What is a Preliminary Amendment?

A Preliminary Amendment is a submission filed prior to the issuance of an Office Action in a patent application. The purpose of the Preliminary Amendment is to revise any of the following: specification, abstract, drawings and/or claims.

What circumstances warrant a Preliminary Amendment?

In a typical US national stage application, a Preliminary Amendment may be advisable to amend the claims to accomplish the following objectives:

  1. Reduce the number of independent claims to minimize or avoid USPTO official fees for excess independent claims [large entity / small entity: $460/$230 for each independent claim in excess of three];
  2. Reduce the total number of claims to minimize or avoid USPTO official fees for total claims in excess of 20 [large entity / small entity: $100/$50 for each claim in excess of 20]; and
  3. Cancel multiple dependent claims or amend them to remove multiple dependencies to avoid USPTO multiple dependent fee [large entity / small entity: $820/$410 for existence of any multiple dependent claims].

Must a Preliminary Amendment be filed concurrently with the initial filing of the patent application?

No, a Preliminary Amendment may be filed after the initial filing of a US patent application. However, filing the Preliminary Amendment upfront with the initial filing provides certain procedural efficiencies. In particular, the USPTO will send a notice specifying insufficiency and missing parts if an application was filed with excess claims or multiple dependent claims without payment for such claims.

By filing the amendment upfront, the applicant can avoid such a notice and thus avoid the cost and hassle of docketing and responding to this notice.

There may not always be enough time to prepare a Preliminary Amendment to be filed concurrently with the US application. For example, the applicant may be in a rush to meet a national stage or Paris convention deadline. Under such urgent circumstances, it would be advisable to pay the base USPTO fees with the initial filing and, thereafter, file a Preliminary Amendment promptly after the initial filing to amend the claims to avoid any USPTO fees for excess claims or multiple dependent claims.

Streamlining related US and PCT applications

If an applicant has filed both a US non-provisional application and a counterpart PCT application, then it is likely that the PCT application will receive an International Search Report and Written Opinion before the US application gets an Office Action. In this common scenario, the applicant may want to file a Preliminary Amendment in the US application to prevent getting the same rejections in the US case, thereby saving the US application from a needless Office Action.

By filing an early amendment in the US application to claim around the prior art cited in the PCT application, the applicant will have a better chance at getting US claims allowed or at least forcing the US examiner to search for new prior art beyond those references found in the related PCT application.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
We align ourselves with Davids fighting Goliaths. We have helped clients obtain 700+ granted patents, 500+ registered trademarks and countless foreign IP registrations. Let's get to work on your IP: (949) 223-9623 | vlin@icaplaw.com

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