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