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«Examiner Reissue and Reexam Amendment Training for Changes to Patent Practice and Procedure Final Rule Package As a result of the newly stated ...»

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10-9-97 Reissue/Reexam Amendment Handout

Examiner Reissue and Reexam Amendment Training for

"Changes to Patent Practice and Procedure" Final Rule Package

As a result of the newly stated provisions of 37 CFR 1.121(b) and 37 CFR 1.530(d), in the

"Changes to Patent Practice and Procedure" Final Rule package, amendments in reexamination

proceedings and reissue applications are now made in the same manner. The criteria for

reexamination and reissue amendments and the review of such amendments by the examiner will be

discussed below:

I. AMENDMENT OF SPECIFICATION AND CLAIMS

A. REQUIREMENTS FOR REISSUE/REEXAM AMENDMENTS

Any reply or response making amendments which is filed in a reissue application or reexamination proceeding on or after the effective date of the 37 CFR 1.121 rule change (in the "Changes to Patent Practice and Procedure" Final Rules package) must:

• Completely re-present the entire text of any claim that is currently being amended (except where a claim is being canceled),

• Completely re-present the entire text of any paragraph of the specification that is currently being amended (except where an entire paragraph is being deleted),

• Set forth the status of all patent claims and all added claims as of the date of submission of the response, and

• Explain the support in the disclosure of the patent for the amendment (i.e., support for the changes made in the claim(s)).

If a reissue/reexam amendment filed after the effective date,

--1-a) has directions to insert specific text in a claim or the specification, (b) fails to set forth the status of all patent claims and added claims as of the date of the submission, or (c) fails to explain the support in the disclosure of the patent for the amendment, or (d) fails to provide appropriate underlining of subject matter added and bracketing of subject matter deleted (relative to the patent) in a re-presented claim or paragraph of specification, then the amendment is not proper, i.e., the amendment is informal.

Where the amendment is informal:

• If the informal amendment is submitted prior to final rejection, the examiner will send a notification to the applicant (in a reissue) or the patent owner (in a reexamination) that the reply or response is incomplete. The reissue applicant or the reexamination patent owner will be given a time period to present the amendment in proper form.

• If the informal amendment is submitted after final rejection, a notification of incomplete reply or response should not be used. Rather, an advisory Office action should be issued indicating that the amendment was not entered.

In reissue: Box 1(d) of the PTOL 303 should be checked, and in the space after "Note", it should be explained that the amendment was not entered because it does not comply with 37 CFR 1.121(b), which sets forth the manner of making amendments in reissue applications.

–  –  –

1) REISSUE:

The provisions of 37 CFR 1.121(b) (copy attached) apply to amendments in reissue applications.

The specification: 37 CFR 1.121(b)(1) Paragraph (b)(1) of 37 CFR 1.121 relates to the manner of making amendments to the specification. It is not to be used for making amendments to the claims or the drawings.

37 CFR 1.121(b)(1)(i) requires that all amendments which include any deletions or additions must be made by submission of a copy of each rewritten paragraph with markings (brackets and underlining). One exception to this rule is given in 37 CFR 1.121(b)(1)(i)- an entire paragraph of specification text may be deleted from the specification by a statement deleting the paragraph without presentation of the text of the paragraph. 37 CFR 1.121 (b)(1)(i) also requires that all paragraphs which are added to the specification be submitted as completely underlined.

37 CFR 1.121(b)(1)(ii) requires that the precise point where each amendment is to be made must be indicated by applicant.

37 CFR 1.121 (b)(1)(iii) defines the markings set forth in (b)(1)(i) as being brackets for deletion and underlining for addition.

All bracketing and underlining is made in comparison to the patent specification in effect at the date of filing the reissue application; not in comparison to the prior amendment.

The claims: 37 CFR 1.121(b)(2)

–  –  –

The provisions of 37 CFR 1.121(b)(2)(i)(A) require:

• For each claim that is being amended by the amendment being submitted (the current amendment), the entire text of the claim must be presented with appropriate markings.

• For each new claim added to the reissue by the amendment being submitted (the current amendment), the entire text of the added claim must be presented.

• A patent claim is canceled by a direction to cancel that claim; there is no need to present the text of the patent claim surrounded by brackets.

• A new claim (previously added in the reissue) is canceled by a direction to cancel that claim.

In 37 CFR 1.121(b)(2)(i)(B), it is pointed out that original patent claims may not be renumbered.

A patent claim retains its original number even if it is canceled in the reissue proceeding, and the numbering of any added claims must begin after the last original patent claim.





37 CFR 1.121(b)(2)(i)(C) identifies the type of marking required by reference to 37 CFR 1.121(b)(2)(i)(A), i.e., underlining for added material and single brackets for material deleted relative to the patent.

In accordance with 37 CFR 1.121(b)(2)(ii), each amendment submitted must set forth the status of all patent claims and all added claims as of the date of the submission. The status to be set forth is whether the claim is live (pending) or the claim is canceled. Failure to submit the claim status in an amendment submitted prior to final rejection will generally result in a notification to the applicant that the reply is incomplete. See 37 CFR 1.135(c). Failure to submit the claim status in an amendment submitted after final rejection will generally result in an advisory Office action indicating that the amendment was not entered. See also page 2 (above) for further discussion.

--4-In accordance with 37 CFR 1.121(b)(2)(iii), each claim amendment must be accompanied by an explanation of the support in the disclosure of the patent for the amendment (i.e., support for the changes made in the claim(s), support for any insertions and deletions). Failure to submit the explanation in an amendment submitted prior to final rejection will generally result in a notification to the applicant that the reply is incomplete. See 37 CFR 1.135(c). Failure to submit the explanation in an amendment submitted after final rejection will generally result in an advisory Office action indicating that the amendment was not entered. See also page 2 (above) for further discussion.

Finally, 37 CFR 1.121(b)(5) states that: (1) No reissue patent shall be granted enlarging the scope of the claims, unless applied for within two years of the grant of the original patent, (2) no amendment may introduce new matter, and (3) no amendment may be made in an expired patent.

A broadened claim can be presented within two years of the grant of the original patent, in a reissue application. In addition, a broadened claim can be presented more than two years from the grant, in a broadening reissue which was filed within two years of the grant. Where any intent to broaden is indicated in the reissue application within the two years, a broadened claim can be presented in the reissue after two years. Finally, if intent to broaden is indicated in a parent reissue application within the two years, a broadened claim can be presented in a continuing reissue application after two years. In any other situation, a broadened claim cannot be presented, and the examiner should check carefully for the improper presentation of broadened claims.

–  –  –

Form Paragraph 14.20.01 may be used to advise applicant of the proper manner of making amendments in a reissue application.

& 14.20.01 Amendments to Reissue-37 CFR 1.121(b) Applicant is notified that any subsequent amendment to the specification and/or claims must comply with 37 CFR 1.121(b).

Examiner Note:

This paragraph may be used in the first Office action to advise applicant of the proper manner of making amendments.

Form Paragraph 14.21.01 may be used to notify applicant that a proposed amendment in the reissue application filed before final rejection does not comply with 37 CFR 1.121(b).

& 14.21.01 Improper Amendment to Reissue-37 CFR 1.121(b) The amendment filed [1] proposes amendments to [2] that do not comply with 37 CFR 1.121(b), which sets forth the manner of making amendments in reissue applications. A supplemental paper correctly amending the reissue application is required.

A shortened statutory period for reply to this letter is set to expire one month from the date of this letter.

Examiner Note:

This paragraph may be used for any 37 CFR 1.121(b) informality as to an amendment submitted in a reissue application prior to final rejection. After final rejection, applicant should be informed that the amendment will not be entered in an advisory Office action.

All changes are made vis-a-vis the patent to be reissued:

--6-When a reissue patent is printed, all underlined matter is printed in italics and all brackets are printed as inserted in the application, in order to show exactly where additions and deletions have been made to the patent being reissued. Therefore, all underlining and bracketing in the reissue application should be made relative to the text of the patent. In accordance with 37 CFR 1.121(b)(6) all amendments in the reissue application must be made relative to (i.e., vis-a-vis) the patent specification (including the claims) and the drawings in effect as of the date of the filing of the reissue application. If there was a prior change to the patent (made via a prior concluded reexamination certificate, reissue of the patent, certificate of correction, etc.), the first amendment of the subject reissue application must be made relative to the patent specification (including the claims) and the drawings as changed by the prior proceeding or other mechanism for changing the patent. All amendments subsequent to the first amendment must also be made relative to the patent specification (including the claims) and the drawings that are in effect as of the date of the filing of the reissue application, and not relative to the prior amendment.

If the original (or previously changed) patent includes a formula or equation already having underlining or bracketing therein as part of the formula or equation, any amendment of such formula or equation should be made by bracketing the entire formula and rewriting and totally underlining the amended formula in the re-presented paragraph of the specification or rewritten claim in which the changed formula or equation appears. Amendments of segments of a formula or equation should not be made.

If the original patent includes bracketing and underlining from an earlier reexamination or reissue, double brackets and double underlining should be used in the subject reissue application to identify and distinguish the present changes being made. The subject reissue, when printed, would include double brackets (indicating deletions made in the subject reissue) and boldface type (indicating material added in the subject reissue).

–  –  –

The provisions of 37 CFR 1.530(d) (copy attached) apply to amendments in reexamination proceedings.

The specification: 37 CFR 1.530(d)(1) Paragraph (d)(1) of 37 CFR 1.530 relates to the manner of making amendments to the reexamination "specification." It is not to be used for making amendments to the claims or the drawings.

37 CFR 1.530 (d)(1)(i) requires that all amendments which include any deletions or additions must be made by submission of a copy of each rewritten paragraph with markings (brackets and underlining). One exception to this rule is given in 37 CFR 1.530(d)(1)(i)- an entire paragraph of specification text may be deleted from the specification by a statement deleting the paragraph without presentation of the text of the paragraph.

37 CFR 1.530 (d)(1)(i) also requires that all paragraphs which are added to the specification be submitted as completely underlined.

37 CFR 1.530(d)(1)(ii) requires that the precise point where each amendment is to be made must be indicated.

37 CFR 1.530 (d)(1)(iii) defines the markings set forth in (d)(1)(i) as being brackets for deletion and underlining for addition.

All bracketing and underlining is made in comparison to the patent specification, including the claims, and drawings, in effect at the date of filing the request for reexamination; not in comparison to the prior amendment.

The claims: 37 CFR 1.530(d)(2)

–  –  –

The provisions of 37 CFR 1.530(d)(2)(i)(A) deal with the following, as to an amendment to be

made by a reexamination patent owner:

• For each claim that is proposed to be amended by the amendment being submitted (the current amendment), the entire text of the claim must be presented with appropriate markings.

• For each proposed new claim which is added in the reexamination by the amendment being submitted (the current amendment), the entire text of the proposed new claim must be presented and it must be underlined throughout.

• A patent claim is canceled by a direction to cancel that claim; there is no need to present the text of the patent claim surrounded by brackets.

• A proposed new claim (previously added in the reexamination) is canceled by a direction to cancel that claim.

In 37 CFR 1.530(d)(2)(i)(B), it is pointed out that original patent claims may not be renumbered.

A patent claim retains its original number even if it is canceled in the reexamination proceeding, and the numbering of any added claims must begin after the last original patent claim.

37 CFR 1.530(d)(2)(i)(C) identifies the type of markings required in the claim to be amended as underlining for added material and single brackets for material deleted.



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