In an amendment to the claims, you can mark them (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered).
What is the difference between Withdrawn and Cancelled, both in use and implication?
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1 Answer
The implication with withdrawn is that you may seek to re-introduce it later while canceled is cancelled. However, at most points in the process you can enter amendments and an amendment could add a new claim with the exact wording of a previously canceled claim so canceled doesn't mean the wording can't come back.
On the other hand, you do not automatically have the right to enter new claims at the end of prosecution. At the point when all (active) claims are allowed, prosecution is done. Amending in a new claim would not be looked at very favorably, but asking for a withdrawn claim to be considered might fly.
Often some of the original claims are to a device and some are to a method of using (or making) that device. You might have a claim to a genus (independent) and also claims (dependent) to several species of an invention. You might be required to limit the number of species that will be searched. I would withdraw the claims to species that aren't going to be searched. If you do not get the genus claim, you might get one or more of the species claims. If you do get the genus claim, you should be able to "un-withdraw" the other dependend claims.
By far the most substantive ($$) difference is in excess claims calculation. If you file 20 claims, incurring no excess claim fees, and then cancel them all and amend-in 20 new ones you still have no excess claim fees. If, instead, you withdraw them and amend-in 20 new claims you have a total of 40 claims and will pay fees. After you make that filing you will be stuck paying the excess claim fees even if you cancel them the next day.
answered Oct 10, 2018 at 0:15
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Thanks George. I'm finding it hard to think of a case where withdrawing a claim would make sense, rather than cancelling. Oct 10, 2018 at 7:50
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@KeirFinlow-Bates maybe a preliminary double patenting issue or something alike. Just guessing though.– user18033Oct 10, 2018 at 15:23
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1@KeirFinlow-Bates and DonQuiKong : If the restriction requirement that necessitated withdrawal was in a gray area, or amendments to the elected claims move them in a direction so that they aren't clearly a different invention from the withdrawn claims, the examiner can rejoin the withdrawn claims when they allow the application, saving the applicant costs on filing a second application to go after the withdrawn claims. Nov 5, 2019 at 16:30