How to Amend the Patent Application Specification. Episode 53

What is the Patent Specification?

Now, I’m going to talk about the last area where amendments may be needed—the specification.

Technically, the specification is the entire patent application, but when people talk about amending the specification, they’re referring to changes that are not in the drawings or claims. This includes the written description, summary of the invention, abstract, or background section.

Reasons for Amending the Specification

There are several reasons why you might need to amend the specification:

• Fixing typos.

• Moving text from the background section to the summary.

• Correcting mistakes in the brief description of drawings.

• Removing duplicated paragraphs due to copy-pasting errors.

• Shortening a section that the examiner finds too long (e.g., a “brief summary” that isn’t actually brief enough).

One critical rule to remember—you cannot add new matter to an application after filing. This means you cannot amend the specification to introduce a variation of your invention that was not included in the original application. If you need to do that, you must file a new application, which could be a continuation or a continuation-in-part. I’ll discuss those in future episodes.

How to Amend the Specification

There are two ways to amend the specification.

1. Amending the Specification Directly in the Response

If the changes are minor, you can make them directly in your response to the office action.

In your response, create a section titled Amendments to the Specification.

For example, if you need to replace paragraph 21 because it contained typos, you would write:

“Please replace paragraph 21 with the following amended paragraph:”

Then, you provide the entire corrected paragraph with underlines for additions, strikethroughs for deletions, and double brackets for short deletions (five characters or less).

If you need to add a paragraph, you might write:

“Please add the following new paragraph after paragraph 75:”

Then, provide the new paragraph. If adding an entirely new paragraph, do not underline it—just insert it.

If you need to delete a paragraph, you would write:

“Please delete paragraph 71.”

If your paragraphs are not numbered, describe the section you want deleted by stating:

“Please delete the paragraph that starts on page 2 and begins with ‘[insert first few words].’”

2. Submitting a Substitute Specification

If major changes are needed, you must submit a substitute specification. This requires submitting two versions:

• Marked-up version: This version shows changes with underlining for additions, strikethroughs for deletions, and double brackets for short deletions (five characters or less). The top margin of each page must state: “Substitute Specification – Marked Up.”

• Clean version: This version reflects the final text without underlining, strikethroughs, or brackets. The top margin of each page must state: “Substitute Specification – Clean.”

If you’re familiar with amending claims, this process should look similar because the same formatting rules apply.

When to Use a Substitute Specification vs. Amending in the Response

The examiner will tell you in the office action if a substitute specification is required. If you don’t see a requirement for one, you don’t need to submit it.

You also don’t have to wait for an office action to make amendments. If you catch mistakes early, you can file a preliminary amendment before the first office action is issued. However, if the issue is minor, you might want to wait, since you may later decide to abandon the application if the rejection is severe. I’ll discuss preliminary amendments in a future episode.

Final Reminders

• If required, submit a substitute specification with both marked-up and clean versions.

• If amending directly in the response, include a section titled “Amendments to the Specification.”

• In the Remarks or Arguments section of your response, explain why you made the amendments.

• Never add new matter. All amendments must be supported somewhere in the original specification.

Conclusion

That’s it for amendments to the specification! In the next episode, I’ll cover preliminary amendments—how they work, when to file them, and why they might be useful. I’m Adam Diament, and until next time—keep on inventing!