[Patentpractice] claims listing for 312 amendment to claims AFTER "Notice of allowance with examiner's amendment"
William Ahmed
ahmed.william at ymail.com
Sun Jun 8 19:23:11 UTC 2025
Dear List,
BACKGROUND
One of our cases was allowed on April 15, 2025, after a week of back and forth on the phone with the Examiner.
The Notice of allowance included substantial amendments to the claims (deleting text, adding text). 19 claims were allowed.Claims 1-5 were each modified by the Examiner (i.e. deleting text, adding text). These changes are 100% acceptable to the client and to me.
After our examiner's interview, we noticed that we forgot to add a dependent claim that we had wanted to add during internal discussions.
We phoned the examiner who was very friendly -she said we can just present a new claim in the 312 amendment -- even though entry is not a matter of right,she said her policy is to enter a dependent claims post-allowance without giving applicants a hard time- she was very nice.
NEXT STEP -->
So now we need to submit a Rule 312 amendment (i.e. after allowance) with the full listing of claims, and then claim 20 (NEW CLAIM).This 312 amendment will have a full listing of claims.
MY QUESTION --> When we list claims 1-5 in our 'full listing of claims' do we:
OPTION A --> assume that these claims are previously amended, and give them the status of 'previously amended' and list the version of the claims in the "Notice of Allowance" after the Examiner's modifications - i.e. as if these amendments were previously entered ???
OR
OPTION B --> mark up each of claims 1-5 as in the Examiner's amendment - i.e. write 'currently amended' - i.e. relative to the version BEFORE the April 15 2025 'notice of allowance'?
I think that it's Option A, but I am not 100% sure.
Please advise.
Many thanks,Bill
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