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Author Topic: PCT vs USPTO  (Read 1435 times)

xuforre

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PCT vs USPTO
« on: 01-07-09 at 02:39 pm »

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Thanks.
« Last Edit: 01-14-09 at 10:17 pm by xuforre »
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klaviernista

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Re: Amendment of Spec and Claims
« Reply #1 on: 01-07-09 at 02:52 pm »

You can amend the as-filed specification however you see fit via preliminary amendment, so long as you do not add new matter.

If you add new matter, it is likely that the USPTO will object to the specification/preliminary amendment, and require the new matter be removed.

If the new matter is essential to meet one of the 35 U.S.C. 112, first paragraph requirements (written description, enablement, best mode), or if you need to add new matter for some other reason, you will need to file what is known as a "continuation in part" application, or CIP.  In the CIP, you can add any new subject matter you want, including new matter.  However, any claims containing the new matter will only be given the benefit of the filing date of the CIP application, not the original application.  Claims drawn to the subject matter disclosed in the original specification will be given the benefit of the filing date of the original application, with certain exceptions.


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JimIvey

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Re: Amendment of Spec and Claims
« Reply #2 on: 01-07-09 at 04:16 pm »

If your amendment is accepted, the examiner will examine your application as amended, not as published.

You can delete claims.  It doesn't add new matter.  I think the same is true for the Spec, but some disagree.

If your amendments merely correct clerical and grammatical mistakes, you should have no problem.  When working on applications translated from other languages, I've had the examiner require a substitute specification.  I submitted an entirely re-written application without a finding of new matter.  I honestly did my best to stick as closely as possible to a really poor translation but didn't show my changes step-by-step (if I recall correctly) and I found myself translating whole paragraphs from Deutschlish to English.  But that was way back when the Office was much more fair -- under a different administration.

Whether your application would be published as filed or as amended depends on when you file your amendment.  It shouldn't affect your prosecution though.

Regards.
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James D. Ivey
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