37 CFR 1.125 - Substitute specification
| Cite as | 37 CFR 1.125 |
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9 practice notes
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Patent cases: Patent business goals; implementation,
...of being able to require the submission of a substitute specification, as well as permitting the submission of a substitute specification. 37 CFR 1.125. In addition to submitting a replacement paragraph/claim to make an amendment, applicant would also be required to submit a marked-up copy ......
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Ex parte Spaulding, Appeal 2006-3206
...submitted a substituted specification and abstract with the amendment filed August 12, 2002, making certain statements with respect to 37 C.F.R. § 1.125 (2002) at page 6. The status of this document is not apparent on the record. In the final action mailed November 12, 2002, the Examiner st......
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Ex parte Smirnov, Appeal 2021-000215
...The Examiner objected to and did not enter a substitute specification for failing to comply with our Rules. See Final Act. 2 (citing 37 C.F.R. § 1.125(b), (c)). Appellant appeals the Examiner's objection to the Specification. See Second Appeal Br. 2 ("we would appreciate the courtesy of thi......
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Fixing Errors: USPTO Offers Reissue Best Practices for Patent Owners
...application, replacement specifications cannot be submitted without a petition under 37 CFR 1.183 for waiver of the requirements of 37 CFR 1.125(d) and 1.173(a)(1). The USPTO recommends use of its inventor and assignee forms (PTO/SB/51 (05-08) and PTO/SB/52 (05-08)) for reissue applications......
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4 cases
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Ex parte Spaulding, Appeal 2006-3206
...submitted a substituted specification and abstract with the amendment filed August 12, 2002, making certain statements with respect to 37 C.F.R. § 1.125 (2002) at page 6. The status of this document is not apparent on the record. In the final action mailed November 12, 2002, the Examiner st......
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Ex parte Smirnov, Appeal 2021-000215
...The Examiner objected to and did not enter a substitute specification for failing to comply with our Rules. See Final Act. 2 (citing 37 C.F.R. § 1.125(b), (c)). Appellant appeals the Examiner's objection to the Specification. See Second Appeal Br. 2 ("we would appreciate the courtesy of thi......
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Ex parte Runyon, Appeal 2008-1941
...2, 2005. However, Appellant did not include a statement that the Substitute Specification includes no new matter as required by 37 C.F.R. § 1.125(b) (2003). We note that the substitute figure and the description thereof differ substantially from the original figure and its description. Furt......
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Ex parte Perttunen, Appeal 2005-1633
...patent that may issue from the instant application, we recommend (but do not require) that appellant file a substitute specification. See 37 CFR § 1.125; Manual of Patent Examining Procedure § 608.01(q). The statement of the rejection of instant, independent claim 10 (Answer at 3-4) does no......
4 firm's commentaries
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Fixing Errors: USPTO Offers Reissue Best Practices for Patent Owners
...application, replacement specifications cannot be submitted without a petition under 37 CFR 1.183 for waiver of the requirements of 37 CFR 1.125(d) and 1.173(a)(1). The USPTO recommends use of its inventor and assignee forms (PTO/SB/51 (05-08) and PTO/SB/52 (05-08)) for reissue applications......
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Prosecution Pointer 153
...filing a substitute specification, what requirements are needed 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......
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Prosecution Pointer 315
...applicant files 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; an......
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Prosecution Pointer 315
...applicant files 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; an......