"A substitute drawing held properly refused admission where it appears that the new figures which it was desired to show could be placed on the original drawing and one of the original figures could be changed to correct certain minor inaccuracies therein." Ex parte Conner et al., 1913, C. D., 191. Amendments How Written And Signed. 73. In every amendment the exact word or words to be stricken out or inserted in the application must be specified and the precise point indicated where the erasure or insertion is to be made. All such amendments must be on sheets of paper separate from the papers previously filed, and written on but one side of the paper. Erasures, additions, insertions, or mutilations of the papers and records must not be made by the applicant. Amendments and papers requiring the signature of the applicant must also, in case of assignment of an undivided part of the invention, be signed by the assignee. (Rules 6, 107.) 74. When an amendatory clause is amended it must be wholly rewritten, so that no interlineation or erasure shall appear in the clause as finally amended, when the application is passed to issue. If the number or nature of the amendments shall render it otherwise difficult to consider the case, or to arrange the papers for printing or copying, the examiner may require the entire specification to be rewritten. The following decisions relate to these rules. "Amendments should be written in permanent ink." "Where an amendment is entitled in one application, is entered therein and is replied to in a subsequent Office action, it can not be transferred to another application although it is apparent from its subject matter that it was really intended for the latter application. Upon the presentation of such amendment in the case for which it was originally intended the facts disclosed by the record will be considered on the question of abandonment." Haultain & Stovel, 119, O. G., 649; 1905, 473. "Amendments to an application should be actually signed by an applicant or his attorney with pen and ink or equivalent writing material. Amendments signed by means of a rubber stamp will not be accepted." Minehan, 134, O. G., 1298; 1908, 137. "Only such amendments or actions need be signed by the assignees or their attorneys which require the personal signature of the inventor, such as supplementary oaths, disclaimers, concessions of priority, etc., and that until such action is made the attorney for the inventor alone, or for the assignee of the entire interest, can sign the amendment." Ex parte Ackerman, 1880, O. G., 131. 78. Amendment Under Rule 78. Amendments after the notice of allowance of an application will not be permitted as a matter of right, but my be made, if the specification has not been printed, on the recommendation of the primary examiner, approved by the Commissioner, without withdrawing the case from issue. (See Rule 165). This rule provides for the amendment of applications after the notice of allowance has been mailed. Such amendments are sent to the Docket Clerk who obtains the file and forwards both to the primary examiner for his recommendation as to whether or not the amendment shall be entered. In case the recommendation is adverse, a copy of the recommendation is sent to the applicant. When a favorable recommendation is approved by the Commissioner or an adverse recommendation disapproved the amendment is entered. The following decisions are cited to indicate when the entry of such amendments should be recommended: "Rule 78 does not provide for an indirect prosecution of an allowed application by way of amendment, and it has never been so construed under the most liberal interpretation. The applicant can not as a matter of right amend a case after it is allowed, and it is only as a matter of grace that this Office will enter a claim after allowance if it is regarded as patentable. The applicant has no right of appeal from the Office holding that the claim is not patentable, and therefore there are not the same reasons for explaining to the applicant the grounds upon which the conclusion is based. The amendment is not entered in the case, and the Examiner has no jurisdiction over it. His report upon the proposed amendment is not an action in the case and is not intended for the applicant's benefit, but merely as advice to the Commissioner upon which he can base his action in approving or disapproving the entry of the amendment. If the reasons given by the Examiner seem sufficient to the Commissioner, that is all that is necessary." Ex parte Stone, 1902, C. D., 434. "Entry of claims under Rule 78 is not a matter of right, but a privilege accorded applicants where the claims are found allowable by the Examiner upon such considerations of the case as he may deem proper. He should not be forced to consider the question of patentability upon a petition of this kind. The time for amendment in this case as a matter of right has expired." Ex parte Fleming, 1907, C. D., 51. "Rule 78 does not provide for withdrawing cases from issue, but for the admission of amendments without withdrawing the case from issue. It is the well settled practice that where amendments are presented under Rule 78 containing claims which the Examiner recommends are patentable such amend ments will be entered, but that amendments presenting claims which the Primary Examiner holds are not patentable will not be entered. It is not necessary for the Examiner to give in detail his reasons for holding that the claims are unpatentable, and the rule does not provide for an indirect prosecution of the application." Ex parte Orndoff, 1909, C. D., 48. "The wording of the rule is such as to give the Examiner a large discretion in the admission of amendments of this character. He is peculiarly in a position to judge of the propriety of admitting them, and his judgment in the matter will not be overruled except under unusual circumstances. It is well settled that an amendment will not be admitted after allowance where it requires a reexamination of the case." Ex parte Holz, 1910, C. D., 76. "Where an amendment is filed under Rule 78 which the Examiner reports contains a claim broader in scope than those allowed and the entry of which would necessitate a reopening of the case for further prosecution, Held, that the amendment I will not be admitted." "Rule 68 requires that in amending an applicant must clearly point out all the patentable novelty which he thinks the case presents in view of the state of the art disclosed by the references cited or the objections made, and where, as in this case, after amendment the application is allowed by the Examiner, the applicants have no reason to assume that they are entitled as a matter of right to an examination of the patentability of claims broader than those to which they have previously limited their case." Ex parte Goldsmith & Whiting, 1912, C. D., 352. THE APPROPRIATIONS DEFICIENCY BILL. Under this bill as finally passed by the House and Senate the following items were appropriated for covering the period from November 1, 1919 to June 30, 1920. Patent Office, additional employees. One clerk of class four; one of class three; two of class two; two of class one; two at $1,000 each; two at $900 each; fifteen copy pullers at $480 each. $15,000 is additionally appropriated for producing weekly issue of patents, copies of drawings and specifications of exhausted patents, expense of transporting publications of patents to foreign governments; Provided that hereafter 10 cents per copy shall be charged for uncertified printed copies of specifications and drawings of patents. The Senate first agreed to the House appropriations and added additional employees to bring up to date the trade-mark work of the Office, as follows: 1 First Asst. Examiner of Trade-Marks at $2,400 per annum. 2 Asst. Examiners of Trade-Marks at $1,800 per annum. 2 Asst Examiners of Trade-Marks at $1,500 per annum. 2 Clerks at $1,000 per annum. These additional appropriations were, however, struck out in Conference leaving the bill in its original form as far as the Patent Office is concerned. Washington Solicitor NOW WITH OLD AND WELL ESTABLISHED local patent firm desires to associate himself with a reputable out of town attorney as Washington representative on a part or full time basis. Complete office facilities, including services of stenographer and expert draftsman, when necessary. Hlghly experienced. Details on request. Address G Journal of the Patent Office Society, 3928 New Hampshire Ave., Washington, D. C. YOUNG PATENT LAWYER WANTED-An old and established patent law office in large manufacturing city desires to employ a young single man between 25 and 35 years, who has had training and experience in soliciting and also in some litigation, if possible. Address X.Y.Z. care Journal of the Patent Office Society, 3928 New Hampshire Avenue, Washington, D. C., giving age, religion, if possessed of any clients, and minimum amount desired, taking into consideration a working interest and possible future partnership. BOUND COPIES OF VOLUME ONE OF THE Journal of the Patent Office Society. Bound in green buckram with gold title on back. Complete with Index By mail, U. S., Mexico, Cuba, Canada By mail, other foreign countries M. L. WHITNEY, Business Manager, $3.00 3.10 3.50 |