[Patentpractice] PTO getting ridiculously stupid with form over substance

Mon Jun 9 21:50:14 UTC 2025

I decided to keep this part:

1. Preliminary Amendment that amends the claims to avoid extra claim fees as we previously attempted by a prior Preliminary Amendment but was refused entry-apparently because of a new unwritten policy change by the USPTO.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
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From: Suzannah K. Sundby
Sent: Monday, June 9, 2025 5:27 PM
To: patentpractice at oppedahl-lists.com
Subject: RE: PTO getting ridiculously stupid with form over substance

I'm so irritated by the stupidity... I wrote up my response (see below) which I will delete before submitting (but writing it up was somewhat therapeutic)...

Dear Sir:
In response to the Notification of Insufficiency mailed June 9, 2025, to which the time for response is set to expire August 9, 2025, the following is submitted for appropriate action by the U.S. Patent and Trademark Office:
1. Preliminary Amendment that amends the claims to avoid extra claim fees as we previously attempted by a prior Preliminary Amendment BUT WAS REFUSED ENTRY BECAUSE OF A NEW UNWRITTEN POLICY CHANGE BY THE USPTO.

The undersigned notes that for over 25 years, the USPTO has never refused entry of a Preliminary Amendment whereby the word "Claim" that precedes the claim numbers based on foreign PCT translations was simply deleted without strikethrough.  This new unwritten policy change by the USPTO should be formally announced so as to avoid the needless "make-work" and needless processing which surely violates the Paperwork Reduction Act.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

From: Suzannah K. Sundby
Sent: Monday, June 9, 2025 5:14 PM
To: patentpractice at oppedahl-lists.com<mailto:patentpractice at oppedahl-lists.com>
Subject: PTO getting ridiculously stupid with form over substance

So... foreign inbound 371 national phase entry... I filed a preliminary amendment with the national phase entry whereby I amended the claims to avoid extra claim fees and multiple dependencies.

It's Japanese origin, so they have the word "Claim" that precedes each claim number.

I did as I have for over 25 years of my career... I simply omitted the word "Claim".

USPTO refused to enter the Preliminary Amendment because I did not strike out the word "Claim" that preceded the claim numbers.

[cid:image001.png at 01DBD966.F39F0C20]

(the status identifier typo is from my dictation software, which I accidentally overlooked.)

Surely, the USPTO has better things to do... and if the USPTO is going to change its procedures in how it handles this ridiculous nonsense, it would be nice if they told everyone that what we all used to do for decades will no longer be acceptable.

Stupid, stupid, stupid.

Suzannah K. Sundby<http://www.linkedin.com/in/ssundby/> | Partner
canady + lortz LLP<http://www.canadylortz.com/>
1050 30th Street, NW
Washington, DC 20007
T: 202.486.8020
F: 202.540.8020
suzannah at canadylortz.com<mailto:suzannah at canadylortz.com>
www.canadylortz.com<http://www.canadylortz.com/>
Confidentiality Notice:  This message is being sent by or on behalf of a lawyer.  It is intended exclusively for the individual or entity to which it is addressed.  This communication may contain information that is proprietary, privileged or confidential, or otherwise legally exempt from disclosure.  If you are not the named addressee, you may not read, print, retain, copy, or disseminate this message or any part.  If you have received this message in error, please notify the sender immediately by e-mail and delete all copies of the message.

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