USPTO News: Preliminary amendments requiring substitute specification

Link: The USPTO has clarified the requirements for submitting a substitute specification upon the filing of a preliminary amendment to an application, so that publication of applications can proceed smoothly.

In brief, preliminary amendments to the specification of continuation and divisional applications will trigger OIPE to send a Notice to applicants requiring the submission of a substitute specification. The only preliminary amendment to the specification that does not require a substitute specification is an amendment to the priority claim. Applicants can avoid this Notice by filing a new specification that includes the desired preliminary amendment(s), obviously as long as the addition(s) include no new matter.

Amendments to the claims and abstract can be included on separate sheets as a preliminary amendment, or they can be incorporated into the specification (as if they were the original, using proper page numbering, etc.). Either of these options neither triggers the Notice, nor requires a substitute specification. One caution: Preliminary amendment pages are added to the entire specification (including the non-examined claims & outdated abstract) for purposes of calculating application size.

NOTE: This USPTO News Update was written by Christopher Singer.  Chris has a PhD in bio-inorganic chemistry from Northwestern University and is a patent attorney at MBHB.  [Singer Bio].