What is a supplemental amendment?

When is a supplemental amendment appropriate? As suggested by its name, a supplemental amendment is an additional reply to a patent Office Action. Supplemental replies should be filed only under the following circumstances: (A) Cancellation of a claim(s);(B) Adoption of the examiner suggestion(s);(C) Placement of the application in condition for allowance;(D) Reply to an Office […]

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Does your specification support your claim amendments?

Why must claim amendments find support in the specification? There is a rigid rule in patent prosecution that is strictly enforced: you can only claim what is disclosed in the specification. You cannot claim what is not disclosed [see 35 USC 112(a)]. This means that in responding to an Office Action, you can amend the […]

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How much does a patent Office Action response cost?

Office Action cost range: from simple to complex responses The cost estimate of responding to an Office Action in a utility patent application will depend upon the complexity of the issues raised by the patent examiner. What is a simple Office Action response? A simple Office Action requires a reply without arguments. Simple Office Action […]

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How to amend patent claims: marked-up amended claims

When are marked-up claims not required? Patent claims must be amended in a very certain manner. The USPTO has strict marking rules on how amended claims must be shown with respect to prior versions. The format of amended claims are generally called “marked-up” claims. There is no need to show marked-up claims in the following […]

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What is a Patent Office Action?

What is a patent Office Action? After waiting one to two years (or longer) from the filing date of your utility non-provisional patent application, you will eventually receive a letter called an “Office Action” from the patent examiner assigned to your application. What does an Office Action mean? A patent Office Action is a document […]

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