and 1.99

The rules have been revised to eliminate Office's return of certain papers.

As part of the implementation of IFW, the original paper will be disposed in accordance with a record retention schedule after scanning.

37 CFR 1.9 and 1.14

Section 1.9, "Definitions", has been amended to clarify that the word "paper" and "papers" refer to a document or documents, which may be electronic records or physical paper sheet(s).

Section 1.14, "Patent applications preserved in confidence", has been revised to provide clarity and expand the rule to provide for electronic files.

37 CFR 1.14(a)

Separate paragraphs in §1.14(a) were established to state what access or information is available in specific situations:

Patented applications and statutory invention registrations (SIR). (§1.14(a)(1)(i))
Published abandoned applications. (§1.14(a)(1)(ii))
Published pending applications. (§1.14(a)(1)(iii))
Unpublished abandoned applications (including provisional applications) that are identified or relied upon. (§1.14(a)(1)(iv))
Unpublished pending applications (including provisional applications) whose benefit is claimed. (§1.14(a)(1)(v))
Unpublished pending applications (including provisional applications) that are incorporated by reference, or otherwise identified. (§1.14(a)(1)(vi))

37 CFR 1.14

Request for Access under 37 CFR 1.14(a)(1)(iv)

Applicants are encouraged to use Form PTO/SB/68 which has been revised to include explanatory notes concerning when access is available.

[Alternative text : Image of Form PTO/SB/68]

37 CFR 1.14(b)

Electronic access to an application

Where a copy of the application papers or access to the application is available pursuant to §§ 1.14(a)(1)(i) through 1.14(a)(1)(vi), the Office may at its discretion provide access only to an electronic copy of the file contents of the application.

37 CFR 1.52

Papers must not be permanently bound

Papers must be readily separable for scanned entry into the image system.
The use of binder clips or standard office staples will generally be acceptable.

Each section of a patent application is required to start on a separate sheet and include no other portions of the application or other material.

The application will be electronically scanned and each section of the application (e.g., text of the specification, abstract, claims) will be indexed separately in IFW.
Presentation of other material on same page makes the electronic indexing of the application more difficult.

37 CFR 1.72

Elimination of the prohibition on using the abstract to interpret the claims

§1.72(b) has been amended to delete the last sentence in the rule ("The abstract will not be used for interpreting the scope of the claims.") to be consistent with Hill Rom Co. v. Kinetic Concepts, Inc. , 209 F.3d 1337, 1341 n.*, 54 USPQ2d 1437, 1440 n.1 (Fed. Cir. 2000).

37 CFR 1.98

Electronic Information Disclosure Statement (eIDS)

Section 1.98 has been amended to provide that the requirement for a copy of U.S. patents and U.S. application publications does not apply to any IDS submitted electronically in compliance with the Office's EFS. Also see 1262 OG 94 (9/17/02).
Only U.S. patents and application publications may be submitted with eIDS.
eIDS may be submitted with original application or later.
eIDS may be submitted even where application was not submitted by EFS.
eIDS automatically loads patent citations for Examiner with EAST & WEST search tools.

Information Disclosure Statement

Copies of cited U.S. patents and U.S. application publications are not required for IDS submissions filed in:

U.S. applications filed after June 30, 2003; and

International applications that have entered the national stage under 35 U.S.C. 371 after June 30, 2003.

See Information Disclosure Statements May Be Filed Without Copies of U.S. Patents and Published Applications in Patent Applications filed after June 30, 2003, 1273 Off. Gaz. Pat. Office 55 (August 5, 2003).

For applications filed on or before June 30, 2003, copies of cited U.S. patents and patent application publications are still required unless the references are submitted in an eIDS.

Applicants are still required to submit copies of foreign patent documents and non-patent literature in accordance with §1.98(a)(2).

Revised Amendment Practice37 CFR 1.121

Strict compliance is mandatory - all amendments filed on or after July 30, 2003 must comply with the revised 37 CFR 1.121, except amendments to the specification and claims filed in reissue applications and reexamination proceedings.

A sample amendment document and Q's and A's are posted on the USPTO's website at

Major Changes from Notice of Proposed Rule Making :

Only seven status identifiers are permissible instead of eleven.

The text of withdrawn claims must be included in the listing of the claims.

Comments on the NPR suggested supplying text of withdrawn claims for rejoinder purposes.

Applicants may need to amend withdrawn claims to include limitations added to elected claims to permit rejoinder.

Drawing changes may be shown by annotated drawings.

Permissible markings only include underlining, strikethrough, and double brackets [[ ]].

Note: changes from NPR are highlighted in bold on the next few slides.

Highlights :

  1. Each section of an amendment paper must start on a separate sheet.

    For example: each of the following sections must start on a separate sheet: Introductory comments, Amendments to the Specification, Amendments to the Claims, Amendments to Drawings, and Remarks.

  2. Submit only one version of the replacement paragraph or section, or currently amended claims, with markings (i.e., strikethrough, double brackets [[ ]] , or underlining), to show the changes relative to immediate prior version.

    The requirement to provide a separate, clean version has been eliminated, except when applicant submits a substitute specification.

  3. When there is any amendment to a claim, a claim listing of all claims ever presented in the case must be supplied in ascending numerical order.

    An example of a claim listing is as follows:

    Claims 1-5 (canceled)
    Claim 6 (previously presented) A bucket with a handle.
    Claim 7 (withdrawn) A handle comprising an elongated wire.
    Claim 8 (withdrawn) The handle of claim 7 [[6]] further comprising a plastic grip.
    Claim 9 (currently amended) A bucket with a green blue handle.
    Claim 10 (original) The bucket of claim 9 wherein the handle is made of wood.
    Claim 11 (canceled)
    Claim 12 (not entered)
    Claim 13 (new) A bucket with plastic sides and bottom.

Amendments to Claims

What is a claim listing?

A claim listing must include:

The claim number of every claim ever presented in the application, whether entered or not;
A status identifier, in parentheses, following each claim number;
The text of all pending claims (including withdrawn claims); and
Markings to show the changes made only in the current amendment relative to immediate prior version.

The claims in the listing (in the current amendment) will replace all prior versions, and listings, of claims in the application.

The seven (7) permissible status identifiers and their definitions, are:

  1. ( Original ): Claim filed with original specification (not added by preliminary amendment and not previously amended).
  2. ( Currently amended ): Claim being amended in the current amendment. Currently amended claims must include markings (strikethrough, double brackets, or underlining) to indicate changes.
  3. ( Canceled ): Claim canceled or deleted in current amendment or previously. Do not present the text of a canceled claim. Consecutive canceled claims may be grouped together (e.g., claims 1-5 (canceled)).
  4. ( Withdrawn ): Non-elected claim.
  5. The text of a withdrawn claim must be presented.
    Withdrawn claims that are being currently amended must be presented with markings (strikethrough, double brackets, or underlining) to indicate changes.
    Example: Claim 8 (withdrawn) The handle of claim 7 [[6]] further comprising a plastic grip.

  6. ( Previously presented ): This is a generic identifier to cover any claim that was previously added or amended in an earlier amendment paper.
  7. The proposed identifiers "previously amended" or "previously added" were not adopted, and must not be used.

  8. ( New ): Claim being added in the current amendment paper. The text of the claim must be presented in clean form without underlining.
  9. (Not entered): Claim presented in a previous unentered amendment.

    Do not present the text of a not entered claim.
    Consecutive not entered claims may be grouped together (e.g., Claims 20-25 (not entered)).
    If in doubt as to whether a prior amendment was entered, the claim should be presumed to be "not entered".

The following status identifiers in NPR have been eliminated:

previously amended,
previously added,
reinstated-formerly claim #_,
previously reinstated,
re-presented-formerly dependent claim #_, and
previously re-presented.

Multiple status identifiers must not be used for any single claim.

Only claims of the status "currently amended" and "withdrawn" (if the withdrawn claims are being currently amended) may include markings.

All other pending claims (including withdrawn claims that are not being currently amended) must be presented in clean text (without markings).

Any claim presented in clean text (no markings) constitutes an assertion that it has not been changed relative to the immediate prior version, except omitting markings ( i.e., underlining, strikethrough, and double brackets) and deleted text.

For example,

If the immediate prior version of the claim was:
"Claim 1 (currently amended) A bucket with a blue handle."

The listing of claims in the current amendment must have:
"Claim 1 (previously presented) A bucket with a handle."

Canceled claims and not entered claims may only have a "canceled" or "not entered" status identifier after the claim number. The text must not be supplied.

Grouping of Claims - consecutive canceled claims or not entered claims may be aggregated into one line.


Claims 1-5 (canceled)
Claims 20-25 (not entered)

New or added claims must have "new" as a status identifier

Do not underline the text of the new claims.

Markings to Show Changes:

The following must include markings to show all changes relative the immediate prior version:

Replacement paragraphs or sections,
Replacement abstracts,
Currently amended claims, and
Substitute specifications.

Added text must be shown by underlining .

Deleted text must be shown by strikethrough ( e.g ., strikethrough ) with 2 exceptions.

  1. For deletion of five or fewer consecutive characters, double brackets [[ ]] may be used (e.g., [[eroor]]); and
  2. If strikethrough cannot be easily perceived, deleted text must be shown by double brackets [[ ]] around the deleted text characters.

For example: changing "4 corners" to "three corners" should be indicated by "three[[4]] corners".

For changes of punctuation marks or difficult to perceive characters, applicants may delete text before and after with strikethrough, and then insert such text along with the change by underlining. For example:

If the hyphen in "strike-through" is to be deleted, it may be shown as " strike-through strikethrough"

Amendments to Specification

The location of the paragraph or section to be deleted or replaced , or where a new paragraph or section is to be added , must be unambiguously identified.

The location can be identified by using a few words at the beginning and/or the end of the paragraph or section.

Do not underline the text of a new paragraph or section.

Deletion of a paragraph or section must only include an instruction to delete, and the location of the paragraph or section.

Replacement paragraph or section must be a marked-up version showing the changes.

A clean version of any replacement paragraph or section must not be submitted in addition to a marked up version, except when applicant submits a substitute specification.

Amendments to Abstract

An amendment to an abstract is treated like an amendment to the specification.

If the changes are minor in nature, submit a replacement abstract with markings to show all changes relative to the immediate prior version.

If the abstract is being substantially rewritten, submit a new abstract in clean text (no markings) accompanied by an instruction for the cancellation of the previous abstract.

Any new, or replacement, abstract must be submitted on a separate sheet (37 CFR 1.72).

Substitute Specification

Substitute Specification under 37 CFR 1.125 requires:

A statement that the substitute specification includes no new matter.

A specification with markings to show all the changes relative to the immediate prior version.

A clean version (without markings) of the substitute specification.

The requirements of a marked-up version and a clean version have been retained.

Amendments to Drawings

Amendment to drawings must include:

Replacement drawing sheet showing amended figures which include the desired changes, without markings, on a separate sheet in compliance with §1.84; and

Explanation of the changes in the remarks, or preferably, in the drawing amendments section, of the amendment paper.

Optional unless required by examiner:

Annotated drawing sheet - a marked-up copy of the amended figure(s) with annotations showing the change(s) may be submitted, or required by the examiner.

Replacement drawing sheet(s) must be identified in top margin as " Replacement Sheet ".

Annotated drawing sheet(s) must be identified in top margin as " Annotated Marked-up Drawings ".

This will avoid confusion between a replacement sheet and an annotated sheet.
Annotated drawing sheet(s) will not be entered as part of the official drawing(s) for the application.

The replacement drawing sheet(s) and annotated drawing sheet(s), if any, should follow the last page of the amendment paper, as attachment(s).

Proposed drawing correction process is eliminated.

Replacement drawing sheet with changes is accepted by examiner, unless otherwise notified by examiner. No further drawing submission is required.

If not acceptable, applicants will be notified of any objections or additional requirements.

Any replacement drawing sheet including amended figures must include all of the figures appearing on the immediate prior version of the sheet.

The replacement drawing figure must not be labeled as "amended."

37 CFR 1.173 now provides for amending drawings in reissue applications in a similar manner.

Deletion of a figure requires the following:

An instruction to delete the figure;

A replacement sheet which does not include the canceled figure, unless no other figure is on the same sheet as the canceled figure;

Amendment to the specification to make corresponding changes to the description of the drawings (e.g., deletion of the description of the canceled figure); and

If other figures need to be renumbered, those figures also need to be amended with revised figure numbers via replacement drawing sheets.

After Final Amendments

Any amendment after final (§1.116), or amendment filed with a request for continued examination (RCE) under §1.114, must include markings showing the changes relative to the last entered amendment .

Do not include markings to show changes relative to any unentered amendment.

Applicant should not assume that an after final amendment is entered because after final amendments are not entered as a matter of right (§1.116).

If applicant has not received an advisory action, applicant should check via PAIR, or call the examiner, to determine whether the after final amendment has been entered before filing another after final amendment or an amendment with an RCE.

If the advisory action has indicated that an after final amendment will be entered upon the filing of an appeal, applicant should assume that the after final amendment is not entered.

Any subsequent amendment must include markings showing the changes relative to the last entered amendment, and not the amendment which the advisory action indicated will be entered upon the filing of an appeal.

If applicant wishes to file an RCE after filing more than one after final amendment that has not been entered, applicant is encouraged to file an amendment with the RCE that includes:

Instructions not to enter the unentered after final amendments; and

All of the desired changes, including changes presented in the unentered after final amendments.

The markings must show changes relative to the last entered amendment .
A claim listing which includes any unentered claims presented using the status identifier "not entered" ( e.g. , claims 20-25 (not entered)).
Any new claims must be numbered consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not).

Treatment of Non-Compliant Amendments

Applicants will be notified of any amendment paper that is not accepted because the changes do not comply with revised §1.121.

For preliminary amendments and replies to non-final Office actions or notices ,

A Notice of Non-Compliant Amendment identifying the problem section(s) will be mailed; and
A period for reply shall be given; but
Patent term adjustment (PTA) reductions may be incurred. See §1.704(c)(7).

For after-final amendments ,

Non-compliance will be indicated in an advisory action ; and
The time period for reply continues to run from the mailing date of the final Office action.
See MPEP 714.03 (8th Ed. 1st Rev., Feb. 2003).

The Notice of Non-Compliant Amendment will identify:

Each section of the amendment that is not in compliance with 37 CFR 1.121;
Items that are required for compliance; and
The reasons why the section of the amendment fails to comply with 37 CFR 1.121.

In reply to the Notice, applicants must submit the corrected section of the amendment that was non-compliant.

Re-submission of the entire amendment is not required.
The entire section, however, with corrections, must be resubmitted.

The Office will only enter the sections of the amendment that are in compliance with 37 CFR 1.121.


Non-compliant claim amendment example :

If an amendment includes:
(1) amendments to the specification, and
(2) amendments to the claims, including adding new claims 21 - 25,

But the amendments to the claims were non-compliant,
Because the claim listing did not include a status identifier for each claim,
A Notice of Non-Compliant Amendment will be mailed.

In reply to the Notice, applicant must submit a corrected claim listing that includes a status identifier for each claim.

The new claims 21-25 must be presented with the status identifier of "new" and the text of the claims not underlined.

Note: the new claims 21-25 must not be presented with the status identifier of "not entered" and must not be renumbered as claims 26-30.

A non-compliant amendment is different than an unentered after final amendment situation.
In the after final situation, the claim numbers of any unentered new claims may not be re-used.

The Office would enter:

  1. The amendments to the specification from the original amendment paper, and
  2. The amendments to the claims that include the corrected claim listing from the paper filed in reply to the Notice.

International Applications

The revised amendment practice under 37 CFR 1.121 does not apply to amendments filed in the international stage of an international application.

Such amendments must be in compliance with the Patent Cooperation Treaty (PCT) amendment procedure ( i.e. , PCT Articles 19 and 34(2)(b)).
Thus, status identifiers are not to be used during the international stage.

Amendments filed in the national stage (pursuant to 35 U.S.C. 371) of an international application must comply with the revised amendment practice under 37 CFR 1.121.

The status identifier "original" must only be used for claims that were presented on or before the international filing date and have not been modified or canceled.

Information Contacts

Any questions regarding the submission of amendments pursuant to the revised practice should be directed to Office of Patent Legal Administration (OPLA):

Call (703) 305-1616,

e-mail to , or

Contact one of the following Legal Advisors:

Elizabeth Dougherty ( )
Eugenia Jones ( )
Joe Narcavage ( )