Patent and Invention Help Forum

Can I change claims after office action (Electron/Restrictions)

Can I change claims after office action (Electron/Restrictions)
« on: November 21, 2019, 06:09:17 AM »
Dear Brad,
dear All,

please, advice can I change (slightly) my claims right now. I got the Office Action where I should restrict my application to one invention, i.e. all my claims marked as:
Claim(s) 1-48 are subject to restriction and/or election requirement.

I understand that 2 inventions are packed in this application and I want to restrict this application to one invention. However, I want to change a little bit claims for the invention because some of them are written too broad and I suppose that they will be rejected, for example, I wrote

An apparatus comprising of...

and wish to change it at:

An apparatus for generating modulated RF-signal comprising of:...

It would be also very nice if I can change one independent claim to the dependent one, because I can remove a problem with two inventions.

Is it possible to do this right now, or I should wait for the first action and then send such modifications?

Thank you!




  • Patent Agent
  • *****
  • 1959
  • Owner of PatentFile, LLC
    • View Profile
    • Patent File
Re: Can I change claims after office action (Electron/Restrictions)
« Reply #1 on: November 21, 2019, 09:20:06 AM »
Yes you are allowed to make wording changes to your claims and you can file those amended claims when you submit your response to the restriction requirement.
My free patent template:

Hire Me:

Disclaimer: The information on this site is not legal advice and is not a substitute for an attorney or a law firm.  You should seek legal counsel for legal questions.

Re: Can I change claims after office action (Electron/Restrictions)
« Reply #2 on: November 22, 2019, 03:49:10 AM »
Dear Brad,

thank you very much for your kind answer! It is really good news for me, I can save one iteration with USPTO regarding claim modifications.




Menu Editor Pro 1.0.2 | Copyright 2014, Matthew Kerle