6

The implication with withdrawn is that you may seek to re-introduce it later while canceled is cancelled.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 ...


5

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 (IPRP) found that some of your claims are not novel. However, the IPRP is just that - preliminary. You may respond to the IPRP to try and overcome the objections ...


5

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 original application's disclosure. "No new matter", after the filing data, is a strict rule.


3

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 special reason you want to amend the claims now and not within the EP phase? Provisional protection perhaprs? I just want to make sure that you are aware of the fact ...


3

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 conservative about such things, so I would expect not. In the example you provide, it seems that you want to abbreviate the phrase "message data source content". If there ...


3

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 is an alternative that might look better. You can cancel the claim in question (just indicate its status as canceled - no need to have crossed through text). ...


2

The wording "at most one row" cannot be derived from solely the example of "a row" and is therefore not allowable (generalisation/missing support). [Unless there are other examples] The reason is, "at most one" means "exactly zero or exactly one". Exactly one could be derived from "a", depending on context. So without an example of no rows, zero rows ...


2

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 PCT. However these processes are not quite as flexible as the process offered during US prosecution. The claims (but nothing else) can be amended once using ...


2

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-as-filed. Just like it says in 37 CFR 1.115 2 (i).


2

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 same day as they are received. The amended claims are view-able as submitted, and are not incorporated into the body of the application in any way. The Patent ...


2

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 claims. You an amend before publication and/or after publication.


1

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 the amendments you plan result in claims that "go beyond" the original filing such that the resulting claims are not supported by the original filings ...


1

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 drawing(s) is inadvertently omitted from an application, but the application contains a claim under § 1.55 for priority of a prior-filed foreign application, or ...


1

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 example, no new matter is likely to be introduced. Hence, amendments as envisaged by you may be attempted. Amendments are to be carried out in compliance with ...


1

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 applications are published twice, once at the 18 month point and then, if granted, in the final allowed state. That is what you see on patent search sites. However, ...


1

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 Chapter 0700 (Section 714) 37 C.F.R. 1.121 Manner of making amendments in application, under item (c) Claims.


1

David, The answer to your question can vary by Examiner. Technically, anything not disclosed in the spec can be considered new matter and face a 112 rejection, but some examiners are more lenient than others. Without knowing the specifics of your disclosure and/or claim language your question is difficult to address, but if you are concerned that mixing ...


1

They can be very sensitive to anything added in the spec or drawings unless it is already presented in one place and you are also putting it somewhere else, it is a dictionary definition and if the word has more than one meaning the one you intended is already clear, it is an obvious error with an obvious fix, or it is "inherent". You might need an affidavit ...


1

The Examiner might tell you there are two separate inventions, in which case you would have to file a divisional application to capture both the ABC and ABD claims. You may also have to file a terminal disclaimer due to the overlap of the dependent claims. In either case the Examiner will let you know. Please do ensure that the claims you are making are ...


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