Patent It Yourself - PDF Archive

ChAPtER 13 | GETTING THE PTO TO DELIVER | 379
2. Amendments to Claims
If you want to amend your claims, start on a new page with
the following heading and text:
CLAIMS: Please amend the claims according to the status
designations in the following list, which contains all
claims that were ever in the application, with the text of
all active claims.
The number and status of each claim that is now or was
ever in the application must be indicated by providing
one of the seven parenthetical expressions, below, after
the claim number. (I’ve indicated the meaning of each
parenthetical expression.)
A. (ORIGINAL) The claim has the same number and
content as originally filed.
B. (CURRENTLY AMENDED) The claim has the same
number as originally or later filed, but is marked up to
make amendments (additions and deletions) to it.
C. (PREVIOUSLY PRESENTED) The claim was
previously amended in marked-up form. It is now typed in
clean copy form with the same number as before.
D. (CANCELED) The claim has been or is currently
being canceled. Its text is not typed here.
E. (WITHDRAWN) The claim is directed to a nonelected
invention, so it is no longer active but since it is
still pending it must be typed. (It may be submitted in a
divisional application.)
F. (NEW) The claim is new and is typed with a new
number.
G. (NOT ENTERED) The claim was previously
submitted after a final action but the examiner refused to
enter it.
You must list all claims in numerical order, regardless of
what action you’re taking with them; you may not group all
deleted claims together unless they’re consecutive. See the
example below.
For canceled and not entered claims, you should provide
only the number and status, but not the claim’s text. You
should provide the number, status, and claim text for every
active (currently under examination) claim. (Fortunately
word processors with a copy function allow rapid entry.)
You must present the text of all active claims in clean copy
form, except for claims that are being currently amended; use
the CURRENTLY AMENDED format for the latter.
Which format should you use to amend claims—
CURRENTLY AMENDED or NEW?
I recommend that you use the CURRENTLY AMENDED
(marked-up) format if you are making minor changes
only to the claim, and/or if you want to point out to
the examiner just how you’re amending the claim. Use
strikethroughs to show deletions and underlining to show
additions—the same as for specification amendments. As with
specification amendments, if you are deleting five characters
or fewer, you may indicate the deletion by double brackets
(e.g., “[[lever]]”) instead of strikethroughs. If you are deleting
a short item, such as a number or punctuation mark, it’s better
to delete and replace extra portions of the text for clarity (e.g.,
“[lever 4 and bracket 5] lever 6 and bracket 5”).
If you are making any major changes to the claim or
prefer to present it in clean copy form, as I usually do and as
is done in all foreign countries, I recommend that you use
the NEW format: Type the status expression (CANCELED)
after the number of the old claim or claims that you’re
replacing and retype the claim with a new number (use
the next highest number) followed by the status expression
(NEW), followed in turn by the text of the claim in clean
copy form. Include all the changes that you care to make.
Don’t forget to re-present all other active claims (those
that you’re not currently amending) in clean copy form
with their statuses indicated.
Here’s an example of a claim listing for an amendment.
CLAIMS: Please amend the claims according to the
status designations in the following list, which contains all
claims that were ever in the application, with the text of all
active claims.
1–5 (CANCELED)
6. (ORIGINAL) A bucket made of nylon.
7. (WITHDRAWN) A bucket with a carrying strap.
8. (PREVIOUSLY PRESENTED) A bucket with a handle.
9. (CANCELED)
10. (CURRENTLY AMENDED) A bucket with a blue
green handle and a round and oval bottom.
11. (WITHDRAWN) A bucket with a bottom hole.
12. (CANCELED)
13. (NEW) A bucket with sides and a bottom which are
both made of plastic.
F. Drafting the Remarks
Next, add the “remarks” portion of your amendment
starting on a new page. Some general rules for drafting
remarks that I’ll state first may seem strange, but they’re
the customary practice, and to deviate substantially may
make the examiner feel uncomfortable and take a negative
attitude toward your invention.
1. General Rules for Drafting Remarks
Rule 1: As stated before, when writing your remarks observe
Inventor’s Commandment 24 by never admitting that any