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