How JustAnswer Works:

  • Ask an Expert
    Experts are full of valuable knowledge and are ready to help with any question. Credentials confirmed by a Fortune 500 verification firm.
  • Get a Professional Answer
    Via email, text message, or notification as you wait on our site.
    Ask follow up questions if you need to.
  • 100% Satisfaction Guarantee
    Rate the answer you receive.

Ask montysimmons Your Own Question

montysimmons
montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 230
Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
Type Your Intellectual Property Law Question Here...
montysimmons is online now
A new question is answered every 9 seconds

thanks for answering the first question. I have a second question. Considering

Resolved Question:

thanks for answering the first question.
I have a second question.
Considering that I want to cancel ALL the OLD claims from 1 to 44, and then I want to add the NEW claims (different content) from 1 to 26, my question is: what USPTO form should I use to do this operation (cancel OLD claims and add NEW claims)?
NOTE: the NEW claims have already been submitted in USPTO data base since Jan 2013.
Submitted: 1 year ago.
Category: Intellectual Property Law
Expert:  montysimmons replied 1 year ago.

No form is required.

 

You simply submit a Preliminary Amendment canceling claims 1-44 and adding New claims 45-64 (3 independent, 17 dependent).

 

If you have already done this and you did it correctly then you are good. That said, 6 months is a long time to be in limbo for a filing receipt and that would make me very nervous.

 

I would contact the USPTO and verity the ball is in their court, so to speak. Document the conversation well.

 

Consider this:

 

(1) Search the internet for top IP law firms that prosecute patents and note their name.

 

(2) Use the USPTO search engine at the link below to search, by legal representation name using a name from (1) above, to get patent numbers for recent patents prosecuted by that firm.

 

 

http://patft.uspto.gov/netahtml/PTO/search-adv.htm

 

Example: you search the Internet and a top law firm is "ABCD"

 

Do a full text search using LERP/ABCD

 

You will get a bunch of patent numbers. Note several of the patent numbers.

 

Then use the USPTO Public PAIR system to search for the information for one of the patent numbers noted above

 

Link to Public PAIR

 

http://portal.uspto.gov/pair/PublicPair

 

(3) Use public pair to view the file wrapper for that patent; if there USPTO rejections and applicant responses, download the file wrapper history for that patent (it is free) and you can download all the documents at one time into one file. (select all, then click PDF icon)

 

Such is a very good way to see how the experts respond (form and substance) to Office Actions and the arguments used. You can probably use many of the same arguments as well as the form.

 

Download several file wrapper histories for different patents so that you have a variety of responses on different issues.

 

A preliminary amendment may be difficult to find but they are out there.

 

NEW CLAIMS

 

By the way, the NEW claims cannot contain completely "NEW" material - new material that was not disclosed in one of (a) an originally filed drawing or (b) the originally filed specification or (c) the originally filed claims.

 

Thus the new claims can claim "new stuff" relative to the OLD claims, but not "new stuff" relative to the originally filed application.

 

 

 

Customer: replied 1 year ago.

In the Amendment can I mention that I already paid the fee for the 6 claims over 20 (because the new claims are 26 together)?

Expert:  replied 1 year ago.
Yes,

That is exactly what I would do.

montysimmons, Patent Prosecutor
Satisfied Customers: 230
Experience: Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
montysimmons and 2 other Intellectual Property Law Specialists are ready to help you

JustAnswer in the News:

 
 
 
Ask-a-doc Web sites: If you've got a quick question, you can try to get an answer from sites that say they have various specialists on hand to give quick answers... Justanswer.com.
JustAnswer.com...has seen a spike since October in legal questions from readers about layoffs, unemployment and severance.
Web sites like justanswer.com/legal
...leave nothing to chance.
Traffic on JustAnswer rose 14 percent...and had nearly 400,000 page views in 30 days...inquiries related to stress, high blood pressure, drinking and heart pain jumped 33 percent.
Tory Johnson, GMA Workplace Contributor, discusses work-from-home jobs, such as JustAnswer in which verified Experts answer people’s questions.
I will tell you that...the things you have to go through to be an Expert are quite rigorous.
 
 
 

What Customers are Saying:

 
 
 
  • Mr. Kaplun clearly had an exceptional understanding of the issue and was able to explain it concisely. I would recommend JustAnswer to anyone. Great service that lives up to its promises! Gary B. Edmond, OK
< Last | Next >
  • Mr. Kaplun clearly had an exceptional understanding of the issue and was able to explain it concisely. I would recommend JustAnswer to anyone. Great service that lives up to its promises! Gary B. Edmond, OK
  • My Expert was fast and seemed to have the answer to my taser question at the tips of her fingers. Communication was excellent. I left feeling confident in her answer. Eric Redwood City, CA
  • I am very pleased with JustAnswer as a place to go for divorce or criminal law knowledge and insight. Michael Wichita, KS
  • PaulMJD helped me with questions I had regarding an urgent legal matter. His answers were excellent. Three H. Houston, TX
  • Anne was extremely helpful. Her information put me in the right direction for action that kept me legal, possible saving me a ton of money in the future. Thank you again, Anne!! Elaine Atlanta, GA
  • It worked great. I had the facts and I presented them to my ex-landlord and she folded and returned my deposit. The 50 bucks I spent with you solved my problem. Tony Apopka, FL
  • Wonderful service, prompt, efficient, and accurate. Couldn't have asked for more. I cannot thank you enough for your help. Mary C. Freshfield, Liverpool, UK
 
 
 

Meet The Experts:

 
 
 
  • Alex Reese

    Lawyer

    Satisfied Customers:

    2588
    Experienced in intellectual property law
< Last | Next >
  • http://ww2.justanswer.com/uploads/sosolid007/2010-08-05_070536_Suitpic.jpg Alex Reese's Avatar

    Alex Reese

    Lawyer

    Satisfied Customers:

    2588
    Experienced in intellectual property law
  • http://ww2.justanswer.com/uploads/scottymacesq/2009-6-10_221523_small.jpg Robert McEwen, Esq.'s Avatar

    Robert McEwen, Esq.

    Lawyer

    Satisfied Customers:

    387
    Licensed Texas General Practice Attorney
  • http://ww2.justanswer.com/uploads/tswartz123/2010-02-08_225658_Tommy.jpg Thomas Swartz's Avatar

    Thomas Swartz

    Lawyer

    Satisfied Customers:

    374
    Twenty one years experience as a lawyer in New York and New Jersey. Former Appellate Law Clerk.
  • http://ww2.justanswer.com/uploads/dkaplun/2009-05-17_173121_headshot_1_2.jpg Dimitry K., Esq.'s Avatar

    Dimitry K., Esq.

    Attorney

    Satisfied Customers:

    371
    I assist my clients with IP questions that arise in their daily course of doing business.
  • http://ww2.justanswer.com/uploads/personwilt/2010-1-10_164828_person1.jpg Wilton A. Person's Avatar

    Wilton A. Person

    Lawyer

    Satisfied Customers:

    339
    MBA, Experienced and Knowledgeable in Intellectual Property Law
  • http://ww2.justanswer.com/uploads/BA/bart0358/2012-1-23_232424_1056.64x64.JPG BartEsq's Avatar

    BartEsq

    Researcher

    Satisfied Customers:

    192
    Juris Doctor
  • http://ww2.justanswer.com/uploads/IP/ipesq/2012-1-9_164431_RetouchPortraitHighResCopy.64x64.jpg ipesq's Avatar

    ipesq

    Lawyer

    Satisfied Customers:

    134
    Specializing in patent prosecution, trademark and copyright registration/enforcement.