How to Amend a Patent

By Shelly Morgan

When inventors talk about amending a patent, they usually mean amending a patent application. Amendments of patent applications are done in response to an Office Action from the U.S. Patent and Trademark Office. Office Actions are official communications from the USPTO that contain the patent examiner's criticisms of the application. Responding to an Office Action often involves amending the patent application. This is often a necessary step before a patent is allowed.

Step 1

Read the Office Action from the U.S. Patent and Trademark Office. Pay particular attention to the "Period for Reply," which provides information on the deadline for your response. Find the sections titled, "Disposition of Claims" and "Application Papers." Carefully note which claims are objected to or rejected. Make sure you understand the examiner's basis for making the objection or rejection. Review how the patent examiner wants the application papers changed.

Step 2

Determine whether you need to amend the claims. Often the examiner provides prior art that is similar to your invention. In this case, you want to amend your claims so that they are not described in the prior art. Alternatively, the examiner might not understand the invention. If this is the case, the best approach is to politely explain why the claim should be allowed.

File a provisional application for patent online. Get Started Now

Step 3

Using a computer, copy all of the claims into a new document. If you wish to amend claims by adding text, enter the new text and underline it. If you wish to amend claims by deleting text, strike through the existing text or place in double brackets to signify you wish to delete it.

Step 4

Determine whether you need to amend the filing papers. The patent examiner may request that you amend the patent application to eliminate typographical errors.This is done by following the process set forth in step three. Added text should be underlined; deleted text should be struck through or placed in double brackets.

Step 5

Submit your response to the Office Action to the USPTO following the instructions you received. Use the same customer number -- and digital certificate if applicable -- you used when filing the application originally.

File a provisional application for patent online. Get Started Now
How to Withdraw a Patent
 

References

Related articles

What Is a Patent File Wrapper?

A patent is a grant made by the United States Patent and Trademark Office that gives inventors and creators exclusive rights to sell and license their inventions. A patent creates an ownership right in intellectual property. The patent application process, also known as the patent prosecution, is a lengthy administrative process requiring the creation and filing of a large number of documents, which are contained in a file wrapper. The contents of the file wrapper may serve an important legal function in the event of a dispute over the patent.

What is Patent Docketing?

Patent docketing is a method or system for managing the patent application process. Docketing is a particularly crucial tool for patent law firms, as it can be difficult to organize the patent application process for hundreds of patents without some type of system or software package to keep track of the many deadlines and documents involved. Many large patent law firms employ docketing specialists to manage the patent docketing process.

Elements of a Patent

A patent gives an inventor the legal right to prevent others from making, using or selling the inventor’s new device, process, design or substance. In effect, a patent is a short-term monopoly for an invention. Most patents expire in 20 years. A patent grant encompasses the elements of the inventor’s patent application. The U.S. Patent and Trademark Office reviews patent applications and issues a certificate for each approved patent. This certificate acknowledges that the federal government has granted the inventor a patent for the invention. Patents have several required elements.

Start here. LegalZoom. Legal help is here. LLCs. Corporations. Patents. Attorney help.

Related articles

How to Get a Patent on a Website Idea

A utility patent, which is the most common type of patent, covers the functional aspects of an invention. To be ...

Checklist for Getting a Patent

Coming up with a brilliant invention can be exciting. Among the most important steps you'll want to take right away is ...

How Do I Patent My Idea?

A patent protects an inventor's right to produce the product he invented, preventing others from selling or using the ...

Overturning a Patent

A patent is a right to exclude others from making, using or selling an invention of yours. To be eligible for patent ...

Browse by category
Ready to Begin? GET STARTED