Sunday, March 18, 2007

2005 Revised Procedure for Preliminary Amendments Presented on Filing of Patent Application

On October 11, 2005, the U.S. Patent and Trademark Office issued a revised procedure for preliminary amendments presented on filing of a patent application.

The notice can be found here:

The purpose of the change in procedure was to reduce the amount of processing done by the U.S. Patent and Trademark Office, thus reducing Office costs, and to help ensure that patent application publications and patents were printed correctly.

The notice recognized that the publication of a patent application is based on the specification an drawings deposited on the filing date of the application. A preliminary amendment that is present on the filing date of a patent application is part of the original disclosure of the application.

The U.S. Patent and Trademark Office indicated that if a preliminary amendment was filed in a format that could not be included in the publication, the Office of Initial Patent Examination would issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes. The Office now took the position that the only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification. As a result, the Office would mail a notice requiring a substitute specification if an applicant included a preliminary amendment to a specification (other than the claims) on filing.

The notice went on to mention that, since 1997, the Office encouraged applicants to file continuation and divisional patent applications without preliminary amendments by including any desired changes as part of the specification and drawings of the new application. A copy of the declaration from a prior application could still be filed in a continuation of divisional application even if the specification of the continuation or divisional was different so long as no new matter was introduced.

A preliminary amendment only to the claims would include a complete claim listing which the Office could publish as submitted, so that type of preliminary amendment did not require a substitute specification.

U.S. Patent and Trademark Office did uniformly require substitute specifications if continuation applications were filed with Preliminary Amendments. Preliminary Amendments typically would amend the specification (other than the claims) by adding a cross-reference to the parent application. Many patent practitioners were used to filing continuations this way, and were either unfamiliar with or not comfortable with adapting to the 1997 rule change that deleted the "true copy" requirement.