What is a Preliminary Amendment?

A preliminary amendment is an amendment made to a patent application before the first office action on the merits—specifically, before substantive examination begins (e.g., novelty and nonobviousness). These amendments typically changes the scope of the claims, fix typographical errors in the specification, or update the drawings before the examiner formally reviews them.  The preliminary amendment cannot add new matter to the application.

Scope of a Preliminary Amendment

A preliminary amendment can modify many aspects of a patent application, including:

• Claims: Adjusting their scope, improving clarity, or fixing typographical errors.
• Specification: Clarifying descriptions, correcting typographical errors.
• Drawings: Replacing informal drawings with formalized versions.

However, new matter introduced in a preliminary amendment filed after the application’s filing date will be rejected. If the new information is deemed to be new matter, the new matter must be removed.

Common Scenarios for Filing Preliminary Amendments

1. Addressing Informal Drawings

If informal drawings were submitted when the non-provisional application was filed, the USPTO typically objects to them during the examination process. A preliminary amendment can be filed with formalized drawings after submission but before the examiner formally requests corrections.  It’s much cheaper this way.

2. Multiple Pending Applications

Preliminary amendments are often filed when there are two pending applications in the same family. This situation could involve:

• Two related continuing applications (e.g., a continuation and a divisional) filed off the same parent application.
• A pending foreign application and a related domestic application.

There are many reasons to amend the application or claims based on the prosecution of a related application. For example:

• Insights gained during the examination of a foreign application might force you to amend the claims in a corresponding U.S. application.
• Prosecution developments in one continuation or divisional could guide claim adjustments in another continuation or divisional to avoid overlap or even streamline the application process.

This strategic use of preliminary amendments between related applications while leveraging the progress of each case is an extra tool in our toolbox when trying to secure optimal patent protection.

3. Continuation or Divisional Applications

Preliminary amendments are frequently used with continuation and divisional applications to adjust claims or refine the application’s scope. These applications are based on the parent application’s disclosures, and the timing of the preliminary amendment can have strategic implications.

• Filing a Preliminary Amendment After the Filing Date:
  In continuation or divisional applications, preliminary amendments should be filed after the application’s filing date. This timing helps protect claims with borderline new information from being treated as new matter. If the examiner does not reject the claims for new matter, the borderline new information benefits from the presumption of validity when the application is granted. Any information that seems new is presumed not to be new because the examiner did not explicitly reject it as such during examination. Filing the preliminary amendment after the application’s filing date also helps avoid costly litigation risks. If the amendment is filed with the application, a defendant in an infringement case could argue that the new or semi-new information is tied to the filing date of the continuation or divisional application, creating issues with priority and validity. This could significantly increase costs of litigation.

4. Continuation-in-Part (CIP) Applications

For continuation-in-part (CIP) applications, preliminary amendments are typically filed with the application. The new information is given the filing date of the continuation in part application. There isn’t any problem with taking this stance.  Unlike continuation or divisional applications, CIP applications include new matter, and the new matter receives the CIP’s filing date.

Final Thoughts

A preliminary amendment is a tool for amending the claims of a patent application before examination begins. Its timing and content must be carefully considered to optimize the scope of the claims while minimizing risks such as new matter rejections or challenges to priority. Properly using preliminary amendments can strengthen the patent, as discussed above.