37 CFR 1.115 — Preliminary amendments

Ninth Edition, Revision 01.2024

• (a) A preliminary amendment is an amendment that is received in the Office (§ 1.6 ) on or before the mail date of the first Office action under § 1.104 . The patent application publication may include preliminary amendments (§ 1.215(a) ).
  • (1) A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application.
  • (2) A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.
• (b) A preliminary amendment in compliance with § 1.121 will be entered unless disapproved by the Director.
  • (1) A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
  • (2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:
    • (i) The state of preparation of a first Office action as of the date of receipt (§ 1.6 ) of the preliminary amendment by the Office; and
    • (ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
  • (3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than:
    • (i) Three months from the filing date of an application under § 1.53(b) ;
    • (ii) The filing date of a continued prosecution application under § 1.53(d) ; or
    • (iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.
  • (4) The time periods specified in paragraph (b)(3) of this section are not extendable.

[46 FR 29183, May 29, 1981; removed and reserved, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; added, 65 FR 54604, Sept. 8, 2000, effective Nov. 7, 2000; para. (b)(1) revised, 68 FR 14332, Mar. 25, 2003, effective May 1, 2003; revised, 69 FR 56481, Sept. 21, 2004, effective Sept. 21, 2004]