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montysimmons, Patent Prosecutor
Category: Intellectual Property Law
Satisfied Customers: 328
Experience:  Electrical Engineer, South Carolina Attorney, Member of US Patent Bar
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thanks for answering the first question. I have a second question. Considering

This answer was rated:

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.

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.


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


(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.




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 4 years 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)?


That is exactly what I would do.

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