[Patentpractice] PPH: What Amendments are Permitted?

[Jim Larsen]

Carl’s blog post from Oct. 2019 related to this topic seems relevant though not precisely the same question:

      How broadly can you amend claims in a PPH case? – Ant-Like Persistence (oppedahl.com)<https://blog.oppedahl.com/how-broadly-can-you-amend-claims-in-a-pph-case/>


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of Scott Nielson via Patentpractice <patentpractice at oppedahl-lists.com>
Date: Friday, August 2, 2024 at 3:38 PM
To: Oppedahl List [Patent Practice] <patentpractice at oppedahl-lists.com>
Cc: Scott Nielson <scnielson at outlook.com>
Subject: [Patentpractice] PPH: What Amendments are Permitted?
If an examiner rejects the claims in a PPH application, what types of amendments are permitted?

The original notice announcing the PPH program (link<https://www.uspto.gov/web/offices/com/sol/og/2014/week11/TOC.htm#ref12>) says this:
Any claims amended or added after the grant of the request for participation in the Global/IP5 PPH pilot program must  sufficiently correspond to one or more allowable/patentable claims in the OEE application.
It defines "sufficiently correspond" as (emphasis added):
All claims in the U.S. application for which participation in the Global/IP5 PPH pilot program is requested must sufficiently correspond to the allowable/patentable claims in the corresponding OEE application. A claim is considered to sufficiently correspond where, accounting for differences due to claim format requirements, the claim is of the same or similar scope as an allowable/patentable claim in the corresponding OEE application. A claim in the U.S. application that is narrower in scope than the claims indicated as allowable/patentable in the OEE application will sufficiently correspond if presented as a claim dependent upon a claim that is of the same or similar scope as a claim indicated as allowable/patentable in the OEE application. In this regard, a claim that is narrower in scope occurs when an OEE claim is amended to be further limited by an additional feature that is supported by the written description of the U.S. application.
This makes it sound like "sufficiently correspond" includes any amendment to an independent claim as long as it narrows the claims and is supported by the original application. However, the PPH FAQs (link<https://www.uspto.gov/sites/default/files/documents/FAQs%20-%20Global%20PPH%20-%2005212015.pdf>) say this (emphasis added):
Claim Amendments:
21.  The notices regarding PPH indicate that US claims will be considered to sufficiently correspond with the claims allowed by the OEE if the US claims are of the same or similar scope or the US claims are narrower in scope than the allowed claims. The additional limitation that makes the US claims narrower in scope than the allowed claims must be presented in dependent form. Can applicant incorporate the narrower dependent claim into the independent claim during the US prosecution if the independent claim which has the same scope as the allowed claim was rejected by the US examiner but the narrower dependent claim was objected to as being dependent on a rejected claim?

[Answer]: If the narrower dependent claim is indicated as being allowable if written in independent form, you may rewrite the allowable dependent claim in independent form.

22.  If an independent claim which sufficiently corresponds to an allowed claim in the OEE workproduct is rejected by the US examiner but may be allowable if amended to include some additional limitation, will such an amendment meet the sufficient correspondence requirement?

[Answer] Yes, but only if the limitation was one previously presented in a dependent claim that is indicated as having allowable subject matter but objected to only because it is dependent on a rejected base claim.
The FAQs make it sound like you cannot amend the independent claims but instead must add new dependent claims with the narrower limitation. When one of the dependent claims is found to be allowable, then it is permissible to amend the independent claim to include the subject matter in the dependent claim.

So ... is it permissible to make narrowing amendments to independent claims when an application is in the PPH?


Scott Nielson

801-660-4400
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