37 C.F.R. § 1.115

Preliminary amendments

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(a) A preliminary amendment is an amendment that is received in the Office (§ 1.6) on or before the mail date of the first Office action under § 1.104. The patent application publication may include preliminary amendments (§ 1.215(a)).

(1) A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application.

(2) A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.

(b) A preliminary amendment in compliance with § 1.121 will be entered unless disapproved by the Director.

(1) A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.

(2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:

(i) The state of preparation of a first Office action as of the date of receipt (§ 1.6) of the preliminary amendment by the Office; and

(ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.

(3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:

(i) Three months from the filing date of an application under § 1.53(b);

(ii) The filing date of a continued prosecution application under § 1.53(d); or

(iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.

(4) The time periods specified in paragraph (b)(3) of this section are not extendable.

[69 FR 56543, Sept. 21, 2004]

Notes of Decisions

Cited in 5 cases (1 in the last 5 years), 2002–2021 · leading case: Astra Aktiebolag v. Andrx Pharm., Inc., 222 F. Supp. 2d 423 (S.D.N.Y. 2002).

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Astra Aktiebolag v. Andrx Pharm., Inc., 222 F. Supp. 2d 423 (S.D.N.Y. 2002). “(P9A, '281 File History, Amendment under 37 C.F.R. § 1.115 , at 7.) 31 . The court does not credit the opinions expressed by Dr.”

Harari v. Hollmer, 602 F.3d 1348 (Fed. Cir. 2010). · cites it 2× “But see 37 C.F.R. § 1.115 (a)(1)(2004) (“A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application.”

Nextec Applications v. BROOKWOOD COMPANIES, INC., 703 F. Supp. 2d 390 (S.D.N.Y. 2010). “19 (Amendment Under 37 C.F.R. § 1.115 ) at 4 (emphasis added).”

Mirror Worlds, LLC v. Apple, Inc., 742 F. Supp. 2d 875 (E.D. Tex. 2010). “160, Exhibit C, '227 Patent File History, Amendment Under 37 C.F.R. § 1.115 in Response to November 3, 1998 Office Action, 11 (May 7, 1999) [hereinafter Amendment ].”

Gilbert Hyatt v. Omb (9th Cir. 2021). “” 37 C.F.R. § 1.115 . Rule 115, therefore, does not fall under Exemption 6—but that is of no consequence, since as discussed above Rule 115, and all the challenged Rules, do not impose collections at all.”

Annotations are extracted automatically from the opinions in the Syfert caselaw corpus and ranked by authority, recency, and treatment. Dots show Syfertize treatment of the citing case itself.