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Prosecution First Blog

Prosecution Pointer 313

January 26, 2022

When filing a Preliminary Amendment on the filing date of an application, a claim listing of every claim ever presented in the application is required. The status identifier, (new), instead of (original), should be used for claims added by a Preliminary Amendment, even when the Preliminary Amendment is present on the filing date of the application. Only the claims presented in the original specification should be identified using the status identifier, (original). Claims that are canceled by a Preliminary Amendment present on the filing date of the application are required to be listed and identified using the status identifier, (canceled), in the Preliminary Amendment and any subsequent amendments.

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Prosecution Pointer, United States Patent and Trademark Office (USPTO), claim amendments, patent application

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