5
votes
Do you have to amend claims lacking novelty or an inventive step
Since you mention Articles 33(2) and (3) PCT, I assume that you requested International Preliminary Examination, and that the Examiner who drafted the International Preliminary Examination Report (...
- 156
5
votes
What is the difference between a withdrawn claim and a cancelled claim?
The implication with withdrawn is that you may seek to re-introduce it later while canceled is cancelled.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 ...
- 27.9k
4
votes
Can claims be amended after patent contents become public?
You can amend and add claims in the application and can file continuation and divisional applications from it with new claims. However, any added or amended claims need to be fully supported in the ...
- 27.9k
2
votes
Accepted
The allowability of amendments
Amendment under Article 34 PCT is only possible if you are proceeding to International Preliminary Examination. Is this the case?
Furthermore, if you only intend to proceed to EPO, is there any ...
- 1,282
2
votes
Accepted
In claims, is it allowed and of proper form to define a term or phrase in the form “hereinafter referred to as ...”?
It's not really a typical approach. I can't recall ever having seen it in fact. For this reason, I can't say for sure whether it would be allowed or not, but examiners are generally pretty ...
- 6,168
2
votes
Accepted
Accepted method for writing claims revisions when both rewording and reordering are needed
There is no shortcut for indicating a change of the order of text in amending a claim so crossing out all the indented sections and repeating them in the desired order would be needed.
However there ...
- 27.9k
2
votes
Is my preliminary amendment likely to be disapproved?
It is very unlikely to be disallowed unless the examiner has already picked up the case and started searching. In that case, they would continue and generate an office action responsive to the claims-...
- 27.9k
2
votes
Accepted
How long it would take for a USPTO application to get republished?
Your application will NOT be republished. The amended claims will be added to the applications file history (called the 'Image File Wrapper' in both Public PAIR and Private PAIR), almost always the ...
2
votes
Accepted
Is there any fee for amending claims before the publication in USPTO?
No, there is no fee for filing a claim amendment. The only fees that might pertain to this are excess claim fees. In your scenario you end up at the 20 maximum claims and below the 3 independent ...
- 27.9k
2
votes
Accepted
Number of claims in PCT application
Amending the claims during the PCT process
There are a couple of opportunities during the PCT process to adjust the claims, so you don't necessarily have to have your claims perfect when you file the ...
- 6,168
2
votes
Accepted
How are the elements of a claim determined?
By the applicant
To start - claims are not algebraic expressions but words and words that matter a lot. In particular cases judges have said that "and" means "or", that "at ...
- 27.9k
1
vote
Is it possible to remove a restrictive term in the main claim of a PCT?
Different countries have different rules but there is normally no problem amending PCT claims when entering the national stage.
You ask about the risk of invaliding your (not yet existing) patent. If ...
- 27.9k
1
vote
Can you amend a non-provisional patent application to bring in information from referenced provisional patent applications?
Yes - the specific wording in the MPEP at 608.01(p) Completeness of Specification is
(b) Subject to the conditions and requirements of this paragraph, if all or a portion of the specification or ...
- 27.9k
1
vote
Accepted
Can you amend a non-provisional patent application to bring in information from referenced provisional patent applications?
Amendment in drawing,specification and claims are allowed by USPTO to the extent that "No amendment may introduce new matter into the disclosure of an application". Ref
As elucidated in your ...
- 1,062
1
vote
Accepted
Does google patents update patent application publications that have been amended?
NO
Google Patents and other sites that allow for searching patents show publications. Once published, a particular publication is a static thing - like a book. Following the normal course, patent ...
- 27.9k
1
vote
Accepted
Can a device claim be amended to a method after an office action?
Yes, claim amendment is allowed during an Office Action as long as the amended claim language fits within the original disclosure and background.
The information you are looking for is in MPEP ...
- 1,753
Only top scored, non community-wiki answers of a minimum length are eligible