714.16 Amendment After Notice of Allowance, 37 CFR 1.312 [R-10.2019]
37 C.F.R. 1.312 Amendments after allowance.
No amendment may be made as a matter of right in an application after the mailing of the notice of allowance. Any amendment filed pursuant to this section must be filed before or with the payment of the issue fee, and may be entered on the recommendation of the primary examiner, approved by the Director, without withdrawing the application from issue.
The amendment of an application by applicant after allowance falls within the guidelines of 37 CFR 1.312. Further, the amendment of an application broadly encompasses any change in the file record of the application. Accordingly, the following are examples of "amendments" by applicant after allowance which must comply with 37 CFR 1.312:
- (A) an amendment to the specification,
- (B) a change in the drawings,
- (C) an amendment to the claims,
- (D) a change in the inventorship,
- (E) the submission of prior art,
- (F) a request to correct the spelling of an inventor’s name (37 CFR 1.48(f) ),
- (G) a request to change the order of the names of the inventors (37 CFR 1.48(f) ), etc.
The above "amendments" must also comply with the other applicable requirements. For example, an amendment to the specification, drawings, or claims must comply with the requirements of 37 CFR 1.121 in addition to the requirements of 37 CFR 1.312 and a submission of prior art must comply with the requirements of 37 CFR 1.97 and 1.98 in addition to the requirements of 37 CFR 1.312.
Finally, it is pointed out that an amendment under 37 CFR 1.312 must be filed on or before the date the issue fee is paid, except where the amendment is required by the Office of Data Management, see MPEP § 714.16(d), subsection III. An amendment under 37 CFR 1.312 must comply with the provisions of 37 CFR 1.121. If the amendment is non-compliant under 37 CFR 1.121 and the entry of the amendment would have been otherwise recommended, the examiner may enter the amendment and correct the non-compliance (e.g., an incorrect status identifier) using an examiner’s amendment. See MPEP § 714.
The Director has delegated the approval of recommendations under 37 CFR 1.312 to the supervisory patent examiners.
With the exception of a supplemental oath or declaration submitted in a reissue, a supplemental oath or declaration is not treated as an amendment under 37 CFR 1.312. See MPEP § 603.01. A supplemental reissue oath or declaration is treated as an amendment under 37 CFR 1.312 because the correction of the patent which it provides is an amendment of the patent, even though no amendment is physically entered into the specification or claim(s). Thus, for a reissue oath or declaration submitted after allowance to be entered, the reissue applicant must comply with 37 CFR 1.312 in the manner set forth in this section.
After the Notice of Allowance has been mailed, the application is technically no longer under the jurisdiction of the primary examiner. He or she can, however, make examiner’s amendments (see MPEP § 1302.04) and has authority to enter amendments submitted after Notice of Allowance of an application which embody merely the correction of formal matters in the specification or drawing, or formal matters in a claim without changing the scope thereof, or the cancellation of claims from the application, without forwarding to the supervisory patent examiner for approval.
Amendments other than those which merely embody the correction of formal matters without changing the scope of the claims require approval by the supervisory patent examiner. The Technology Center (TC) Director establishes TC policy with respect to the treatment of amendments directed to trivial informalities which seldom affect significantly the vital formal requirements of any patent, namely, (A) that its disclosure be adequately clear, and (B) that any invention present be defined with sufficient clarity to form an adequate basis for an enforceable contract.
Consideration of an amendment under 37 CFR 1.312 cannot be demanded as a matter of right. Prosecution of an application should be conducted before, and thus be complete including editorial revision of the specification and claims at the time of the Notice of Allowance. However, where amendments of the type noted are shown (A) to be needed for proper disclosure or protection of the invention, and (B) to require no substantial amount of additional work on the part of the Office, they may be considered and, if proper, entry may be recommended by the primary examiner.
The requirements of 37 CFR 1.111(c) (MPEP § 714.02) with respect to pointing out the patentable novelty of any claim sought to be added or amended, apply in the case of an amendment under 37 CFR 1.312, as in ordinary amendments. See MPEP §§ 713.04 and 713.10 regarding interviews. As to amendments affecting the disclosure, the scope of any claim, or that add a claim, the remarks accompanying the amendment must fully and clearly state the reasons on which reliance is placed to show:
- (A) why the amendment is needed;
- (B) why the proposed amended or new claims require no additional search or examination;
- (C) why the claims are patentable; and
- (D) why they were not presented earlier.
I. NOT TO BE USED FOR CONTINUED PROSECUTION
37 CFR 1.312 was never intended to provide a way for the continued prosecution of an application after it has been passed for issue. When the recommendation is against entry, a detailed statement of reasons is not necessary in support of such recommendation. The simple statement that the proposed claim is not obviously allowable and briefly the reason why is usually adequate. Where appropriate, any one of the following reasons is considered sufficient:
- (A) an additional search is required;
- (B) more than a cursory review of the record is necessary; or
- (C) the amendment would involve materially added work on the part of the Office, e.g., checking excessive editorial changes in the specification or claims.
Where claims added by amendment under 37 CFR 1.312 are all of the form of dependent claims, some of the usual reasons for nonentry are less likely to apply although questions of new matter, sufficiency of disclosure, or undue multiplicity of claims could arise.
See MPEP §§ 607 and 714.16(c) for additional fee requirements.
II. AMENDMENTS FILED AFTER PAYMENT OF ISSUE FEE
Except where the Office of Data Management has required an amendment, no amendments should be filed after the date the issue fee has been paid. See MPEP § 714.16(d), subsection III for processing an amendment required by the Office of Data Management.
¶ 13.10 Amendment Filed After the Payment of Issue Fee, Not Entered
Applicant’s amendment filed on [1] will not be entered because the amendment was filed after the issue fee was paid. 37 CFR 1.312 no longer permits filing an amendment after the date the issue fee has been paid.
Examiner Note:
1. Use this paragraph with form PTOL-90 or PTO-90C.
2. In bracket 1, insert the date of the amendment.
714.16(a) Amendments Under 37 CFR 1.312, Copied Patent Claims [R-08.2012]
See MPEP Chapter 2300 for the procedure to be followed when an amendment is received after notice of allowance which includes one or more claims copied or substantially copied from a patent.
The entry of the copied patent claims is not a matter of right. See MPEP § 714.19.
See MPEP § 607 and § 714.16(c) for additional fee requirements.
714.16(b) Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208 [R-08.2012]
Where an amendment filed with a motion under 37 CFR 41.208(c)(2) applies to an application in issue, the amendment is not entered unless and until the motion has been granted.
714.16(c) Amendments Under 37 CFR 1.312, Additional Claims [R-08.2012]
If the amendment under 37 CFR 1.312 adds claims (total and independent) in excess of the number previously paid for, additional fees are required. The amendment is not considered by the examiner unless accompanied by the full fee required. See MPEP § 607 and 35 U.S.C. 41.
714.16(d) Amendments Under 37 CFR 1.312, Handling [R-10.2019]
I. AMENDMENTS AFFECTING THE DISCLOSURE OF THE SPECIFICATION, ADDING CLAIMS, OR CHANGING THE SCOPE OF ANY CLAIM
Amendments under 37 CFR 1.312 are sent to the Office of Patent Application Processing (OPAP) to be scanned and uploaded into the IFW. Thereafter OPAP messages the Office of Data Management, which reviews the message and forwards the message to the Technology Center (TC) which allowed the application. Once the TC completes the action, the TC will message the Office of Data Management that issue processing can resume. If an amendment under 37 CFR 1.312 has been filed directly with the TC, the paper will be forwarded to OPAP for scanning.
Hand delivered amendments under 37 CFR 1.312 are no longer accepted in the TC. Hand delivered amendments (unless specifically required by the Office of Data Management, see subsection III. below) may only be delivered to the Customer Window located at:
U.S. Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314
In the event that the class and subclass in which the application is classified has been transferred to another TC after the application was allowed, the proposed amendment, file and drawing (if any) are transmitted directly to said other TC and the Publishing Division notified. If the examiner who allowed the application is still employed in the U.S. Patent and Trademark Office but not in said other TC, he or she may be consulted about the propriety of the proposed amendment and given credit for any time spent in giving it consideration.
The amendment is PROMPTLY considered by the examiner who indicates whether or not its entry is recommended by annotating the amendment with "OK to Enter" if the entire amendment is recommended for entry, with "Enter In Part" if only part of the amendment is recommended for entry, and with "Do Not Enter" if none of the amendment is recommended for entry.
In addition, the amendment must comply with the provisions of 37 CFR 1.121. See MPEP § 714.
If the amendment is favorably considered, it is entered and a Response to Rule 312 Communication (PTO-271) is prepared. The primary examiner indicates his or her recommendation by stamping and signing his or her name on the PTO-271. Form paragraph 7.85 may also be used to indicate entry.
¶ 7.85 Amendment Under 37 CFR 1.312 Entered
The amendment filed on [1] under 37 CFR 1.312 has been entered.
Examiner Note:
Use this form paragraph both for amendments under 37 CFR 1.312 that do not affect the scope of the claims (may be signed by primary examiner) and for amendments being entered under 37 CFR 1.312 which do affect the scope of the claims (requires signature of supervisory patent examiner). See MPEP § 714.16.
If the examiner’s recommendation is completely adverse, a Response to Rule 312 Communication form PTO-271 is prepared and signed by the primary examiner.
Form paragraph 7.87 may also be used to indicate nonentry.
¶ 7.87 Amendment Under 37 CFR 1.312 Not Entered
The proposed amendment filed on [1] under 37 CFR 1.312 has not been entered. [2]
Examiner Note:
The reasons for non-entry should be specified in bracket 2, for example:
--The amendment changes the scope of the claims.--
In either case, whether the amendment is entered or not entered, the file, drawing, and unmailed notices are forwarded to the supervisory patent examiner for consideration, approval, and mailing.
For entry-in-part, see MPEP § 714.16(e).
The filling out of the appropriate form by the technical support staff does not signify that the amendment will be entered; although the amendment paper is placed in the application file, it is not officially entered unless and until approved by the supervisory patent examiner.
See MPEP §§ 607 and 714.16(c) for additional fee requirements.
II. AMENDMENTS WHICH EMBODY MERELY THE CORRECTION OF FORMAL MATTERS IN THE SPECIFICATION, FORMAL CHANGES IN A CLAIM WITHOUT CHANGING THE SCOPE THEREOF, OR THE CANCELLATION OF CLAIMS
The examiner indicates approval of amendments concerning merely formal matters by writing "Enter" thereon with the stamper tool in Adobe Acrobat. Such amendments do not require submission to the supervisory patent examiner prior to entry. See MPEP § 714.16. The Response to Rule 312 Communication form PTO-271 is date stamped and mailed by the TC. If such amendments are disapproved either in whole or in part, they require the signature of the supervisory patent examiner.
III. AMENDMENTS REQUIRED BY THE OFFICE OF DATA MANAGEMENT
In preparation of a patent for issuance as a patent grant, if the Office of Data Management discovers an error in the text, or drawings of a patent application, including any missing text, or an inconsistency between the drawings and the application papers, the Office of Data Management may require an appropriate amendment to the specification or drawings. 37 CFR 1.312, however, does not permit an amendment after the payment of the issue fee without withdrawal of the application from issue. In order to be able to accept such an amendment as may be required without having to withdraw an application from issue, the Office of Data Management has been delegated the authority to waive the requirement of 37 CFR 1.312 and accept an amendment filed after the payment of the issue fee. Furthermore, these amendments required by the Office of Data Management may be hand delivered to the Office of Data Management located at:
Office of Data Management
Randolph Square Building 9th Floor
2800 South Randolph Street
Arlington, VA 22206
714.16(e) Amendments Under 37 CFR 1.312, Entry in Part [R-11.2013]
The general rule that an amendment cannot be entered in part and refused in part should not be relaxed, but when, under 37 CFR 1.312, an amendment, for example, is proposed containing a plurality of claims or amendments to claims, some of which may be entered and some not, the acceptable claims or amendments should be entered in the application. If necessary, the claims should be renumbered to run consecutively with the claims already in the case. The examiner should annotate the amendments by using the Strike-Out Line tool to cross out any refused claims or amendments.
The examiner should then submit a Response to Rule 312 Communication form PTO-271 recommending the entry of the acceptable portion of the amendment and the nonentry of the remaining portion together with his or her reasons therefor. The claims entered should be indicated by number in this response. Applicant may also be notified by using form paragraph 7.86.
¶ 7.86 Amendment Under 37 CFR 1. 312 Entered in Part
The amendment filed on [1] under 37 CFR 1.312 has been entered-in-part. [2]
Examiner Note:
When an amendment under 37 CFR 1.312 is proposed containing plural changes, some of which may be acceptable and some not, the acceptable changes should be entered. An indication of which changes have and have not been entered with appropriate explanation should follow in bracket 2.
Handling is similar to complete entry of a 37 CFR 1.312 amendment.
Entry in part is not recommended unless the full additional fee required, if any, accompanies the amendment. See MPEP § 607 and § 714.16(c).