Anticipate This!™ | Patent and Trademark Law Blog

What is the Eighth Identifier?

Posted in Practice Commentary by Jake Ward on August 1, 2006

Under 37 C.F.R. § 1.121, the use of particular identifers when amending claims is required.  Specifically, under § 1.121(c), the status of every claim must be indicated after its claim number by using one of seven provided identifiers in a parenthetical expression: (Original), (Currently amended), (Canceled), (Withdrawn), (Previously presented), (New), and (Not entered). Further, an additional eighth identifier, (withdrawn-currently amended), is allowed according to § 1.121(c)(3).

Seems rather straight-forward, right?  Well, normally it is.  But as with most topics in the law (even trivial ones such as this) the rules oftentimes cannot be applied equally well to all fact patterns.

For instance, what identifier should be used if a claim was withdrawn and then rejoined, such as is allowed under MPEP 821.04?  The claim obviously should not be identified as “withdrawn” any longer.  However, should the claim instead be identified as “previously presented” or “new” or “original?”  Section 1.121(c)(3) provides that “[t]he presentation of a clean version of any claim having the status of “original,” “withdrawn” or “previously presented” will constitute an assertion that it has not been changed relative to the immediate prior version.”  Also, § 1.121(c)(5) asserts that “[a] claim which was previously canceled may be reinstated only by adding the claim as a “new” claim with a new claim number.”  The C.F.R. does not appear to address this issue directly.

My opinion, based on a reading of § 1.121 as a whole, is that the status identifier “original” should be used in the aforementioned fact pattern.  No amendment to the text of the claim has been made in the immediate prior version so as to make the identifier “previously presented” necessary.  Also, the C.F.R. addresses the special use of the idenfier “new” only with respect to cancelled claims being reinstated . . . and not withdrawn claims being rejoined.  Of the remaining choices, the identifier “original” appears to be the most logical.

Any thoughts?  This is a relatively trivial practice comment, but one which I think reflects some of the mundane issues that can arise daily in patent practice.

2 Responses

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  1. Tom Jefferson said, on May 17, 2007 at 1:49 pm

    What about the situation in which you have a typo in a preliminary amendment and you identify the status of the claim as “original”; and the examiner then examines it WITH the typo? When you correct the typo do you indicate a status of “original” or “presently amended”?

  2. Jake Ward said, on May 17, 2007 at 11:17 pm

    According to Section 1.121(c), “amendments to a claim must be made by rewriting the entire claim with ALL changes (e.g., additions and deletions) as indicated in this subsection.” (Emphasis added).
    Therefore, correction of typographical errors may be properly performed under the identifer “currently amended.” The fact that the claim may have been amended once before (where a typo was accidentally included, for example) should not be relevant. If the claim is being amended under 1.121, the proper identifier is almost certainly “currently amended.” My thoughts, for what they’re worth.

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