Amending Your Claims - Claim Status Identifiers. Episode 50

Overview of Claims

As a brief overview, I have covered claims in previous episodes. If we were to analogize intellectual property to real property, claims are like the boundary lines of your invention. You define your invention in a set of claims, and if someone infringes upon your claims, they are effectively trespassing on your intellectual property.

I’ve previously discussed that sometimes claims will not be allowed either because they are not technically written in the correct format—these are usually called objections—or because the claimed invention is not new or is obvious. In the latter case, where argument alone does not suffice, you may need to amend your claims.

Amending claims is like redrawing the boundary lines of your invention. Typically, you are narrowing the scope of what you claim as your invention so that the examiner finds it allowable.

In most cases, the examiner indicates that the claim scope is too broad and requires more specificity. That is not always the case, but it is a common reason why amendments are necessary.

How to Properly Amend Claims

You cannot rewrite claims in any arbitrary way and simply ask the examiner to review them again. You must explicitly show how you amended your claims, following specific rules on marking up the old version of the claims. In this episode, I will discuss how to label claims to indicate changes, and in the next episode, I will cover how to mark up claims to reflect the amendments.

Where to Include Amended Claims in a Response

Your amended claims should be in a separate section of your response titled Claims. This section must start on a new page. If you amend any claims, you must submit all claims again, not just the amended ones. For example, if your application originally had 20 claims and you amend only Claim 1, you must still submit the entire set of 20 claims.

At the top of the page, you should write Claims. Below that, you may include a single sentence stating: Please replace any previous set of claims with the following set of claims.

It is recommended that you cut and paste the claims from your original Word file to ensure accuracy rather than retyping them, as manual entry increases the likelihood of errors.

Claim Status Identifiers

After each claim number, you must include a status identifier in parentheses to indicate what has changed in that claim compared to the previously submitted version. There are seven standard claim status identifiers:

1. (Original)

2. (Currently Amended)

3. (Canceled)

4. (Withdrawn)

5. (Previously Presented)

6. (New)

7. (Not Entered)

(Original)

If a claim remains unchanged from when the application was originally filed, you should label it as (Original) in parentheses after the claim number. This tells the examiner that the claim has not been modified in any way. The full text of the claim should still be present, not omitted.

(Currently Amended)

If you modify any part of a claim, even by changing a single comma, label it as (Currently Amended). In the next episode, I will discuss how to properly insert and delete words in an amended claim, but for now, just know that any alteration to the claim requires this label.

(Canceled)

If you wish to remove a claim entirely so that the examiner does not review it, label it as (Canceled). There are many reasons why you might want to cancel a claim, such as incorporating its features into another claim. When a claim is canceled, all of its text must be deleted, and only the claim number with the (Canceled) label remains.

(Withdrawn)

A claim is labeled as (Withdrawn) when it is removed from examination but not permanently canceled. This is most commonly used in restriction requirements, which I will discuss in a future episode. Unlike canceled claims, withdrawn claims remain in the application with all their text intact. Technically, you can also label them as (Withdrawn – Amended)if you make changes, but for now, focus on the basic (Withdrawn) designation.

(Previously Presented)

A claim is labeled (Previously Presented) when it has been amended in a prior response but remains unchanged in the current submission. In other words, it is not an original claim, but it also has not been modified since the last submission. I personally prefer using (Previously Amended) instead of (Previously Presented) because it makes the status more explicit, and the USPTO allows both terms.

(New)

If you introduce a new claim that was not included in the original application, label it as (New). You can add new claims as long as they are supported by the original application’s description. The new claim follows the same formatting as the others, but it must be clearly labeled as (New) to indicate that it was not previously reviewed by the examiner.

(Not Entered)

This label is used when a numbering mistake occurred in a prior submission. For example, if the original submission included Claims 1, 2, 4, and 5 but mistakenly omitted Claim 3, the next response should acknowledge the missing number by inserting Claim 3 and labeling it as (Not Entered). This ensures clarity in claim numbering without skipping numbers.

Variations and MPEP Reference

There are acceptable variations of these status identifiers, and you can review MPEP Section 714 for a complete list of permissible alternatives. However, the seven listed here cover nearly all standard claim amendments you will need to make.

Next Steps: Marking Up Amended Claims

In the next episode, I will explain how to properly mark up claims to indicate specific changes, such as insertions and deletions, so that the examiner can easily see what has been modified. I’m Adam Diament, and until next time—keep on inventing!