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[04274108]

Hi.  I need to cancel a claim in my first amendment but I'm not sure about a couple of things.  Any help is greatly appreciated.

Let's say I have 5 claims and that claim #3 needs to be cancelled.  Do claims 4 & 5 have to be renumbered (assuming that there are no revisions to these two claims)?

As well, is writing "Claim 3, cancel" sufficient to cancel this claim?

Thanks!

[Isaac]

You don't renumber claims when one is cancelled, withdrawn etc.

It is important to submit amendments rigorously in the proper
form.  Failing to do so risks having your amendment not enterred in
which case your anwer will fail to completely address the
relevant office action.

The correct procedure is detailed in rule 1.121(c) IIRC.  There
should be material on the USPTO web page explaining how the
rules.   Otherwise, you might want to consult a registered
practictioner.

[04274108]

Thanks Isaac.  I think the best solution is to cancel all claims, make edits and resubmit.  Nolo claims this is what the USPTO prefers.

[Jonathan]

While canceling all claims and re-introducing them with the desired edits may be easier, the applicant is then required to pay for all of those new claims.

Performing claim amendments is not difficult. Just read the appropriate guidelines. In addition, the people in the Office of Patent Legal Administration (OPLA) of the US patent office decide these rules and are always glad to help with any questions you may have. Here is their webpage:
http://www.uspto.gov/web/offices/pac/dapp/patentlegaladminmain.html

Even if you do make a  simple mistake, the patent office will generally give you a chance to correct it via a Notice of Non-compliant Amendment. Of course, you should always do a rigorous review to avoid those kinds of issues from arising as they can potentially keep the amendment from being entered, as Mr. Clark correctly points out.

[gee]

In a previous post, jkudla wrote: "While canceling all claims and re-introducing them with the desired edits may be easier, the applicant is then required to pay for all of those new claims. "

Is this correct?

Form PTO/SB/06 seems to indicate that the applicant only pays for new claims if they exceed the number of claims previously paid for or if the type of claim(s) changes.

I appreciate any clarifying comments in this regard.

[Jonathan]

I should have added that I was commenting on the pretext that 20 claims were filed - 3 independent and the rest dependent, the amount of claims that are examined with payment of the basic examination fee without having to pay extra claims fees.

To further illustrate, say an application was filed with 15 claims - 3 independent and the rest dependent. In response to a first office action, up to 5 more dependent claims can be added and no extra fee is required. However, if 1 or more independent claims were added then additional payment of fees is necessary.

[gee]

Thanks for the follow-up, jkudla.

[04274108]

I ended up cancelling all Claims and resubmitting them.  However, I received a non-compliance with 37 CFR 1.121.  

I'm not sure why though.  In my Claim Amendments, I requested "Cancel all claims of record and substitute new Claims 18 to 34 as follows:" and then proceeded to list the new claims.

Originally, I had 17 Claims. I removed 2 outright and modified the rest.  

Do I have to cycle through each individual claim and put it in the format "Claim 1 (modified)" "Claim 2 (canceled)" etc. and then detail the modifications that I made?  

As well, do these new rewritten claims count as being in "excess" of the 20 allowed without being charged?

[JimIvey]

RogersDA got to it while I was typing.  Good job!

As for the fees, you had 17 claims pending, you now have 17 claims pending; I don't think you owe any extra claim fees.  I believe the fees are based on the maximum number of claims pending during the application, not their sequential numbers.

Here's what I typed while RogersDA was typing.  It's mostly redundant so you can skip it unless you're interested, bored, or need another reason to procrastinate (like I do).

Regards.

===============================

Here's a thread discussing (briefly) the new and improved preferred manner of making amendments:

http://www.intelproplaw.com/Forum/Forum.cgi?board=patent_filing;action=display;num=1109740407
[TinyURL: http://tinyurl.com/6vxuo]

In short, you need to let the examiner know the current status of each and every claim that was ever pending in your application.  It's sufficient to indicate that a range of claims has been canceled -- e.g.,

   Claims 1-17 are canceled without prejudice.

For each of your new claims, you'll have to indicate one of the seven or so accepted status indicators -- "(new)" in your case.  e.g., ...

  18.  (new)  A method for posting interesting thoughts in an intellectual property forum, the method comprising: .... .

As you'll see in that other thread, I'm not all that fond of canceling all claims then introducing them with small modification as "new" claims.  You're just making a mess that you or someone else will have to figure out later.  Even if the examiner doesn't do it, someone somewhere will eventually have to see if you introduced new matter -- and that will require substantial text comparisons and reviewing of the file history, adding costs to the client down the road (IMHO).  Other than that, I don't think there's anything wrong with it -- legally speaking.

The Notice of Non-Compliant Amendment should give fairly good indications what you need to do differently.  My understanding is that these new rules are to allow the examiners to review your file electronically -- where page turning is not all that convenient.  FWIW, this is a lot better than what the Office preferred last year.

Regards.

[04274108]

RogersDA and JimIvey, thanks for your fast responses.  You've cleared up a lot for me and your links rock!

Thanks again!

[Jonathan]

I would also recommend that when this approach is taken that the changes, between the two claimsets, be sufficiently detailed in the remarks section of the response. If I were the Examiner presented with such an amendment, I would still do a side by side comparison but would appreciate the applicant's efforts to be forthright with what they are trying to accomplish.  Keeping your Examiner happy will never hurt you..  

[JSonnabend]

I would also recommend that when this approach is taken that the changes, between the two claimsets, be sufficiently detailed in the remarks section of the response.

You took the words right out of my mouth.  Inherently, you're making the examiner's life more difficult by using the cancel-and-redraft approach.