| I. Introduction | | | | cancellation of all the claims without |
| The USPTO has a long range plan, its | | | | presenting any new or substitute claims |
| 21st Century Strategic Plan intended to | | | | will be disapproved. |
| transform the USPTO into a responsive | | | | Therefore, inventor's declarations |
| efficient organization. As part of that | | | | should include a mechanism (such as a |
| plan, the USPTO published a set of final | | | | check box) to indicate that a |
| rules changes to the rules of patent | | | | preliminary amendment is being filed |
| practice in 37 CFR. The following lists | | | | with the application, that the |
| the three most generally applicable and | | | | preliminary amendment is part of the |
| important changes for U.S. patent | | | | application as filed, and that the |
| practitioners. Much the material below | | | | inventor has reviewed the preliminary |
| is taken directly from a power point | | | | amendment. |
| presentation published by the USPTO on | | | | 3. Limitations to Amendments After |
| these rules changes. | | | | Responding to an Office Action |
| II. Most Generally Applicable and | | | | The following rule changes apply to |
| Significant Rules Changes | | | | filings after a response to a first |
| 1. The Ability to Type Sign Certain | | | | office action. |
| Papers, With What the USPTO Calls "S" | | | | Supplemental filings such as adding |
| Signatures | | | | claims or evidence generally will not be |
| S-signatures (§ 1.4(d)(2)): | | | | entered unless they limit the examiner's |
| Example for signing applicant: | | | | work load. Specifically, after a |
| /James Jones/ | | | | complete reply has been filed, the |
| James T. Jones | | | | Office may enter a supplemental reply |
| An S-Signature is any signature between | | | | that is filed before final rejection or |
| forward slashes that is not a | | | | allowance and in sufficient time to be |
| handwritten (§§ 1.4(d)(1) or (e)) or | | | | entered into the application file, if |
| an EFS character coded signature (§ | | | | the subsequent reply is clearly limited |
| 1.4(d)(3)). It is inserted by electronic | | | | upon cursory review to: cancellation of |
| (e.g., a word processor) or mechanical | | | | claims; adoption of an examiner |
| means. S-Signatures may be used on | | | | suggestion(s); placement of the |
| documents that are either: | | | | application in condition for allowance; |
| Mailed or hand (courier) delivered, | | | | reply to an Office requirement made |
| Transmitted by facsimile, or | | | | after the first reply was filed; |
| Submitted via EFS directly as an EFS | | | | correction of informalities (e.g., |
| Tagged Image File Format (TIFF) | | | | typographical errors); or simplification |
| attachment (e.g., scanned image), to the | | | | of issues for appeal. |
| Office. | | | | This requirement forces practitioners to |
| This provision enables practitioners to | | | | ensure that a response to a first office |
| have an all electronic work flow, | | | | action is complete on all issues, and |
| thereby enabling elimination of paper | | | | that the response presents all claims |
| during the normal drafting and review | | | | that the applicant might consider taking |
| activities. | | | | on appeal in response to a subsequent |
| 2. The Following Rule Change for | | | | final action. |
| Preliminary Amendments Filed with New | | | | III. Conclusion |
| Applications | | | | The most important rule changes in the |
| Preliminary amendments that are present | | | | USPTO's Strategic Plan motivated rules |
| on the filing date of an application are | | | | being implemented in November 2004 allow |
| treated as part of the original | | | | typed signatures, define amendments |
| disclosure. Applicants are responsible | | | | filed with a new application to be part |
| for reviewing all preliminary amendments | | | | of the new application, and generally |
| present on the filing date and providing | | | | precluded filing of amendments that are |
| a reference thereto in a § 1.63 oath or | | | | not in response to an office action |
| declaration for each such preliminary | | | | after the USPTO has mailed a first |
| amendment containing subject matter not | | | | office action. Each of these changes |
| otherwise present in the application as | | | | requires significant changes in our |
| filed. Preliminary amendments seeking | | | | practice. |