Key Takeaways

  • The USPTO amendment format requires detailed structuring of changes to the specification, claims, and drawings.
  • Each type of amendment (e.g., replacement section, substitute specification, claim changes) must follow specific formatting rules under 37 CFR § 1.121.
  • Amendments must not introduce new matter and must ensure consistent disclosure throughout the application.
  • Drawings must be submitted with annotations and labeled appropriately as "replacement," "new," or "annotated" sheets.
  • Special provisions apply to reissue, reexamination, and provisional applications.

Knowing the patent amendment format is an important part of filing for and maintaining your patent. Amendments to patent applications other than those for a reissue application will need to be filed in writing following the required rules.

Format Requirements

Amendments to the specification must be made by:

  • Adding, deleting, or replacing a paragraph
  • Replacing a section
  • Substituting a specification

To amend by deleting, replacing, or adding a paragraph there needs to be a section heading or invention title that is being considered for the amendment. It must be made by:

  • An instruction, which identifies the location to delete one or more paragraphs or replace it with the replacement paragraph.
  • The text of the replacement paragraph with the markings where the changes were made to the previous paragraph. This text will need to be shown by underlining the added text.
  • The text that is deleted cannot be presented with a strikethrough or placed in double brackets.

Amendment by a Replacement Section

Amendment to a replacement section must be made by submitting:

  • A reference section heading including an instruction.
  • A replacement section with the marking showing the changes from the previous section.

Amendment by Substitute Specification

Specifications other than claims can be amended with:

  • Instruction to replace the specification
  • The substitutes specification

You can only reinstate a previously deleted paragraph or section by a subsequent amendment to add the previously removed section. You cannot re-present a subsequent amendment, but it should be amended again or replaced with a substitute specification.

Claims Amendment

To amend a claim, you must rewrite the entire claim including all of the required changes unless the claim is being canceled. Even when deleting or changing a claim, you must include a list of all the claims that have ever been presented. The new text in the amended claim will be used to replace all other previous versions of the claim that was formerly in the application. You must indicate in parenthetical expression whether the claim is:

  • Original
  • Currently amended
  • Canceled
  • Withdrawn
  • New
  • Previously presented
  • Not entered

The claims that will be presented in the listing will need to be numbered consecutively along with the indication listed above.

Canceling a Claim

When canceling, a claim text will not need to be presented in the areas marked "canceled," or "not entered." The cancellation of a claim will be made by the instruction to cancel each particular claim number. To reinstate a previously canceled claim it will need to be added with the indication of "new."

Drawings

In regards to drawings, the application drawings will be amended by:

  • A replacement sheet of drawings attached to the amendment document with a label of "replacement sheet." The replacement sheet must include figures of the original drawings that are being amended. If new drawings are submitted, they will need to be on a separate sheet marked "new" at the top.
  • The amended figures must include a marked-up copy which includes annotation of which changes were made. The top of the sheet will need to be labeled "annotated sheet" and should include a remarks section explaining the changes. This sheet must be added when the examiner requires it.

Other Considerations

There are other considerations that need to be taken into account in regards to a patent amendment format including:

  • Disclosure consistency - A disclosure must be included to correct any inaccuracies in drawings, definitions, or claims contained in the application.
  • No new matter - The amendment may not introduce new matter in the disclosure section.
  • Exception for examiner's amendments - Changes to the claims, specifications, and application can only be made at the specific instructions of the Officer of the Examiner. You must insert or delete subject matter that the examiner includes in their amendment.
  • Amendment sections - Each section of the amendment must be included on a separate sheet.
  • Amendments in reissue applications - Amendments to the descriptions in a reissue application must comply.
  • Amendments in reexamination proceedings - Any proposed amendment that has descriptions or claims involved in reexamination proceedings must comply.
  • Amendments in provisional applications - Amendments are not usually made to provisional applications. If there is a necessary amendment to a current provisional application, it must comply with the provisions section. It shall halt the current process of the provisional amendment until resolved.

Common Reasons for USPTO Amendment Rejection

The USPTO may reject amendments that fail to comply with formatting or content rules. Common reasons include:

  • Failing to use proper underlining or omission of change indicators.
  • Submitting amendments that introduce new matter not disclosed in the original application.
  • Improperly formatted claim listings that do not show status indicators (e.g., “currently amended,” “new”).
  • Missing replacement sheets for modified drawings.
  • Combining multiple amendment sections (e.g., specification and claims) on the same page, contrary to the rule that each must appear on a separate sheet.

Understanding and avoiding these issues ensures amendments are processed without procedural delays.

Best Practices for Submitting Amendments

To reduce the likelihood of USPTO objections or delays, applicants should observe the following best practices:

  • Use consistent claim numbering throughout all amendment submissions to avoid confusion.
  • Highlight changes clearly using USPTO-approved markup methods (e.g., underlining for additions).
  • Keep amendment instructions concise and direct, avoiding vague references like “as discussed in previous correspondence.”
  • Avoid including new matter not present in the original disclosure, as this can result in a non-compliant amendment.
  • Ensure all replacement drawings are complete and include the updated figures with changes clearly annotated if requested.

Staying compliant with the USPTO amendment format minimizes the risk of rejection and expedites application processing.

Additional Formatting Requirements per 37 CFR § 1.121

According to 37 CFR § 1.121, amendments must adhere to strict formatting rules to be accepted by the USPTO. Some additional formatting requirements include:

Use of Clean and Marked-Up Versions: When submitting a substitute specification, include both a clean version and a marked-up copy with underlining to show added text and strike-throughs or double brackets to show deletions (if permitted).

Section Labeling: Every amendment section (e.g., claims, specification, drawings) must begin on a separate sheet and include a clear heading identifying the section being amended.

Instructional Language: Amendments must include clear instructions indicating the changes, such as "Replace paragraph [0015] with the following" or "Insert after paragraph [0020]."

Electronic Submission Standards: When filed electronically via EFS-Web or Patent Center, the amendment documents must be in PDF format and comply with USPTO document formatting policies (e.g., font size, margins, and page numbering).

These requirements help USPTO examiners efficiently identify and evaluate changes.

Frequently Asked Questions

  1. What is the correct format for amending a claim at the USPTO?
    You must rewrite the entire claim with the changes underlined, include its status (e.g., "currently amended"), and list all claims in numerical order.
  2. Can I submit amendments electronically?
    Yes. Amendments can be filed via the USPTO’s Patent Center or EFS-Web, and must follow PDF formatting and labeling requirements.
  3. What happens if I include new matter in an amendment?
    The amendment will be rejected. USPTO rules prohibit introducing new subject matter that was not disclosed in the original application.
  4. How should amended drawings be submitted?
    Submit a replacement sheet labeled “replacement sheet,” and if required, include an annotated sheet and remarks describing the changes.
  5. Can I reinstate a canceled claim?
    Yes, but it must be reintroduced as a “new” claim with a new number and proper indication in the claim status listing.

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