April 21, 2006

I was recently preparing an office action response, making sure I was using the correct claim status identifiers, when I came across a reference in the MPEP (Section 714, subsection II(C)(E) to be exact) that lists several additional "acceptable alternatives" above and beyond the ones commonly used as stated under MPEP § 714(II)(C)(A), namely "original," "currently amended," "previously presented," "canceled," "withdrawn," "new," "not entered," and "withdrawn – currently amended." According to the MPEP, "To prevent delays in prosecution, the Office will waive certain provisions of 37 CFR 1.121 and accept alternative status identifiers not specifically set forth in 37 CFR 1.121(c)." Those alternative status identifiers are as follows:

Original: "Original Claim" and "Originally Filed Claim"

Currently amended: "Presently amended" and "Currently amended claim"

Canceled: "Canceled without prejudice," "Cancel," Canceled herein," "Previously canceled," "Canceled claim," and "Deleted"

Withdrawn: "Withdrawn from consideration," "Withdrawn – new," "Withdrawn claim," and "Withdrawn - currently amended"

Previously presented: "Previously amended," "Previously added," "Previously submitted," and "Previously presented claim"

New: "Newly added" and "New claim"

Not entered: "Not entered claim"

MPEP § 714: LINK
37 CFR § 1.121: LINK

2 comments:

jim hawes said...

Dear Mark - thanks for a very helpful heads-up. Document examiners at the PTO are very picky. After all, they are just clerks with a fancy title. They tend to reject anything but the identifiers posted in the rule. When they do, citing the MPEP section, even by phone, should go a long way to getting them to approve a previously objectionable identifier. Another point: be sure and include EVERY claim that was ever in the case in the list of claims.

Robert K S said...

Can anyone provide an MPEP section that delineates clearly the distinction between "withdrawn" and "cancelled"? I understand "withdrawn" is typically used with claims not elected to under a restriction requirement, but is there any danger of calling a claim "cancelled" that can be avoided by calling it "withdrawn"? I.e., has cancelling a claim ever been held as evidence of admission of the invalidity of a claim, whereas withdrawing the claim constituted no such admission?

If not, there seems to be no distinction, other than that putting "cancelled" saves the ink that would need to be used to reprint the claim.

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Mark Reichel
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I am a patent attorney with Reichel IP LLC, where I concentrate my practice on patent drafting and prosecution, trademarks, and general intellectual property matters. I currently focus on the preparation and prosecution of medical device and other life sciences patent applications, and being actively involved in a number of local not-for-profit organizations.

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