MPEP 608.01(q)
Substitute or Rewritten Specification

This is the Ninth Edition of the MPEP, Revision 08.2017, Last Revised in Januay 2018

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608.01(q)    Substitute or Rewritten Specification [R-07.2015]

37 C.F.R. 1.125 Substitute specification.

  • (a) If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof, be rewritten.
  • (b) Subject to § 1.312, a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by a statement that the substitute specification includes no new matter.
  • (c) A substitute specification submitted under this section must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. An accompanying clean version (without markings) must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown pursuant to this paragraph.
  • (d) A substitute specification under this section is not permitted in a reissue application or in a reexamination proceeding.

The specification is sometimes in such faulty English that a new specification is necessary; in such instances, a new specification should be required.

Form paragraph 6.28 may be used where the specification is in faulty English.

¶ 6.28    Idiomatic English

A substitute specification in proper idiomatic English and in compliance with 37 CFR 1.52(a) and (b) is required. The substitute specification filed must be accompanied by a statement that it contains no new matter.

37 CFR 1.125(a) applies to a substitute specification required by the Office. If the number or nature of the amendments or the legibility of the application papers renders it difficult to consider the application, or to arrange the papers for printing or copying, the Office may require the entire specification, including the claims, or any part thereof be rewritten. Note that legibility includes ability to be photocopied and scanned so that suitable reprints can be made and papers can be electronically reproduced by use of digital imaging and optical character recognition. See MPEP § 608.01.

Form paragraph 6.28.01 may be used where the examiner, for reasons other than faulty English, requires a substitute specification.

¶ 6.28.01    Substitute Specification Required by Examiner

A substitute specification [1] the claims is required pursuant to 37 CFR 1.125(a) because [2].

A substitute specification must not contain new matter. The substitute specification must be submitted with markings showing all the changes relative to the immediate prior version of the specification of record. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strikethrough except that double brackets placed before and after the deleted characters may be used to show deletion of five or fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strikethrough cannot be easily perceived. An accompanying clean version (without markings) and a statement that the substitute specification contains no new matter must also be supplied. Numbering the paragraphs of the specification of record is not considered a change that must be shown.

Examiner Note:

1. In bracket 1, insert either --excluding-- or --including--.

2. In bracket 2, insert clear and concise examples of why a new specification is required.

3. A new specification is required if the number or nature of the amendments render it difficult to consider the application or to arrange the papers for printing or copying, 37 CFR 1.125.

4. See also form paragraph 13.01 for partial rewritten specification.

37 CFR 1.125(b) applies to a substitute specification voluntarily filed by the applicant. Subject to the provisions of 37 CFR 1.312, a substitute specification, excluding claims, may be voluntarily filed by the applicant at any point up to the payment of the issue fee provided it is accompanied by a statement that the substitute specification includes no new matter. The Office will accept a substitute specification voluntarily filed by the applicant if the requirements of 37 CFR 1.125(b) are satisfied.

37 CFR 1.125(c) requires a substitute specification filed under 37 CFR 1.125(a) or (b) be submitted in clean form without markings. A marked-up copy of the substitute specification showing all the changes relative to the immediate prior version of the specification of record must also be submitted. The text of any added subject matter must be shown by underlining the added text. The text of any deleted matter must be shown by strike-through except that double brackets placed before and after the deleted characters may be used to show deletion of five of fewer consecutive characters. The text of any deleted subject matter must be shown by being placed within double brackets if strike-through cannot be easily perceived. Numbering the paragraphs of the specification of record is not considered a change that must be shown under 37 CFR 1.125(c). The paragraphs of any substitute specification, other than the claims, should be individually numbered in Arabic numerals (for example [0001]) so that any amendment to the specification may be made by replacement paragraph in accordance with 37 CFR 1.121(b)(1).

A substitute specification filed under 37 CFR 1.125(b) must be accompanied by a statement indicating that no new matter was included. There is no obligation on the examiner to make a detailed comparison between the old and the new specifications for determining whether or not new matter has been added. If, however, an examiner becomes aware that new matter is present, objection thereto should be made.

The filing of a substitute specification rather than amending the original application has the advantage for applicants of eliminating the need to prepare an amendment of the specification. The Office receives the advantage of saving the time needed to enter amendments in the specification and a reduction in the number of printing errors. A substitute specification is not permitted in a reissue application or in a reexamination proceeding. 37 CFR 1.125(d).

A substitute specification which complies with 37 CFR 1.125 should normally be entered. A substitute specification which is denied entry should be so marked.

Form paragraph 6.28.02 may be used to notify applicant that a substitute specification submitted under 37 CFR 1.125(b) has not been entered.

¶ 6.28.02    Substitute Specification Filed Under 37 CFR 1.125(b) and (c) Not Entered.

The substitute specification filed [1] has not been entered because it does not conform to 37 CFR 1.125(b) and (c) because: [2]

Examiner Note:

1. In bracket 2, insert statement of why the substitute specification is improper, for example:

-- the statement as to a lack of new matter under 37 CFR 1.125(b) is missing--,

-- a marked-up copy of the substitute specification has not been supplied (in addition to the clean copy)--;

-- a clean copy of the substitute specification has not been supplied (in addition to the marked-up copy)--; or,

-- the substitute specification has been filed:

- in a reissue application or in a reexamination proceeding, 37 CFR 1.125(d) -, or

- after payment of the issue fee-, or

- containing claims (to be amended)- --.

2. A substitute specification filed after final action or appeal (prior to the date an appeal brief is filed pursuant to 37 CFR 41.37, see 37 CFR 41.33(a) ) is governed by 37 CFR 1.116. A substitute specification filed after the mailing of a notice of allowance is governed by 37 CFR 1.312.

See MPEP § 714.20 regarding entry of amendments which include an unacceptable substitute specification.

For new matter in amendment, see MPEP § 608.04.

For application prepared for issue, see MPEP § 1302.02.