FAQs Patent Questions

Question:Patent applicants must clearly point out why he/she thinks the amended claims are patentable

Answer:
In amending an application in reply to a rejection, the applicant must clearly point out why he/she thinks the amended claims are patentable in view of the state of the art disclosed by the prior references cited or the objections made. He/she must also show how the claims as amended avoid such references or objections.

Question:The requirements for filing a substitute specification is stated under the 37 CFR 1.125

Answer:
When applicants file a substitute specification, the following are required under 37 CFR 1.125: (1) a statement that the substitute specification includes no new matter; (2) a marked-up version of the specification with markings to show all the changes relative to the immediate prior version; and (3) a clean version of the substitute specification.

Question:Is it necessary to go to the USPTO to transact business concerning patent matters?

Answer:
No. Most business with the Office is conducted by written correspondence. Interviews regarding pending applications can be arranged with examiners if necessary and are often helpful.

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