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(Message started by: nottosure on Sep 5th, 2006, 3:12pm)

Title: Notice to Filing MP + Preliminary Amendment
Post by nottosure on Sep 5th, 2006, 3:12pm
Question for the forum,
   I have just received a notice to filing missing parts, just for fees.   I assume I can just send in my credit card info to cover this.  However, I have noticed that there are 6 independent claims,  3 of which are HORRIBLELY written.  I want to cancel those claims.  How do I do this?   Is this called a preliminary amendment?
My total fees are 480, if I cancel the claims, they will be 180 right?

Title: Re: Notice to Filing MP + Preliminary Amendment
Post by TataBoxInhibitor on Sep 5th, 2006, 3:31pm
Yes.   You can use PTO 2038 for the credit card transaction.  

Yes.  You can file a preliminary amendment. A preliminary amendment filed concurrently with a response to a Notice To File Missing Parts, which cancels or adds claims, will be takne into account in determining the appropriate fees due in response to the NTFMP.

The PTO will calculate your fees.   Each independent claim over 3, is $100.   So, if you owed $480.00, you would then owe $180.00. Hope this helps.

Title: Re: Notice to Filing MP + Preliminary Amendment
Post by nottosure on Sep 5th, 2006, 5:57pm
thank you for the reply.   would you happen to know how a preliminary amendment is set up, what are the sections needed in the response or how it is supposed to look?

Title: Re: Notice to Filing MP + Preliminary Amendment
Post by TataBoxInhibitor on Sep 6th, 2006, 9:39am
A preliminary amendment is pretty much the same set up as a regular respose to an office action.


Also, I was talking with an examiner today and I was told that after you have recieved a filing date, if you file a preliminary amendment canceling claims, you will NOT receive a reduction in fees.  

Hopefully someone else here will know the answer to this.

Title: Re: Notice to Filing MP + Preliminary Amendment
Post by TataBoxInhibitor on Sep 6th, 2006, 10:09am
I am guessing the examiner is wrong.   I have found a few sections in the MPEP that state was I said previously.  I guess the other question is, if you received a notice to file missing parts, and already paid your fees, do you get a refund if you file a preliminary amendment, canceling claims.

Title: Re: Notice to Filing MP + Preliminary Amendment
Post by Jonathan on Sep 6th, 2006, 11:14am

If active examination of an application has started, the Office won't give refunds if claims are canceled. However, one won't be charged if a claim is canceled and another claim of the same type (I or D) is introduced.

Title: Re: Notice to Filing MP + Preliminary Amendment
Post by Isaac on Sep 6th, 2006, 12:45pm

on 09/06/06 at 10:09:22, TataBoxInhibitor wrote:
I am guessing the examiner is wrong. I have found a few sections in the MPEP that state was I said previously. I guess the other question is, if you received a notice to file missing parts, and already paid your fees, do you get a refund if you file a preliminary amendment, canceling claims.


I was perusing 37 CFR 1.53(f)(3) yesterday.  The literal words of the rule say that if excess fees are not paid, the claims must be canceled.  It does not seem to say that you can cancel some claims  and pay the excess claim fee for the others.  I have no idea if this is how the PTO actually interprets the rule.

Text below...

(3) If the excess claims fees required by 1.16(h) and (i) and multiple dependent claim fee required by 1.16(j) are not paid on filing or on later presentation of the claims for which the excess claims or multiple dependent claim fees are due, the fees required by 1.16(h), (i) and (j) must be paid or the claims canceled by amendment prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency. If the application size fee required by 1.16(s) (if any) is not paid on filing or on later presentation of the amendment necessitating a fee or additional fee under 1.16(s), the fee required by 1.16(s) must be paid prior to the expiration of the time period set for reply by the Office in any notice of fee deficiency in order to avoid abandonment.




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