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27 January 2022

Prosecution Pointer 313

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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP

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Finnegan, Henderson, Farabow, Garrett & Dunner, LLP is a law firm dedicated to advancing ideas, discoveries, and innovations that drive businesses around the world. From offices in the United States, Europe, and Asia, Finnegan works with leading innovators to protect, advocate, and leverage their most important intellectual property (IP) assets.
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.
United States Intellectual Property

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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