Amended claims: What can go wrong in a patent amendment?

When are marked-up amended claims not required?

Patent claims must be amended in a very particular 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 scenarios:

  1. Filing a US application with a conventional priority claim to a foreign application;
  2. Filing a non-provisional application claiming priority to one or more provisional applications;
  3. Filing a continuing application.

What are common scenarios requiring marked-up amended claims?

Claim markings must be shown in the following situations:

  1. US national stage application based on PCT application where the claims for entry into the US are amended with respect to the last version of PCT claims (e.g., Preliminary Amendment to remove multiple dependent claims);
  2. Office Action response.

How to show marked-up amended claims

Patent claims must be amended in a very strict, certain manner [see MPEP Section 714].

Marked-up with respect to prior version

The claim amendments need to be marked up in relation to the last claims filed.

Deleting claim language vs. deleting entire claim

Showing deleted claim language by striking through deleted text. If an entire claim is canceled, simply indicate that a claim should be canceled [e.g., “2.  (canceled)”].

Adding new claim language vs. adding entire claim

Show new claim language added to an existing claim by underlining new text. If an entirely new claim is being added, then mark the claim status identifier as (New) [e.g., “3. (new) . . . .”]. Do not underline any newly added claims.

Claim numbering

All original claim numbers should remain intact.  Do not renumber claims.

For example, if there were 15 original claims and you wish to add a claim, the new claim would be Claim 16. Please do not insert any new claims in the middle of the existing claims.  Instead, new claims should be added after the last original claim and numbered with the next sequential number.

It is important to remember to keep the original claim numbers intact when amending dependent claims (so that you’ll have the proper claim number which the dependent claim hangs from).

Combining claims

If, for example, you are combining Claims 1 and 2, simply cancel Claim 2 and add the language from Claim 2 into Claim 1 by underlining the Claim 2 language.

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