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Alex Reese
Alex Reese, Lawyer
Category: Intellectual Property Law
Satisfied Customers: 3424
Experience:  Experienced in intellectual property law
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I want to submit a substitute specification (both a marked

Customer Question

Customer: I want to submit a substitute specification (both a marked up and clean version). what language would I use in my response to restriction requirement to instruct the USPTO to replace the current specification with the substitute specification. ***** *****
JA: Thanks. Can you give me any more details about your issue?
Customer: The original specification does not have the sequence listing identifiers. As such, about 50% of the paragraphs need to be amended. I just want to submit a new specification, but am unsure of the language to use.
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Submitted: 11 months ago.
Category: Intellectual Property Law
Expert:  Alex Reese replied 11 months ago.

Hello. You cannot add new matter to a patent application. You can remove material or make minoir edits to the Spec, but you cannot submit a new Spec that includes new matter not in the original. To add to, or expand upon, an existing patent application, you will need to file a Continuation application, which is a separate & new application that claims priority to the original patent. Normally, with a restriction/election requirement, you just need to elect your claims and remove the rest (un-elected claims)....then you can file a continuation patent where you pursue the un-elected claims.

Expert:  Alex Reese replied 11 months ago.

let me know if you need clarification

Expert:  Alex Reese replied 11 months ago.

that being said, there is no special language, you just say that you are "submitting a substitute specification that replaces the current specification"

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