| I. Introduction | | | | § 1.63 oath or declaration for each such |
| | | | preliminary amendment containing subject |
| The USPTO has a long range plan, its 21st | | | | matter not otherwise present in the |
| Century Strategic Plan intended to transform | | | | application as filed. Preliminary amendments |
| the USPTO into a responsive efficient | | | | seeking cancellation of all the claims |
| organization. As part of that plan, the USPTO | | | | without presenting any new or substitute |
| published a set of final rules changes to the | | | | claims will be disapproved. |
| rules of patent practice in 37 CFR. The | | | | |
| following lists the three most generally | | | | Therefore, 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 below | | | | indicate that a preliminary amendment is |
| is taken directly from a power point | | | | being filed with the application, that the |
| presentation published by the USPTO on these | | | | preliminary 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 Changes | | | | 3. Limitations to Amendments After Responding |
| | | | to an Office Action |
| 1. The Ability to Type Sign Certain Papers, | | | | |
| With What the USPTO Calls "S" Signatures | | | | The 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. Jones | | | | reply that is filed before final rejection or |
| | | | allowance and in sufficient time to be |
| An S-Signature is any signature between | | | | entered into the application file, if the |
| forward slashes that is not a handwritten | | | | subsequent reply is clearly limited upon |
| (§§ 1.4(d)(1) or (e)) or an EFS | | | | cursory 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 word | | | | placement of the application in condition for |
| processor) or mechanical means. S-Signatures | | | | allowance; 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 Tagged | | | | ensure 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 have | | | | response to a subsequent final action. |
| an all electronic work flow, thereby enabling | | | | |
| elimination of paper during the normal | | | | III. Conclusion |
| drafting and review activities. | | | | |
| | | | The most important rule changes in the |
| 2. The Following Rule Change for Preliminary | | | | USPTO's Strategic Plan motivated rules being |
| Amendments Filed with New Applications | | | | implemented in November 2004 allow typed |
| | | | signatures, define amendments filed with a |
| Preliminary amendments that are present on | | | | new application to be part of the new |
| the filing date of an application are treated | | | | application, and generally precluded filing |
| as part of the original disclosure. | | | | of amendments that are not in response to an |
| Applicants are responsible for reviewing all | | | | office action after the USPTO has mailed a |
| preliminary amendments present on the filing | | | | first office action. Each of these changes |
| date and providing a reference thereto in a | | | | requires significant changes in our practice. |