714.16(d) Amendments Under 37 CFR 1.312, Handling [R-9]
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 by the Office of Patent Application Processing (OPAP) to the Publishing Division which, in turn, forwards, for non-Image File Wrapper applications (non-IFW), the proposed amendment, file, and drawing (if any) to the Technology Center (TC) which allowed the application. For IFW applications, amendments under 37 CFR 1.312 must be sent to(OPAP) Central Scanning. OPAP Central Scanning will scan the amendments. Upon upload of the images, OPAP Central Scanning will message the Office of Data Management. The Office of Data Management will review the messages and forward the messages 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 the OPAP Central 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 writing "Enter — 312," "Do Not Enter" or "Enter In Part" thereon in red ink in the upper left corner. For IFW processing, the examiner should print the first page of the amendment and write either "Enter – 312" or "Do Not Enter" in the upper left corner, and have the page scanned into IFW with the appropriate document code.
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 report giving the reasons for nonentry is typed on the Response to Rule 312 Communication form PTO-271 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:
--The amendment changes the scope of the claims.--; or
--The amendment was filed in a reissue application and was not accompanied by a supplemental reissue oath or declaration, 37 CFR 1.175(b). --
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 has been admitted; for, though actually entered it is not officially admitted 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 Formal Matters Only" thereon. 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. IFW processing is substantially the same, with the first page of the amendment being printed, the examiner writing "Enter" and the page being scanned into IFW with the appropriate document code.
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, effective February 24, 2004, 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