Patent Amendment Format: Everything You Need to Know
Knowing the patent amendment format is an important part of filing for and maintaining your patent.3 min read
2. Amendment by a Replacement Section
3. Amendment by Substitute Specification
4. Claims Amendment
5. Canceling a Claim
7. Other Considerations
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.
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.
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:
- Currently amended
- 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."
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.
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.
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