How to Mark Up Your Amended Claims. Episode 51

Claim Amendments and Markups

We’re diving into the wonderful world of claim amendments. In the last episode, I discussed how to label claims using the seven claim status identifiers. Now that we have labeled them, how do we actually amend them? It’s a simple process, but it must be done in a specific format. You primarily need to remember three things: underlines, strikethroughs, and double brackets.

Using Underlines for Additions

Underlines indicate additions to the claims.

For example, let’s say your original claim states that your invention includes “three rods extending from a circular base.” However, after reviewing prior art, you realize that similar inventions exist, but they all have flat-ended rods. You decide to clarify that your rods have a conical tip.

To amend the claim, you revise it to say “three conical-tipped rods extending from a circular base.” The two words “conical-tipped” should be underlined to indicate that they are new additions to the claim. Also, remember that the claim’s status identifier should be changed to Currently Amended.

Using Strikethrough for Deletions

If you need to remove a word or phrase from your claim, you cannot simply delete it; you must show the deletion using either a strikethrough or double brackets.

For instance, if your original claim states, “three rods extending from a circular base,” but you now realize that specifying “circular” is unnecessary and could limit the claim, you should remove it. The correct way to do this is by applying a strikethrough to the word “circular.” (The blog editor I'm using doesn't have the strikethrough function, but it's just a line through the center of the word). In Microsoft Word, you can do this by selecting the word, going to the “Fonts” menu, and selecting the “Strikethrough” option.

Using Double Brackets for Short Deletions

For deletions of words with five or fewer characters, the USPTO requires the use of [[double brackets]] instead of a strikethrough.

For example, if you decide to remove the word “three,” since it consists of five characters, you should not use a strikethrough. Instead, you enclose the word in double brackets: [[three]]. There should be no spaces within the brackets.

Special Considerations for Claim Amendments

If you are canceling a claim entirely, do not use strikethroughs or double brackets on the text. Instead, simply label the claim as (Canceled) and remove all of its text.

For newly added claims, assign them a new claim number and label them as (New) in parentheses. However, do not underline the text of the new claim.

One important thing to remember is that after submitting your amendments, the next time you submit a new set of claims, you must present them in a clean format. That means removing all previously marked-up words (double brackets, strikethroughs, and underlines) so that the claims appear as they would in their final version. If a claim remains unchanged from the last submission, it will be labeled (Previously Presented).

Final Thoughts

That covers the mechanics of how to amend your claims properly. We’ve gone over the seven claim status identifiers, the three markup techniques—underlining for additions, strikethroughs for deletions, and double brackets for short deletions—as well as the proper formatting for new and canceled claims.

In the next episode, I will go over how to amend your drawings. I’m Adam Diament, and until next time—keep on inventing!