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The Most Important Aspects of the New Patent Rules Supporting the U S P T O 's 21st Century Strategic Plan That Come Into Effective in November 2004

I. Introduction§ 1.63 oath or declaration for each such
preliminary amendment containing subject
The USPTO has a long range plan, its 21stmatter not otherwise present in the
Century Strategic Plan intended to transformapplication as filed. Preliminary amendments
the USPTO into a responsive efficientseeking cancellation of all the claims
organization. As part of that plan, the USPTOwithout presenting any new or substitute
published a set of final rules changes to theclaims  will  be  disapproved.
rules of patent practice in 37 CFR. The
following lists the three most generallyTherefore, inventor's declarations should
applicable and important changes for U.S.include a mechanism (such as a check box) to
patent practitioners. Much the material belowindicate that a preliminary amendment is
is taken directly from a power pointbeing filed with the application, that the
presentation published by the USPTO on thesepreliminary amendment is part of the
rules  changes.application as filed, and that the inventor
has  reviewed  the  preliminary  amendment.
II. Most Generally Applicable and
Significant  Rules  Changes3. Limitations to Amendments After Responding
to  an  Office  Action
1. The Ability to Type Sign Certain Papers,
With  What  the  USPTO  Calls  "S" SignaturesThe following rule changes apply to filings
after  a  response  to a first office action.
S-signatures  (§  1.4(d)(2)):
Supplemental filings such as adding claims or
Example  for  signing  applicant:evidence generally will not be entered unless
they limit the examiner's work load.
/James  Jones/Specifically, after a complete reply has been
filed, the Office may enter a supplemental
James  T.  Jonesreply that is filed before final rejection or
allowance and in sufficient time to be
An S-Signature is any signature betweenentered into the application file, if the
forward slashes that is not a handwrittensubsequent reply is clearly limited upon
(§§ 1.4(d)(1) or (e)) or an EFScursory review to: cancellation of claims;
character coded signature (§ 1.4(d)(3)).adoption of an examiner suggestion(s);
It is inserted by electronic (e.g., a wordplacement of the application in condition for
processor) or mechanical means. S-Signaturesallowance; reply to an Office requirement
may  be  used  on  documents that are either:made after the first reply was filed;
correction of informalities (e.g.,
Mailed  or  hand  (courier)  delivered,typographical errors); or simplification of
issues  for  appeal.
Transmitted  by  facsimile,  or
This requirement forces practitioners to
Submitted via EFS directly as an EFS Taggedensure that a response to a first office
Image File Format (TIFF) attachment (e.g.,action is complete on all issues, and that
scanned  image),  to  the  Office.the response presents all claims that the
applicant might consider taking on appeal in
This provision enables practitioners to haveresponse  to  a  subsequent  final  action.
an all electronic work flow, thereby enabling
elimination of paper during the normalIII. Conclusion
drafting  and  review  activities.
The most important rule changes in the
2. The Following Rule Change for PreliminaryUSPTO's Strategic Plan motivated rules being
Amendments  Filed  with  New  Applicationsimplemented in November 2004 allow typed
signatures, define amendments filed with a
Preliminary amendments that are present onnew application to be part of the new
the filing date of an application are treatedapplication, and generally precluded filing
as part of the original disclosure.of amendments that are not in response to an
Applicants are responsible for reviewing alloffice action after the USPTO has mailed a
preliminary amendments present on the filingfirst office action. Each of these changes
date and providing a reference thereto in arequires significant changes in our practice.



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