substitute specification and preliminary amendments

[marigny]

Hi! I received a 'formalities letter' from the USPTO after filing a utility patent application. It basically says a substitute specification excluding claims is required-in compliance with 37 CFR 1.52, 1.121(b)(3), and 1.125. It goes on to say that, "Since a preliminary amendment was present on the filing date of the application and such amendment is part of the original disclosure of the application, the substitute specification must include all of the desired changes made in the preliminary amendment. See 37 CFR 1.115 and 1.215."

Ok, I did not send any preliminary amendments, nor did I check the box in the Transmittal form for a preliminary amendment. Did they make a mistake? Or do they compare my provisional patent app to my utility and think I need to make some amendments-which I can't imagine is the case because I received this letter only 17 days after my express mail receipt.

How do I resolve a situation like this?

Also, it says my filing date has been granted, and an application number and filing date have been accorded to this application, but the application is informal since it does not comply with the regulations as I stated above. I have 2 months before abandonment.

Yikes, this is already the second problem I have had! The first one was that they charged me twice! I hope this isn't foreshadowing of the OA's!

Thanks again for your time!

 

[divgradcurl]

Interesting. I don't believe I have seen something like this before.

How did you file your nonprovisional application? Did you file a separate nonprovisional claiming priority to the provisional, or did you convert the provisional into a nonprovisional under 37 CFR 1.53(c)(3)?

Is the specification of the nonprovisional changed at all from the spec filed in the provisional?

 

[marigny]

Interesting. I don't believe I have seen something like this before.

How did you file your nonprovisional application? Did you file a separate nonprovisional claiming priority to the provisional, or did you convert the provisional into a nonprovisional under 37 CFR 1.53(c)(3)?

I filed a separate nonprovisional claiming priority to the provisional. I stated it as follows,
"CROSS-REFERENCE TO RELATED APPLICATIONS: This application claims the benefit of PPA Ser. Nr. xx/xxx,xxx filed 2007, xxxx xx the present inventor, which is incorporated by reference."

Did I write something wrong? Other than I left out 'by' the present inventor?

Is the specification of the nonprovisional changed at all from the spec filed in the provisional?

Yes, it is. The non provisional specification is more comprehensive, and there are more drawings. I thought that was okay, and that the provisional wasn't looked at unless an issue came up concerning another similar patent-or in court. Of course, I could be totally wrong here!

In trying to figure this out, I realized my numbering my be wrong. I numbered the specification pages 1 through 35 and then I numbered the claim pages 1 through 5. I also did not number each paragraph, but I thought that was okay. Maybe the first part of their formalities letter was correct-I need a substitute spec with correct numbering...and the second part regarding the preliminary amendment was wrong...?? This is my uneducated guess??

 

[divgradcurl]

I filed a separate nonprovisional claiming priority to the provisional. I stated it as follows,
"CROSS-REFERENCE TO RELATED APPLICATIONS: This application claims the benefit of PPA Ser. Nr. xx/xxx,xxx filed 2007, xxxx xx the present inventor, which is incorporated by reference."

Did I write something wrong? Other than I left out 'by' the present inventor?

That should be fine.

Yes, it is. The non provisional specification is more comprehensive, and there are more drawings. I thought that was okay, and that the provisional wasn't looked at unless an issue came up concerning another similar patent-or in court. Of course, I could be totally wrong here!

In trying to figure this out, I realized my numbering my be wrong. I numbered the specification pages 1 through 35 and then I numbered the claim pages 1 through 5. I also did not number each paragraph, but I thought that was okay. Maybe the first part of their formalities letter was correct-I need a substitute spec with correct numbering...and the second part regarding the preliminary amendment was wrong...?? This is my uneducated guess??

This is probably where the trouble, if any, lies. Technically speaking, your nonprovisional application cannot contain any "new matter," that is, matter that was not fully disclosed in the provisional application, and still be entitled to the earlier filing date. Chances are what they are looking for is essentially a red-lined version of the nonprovisional application, which shows the changes from the original provisional application. Usually what you would do is start with the provisional specification, and then add in all of the new stuff, with anything different either underlined (if it is being added) or struck through (if it is being eliminated or replaced).

That would be my guess. But you could simply call the patent office, and see if you can get an explanation from them.

 

[marigny]

Thanks, I'll give then a call before I do all that work!

And just when I got a bottle of wine to celebrate being 'done' for while...