- Claims added by a preliminary amendment must have the status identifier (new) instead of (original), even when the preliminary amendment is present on the filing date of the application and such claim is treated as part of the original disclosure. If applicant files a subsequent amendment, applicant must use the status identifier (previously presented) if the claims are not being amended, or (currently amended) if the claims are being amended, in the subsequent amendment. Claims that are canceled by a preliminary amendment that is present on the filing date of the application are required to be listed and must have the status identifier (canceled) in the preliminary amendment and in any subsequent amendment.
- The status identifier (not entered) is used for claims that were previously proposed in an amendment (e.g., after-final) that was denied entry.
- In an amendment submitted in a U.S. national stage application, claims that were present on the international filing date or rectified pursuant to PCT Rule 91 must have the status identifier (original); claims that were amended or added under PCT Article 19 or 34 with effect in the U.S. national stage application must have the status identifier (previously presented); and claims that were canceled pursuant to PCT Article 19 or 34 with effect in the U.S. national stage application must have the status identifier (canceled). If the amendment submitted in the U.S. national stage application is making a change in a claim, the status identifier (currently amended) must be used for that claim.
- For any amendment being filed in response to a restriction or election of species requirement and any subsequent amendment, any claims which are non-elected must have the status identifier (withdrawn). Any non-elected claims which are being amended must have either the status identifier (withdrawn) or (withdrawn – currently amended) and the text of the non-elected claims must be presented with markings to indicate the changes. Any non-elected claims that are being canceled must have the status identifier (canceled).
- Any claims added by amendment must be indicated as “new” and the text of the claim must not be underlined.
A canceled claim can be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number. The original numbering of the claims must be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. For example, when applicant cancels all of the claims in the original specification and adds a new set of claims, the claim listing must include all of the canceled claims with the status identifier (canceled) (the canceled claims may be aggregated into one statement). The new claims must be numbered consecutively beginning with the number next following the highest numbered claim previously presented (whether entered or not) in compliance with 37 CFR 1.126.
| Example of listing of claims: |
| Claims 1-5 (canceled) |
| Claim 6 (withdrawn): A process for molding a bucket. |
| Claim 7 (previously presented): A bucket with a handle. |
| Claim 8 (currently amended): A bucket with a green blue handle. |
| Claim 9 (withdrawn): The process for molding a bucket of claim 6 using molten plastic material. |
| Claim 10 (original): The bucket of claim 8 with a wooden handle. |
| Claim 11 (canceled) |
| Claim 12 (previously presented): A bucket having a circumferential upper lip. |
| Claim 13 (not entered) |
| Claim 14 (new): A bucket with plastic sides and bottom. |
- (E) Acceptable Alternative Status Identifiers: To prevent delays in prosecution, the Office may waive certain provisions of 37 CFR 1.121 and accept alternative status identifiers not specifically set forth in 37 CFR 1.121(c). Accordingly claim listings that include alternative status identifiers as set forth below will be accepted if the amendment otherwise complies with 37 CFR 1.121. See Acceptance of Certain Non-Compliant Amendments Under 37 CFR 1.121(c), 1296 OG 27 (July 5, 2005).
Canceled without prejudice; Cancel; Cancelled; Canceled herein; Previously cancelled; Canceled claim; Deleted; and Previously canceled
Previously amended; Previously added; Previously submitted; and Previously presented claim
Newly added; and New claim
The Office may also accept additional variations of the status identifiers provided in 37 CFR 1.121(c) not listed above if an Office personnel determines that the status of the claims is accurate and clear. When accepting alternative status identifiers, the examiner is not required to correct the status identifiers using an examiner’s amendment. Applicant will not be notified and will not be required to submit a corrective compliant amendment. The examiner does not need to make a statement on the record that the alternative status identifiers have been accepted.
D. Amendments to the Drawing
Any changes to an application drawing must comply with 37 CFR 1.84 and must be submitted on a replacement sheet of drawings, even when applicant is only submitting better quality drawings without any substantive changes. Any additional new drawings must be submitted on a new sheet of drawings. The replacement or new sheet of drawings must be an attachment to the amendment document and must be identified in the top margin as “Replacement Sheet.” The new drawing sheet must be identified in the top margin as “New Sheet.” The replacement drawing sheet must include all of the figures appearing on the immediate prior version of the sheet, even if only one figure is amended. The figure or figure number of the amended drawing(s) must not be labeled as “amended.” A marked-up copy of any amended drawing figure, including annotations indicating the changes made, may be included. The marked-up copy must be clearly labeled as “Annotated Sheet” and must be presented in the amendment or remarks section that explains the change to the drawings. A marked-up copy of any amended drawing figure, including annotations indicating the changes made, must be provided when required by the examiner.
An explanation of the changes made must be presented in the “Amendments to the Drawings” or the remarks section of the amendment document. If the changes to the drawing figure(s) are not approved by the examiner, applicant will be notified in the next Office action. Applicant must amend the brief and detailed description of drawings sections of the specification if they are not consistent with the changes to the drawings. For example, when applicant files a new drawing sheet, an amendment to the specification is required to add the brief and detailed description of the new drawings.
The proposed drawing correction practice has been eliminated. For any changes to the drawings, applicant is required to submit a replacement sheet of drawings with the changes made. No proposed changes in red ink should be submitted. Any proposed drawing corrections will be treated as non-compliant under 37 CFR 1.121(d). In response to any drawing objections, applicant should submit drawing changes by filing a replacement sheet of drawings or a new sheet of drawings with the corrections made. A letter to the official draftsman is no longer required.
Drawing submissions without any amendments to the specification and claims after allowance should be forwarded to the Office of Data Management.
E. Examiner’s Amendments
37 CFR 1.121(g) permits the Office to make amendments to the specification, including the claims, by examiner’s amendments without paragraph/section/claim replacement in the interest of expediting prosecution and reducing cycle time. Additions or deletions of subject matter in the specification, including the claims, may be made by instructions to make the change at a precise location in the specification or the claims. Examiner’s amendments do not need to comply with paragraphs (b)(1), (b)(2), or (c) of 37 CFR 1.121. See MPEP § 1302.04.
If a non-compliant amendment would otherwise place the application in condition for allowance, the examiner may enter the non-compliant amendment and provide an examiner’s amendment to correct the non-compliance (e.g., an incorrect status identifier). Similarly, if an amendment under 37 CFR 1.312 after allowance 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 subsection “F. Non-Compliant Amendments” for more information on non-compliant amendments. For example, if some of the status identifiers are incorrect in an amendment, the examiner may enter the non-compliant amendment and:
- (A) provide a claim listing presenting all of the claims with the proper status identifiers in an examiner’s amendment;
- (B) print a copy of the claim listing of the non-compliant amendment, cross out the improper status identifiers, write in the correct status identifiers and include it as an attachment to an examiner’s amendment; or
- (C) correct the improper status identifiers by instructions in an examiner’s amendment.
The examiner’s amendment should include the reason why the amendment is non-compliant and indicate how it was corrected. Authorization from the applicant or attorney/agent of record and appropriate extensions of time are not required if the changes are not substantive (e.g., corrections of format errors or typographical errors). Such an examiner’s amendment may be made after the time period for reply, or after the shortened statutory period without any extensions of time, as long as the non-compliant amendment was timely filed.
Authorization and appropriate extensions of time are required if the changes made in the examiner’s amendment are substantive (e.g., the examiner’s amendment would include a cancellation of a claim or change the scope of the claims). The authorization must be given within the time period for reply set forth in the last Office action. See MPEP § 1302.04.
F. Non-Compliant Amendments
If an amendment submitted on or after July 30, 2003, fails to comply with 37 CFR 1.121 (as revised on June 30, 2003), the Office will notify applicant by a Notice of Non-Compliant Amendment, Form PTOL-324, that the amendment fails to comply with the requirements of 37 CFR 1.121 and identify: (1) which section of the amendment is non-compliant (e.g., the amendments to the claims section); (2) items that are required for compliance (e.g., a claim listing in compliance with 37 CFR 1.121(c)); and (3) the reasons why the section of the amendment fails to comply with 37 CFR 1.121 (e.g., the status identifiers are missing). The type of amendment will determine whether applicant will be given a period of time in which to comply with the rule and whether applicant’s reply to a notice should consist of the corrected section of the amendment (e.g., a complete claim listing in compliance of 37 CFR 1.121(c)) instead of the entire corrected amendment. If the noncompliant amendment is:
- (A) A preliminary amendmentfiled after the filing date of the application, the technical support staff (TSS) will send the notice which sets a time period of two months for reply. No extensions of time are permitted. Failure to submit a timely reply will result in the application being examined without entry of the preliminary amendment. Applicant’s reply is required to include the corrected section of the amendment.
- (B) A preliminary amendment that is present on the filing date of the application, the Office of Patent Application Processing (OPAP) will send applicant a notice (e.g., Notice to File Corrected Application Papers) which sets a time period of 2 months for reply. Extensions of time are available under 37 CFR 1.136(a). Failure to reply to the (OPAP) notice will result in abandonment of the application. Applicant’s reply is required to include either a substitute specification under 37 CFR 1.125 if the amendment is to the specification, or a complete claim listing under 37 CFR 1.121(c) if the amendment is to the claims.
- (C) A non-final amendment including an amendment filed as a submission for an RCE, the TSS will send the notice which sets a time period of two months for reply. Extensions of time are available under 37 CFR 1.136(a). Failure to reply to this notice will result in abandonment of the application. Applicant’s reply is required to include the corrected section of the amendment.
- (D) An after-final amendment, the amendment will be forwarded in unentered status to the examiner. In addition to providing reasons for non-entry when the amendment is not in compliance with 37 CFR 1.116 (e.g., the proposed amendment raises new issues that would require further consideration and/or search), the examiner should also indicate in the advisory action any non-compliance in the after-final amendment. The examiner should attach a Notice of Non-Compliant Amendment to the advisory action. The notice provides no new time period for correcting the non-compliance. The time period for reply continues to run from the mailing of the final Office action. Applicant still needs to respond to the final Office action to avoid abandonment of the application. If the applicant wishes to file another after-final amendment, the entire corrected amendment (not only the corrected section of the amendment) must be submitted within the time period set forth in the final Office action.
- (E) A supplemental amendment filed when there is no suspension of actionunder 37 CFR 1.103(a) or (c), the amendment will be forwarded to the examiner. Such a supplemental amendment is not entered as a matter of right. See 37 CFR 1.111(a)(2)(ii). The examiner will notify the applicant if the amendment is not approved for entry. The examiner may use form paragraph 7.147. See MPEP § 714.03(a).
- (F) A supplemental amendment filed within a suspension periodunder 37 CFR 1.103(a) or (c) (e.g., applicant requested a suspension of action at the time of filing an RCE), the TSS will send the notice which sets a time period of two months for reply. No extensions of time are permitted. Failure to submit a timely reply will result in the application being examined without entry of the supplemental amendment. Applicant’s reply is required to include the corrected section of the amendment.
- (G) An amendment filed in response to aQuayle action, the TSS will send the notice which sets a time period of two months for reply. Extensions of time are available under 37 CFR 1.136(a). Failure to reply to this notice will result in abandonment of the application. Applicant’s reply is required to include the corrected section of the amendment.
- (H) An after-allowance amendment under 37 CFR 1.312, the amendment will be forwarded to the examiner. Amendments under 37 CFR 1.312 are not entered as matter of right. The examiner will notify the applicant if the amendment is not approved for entry. The examiner may attach a Notice of Non-Compliant Amendment (37 CFR 1.121) to the form PTO-271, Response to Rule 312 Communication (see MPEP § 714.16(d)). The notice provides no new time period. If applicant wishes to file another after-allowance amendment under 37 CFR 1.312, the entire corrected amendment must be submitted before the payment of the issue fee.
Any amendments (including after-final amendments) that add new claims in excess of the number of claims previously paid for in an application must be accompanied by the payment of the required excess claims fees. Failure to pay the excess claims fees will result in non-entry of the amendment. See MPEP § 607.
G. Entry of Amendments, Directions for, Defective
The directions for the entry of an amendment may be defective. Examples include inaccuracy in the paragraph number and/or page and line designated, or a lack of precision where the paragraph or section to which insertion of the amendment is directed occurs. If the correct place of entry is clear from the context, the amendatory paper will be properly amended in the Technology Center and notation thereof, initialed in ink by the examiner, who will assume full responsibility for the change, will be made on the margin of the amendatory paper. In the next Office action, the applicant should be informed of this alteration in the amendment and the entry of the amendment as thus amended. The applicant will also be informed of the nonentry of an amendment where defective directions and context leave doubt as to the intent of applicant.
H. Amendment of Amendments
When a replacement paragraph or section of the specification is to be amended, it should be wholly rewritten and the original insertion canceled. A marked-up version of the replacement paragraph or section of the specification should be presented using underlining to indicate added subject matter and strike-through to indicate deleted subject matter. Matter canceled by amendment can be reinstated only by a subsequent amendment presenting the canceled matter as a new insertion. A claim cancelled by amendment (deleted in its entirety) may be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number.
Amendments in reissue applications must be made in accordance with 37 CFR 1.173. Amendments in ex parte and inter partes reexamination proceedings must be made in accordance with 37 CFR 1.530. In patent-owner-filed ex parte reexaminations, the patent owner may amend at the time of the request for ex parte reexamination in accordance with 37 CFR 1.510(e). In any ex parte reexamination proceeding, no amendment or response can be filed between the date of the request for ex parte reexamination and the order for ex parte reexamination. See 37 CFR 1.530(a). Following the order for ex parte reexamination under 37 CFR 1.525 and prior to the examination phase of ex parte reexamination proceeding, an amendment may be filed only with the patent owner’s statement under 37 CFR 1.530(b). During the examination phase of the ex parte reexamination proceeding, an amendment may be filed:
- (A) after the first examination as specified in 37 CFR 1.112;
- (B) after final rejection or an appeal has been taken, if the amendment meets the criteria of 37 CFR 1.116; and
- (C) when and as specifically required by the examiner.
For amendments in ex parte reexamination proceedings see MPEP § 2250 and § 2266. For amendments by patent owner in an inter partes reexamination proceeding, see MPEP § 2666.01 and § 2672. For amendments in reissue applications, see MPEP § 1453.
714.01 Signatures to Amendments [R-08.2012]
An amendment must be signed by a person having authority to prosecute the application. An unsigned or improperly signed amendment will not be entered. See MPEP § 714.01(a).
To facilitate any telephone call that may become necessary, it is recommended that the complete telephone number with area code and extension be given, preferably near the signature.
714.01(a) Unsigned or Improperly Signed Amendment [R-10.2019]
37 CFR 1.33 Correspondence respecting patent applications, reexamination proceedings, and other proceedings.
- (b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(iii) or (c)(2)(iv), filed in the application must be signed by:
- (1) A patent practitioner of record;
- (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34; or
- (3) The applicant (§ 1.42). Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner.
37 CFR 1.33 (pre-AIA) Correspondence respecting patent applications, reexamination proceedings, and other proceedings (applicable to applications filed before September 16, 2012).
- (b) Amendments and other papers. Amendments and other papers, except for written assertions pursuant to § 1.27(c)(2)(ii) of this part, filed in the application must be signed by:
- (1) A patent practitioner of record appointed in compliance with § 1.32(b);
- (2) A patent practitioner not of record who acts in a representative capacity under the provisions of § 1.34;
- (3) An assignee as provided for under § 3.71(b) of this chapter; or
- (4) All of the applicants (§ 1.41(b)) for patent, unless there is an assignee of the entire interest and such assignee has taken action in the application in accordance with § 3.71 of this chapter.
An unsigned amendment or one not properly signed by a person having authority to prosecute the application is not entered. This applies, for instance, where the amendment is signed by only one of two joint inventors and the one signing has not been given a power of attorney by the other inventor.
When an unsigned or improperly signed amendment is received the amendment will be listed in the contents of the application file, but not entered. The examiner will notify applicant of the status of the application, advising him or her to furnish a duplicate amendment properly signed or to ratify the amendment already filed. In an application not under final rejection, applicant should be given a two month time period in which to ratify the previously filed amendment (37 CFR 1.135(c)).
Applicants may be advised of unsigned amendments by use of form paragraph 7.84.01.
¶ 7.84.01 Paper Is Unsigned
The proposed reply filed on [1] has not been entered because it is unsigned. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).
Sometimes problems arising from unsigned or improperly signed amendments may be disposed of by calling in the local representative of the attorney or agent of record, since he or she may have the authority to sign the amendment.
An amendment signed by a practitioner who has been suspended or excluded from practice under the provisions of 37 CFR Part 11 is not entered. The file and unentered amendment are submitted to the Office of Enrollment and Discipline for appropriate action.
714.01(b) [Reserved]
714.01(c) Signed by Attorney or Agent Not of Record [R-11.2013]
A registered attorney or agent acting in a representative capacity under 37 CFR 1.34, may sign amendments even though he or she does not have a power of attorney in the application. See MPEP § 402.03 .
714.01(d) Amendment Signed by Applicant but Not by Attorney or Agent of Record [R-07.2022]
If an amendment signed by the applicant, other than a juristic entity, is received in an application in which there is a duly appointed attorney or agent, the amendment should be entered and acted upon. Attention should be called to 37 CFR 1.33 in patent applications. Two copies of the action should be prepared, one being sent to the attorney and the other directly to the applicant. The notation: "Copy to applicant" should appear on the original and on both copies. An amendment submitted on behalf of a juristic entity must be signed by a patent practitioner. See 37 CFR 1.33(b)(3) and MPEP § 714.01(a).
714.01(e) Amendments Before First Office Action [R-10.2019]
37 CFR 1.115 Preliminary amendments.
- (a) A preliminary amendment is an amendment that is received in the Office (§ 1.6) on or before the mail date of the first Office action under § 1.104. The patent application publication may include preliminary amendments (§ 1.215(a)).
- (1) A preliminary amendment that is present on the filing date of an application is part of the original disclosure of the application.
- (2) A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application.
A preliminary amendment is an amendment that is received in the Office on or before the mail date of the first Office action under 37 CFR 1.104. See 37 CFR 1.115(a). For applications filed on or after September 21, 2004 (the effective date of 37 CFR 1.115(a)(1)), a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application. For applications filed before September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first executed oath or declaration under 37 CFR 1.63 filed in the application. See MPEP § 602. Any amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 608.04et seq. regarding new matter. When the Office publishes the application under 35 U.S.C. 122(b), the Office may include preliminary amendments in the patent application publication. See MPEP § 1121.
If a preliminary amendment is filed in a format that cannot be included in the publication, the Office of Patent Application Processing (OPAP) will issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes. See 37 CFR 1.115(a)(1) and 1.215. The only format for an amendment to the specification (other than the claims) that is usable for publication is a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125. As a result, the Office has revised its procedures to mail a notice (e.g., "Notice to File Corrected Application Papers" ) requiring a substitute specification in compliance with 37 CFR 1.121(b)(3) and 1.125, if an applicant included a preliminary amendment to the specification (other than the claims) on filing.
For applications filed prior to September 16, 2012, where applicant intends to claim the benefit of a prior application under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78, the specific reference to the benefit application may be submitted in an application data sheet (ADS) under 37 CFR 1.76 or in a preliminary amendment to the first sentence(s) of the specification. See 37 CFR 1.78(h). If the specific reference is submitted in a preliminary amendment, a substitute specification will not be required if the preliminary amendment only adds or amends a benefit claim to a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 119(e). If an applicant receives a notice from OPAP (e.g., "Notice to File Corrected Application Papers" ) requiring a substitute specification because a preliminary amendment was filed that only adds or amends a benefit claim, applicant may reply to the notice explaining that a substitute specification should not have been required because the amendment was only to add or amend a benefit claim. In order to avoid abandonment, applicant should file a reply with the required substitute specification or an explanation that the substitute specification is not necessary because the preliminary amendment only adds or amends a benefit claim. If the preliminary amendment contains other amendments to the specification (other than the claims), a substitute specification will be required, and a reply to a notice requiring a substitute specification without the substitute specification will be treated as an incomplete reply with no new time period for reply being provided. Note that the above does not apply to applications filed on or after September 16, 2012, because the reference to a prior application as required by 35 U.S.C. 120 or 119(e) and 37 CFR 1.78, must be submitted in an application data sheet (ADS) under 37 CFR 1.76.
Requiring a substitute specification (with all preliminary amendments made therein) is also important to ensure that applicants do not circumvent the limitations upon redacted publications set forth in 35 U.S.C. 122(b)(2)(B)(v). As preliminary amendments to the specification, excluding the claims, cannot be easily published, the Office must require a substitute specification whenever an application is filed with a preliminary amendment to the specification, excluding the claims, in order to ensure that the application, including any new matter added by way of a preliminary amendment included on the filing date of the application, is published.
Because a preliminary amendment to the claims or abstract in compliance with 37 CFR 1.121(c) or 1.121(b)(2) will include a complete claim listing or replacement abstract, the Office can publish the amended claims or the replacement abstract as submitted in the preliminary amendment without a substitute specification being filed. Applicants should note, however, that there is no need to file a preliminary amendment to the claims on filing. By making the new claim set part of the originally filed specification, applicant may avoid having to pay an application size fee, as both the specification (including the claims) and any preliminary amendment are used in counting the number of pages for purposes of 37 CFR 1.16(s). The claim set submitted should be the set of claims intended to be examined, and when the claims submitted on filing are part of the specification (on sequentially numbered pages of the specification (see 37 CFR 1.52(b)(5))), no status identifiers and no markings showing the changes need to be used.
A preliminary amendment filed with a submission to enter the national stage of an international application under 35 U.S.C. 371 is not part of the original disclosure under 37 CFR 1.115(a) because it was not present on the international filing date accorded to the application under PCT Article 11. See MPEP § 1893.03(b). Accordingly, a “Notice to File Corrected Application Papers” requiring a substitute specification will not ordinarily be mailed in an international application even if the national stage submission includes a preliminary amendment.
Since a request for continued examination (RCE) is not a new application, an amendment filed before the first Office action after the filing of the RCE is not a preliminary amendment. See MPEP § 706.07(h). Any amendment canceling claims in order to reduce the excess claims fees should be filed before the expiration of the time period set forth in a notice that requires excess claims fees. Such an amendment would be effective to reduce the number of claims to be considered in calculating the excess claims fees. See MPEP § 607.
I. PRELIMINARY AMENDMENTS MUST COMPLY WITH 37 CFR 1.121
Any preliminary amendment, regardless of when it is filed, must comply with 37 CFR 1.121, e.g., the preliminary amendment must include a complete listing of all of the claims and each section of the amendment must begin on a separate sheet of paper. See MPEP § 714. Preliminary amendments made in a transmittal letter of the application will not comply with 37 CFR 1.121. For example, applicants should include the reference to a prior filed application in the first sentence(s) of the specification following the title (for applications filed prior to September 16, 2012) or in an application data sheet in compliance with 37 CFR 1.78 instead of submitting the reference in a preliminary amendment in a transmittal letter. See MPEP § 211et seq. If a preliminary amendment filed after the filing date of the application fails to comply with 37 CFR 1.121, applicant will be notified by way of a Notice of Non-Compliant Amendment and given a non-extendable period of two months to bring the amendment into compliance with 37 CFR 1.121. If the applicant takes no corrective action, examination of the application will commence without consideration of the proposed changes in the non-compliant preliminary amendment. If a preliminary amendment that is present on the filing date of the application fails to comply with 37 CFR 1.121, the Office of Patent Application Processing (OPAP) will notify applicant of the non-compliance and give a two-month time period to correct the non-compliance to avoid the abandonment of the application. See MPEP § 714.
Filing a preliminary amendment is not recommended because the changes made by the preliminary amendment may not be reflected in the patent application publication even if the preliminary amendment is referred to in an oath or declaration. If there is insufficient time to have the preliminary amendment be entered into the Office file wrapper of the application before technical preparations for publication of the application have begun, the preliminary amendment will not be reflected in the patent application publication. Technical preparations for publication of an application generally begin four months prior to the projected date of publication. For more information on publication of applications, see MPEP § 1121. Applicants may avoid preliminary amendments by incorporating any desired amendments into the text of the specification including a new set of claims, even where the application is a continuation or divisional application of a previously filed patent application. In such a continuation or divisional application, a clean copy of a specification (i.e., reflecting amendments made in the parent application) may be submitted together with a copy of the oath or declaration from the previously filed application. See 37 CFR 1.63(d)(1) and MPEP § 201.06(c).
II. PRELIMINARY AMENDMENTS PRESENT ON THE FILING DATE OF THE APPLICATION
Applicants are strongly discouraged from submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application.
For applications filed on or after September 21, 2004 (the effective date of 37 CFR 1.115(a)(1)), a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application.
For applications filed before September 21, 2004, a preliminary amendment that was present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first oath or declaration in compliance with 37 CFR 1.63 filed in the application. See MPEP §§ 602 and 608.04(b). If the preliminary amendment was not referred to in the oath or declaration, applicant should submit a supplemental oath or declaration under 37 CFR 1.67 referring to both the application and the preliminary amendment filed with the original application. A surcharge under 37 CFR 1.16(f) will also be required unless it has been previously paid.
III. PRELIMINARY AMENDMENTS MUST BE TIMELY
Any preliminary amendments should either accompany the application or be filed after the application has received its application number and filing date so that the preliminary amendments would include the appropriate identifications (e.g., the application number and filing date). See MPEP § 502. Any amendments filed after the mail date of the first Office action is not a preliminary amendment. If the date of receipt (37 CFR 1.6) of the amendment is later than the mail date of the first Office action and is not responsive to the first Office action, the Office will not mail a new Office action, but simply advise the applicant that the amendment is nonresponsive to the first Office action and that a responsive reply must be timely filed to avoid abandonment. See MPEP § 714.03.
IV. PRELIMINARY AMENDMENTS MAY BE DISAPPROVED
37 CFR 1.115 Preliminary amendments.
- (b) A preliminary amendment in compliance with § 1.121 will be entered unless disapproved by the Director.
- (1) A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved.
- (2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:
- (i) The state of preparation of a first Office action as of the date of receipt (§ 1.6) of the preliminary amendment by the Office; and
- (ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
- (i) Three months from the filing date of an application under § 1.53(b);
- (ii) The filing date of a continued prosecution application under § 1.53(d); or
- (iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.
A preliminary amendment filed in compliance with 37 CFR 1.121 will be entered unless it is disapproved by the Director. A preliminary amendment will be disapproved by the Director if the preliminary amendment cancels all the claims in the application without presenting any new or substitute claims. A preliminary amendment may also be disapproved by the Director if the preliminary amendment unduly interferes with the preparation of an Office action. 37 CFR 1.115(b).
A. Cancellations of All the Claims
If applicant files a preliminary amendment (whether submitted prior to, on or after the filing date of the application) seeking cancellation of all claims in the application without presenting any new claims, the Office will not enter such an amendment. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1369 (Fed. Cir. 2001), 37 CFR 1.115(b)(1), and MPEP § 601.01(e). Thus, the application will not be denied a filing date merely because such a preliminary amendment was submitted on filing. For fee calculation purposes, the Office will treat such an application as containing only a single claim. In most cases, an amendment that cancels all the claims in the application without presenting any new claims would not meet the requirements of 37 CFR 1.121(c) that requires a complete claim listing. See MPEP § 714. The Office will send a notice of non-compliant amendment (37 CFR 1.121) to applicant and require an amendment in compliance with 37 CFR 1.121.
B. Unduly Interferes With the Preparation of an Office Action
Once the examiner has started to prepare a first Office action, entry of a preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of the first Office action. Applicants are encouraged to file all preliminary amendments as soon as possible. Entry of a preliminary amendment will not be disapproved under 37 CFR 1.115(b)(2) if it is filed no later than:
- (A) 3 months from the filing date of the application under 37 CFR 1.53(b);
- (B) 3 months from the date the national stage is entered as set forth in 37 CFR 1.491 in an international application;
- (C) the filing date of a CPA under 37 CFR 1.53(d) in a design application; or
- (D) the last day of any suspension period requested by applicant under 37 CFR 1.103 (see MPEP § 709).
Even if the examiner has spent a significant amount of time preparing the first Office action, entry of a preliminary amendment filed within these time periods should not be disapproved under 37 CFR 1.115(b)(2). These time periods are not extendable. See 37 CFR 1.115(b)(4).
If a preliminary amendment is filed after these time periods and the conditions set forth below are met, entry of the preliminary amendment may be denied subject to the approval of the supervisory patent examiner (MPEP § 1002.02(d)).
1. When Disapproval is Appropriate
The factors that will be considered for denying entry of preliminary amendments under 37 CFR 1.115 include:
- (A) The state of preparation of a first Office action as of the date of receipt (37 CFR 1.6) of the preliminary amendment; and
- (B) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
The entry of a preliminary amendment that would unduly interfere with the preparation of an Office action may be denied if the following two conditions are met:
- (A) the examiner has devoted a significant amount of time on the preparation of an Office action before the amendment is received in the Office (i.e., the 37 CFR 1.6 receipt date of the amendment); and
- (B) the entry of the amendment would require significant additional time in the preparation of the Office action.
For example, if the examiner has spent a significant amount of time to conduct a prior art search or draft an Office action before a preliminary amendment is received by the Office, the first condition is satisfied. Entry of the amendment may be denied if it:
- (A) amends the claims;
- (B) adds numerous new claims;
- (C) amends the specification to change the scope of the claims;
- (D) amends the specification so that a new matter issue would be raised;
- (E) includes arguments;
- (F) includes an affidavit or declaration under 37 CFR 1.131 or 37 CFR 1.132; or
- (G) includes evidence traversing rejections from a prior Office action in the parent application,
and would require the examiner to spend significant additional time to conduct another prior art search or revise the Office action (i.e., the second condition is satisfied). This list is not an exhaustive list, and the entry of a preliminary amendment may be denied in other situations that satisfy the two conditions set forth above. Once these conditions are met, the examiner should obtain the approval of the SPE before the entry of the amendment may be denied.
2. When Disapproval is Inappropriate
Denying entry of a preliminary amendment under 37 CFR 1.115(b)(2) is inappropriate if either:
- (A) the examiner has NOT devoted a significant amount of time on the preparation of an Office action before the amendment is received in the Office (i.e., the 37 CFR 1.6 receipt date of the amendment); or
- (B) the entry of the amendment would NOT require significant additional time in the preparation of the Office action.
Thus, the amendment will be entered unless it is denied entry for other reasons such as those listed in MPEP § 714.19.
For example, if before the preliminary amendment is received in the Office, the examiner has not started working on the Office action or has started, but has merely inspected the file for formal requirements, then the examiner should enter and consider the preliminary amendment.
Furthermore, even if the examiner has devoted a significant amount of time to prepare an Office action prior to the date the preliminary amendment is received in the Office, it is not appropriate to disapprove the entry of such an amendment if it:
- (A) merely cancels some of the pending claims;
- (B) amends the claims to overcome rejections under 35 U.S.C. 112, second paragraph;
- (C) amends the claims to place the application in condition for allowance; or
- (D) only includes changes that were previously suggested by the examiner, and would not require the examiner to spend significant additional time to revise the Office action.
Form paragraph 7.46 should be used to notify applicant that the entry of a preliminary amendment is denied because the amendment unduly interferes with the preparation of an Office action.
¶ 7.46 Preliminary Amendment Unduly Interferes with the Preparation of an Office Action
The preliminary amendment filed on [1] was not entered because entry of the amendment would unduly interfere with the preparation of the Office action. See 37 CFR 1.115(b)(2). The examiner spent a significant amount of time on the preparation of an Office action before the preliminary amendment was received. On the date of receipt of the amendment, the examiner had completed [2].
Furthermore, entry of the preliminary amendment would require significant additional time on the preparation of the Office action. Specifically, entry of the preliminary amendment would require the examiner to [3].
A responsive reply (under 37 CFR 1.111 or 37 CFR 1.113 as appropriate) to this Office action must be timely filed to avoid abandonment.
If this is not a final Office action, applicant may wish to resubmit the amendment along with a responsive reply under 37 CFR 1.111 to ensure proper entry of the amendment.
Examiner Note:
- 1. In bracket 1, provide the date that the Office received the preliminary amendment (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8).
- 2. In bracket 2, provide an explanation on the state of preparation of the Office action as of the receipt date of the preliminary amendment. For example, where appropriate insert --the claim analysis and the search of prior art of all pending claims-- or --the drafting of the Office action and was waiting for the supervisory patent examiner’s approval--.
- 3. In bracket 3, provide a brief explanation of how entry of the preliminary amendment would require the examiner to spend significant additional time in the preparation of the Office action. For example, where appropriate insert --conduct prior art search in another classification area that was not previously searched and required-- or --revise the Office action extensively to address the new issues raised and the new claims added in the preliminary amendment--.
714.02 Must Be Fully Responsive [R-08.2012]
37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action.
- (a)
- (1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
- (2) Supplemental replies.
- (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
- (A) Cancellation of a claim(s);
- (B) Adoption of the examiner suggestion(s);
- (C) Placement of the application in condition for allowance;
- (D) Reply to an Office requirement made after the first reply was filed;
- (E) Correction of informalities (e.g., typographical errors); or
- (F) Simplification of issues for appeal.
In all cases where reply to a requirement is indicated as necessary for further consideration of the claims, or where allowable subject matter has been indicated in an application, a complete reply must either comply with the formal requirements or specifically traverse each one not complied with.
Drawing and specification corrections, presentation of a new oath and the like are generally considered as formal matters, although the filing of drawing corrections in reply to an objection to the drawings cannot normally be held in abeyance. However, the line between formal matter and those touching the merits is not sharp, and the determination of the merits of an application may require that such corrections, new oath, etc., be insisted upon prior to any indication of allowable subject matter.
The claims may be amended by canceling particular claims, by presenting new claims, or by rewriting particular claims as indicated in 37 CFR 1.121(c). The requirements of 37 CFR 1.111(b) must be complied with by pointing out the specific distinctions believed to render the claims patentable over the references in presenting arguments in support of new claims and amendments.
An amendment submitted after a second or subsequent non-final action on the merits which is otherwise responsive but which increases the number of claims drawn to the invention previously acted upon is not to be held not fully responsive for that reason alone. (See 37 CFR 1.112, MPEP § 706.)
The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims. Applicant should also specifically point out the support for any amendments made to the disclosure. See MPEP § 2163.06.
An amendment which does not comply with the provisions of 37 CFR 1.121(b), (c), (d), and (h) may be held not fully responsive. See MPEP § 714.
Replies to requirements to restrict are treated under MPEP § 818.
714.03 Amendments Not Fully Responsive, Action To Be Taken [R-10.2019]
37 CFR 1.135 Abandonment for failure to reply within time period.
- (c) When reply by the applicant is a bona fide attempt to advance the application to final action, and is substantially a complete reply to the non-final Office action, but consideration of some matter or compliance with some requirement has been inadvertently omitted, applicant may be given a new time period for reply under § 1.134to supply the omission.
An examiner may treat an amendment not fully responsive to a non-final Office action by:
- (A) accepting the amendment as an adequate reply to the non-final Office action to avoid abandonment under 35 U.S.C. 133 and 37 CFR 1.135;
- (B) notifying the applicant that the reply must be completed within the remaining period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a)) to avoid abandonment; or
- (C) setting a new time period for applicant to complete the reply pursuant to 37 CFR 1.135(c).
The treatment to be given to the amendment depends upon:
- (A) whether the amendment is bona fide;
- (B) whether there is sufficient time for applicant’s reply to be filed within the time period for reply to the non-final Office action; and
- (C) the nature of the deficiency.
Where an amendment substantially responds to the rejections, objections, or requirements in a non-final Office action (and is a bona fide attempt to advance the application to final action) but contains a minor deficiency (e.g., fails to treat every rejection, objection, or requirement), the examiner may simply act on the amendment and issue a new (non-final or final) Office action. The new Office action may simply reiterate the rejection, objection, or requirement not addressed by the amendment (or otherwise indicate that such rejection, objection, or requirement is no longer applicable). This course of action would not be appropriate in instances in which an amendment contains a serious deficiency (e.g., the amendment is unsigned or does not appear to have been filed in reply to the non-final Office action). Where the amendment is bona fide but contains a serious omission, the examiner should: A) if there is sufficient time remaining for applicant’s reply to be filed within the time period for reply to the non-final Office action (or within any extension pursuant to 37 CFR 1.136(a)), notify applicant that the omission must be supplied within the time period for reply; or B) if there is insufficient time remaining, issue an Office action setting a 2-month time period to complete the reply pursuant to 37 CFR 1.135(c). In either event, the examiner should not further examine the application on its merits unless and until the omission is timely supplied.
If a new time period for reply is set pursuant to 37 CFR 1.135(c), applicant must supply the omission within this new time period for reply (or any extensions under 37 CFR 1.136(a) thereof) in order to avoid abandonment of the application. The applicant, however, may file a continuing application during this period (in addition or as an alternative to supplying the omission), and may also file any further reply as permitted under 37 CFR 1.111.
Where there is sufficient time remaining in the period for reply (including extensions under 37 CFR 1.136(a)), the applicant may simply be notified that the omission must be supplied within the remaining time period for reply. This notification should be made, if possible, by telephone, and, when such notification is made by telephone, an interview summary record (see MPEP § 713.04) must be completed and entered into the file of the application to provide a record of such notification. When notification by telephone is not possible, the applicant must be notified in an Office communication that the omission must be supplied within the remaining time period for reply. For example, when an amendment is filed shortly after an Office action has been mailed, and it is apparent that the amendment was not filed in reply to such Office action, the examiner need only notify the applicant (preferably by telephone) that a reply responsive to the Office action must be supplied within the remaining time period for reply to such Office action.
The practice set forth in 37 CFR 1.135(c) does not apply where there has been a deliberate omission of some necessary part of a complete reply; rather, 37 CFR 1.135(c) is applicable only when the missing matter or lack of compliance is considered by the examiner as being “inadvertently omitted.” For example, if an election of species has been required and applicant does not make an election because he or she believes the requirement to be improper, the amendment on its face is not a “bona fide attempt to advance the application to final action” (37 CFR 1.135(c)), and the examiner is without authority to postpone decision as to abandonment. Similarly, an amendment that would cancel all of the claims in an application and does not present any new or substitute claims is not a bona fide attempt to advance the application to final action. The Office will not enter such an amendment. See Exxon Corp. v. Phillips Petroleum Co., 265 F.3d 1249, 60 USPQ2d 1368 (Fed. Cir. 2001). If there is time remaining to reply to the non-final Office action (or within any extension of time pursuant to 37 CFR 1.136(a)), applicant will be notified to complete the reply within the remaining time period to avoid abandonment. Likewise, once an inadvertent omission is brought to the attention of the applicant, the question of inadvertence no longer exists. Therefore, a second Office action giving another new (2-month) time period to supply the omission would not be appropriate under 37 CFR 1.135(c).
37 CFR 1.135(c) authorizes, but does not require, an examiner to give the applicant a new time period to supply an omission. Thus, where the examiner concludes that the applicant is attempting to abuse the practice under 37 CFR 1.135(c) to obtain additional time for filing a reply (or where there is sufficient time for applicant’s reply to be filed within the time period for reply to the non-final Office action), the examiner need only indicate by telephone or in an Office communication (as discussed above) that the reply must be completed within the period for reply to the non-final Office action or within any extension pursuant to 37 CFR 1.136(a) to avoid abandonment.
The practice under 37 CFR 1.135(c) of giving applicant a time period to supply an omission in a bona fide reply does not apply after a final Office action. Amendments after final are approved for entry only if they place the application in condition for allowance or in better form for appeal. Otherwise, they are not approved for entry. See MPEP § 714.12 and § 714.13. Thus, an amendment should be denied entry if some point necessary for a complete reply under 37 CFR 1.113 (after final) was omitted, even if the omission was through an apparent oversight or inadvertence. Where a submission after a final Office action (e.g., an amendment under 37 CFR 1.116) does not place the application in condition for allowance, the period for reply under 37 CFR 1.113 continues to run until a reply under 37 CFR 1.113 (i.e., a notice of appeal or an amendment that places the application in condition for allowance) is filed. The nature of the omission (e.g., whether the amendment raises new issues, or would place the application in condition for allowance but for it being unsigned or not in compliance with 37 CFR 1.121) is immaterial. The examiner cannot give the applicant a time period under 37 CFR 1.135(c) to supply the omission; however, applicant may obtain additional time under 37 CFR 1.136(a) to file another or supplemental amendment in order to supply the omission.
When a reply to a final Office action substantially places the application in condition for allowance, an examiner may request that the applicant (or representative) authorize an examiner’s amendment to correct the omission and place the application in condition for allowance, in which case the date of the reply is the date of such authorization (and not the date the incomplete reply was filed). An examiner also has the authority to enter the reply, withdraw the finality of the last Office action, and issue a new Office action, which may be a non-final Office action, a final Office action (if appropriate), or an action closing prosecution on the merits in an otherwise allowable application under Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11, 435 OG 213 (Comm’r Pat. 1935) (if appropriate). These courses of action, however, are solely within the discretion of the examiner. It is the applicant’s responsibility to take the necessary action in an application under a final Office action to provide a complete reply under 37 CFR 1.113.
Where there is an informality as to the fee in connection with an amendment to a non-final Office action presenting additional claims, the applicant is notified by the technical support staff. See MPEP §§ 607 and 714.10.
Form paragraph 7.95, and optionally form paragraph 7.95.01, should be used where a bona fide reply to a non-final Office action is not fully responsive.
¶ 7.95 Bona Fide, Non-Responsive Amendments
The reply filed on [1] is not fully responsive to the prior Office action because of the following omission(s) or matter(s): [2]. See 37 CFR 1.111. Since the above-mentioned reply appears to be bona fide, applicant is given a shortened statutory period of TWO (2) MONTHS from the mailing date of this notice within which to supply the omission or correction in order to avoid abandonment. EXTENSIONS OF THIS TIME PERIOD MAY BE GRANTED UNDER 37 CFR 1.136(a) but in no case can any extension carry the date for reply to this letter beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).
Examiner Note:
This practice does not apply where there has been a deliberate omission of some necessary part of a complete reply, or where the application is subject to a final Office action. Under such cases, the examiner has no authority to grant an extension if the period for reply has expired. See form paragraph 7.91.
¶ 7.95.01 Lack of Arguments in Response
Applicant should submit an argument under the heading “Remarks” pointing out disagreements with the examiner’s contentions. Applicant must also discuss the references applied against the claims, explaining how the claims avoid the references or distinguish from them.
Examiner Note:
- 1. This form paragraph must be preceded by form paragraph 7.95.
- 2. This form paragraph is intended primarily for use in pro se applications.
714.03(a) Supplemental Amendment [R-10.2019]
37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action.
- (a)
- (1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
- (2) Supplemental replies.
- (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
- (A) Cancellation of a claim(s);
- (B) Adoption of the examiner suggestion(s);
- (C) Placement of the application in condition for allowance;
- (D) Reply to an Office requirement made after the first reply was filed;
- (E) Correction of informalities (e.g., typographical errors); or
- (F) Simplification of issues for appeal.
Applicants are encouraged to include a complete fully responsive reply in compliance with 37 CFR 1.111(b) to an outstanding Office action in the first reply to prevent the need for supplemental replies. Supplemental replies will not be entered as a matter of right, except when a supplemental reply is filed within a suspended period under 37 CFR 1.103(a) or (c) (e.g., a suspension of action requested by the applicant when filing an RCE). See MPEP § 709 regarding suspension of action. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
- (A) cancellation of a claim;
- (B) adoption of the examiner’s suggestions;
- (C) placement of the application in condition of allowance;
- (D) reply to an Office requirement made after the first reply was filed;
- (E) correction of informalities (e.g., typographical errors); or
- (F) simplification of issues for appeal.
When a supplemental reply is filed in sufficient time to be entered into the application before the examiner considers the prior reply, the examiner may approve the entry of the supplemental reply if, after a cursory review, the examiner determines that the supplemental reply is limited to one of the situations set forth above. This list is not exhaustive. The examiner has the discretion to approve the entry of a supplemental reply that is not listed above. If the supplemental reply is approved for entry, the examiner must annotate the reply “OK TO ENTER,” with initials, and enter the annotated document into the electronic file wrapper. The examiner should clearly indicate in the subsequent Office action that the Office action is responsive to the applicant’s first reply and the applicant’s supplemental reply. If a supplemental reply is a non-compliant amendment under 37 CFR 1.121 (see MPEP § 714), the supplemental reply will not be entered. If a supplemental reply is not approved for entry, the examiner must annotate the reply “DO NOT ENTER,” with initials, and enter the annotated document into the electronic file wrapper. The examiner should notify the applicant in the subsequent Office action that the supplemental reply was not entered. If applicant wishes to have a not-entered supplemental reply considered, applicant should include the changes in a reply filed in response to the next Office action. Applicant cannot simply request for its entry in the subsequent reply. The submission of a supplemental reply will cause a reduction of any accumulated patent term adjustment under 37 CFR 1.704(c)(8).
Examiners may use form paragraph 7.147 to notify applicants that a supplemental reply is not approved for entry and to explain the reason(s) for denying entry.
¶ 7.147 Supplemental Reply Not Approved for Entry
The supplemental reply filed on [1] was not entered because supplemental replies are not entered as a matter of right except as provided in 37 CFR 1.111(a)(2)(ii). [2].
Examiner Note:
- 1. Use this form paragraph to notify applicant that the supplemental reply filed on or after October 21, 2004 is not approved for entry.
- 2. Do not use this form paragraph if the supplemental reply has been entered. Use the Office Action Summary (PTOL-326) or the Notice of Allowability (PTOL-37), whichever is appropriate, to indicate that the Office action is responsive to the reply filed in compliance with 37 CFR 1.111(b) and the supplemental reply.
- 3. Do not use this form paragraph if the supplemental reply was filed within the period during which action is suspended by the Office under 37 CFR 1.103(a) or (c). Such supplemental reply must be entered. If the supplemental reply filed during the suspended period is not in compliance with 37 CFR 1.121, a notice of non-compliant amendment (PTOL-324) should be mailed to the applicant.
- 4. In bracket 1, provide the date that the Office received the supplemental reply (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8).
- 5. In bracket 2, insert a reason for non-entry as noted in 37 CFR 1.111(a)(2)(i). For example, "The supplemental reply is clearly not limited to placement of the application in condition for allowance."
If a supplemental reply is received in the Office after the mail date of an Office action, and it is not responsive to that Office action, the Office will not mail a new Office action responsive to that supplemental reply. As a courtesy, applicant may be notified that the supplemental reply is nonresponsive to the mailed Office action and that a responsive reply (under 37 CFR 1.111 or 1.113 as the situation may be) to the mailed Office action must be timely filed to avoid abandonment. Also see MPEP § 714.03 for replies not fully responsive and MPEP § 714.05 when the Office action crosses in the mail with a supplemental reply.
714.04 Claims Presented in Amendment With No Attempt To Point Out Patentable Novelty [R-08.2012]
In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the claims should not be allowed. See 37 CFR 1.111 and MPEP § 714.02.
An amendment failing to point out the patentable novelty which the applicant believes the claims present in view of the state of the art disclosed by the references cited or the objections made may be held to be not fully responsive and a time period set to furnish a proper reply if the statutory period has expired or almost expired (MPEP § 714.03). However, if the claims as amended are clearly open to rejection on grounds of record, a final rejection should generally be made.
714.05 Examiner Should Immediately Review [R-07.2022]
Actions by applicant, especially those filed near the end of the period for reply, should be reviewed as soon as possible upon becoming available to the examiner to determine whether they are completely responsive to the preceding Office action so as to prevent abandonment of the application. If found inadequate, and sufficient time remains, applicant should be notified of the deficiencies and warned to complete the reply within the period. See MPEP § 714.03.
All amended applications forwarded to the examiner should be reviewed at once to determine the following:
- (A) If the amendment is properly signed (MPEP § 714.01(a)).
- (B) If the amendment has been filed within the statutory period, set shortened statutory period, or time limit (MPEP § 710 - § 710.05).
- (C) If the amendment is fully responsive (MPEP § 714.03 and § 714.04) and complies with 37 CFR 1.121 (MPEP § 714).
- (D) If the changes made by the amendment warrant transfer (MPEP § 909.01(c)).
- (E) If the application is special (MPEP § 708.01).
- (F) If claims suggested to applicant for interference purposes have been copied. (MPEP Chapter 2300).
- (G) If there is a traversal of a requirement for restriction MPEP § 818.01(a)).
- (H) If applicant has cited references (MPEP § 707.05(b) and § 1302.12).
- (I) If a terminal disclaimer has been filed (MPEP § 804.02, § 804.03, and § 1490).
- (J) If any matter involving security has been added (MPEP § 115).
A supplemental action may be necessary when an amendment is filed on or before the mailing date of the regular action but reaches the Technology Center later. The supplemental action should be promptly prepared. It need not reiterate all portions of the previous action that are still applicable but it should specify which portions are to be disregarded, pointing out that the period for reply runs from the mailing of the supplemental action. The action should be headed “Responsive to amendment of (date) and supplemental to the action mailed (date).”
714.06 [Reserved]
714.07 Amendments Not in Permanent Ink [R-11.2013]
37 CFR 1.52(a) requires "permanent dark ink or its equivalent" to be used on papers which will become part of the record. So-called “Easily Erasable” paper having a special coating so that erasures can be made more easily may not provide a “permanent” copy. However, because application papers are now maintained in an Image File Wrapper, the type of paper is unlikely to be an issue so long as the Office is able to scan and reproduce the papers that were filed.
See MPEP § 608.01 for more discussion on acceptable copies.
714.08-714.09 [Reserved]
714.10 Claims Added in Excess of Claims Previously Paid For [R-08.2012]
Applicant is required to pay excess claims fees for each claim that is in excess of 3 in independent form or in excess of 20 (whether dependent or independent). Fees for a proper multiple dependent claim are calculated based on the number of claims to which the multiple dependent claim refers (37 CFR 1.75(c)) and a separate fee is also required in each application containing a proper multiple dependent claim. See MPEP § 607. When applicant adds a new excess claim that is in excess of the number of claims that were previously paid for after taking into account claims that have been canceled, applicant must pay the required excess claims fees before the examiner considers the new claim. For example, in an application that contains 6 independent claims and 30 total claims for which the excess claims fees were previously paid, when applicant cancels 10 claims, 2 of which are independent, and adds 11 claims, 3 of which are independent, excess claims fees for a 7 th independent claim and a 31 st claim are required.
714.11 Amendment Filed During Interference Proceedings [R-08.2012]
714.12 Amendments and Other Replies After Final Rejection or Action [R-07.2022]
37 CFR 1.116 Amendments and affidavits or other evidence after final action and prior to appeal.
- (a) An amendment after final action must comply with § 1.114 or this section.
- (b) After a final rejection or other final action (§ 1.113) in an application or in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913, but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title):
- (1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;
- (2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or
- (3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
- (1) Notwithstanding the provisions of paragraph (b) of this section, no amendment other than canceling claims, where such cancellation does not affect the scope of any other pending claim in the proceeding, can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
- (2) Notwithstanding the provisions of paragraph (b) of this section, an amendment made after a final rejection or other final action (§ 1.113) in an ex parte reexamination filed under § 1.510, or an action closing prosecution (§ 1.949) in an inter partes reexamination filed under § 1.913 may not cancel claims where such cancellation affects the scope of any other pending claim in the reexamination proceeding except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
Once a final rejection that is not premature has been entered in an application, applicant or patent owner no longer has any right to unrestricted further prosecution. This does not mean that no further amendment or argument will be considered. Any amendment that will place the application either in condition for allowance or in better form for appeal may be entered. Also, amendments filed after a final rejection, but before or on the date of filing an appeal, complying with objections or requirements as to form are to be permitted after final action in accordance with 37 CFR 1.116(b). Amendments filed after the date of filing an appeal may be entered if the amendment complies with 37 CFR 41.33. See MPEP § 1206. Ordinarily, amendments filed after the final action are not entered unless approved by the examiner. See MPEP § 706.07(f), § 714.13 and § 1206.
An affidavit or other evidence filed after a final rejection, but before or on the same date of filing an appeal, may be entered upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e). See 37 CFR 41.33 and MPEP § 1206 for information on affidavit or other evidence filed after appeal.
Applicant's submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art disqualification under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even after a final rejection has been made. If a final rejection of certain claims is obviated by a timely reply based on a proper claim of entitlement to the prior art exception or disqualification, then the Office should acknowledge the reply by modifying the status of the claims. For example, if the only rejection in the final rejection is obviated by a submission demonstrating entitlement to except or exclude prior art in the after-final reply, the Office should indicate that the claims are allowable, or prosecution should be reopened should the claims be considered unpatentable in view of newly applied prior art. Applicants should be aware, however, that the failure to make a proper submission of entitlement to except or exclude prior art following the first Office action may be considered by the Office as conduct that is considered to be a failure to engage in reasonable efforts to conclude prosecution if such prior art is thereafter excepted under 35 U.S.C. 102(b)(2)(C) or disqualified under pre-AIA 35 U.S.C. 103(c). See 37 CFR 1.704(c) and the discussion of comment 19 in Changes To Implement Patent Term Adjustment Under Twenty-Year Patent Term; Final Rule, 65 FR 56366, 79 (September 18, 2000).
The prosecution of an application before the examiner should ordinarily be concluded with the final action. However, one personal interview by applicant may be entertained after such final action if circumstances warrant. Thus, only one request by applicant for a personal interview after final should be granted, but in exceptional circumstances, a second personal interview may be initiated by the examiner if in their judgment this would materially assist in placing the application in condition for allowance.
Many of the difficulties encountered in the prosecution of patent applications after final rejection may be alleviated if each applicant includes, at the time of filing or no later than the first reply, claims varying from the broadest to which they believe they are entitled to the most detailed that they are willing to accept.
714.13 Amendments and Other Replies After Final Rejection or Action, Procedure Followed [R-07.2022]
I. FINAL REJECTION — TIME FOR REPLYIf an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection. This procedure applies only to a first reply to a final rejection. The following language must be included by the examiner in each final rejection:
A SHORTENED STATUTORY PERIOD FOR REPLY TO THIS FINAL ACTION IS SET TO EXPIRE THREE MONTHS FROM THE DATE OF THIS ACTION. IN THE EVENT A FIRST REPLY IS FILED WITHIN TWO MONTHS OF THE MAILING DATE OF THIS FINAL ACTION AND THE ADVISORY ACTION IS NOT MAILED UNTIL AFTER THE END OF THE THREE-MONTH SHORTENED STATUTORY PERIOD, THEN THE SHORTENED STATUTORY PERIOD WILL EXPIRE ON THE DATE THE ADVISORY ACTION IS MAILED, AND ANY EXTENSION FEE PURSUANT TO 37 CFR 1.136(a) WILL BE CALCULATED FROM THE MAILING DATE OF THE ADVISORY ACTION. IN NO EVENT WILL THE STATUTORY PERIOD FOR REPLY EXPIRE LATER THAN SIX MONTHS FROM THE DATE OF THIS FINAL ACTION.
This wording is part of form paragraphs 7.39, 7.40, 7.40.01, 7.40.02.fti, 7.40.02.aia, 7.41, 7.41.03.fti, 7.42.03.fti, and 7.42.09. Form paragraph 7.39 appears in MPEP § 706.07. Form paragraphs 7.40, 7.40.01, 7.40.02.fti, and 7.40.02.aia appear in MPEP § 706.07(a). Form paragraphs 7.41, 7.41.03.fti, and 7.42.09 appear in MPEP § 706.07(b). Form paragraph 7.42.03.fti appears in MPEP § 706.07(g).
For example, if applicant initially replies within 2 months from the date of mailing of a final rejection and the examiner mails an advisory action before the end of 3 months from the date of mailing of the final rejection, the shortened statutory period will expire at the end of 3 months from the date of mailing of the final rejection. In such a case, any extension fee would then be calculated from the end of the 3-month period. If the examiner, however, does not mail an advisory action until after the end of 3 months, the shortened statutory period will expire on the date the examiner mails the advisory action and any extension fee may be calculated from that date. In the event that a first reply is not filed within 2 months of the mailing date of the final rejection, any extension fee pursuant to 37 CFR 1.136(a) will be calculated from the end of the reply period set in the final rejection.
Failure to file a reply during the shortened statutory period results in abandonment of the application unless the time is extended under the provisions of 37 CFR 1.136.
II. ENTRY NOT A MATTER OF RIGHT
It should be kept in mind that applicant cannot, as a matter of right, amend any finally rejected claims, add new claims after a final rejection (see 37 CFR 1.116) or reinstate previously canceled claims.
Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing under 37 CFR 1.116(b)(3) is expected in all amendments after final rejection. An affidavit or other evidence filed after a final rejection, but before or on the same date of filing an appeal, may be entered upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e). See 37 CFR 41.33 and MPEP § 1206 for information on affidavit or other evidence filed after appeal. Failure to properly reply under 37 CFR 1.113 to the final rejection results in abandonment. A reply under 37 CFR 1.113 is limited to:
- (A) an amendment complying with 37 CFR 1.116;
- (B) a Notice of Appeal (and appeal fee); or
- (C) a request for continued examination (RCE) filed under 37 CFR 1.114 with a submission (i.e., an amendment that meets the reply requirement of 37 CFR 1.111) and the fee set forth in 37 CFR 1.17(e). RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995 and design applications.
Applicant's submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art disqualification under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even after a final rejection has been made. If a final rejection of certain claims is obviated by a timely reply based on a proper claim of entitlement to the prior art exception or disqualification, then the Office should acknowledge the reply by modifying the status of the claims. For example, if the only rejection in the final rejection is obviated by a submission demonstrating entitlement to except or exclude prior art in the after-final reply, the Office should indicate that the claims are allowable, or prosecution should be reopened should the claims be considered unpatentable in view of newly applied prior art.
Further examination of the application may be obtained by filing a continued prosecution application (CPA) under 37 CFR 1.53(d), if the application is a design application. See MPEP § 201.06(d). Effective July 14, 2003, CPA practice does not apply to utility and plant applications.
An amendment filed at any time after final rejection, but before an appeal brief is filed, may be entered upon or after filing of an appeal brief provided the total effect of the amendment is to (A) remove issues for appeal, and/or (B) adopt examiner suggestions.
See also MPEP § 1206 and § 1211.
The U.S. Patent and Trademark Office does not recognize “conditional” authorizations to charge an appeal fee if an amendment submitted after a final Office action is not entered. Any “conditional” authorization to charge an appeal fee set forth in 37 CFR 1.17(b) will be treated as an unconditional payment of the fee set forth in 37 CFR 1.17(b).
III. ACTION BY EXAMINER
In the event that a proposed amendment does not place the case in better form for appeal, nor in condition for allowance, applicant should be promptly informed of this fact, whenever possible, within the statutory period. The refusal to enter the proposed amendment should not be arbitrary. The proposed amendment should be given sufficient consideration to determine whether the claims are in condition for allowance and/or whether the issues on appeal are simplified. Ordinarily, the specific deficiencies of the amendment need not be discussed. However, if the proposed amendment raises the issue of new matter, the examiner should identify the subject matter that would constitute new matter. If the proposed amendment presents new issues requiring further consideration and/or search, the examiner should provide an explanation as to the reasons why the proposed amendment raises new issues that would require further consideration and/or search. The reasons for nonentry should be concisely expressed. For example:
- (A) The claims, if amended as proposed, would not avoid any of the rejections set forth in the last Office action, and thus the amendment would not place the case in condition for allowance or in better condition for appeal.
- (B) The claims, if amended as proposed, would raise the issue of new matter.
- (C) The claims as amended present new issues requiring further consideration or search.
- (D) Since the amendment presents additional claims without canceling any finally rejected claims it is not considered as placing the application in better condition for appeal. Ex parteWirt, 1905 C.D. 247, 117 OG 599 (Comm’r Pat. 1905).
Examiners should indicate the status of each claim of record or proposed in the amendment, and which proposed claims would be entered on the filing of an appeal if filed in a separate paper. Whenever such an amendment is entered for appeal purposes, the examiner must indicate on the advisory action which individual rejection(s) set forth in the action from which the appeal was taken (e.g., the final rejection) would be used to reject the new or amended claim(s).
Applicant should be notified, if certain portions of the amendment would be acceptable as placing some of the claims in better form for appeal or complying with objections or requirements as to form, if a separate paper were filed containing only such amendments. Similarly, if the proposed amendment to some of the claims would render them allowable, applicant should be so informed. This is helpful in assuring the filing of a brief consistent with the claims as amended. A statement that the final rejection stands and that the statutory period runs from the date of the final rejection is also in order.
Advisory Action Before the Filing of an Appeal Brief form PTOL-303 should be used to acknowledge receipt of a reply from applicant after final rejection where such reply is prior to filing of an appeal brief and does not place the application in condition for allowance. This form has been devised to advise applicant of the disposition of the proposed amendments to the claims and of the effect of any argument or affidavit not placing the application in condition for allowance or which could not be made allowable by a telephone call to clear up minor matters.
Any amendment timely filed after a final rejection should be immediately considered to determine whether it places the application in condition for allowance or in better form for appeal. An examiner is expected to turn in a response to an amendment after final rejection within an average of 11 calendar days from the time the amendment is received by the examiner. A reply to an amendment after final rejection should be mailed within 30 days of the date the amendment is received by the Office. In all instances, both before and after final rejection, in which an application is placed in condition for allowance, applicant should be notified promptly of the allowability of the claims by a Notice of Allowability form PTOL-37. If delays in processing the Notice of Allowability are expected, e.g., because an extensive examiner’s amendment must be entered, and the end of a statutory period for reply is near, the examiner should notify applicant by way of an interview that the application has been placed in condition for allowance, and an Examiner Initiated Interview Summary form should be mailed. Prompt notice to applicant is important because it may avoid an unnecessary appeal and act as a safeguard against a holding of abandonment. Every effort should be made to mail the letter before the period for reply expires.
If no appeal has been filed within the period for reply and no amendment has been submitted to make the application allowable or which can be entered in part (see MPEP § 714.20), the application stands abandoned.
It should be noted that under 37 CFR 1.181(f), the filing of a 37 CFR 1.181 petition will not stay the period for reply to an examiner’s action which may be running against an application. See MPEP § 1206 for appeal and post-appeal procedure. For after final rejection practice relative to affidavits or declarations filed under 37 CFR 1.131(a) and 1.132, see MPEP § 715.09 and § 716.
Form paragraph 7.169 may be used to notify applicant in the Advisory Action that the proposed amendment(s) will be entered upon appeal and how the new or amended claim(s) would be rejected.
¶ 7.169 Advisory Action, Proposed Rejection of Claims, Before Appeal Brief
For purposes of appeal, the proposed amendment(s) will be entered and the proposed rejection(s) detailed below will be included in the Examiner’s Answer. To be complete, such rejection(s) must be addressed in any brief on appeal.
Upon entry of the amendment(s) for purposes of appeal:
Claim(s) [1] would be rejected for the reasons set forth in [2] of the final Office action mailed [3].
Examiner Note:
- 1. In bracket 1, identify all the new or amended claim(s) that would be grouped together in a single rejection.
- 2. In bracket 2, identify the rejection by referring to either the paragraph number or the statement of the rejection (e.g., the rejection under 35 U.S.C. 103 based upon A in view of B) in the final Office action under which the claims would be rejected on appeal.
- 3. Repeat this form paragraph for each group of claims subject to the same rejection(s).
- 4. Use this form paragraph if item 7 of the Advisory Action form, PTOL-303 (Rev. 9-04 or later) has been checked to indicate that the proposed amendment(s) will be entered upon appeal.
Hand carried papers for the Technology Centers (TCs) may only be delivered to the Customer Window which is located at:
U.S. Patent and Trademark Office
Customer Service Window
Randolph Building
401 Dulany Street
Alexandria, VA 22314Effective December 1, 2003, all official patent application related correspondence for organizations reporting to the Commissioner of Patents (e.g., TCs, the Office of Data Management, and the Office of Petitions) that is hand-carried (or delivered by other delivery services, e.g., FedEx, UPS, etc.) must be delivered to the Customer Window, with a few limited exceptions. See MPEP § 502. Hand-carried amendments and other replies after final rejection (37 CFR 1.116) will no longer be accepted in the TCs. Any courier who attempts delivery of such after final correspondence at a TC (or where it is no longer permitted) will be re-directed to the Customer Window. Patent application related read-only optical discs and other non-paper submissions that are hand-carried must be delivered to the Customer Window.
V. EXPEDITED PROCEDURE FOR PROCESSING AMENDMENTS AND OTHER REPLIES AFTER FINAL REJECTION (37 CFR 1.116)
In an effort to improve the timeliness of the processing of amendments and other replies under 37 CFR 1.116, and thereby provide better service to the public, an expedited processing procedure has been established which the public may utilize in filing amendments and other replies after final rejection under 37 CFR 1.116.
Amendments and other replies under 37 CFR 1.116 filed via EFS-Web are processed promptly provided the submitter describes the document as an amendment after final rejection. Based on the document description selected by the user, a document code is assigned and a message regarding the document submitted to the USPTO will be forwarded to the appropriate organization for processing, and to the appropriate official for consideration. Accurate document indexing is important to facilitate efficient processing and proper consideration of the document by the USPTO.
In order for an applicant to take advantage of the expedited procedure, an amendment or other reply under 37 CFR 1.116 filed in paper format must be marked as a “Reply under 37 CFR 1.116 — Expedited Procedure - Technology Center (Insert Technology Center Number)” on the upper right portion of the amendment or other reply and the envelope must be clearly marked “Mail Stop AF” in the lower left hand corner. If the reply is mailed to the Office, the envelope should contain only replies under 37 CFR 1.116 and should be mailed to “Mail Stop AF, Commissioner for Patents, P.O. Box 1450, Alexandria, Virginia, 22313-1450.” Instead of mailing the envelope to “Mail Stop AF” as noted above, the reply may be hand-carried to the Customer Window located at the above address. The outside of the envelope should be marked “Reply Under 37 CFR 1.116 - Expedited Procedure - Technology Center (Insert Technology Center Number).”
Upon receipt by the U.S. Patent and Trademark Office from the U.S. Postal Service of an envelope appropriately marked “Mail Stop AF,” the envelope will be specially processed by the Mail Center and forwarded to the Technology Center after being uploaded as a scanned image into the file wrapper. Upon receipt of the reply in the TC it will be promptly processed by a designated technical support staff member and forwarded to the examiner, via the supervisory patent examiner (SPE), for action. The SPE is responsible for ensuring that prompt action on the reply is taken by the examiner. If the examiner to which the application is assigned is not available and will not be available for an extended period, the SPE will ensure that action on the application is promptly taken to assure meeting the USPTO goal described below. Once the examiner has completed their consideration of the reply, the examiner’s action will be promptly typed and printed, and mailed by technical support staff or other Office personnel designated to expedite the processing of replies filed under this procedure. The TC supervisory personnel, e.g., the supervisory patent examiner, supervisory applications examiner, and TC Director are responsible for ensuring that actions on replies filed under this procedure are promptly processed and mailed. The U.S. Patent and Trademark Office goal is to mail the examiner’s action on the reply within 1 month from the date on which the amendment or reply is received by the U.S. Patent and Trademark Office.
Applicants are encouraged to utilize this expedited procedure in order to facilitate U.S. Patent and Trademark Office processing of replies under 37 CFR 1.116. If applicants do not utilize the procedure by appropriately marking the envelope and enclosed papers, the benefits expected to be achieved therefrom will not be attained. The procedure cannot be expected to result in achievement of the goal in applications in which the delay results from actions by the applicant, e.g., delayed interviews, applicant’s desire to file a further reply, or a petition by applicant which requires a decision and delays action on the reply. In any application in which a reply under this procedure has been filed and no action by the examiner has been received within the time referred to herein, plus normal mailing time, a telephone call to the SPE of the relevant TC art unit would be appropriate in order to permit the SPE to determine the cause for any delay. If the SPE is unavailable or if no satisfactory reply is received, the TC Director should be contacted.
714.14 Amendments After Allowance of All Claims [R-10.2019]
Under the decision in Ex parteQuayle, 25 USPQ 74, 1935 C.D. 11; 453 OG 213 (Comm’r Pat. 1935), after all claims in an application have been allowed the prosecution of the application on the merits is closed even though there may be outstanding formal objections which preclude fully closing the prosecution.
Amendments touching the merits are treated in a manner similar to amendments after final rejection, though the prosecution may be continued as to the formal matters. See MPEP § 714.12 and § 714.13.
See MPEP § 714.20 for amendments entered in part.
See MPEP § 607 for additional fee requirements.
See MPEP § 714 for non-compliant amendments.
Use form paragraph 7.51 to issue an Ex parteQuayle action.
¶ 7.51 Quayle Action
This application is in condition for allowance except for the following formal matters: [1].
Prosecution on the merits is closed in accordance with the practice under Ex parte Quayle, 25 USPQ 74, 453 OG 213 (Comm’r Pat. 1935).
A shortened statutory period for reply to this action is set to expire TWO (2) MONTHS from the mailing date of this letter. Extensions of time may be granted under 37 CFR 1.136 but in no case can any extension carry the date for reply to this Office action beyond the maximum period of SIX MONTHS set by statute (35 U.S.C. 133).
Examiner Note:
Explain the formal matters which must be corrected in bracket 1.
714.15 Amendment Received in Technology Center After Mailing of Notice of Allowance [R-08.2012]
Where an amendment, even though prepared by applicant prior to allowance, does not reach the Office until after the notice of allowance has been mailed, such amendment has the status of one filed under 37 CFR 1.312. Its entry is a matter of grace. For discussion of amendments filed under 37 CFR 1.312, see MPEP § 714.16 to § 714.16(e).
If the amendment is filed in the Office prior to the mailing of the notice of allowance, but is received by the examiner after the mailing of the notice of allowance, it may also not be approved for entry. If the amendment is a supplemental reply filed when action is not suspended, such an amendment will not be approved for entry because supplemental replies are not entered as matter of right. See 37 CFR 1.111(a)(2) and MPEP § 714.03(a). If the amendment is a preliminary amendment, such an amendment may be disapproved under 37 CFR 1.115(b). See MPEP § 714.01(e). If the amendment is approved for entry, the examiner may enter the amendment and provide a supplemental notice of allowance, or withdraw the application from issue and provide an Office action.
The application will not be withdrawn from issue for the entry of an amendment that would reopen the prosecution if the Office action next preceding the notice of allowance closed the application to further amendment, i.e., by indicating the patentability of all of the claims, or by allowing some and finally rejecting the remainder.
After an applicant has been notified that the claims are all allowable, further prosecution of the merits of the application is a matter of grace and not of right. Ex parte Quayle, 25 USPQ 74, 1935 C.D. 11, 453 OG 213 (Comm’r Pat. 1935).
714.16 Amendment After Notice of Allowance, 37 CFR 1.312 [R-10.2019]
37 CFR 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.
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-07.2022]
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 22314In 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, they may be consulted about the propriety of the proposed amendment and given credit for any time spent in giving it consideration.
I. AMENDMENTS AFFECTING THE DISCLOSURE OF THE SPECIFICATION, ADDING CLAIMS, OR CHANGING THE SCOPE OF ANY CLAIM
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.
Whenever an amendment under 37 CFR 1.312 affects the disclosure of the specification, adds claims, or changes the scope of any claim, the recommendation of the examiner must be forwarded to the supervisory patent examiner for consideration and approval. If the amendment is favorably considered, it is entered and a Response to Rule 312 Communication (PTO-271) is prepared. The primary examiner indicates their recommendation by stamping and signing their name on the PTO-271, which will be forwarded to the supervisory patent examiner for consideration and approval. 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 and approved by the primary examiner without forwarding to the supervisory patent examiner for approval) and for amendments being entered under 37 CFR 1.312 which do affect the scope of the claims (requires signature of the 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 for consideration and approval by the supervisory patent 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:
- 1. Use this form paragraph to indicate that an amendment under 37 CFR 1.312 will not be entered. The signature of the supervisory patent examiner is required.
- 2. 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. Whereas the examiner may approve the entry of amendments concerning merely formal matters without the signature of a supervisory patent examiner, if such amendments are disapproved either in whole or in part, they require the signature of the supervisory patent examiner.
Form paragraphs 7.85 and 7.87 (reproduced in subsection I) may also be used to indicate entry or nonentry, respectively.
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 22206714.16(e) Amendments Under 37 CFR 1.312, Entry in Part [R-07.2022]
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 their reasons therefor. The form PTO-271 must then be forwarded to the supervisory patent examiner for consideration, approval, and mailing. 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. The signature of the supervisory patent examiner is required.
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).
714.17 Amendment Filed After the Period for Reply Has Expired [R-08.2012]
When an application is not prosecuted within the period set for reply and thereafter an amendment is filed without a petition for extension of time and fee pursuant to 37 CFR 1.136(a), such amendment shall be placed in the file of the application, but not formally entered. The technical support staff shall immediately notify the applicant, by telephone and letter, that the amendment was not filed within the time period and therefore cannot be entered and that the application is abandoned unless a petition for extension of time and the appropriate fee are timely filed. See MPEP § 711.02.
See MPEP § 710.02(e) for a discussion of the requirements of 37 CFR 1.136(a).
714.18 Entry of Amendments [R-11.2013]
All amendments received in the technical support staff sections are processed and distributed to the examiners.
Every mail delivery should be carefully screened so that all amendments replying to a final action in which a time period is running against the applicant are promptly processed (e.g., within the next 24 hours).
The purpose of this procedure is to ensure uniform and prompt treatment by the examiners of all applications where the applicant is awaiting a reply to a proposed amendment after final action. In cases of this type, the applicant should receive an Office communication in sufficient time to adequately consider his or her next action if the application is not allowed. Consequently, technical support staff handling will continue to be special when these applications are returned by the examiners to the technical support staff.
Evaluation of the amendment after final rejection for compliance with 37 CFR 1.121 should be left to the examiner, and not treated by the technical support staff before forwarding the amendment to the examiner. If the examiner determines that the proposed amendment is not in compliance with 37 CFR 1.121, the examiner should notify applicant of this fact and attach a Notice of Non-Compliant Amendment to the advisory action. See MPEP § 714.
Amendments are entered as papers into the IFW. When several amendments are made in an application on the same day no particular order as to the hour of the receipt or the mailing of the amendments can be assumed, but consideration of the application must be given as far as possible as though all the papers filed were a composite single paper.
After entry of the amendment the application is “up for action.” It is forwarded to the examiner, and he or she is responsible for its proper disposal. The examiner should immediately inspect the amendment as set forth in MPEP § 714.05. After inspection, if no immediate or special action is required, the application awaits examination in regular order.
See MPEP § 714 for the treatment of amendments that are not in compliance with 37 CFR 1.121.
714.19 List of Amendments, Entry Denied [R-07.2022]
The following types of amendments are ordinarily denied entry:
- (A) An amendment presenting an unpatentable claim, or a claim requiring a new search or otherwise raising a new issue in an application whose prosecution before the primary examiner has been closed, as where
- (1) All claims have been allowed,
- (2) All claims have been finally rejected (for exceptions see MPEP § 714.12, § 714.13, and § 714.20, item (D)),
- (3) Some claims have been allowed and the remainder finally rejected. See MPEP § 714.12 to § 714.14.
While amendments falling within any of the foregoing categories should not be entered by the examiner at the time of filing, a subsequent showing by applicant may lead to entry of the amendment.
714.20 List of Amendments Entered in Part [R-11.2013]
To avoid confusion of the record the general rule prevails that an amendment should not be entered in part. At times, the strict observance of its letter may sometimes work more harm than would result from its infraction, especially if the amendment in question is received at or near the end of the period for reply. Thus:
- (A) An “amendment” presenting an unacceptable substitute specification along with amendatory matter, as amendments to claims or new claims, should be entered in part, rather than refused entry in toto. The substitute specification should be denied entry and so marked, while the rest of the paper should be entered. The application as thus amended is acted on when reached in its turn, the applicant being advised that the substitute specification has not been entered.
- See 37 CFR 1.125 and MPEP § 608.01(q) for information regarding the submission of a substitute specification.
- Under current practice, substitute specifications may be voluntarily filed by the applicant if he or she desires. A proper substitute specification will normally be accepted by the Office even if it has not been required by the examiner. However, entry of a substitute specification filed after the notice of allowance has been mailed (37 CFR 1.312) is not a matter of right.
NOTE. The examiner writes “Enter” with the Stamper tool in Adobe Acrobat in the left margin opposite the enterable portions.
714.21 Amendments Inadvertently Entered, No Legal Effect [R-11.2013]
If the technical support staff inadvertently enters an amendment when it should not have been entered, such entry is of no legal effect, and the same action is taken as if the changes had not been actually made, inasmuch as they have not been legally made. Unless such unauthorized entry is deleted, suitable notation should be made on the margin of the amendatory paper, as “Not Officially Entered” with the typewriter tool in Adobe Acrobat.
If an amendatory paper is to be retained in the file, even though not entered, it should be given a paper number and listed on the file wrapper with the notation “Not Entered.” See 37 CFR 1.3 and MPEP § 714.25 for an example of a paper which may be denied entry.
714.22-714.24 [Reserved]
714.25 Discourtesy of Applicant or Attorney [R-07.2022]
37 CFR 1.3 Business to be conducted with decorum and courtesy.
Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy. Papers presented in violation of this requirement will be submitted to the Director and will not be entered. A notice of the non-entry of the paper will be provided. Complaints against examiners and other employees must be made in correspondence separate from other papers.
All papers received in the U.S. Patent and Trademark Office should be briefly reviewed to determine whether any discourteous remarks appear therein.
If the attorney or agent is discourteous in the remarks or arguments in their amendment or other paper submitted for entry in an application file, either the discourtesy should be entirely ignored or the paper should be submitted to the Deputy Commissioner for Patents who oversees the Office of Petitions for review. See MPEP § 1002.02(b). If the Deputy Commissioner determines that the remarks are in violation of 37 CFR 1.3, the Deputy Commissioner will send a notice of non-entry of the paper to the applicant. At its discretion, the Office may also close the non-entered paper in the IFW of the application or remove the paper from the IFW.
- 701-Statutory Authority for Examination
- 702-Requisites of the Application
- 702.01-Obviously Informal Cases
- 704.01-Search
- 704.02-704.09-[Reserved]
- 704.10-Requirements for Information
- 704.11-What Information May Be Required
- 704.11(a)-Examples of Information Reasonably Required
- 704.11(b)-When May a Requirement for Information Be Made
- 704.12(a)-Relationship of Requirement for Information to Duty of Disclosure
- 704.12(b)-What Constitutes a Complete Reply
- 704.12(c)-Treatment of an Incomplete Reply
- 704.14(a)-Format of the Requirement
- 704.14(b)-Examiner’s Obligation Following Applicant’s Reply
- 704.14(c)-Petitions to Requirements Under 37 CFR 1.105
- 704.14(d)-Relationship to Information Disclosure Statements
- 705.01-Instructions re Patentability Reports
- 705.01(a)-Nature of P.R., Its Use and Disposal
- 705.01(b)-Sequence of Examination
- 705.01(c)-Counting and Recording P.R.s
- 705.01(d)-[Reserved]
- 705.01(e)-Limitation as to Use
- 705.01(f)-Interviews With Applicants
- 706.01-Contrasted With Objections
- 706.02-Rejection on Prior Art
- 706.02(a)-[Reserved]
- 706.02(a)(1)-[Reserved]
- 706.02(a)(2)-[Reserved]
- 706.02(b)(1)-[Reserved]
- 706.02(b)(2)-[Reserved]
- 706.02(c)(1) -[Reserved]
- 706.02(c)(2)-[Reserved]
- 706.02(f)(1)-[Reserved]
- 706.02(f)(2)-[Reserved]
- 706.02(l)(1)-[Reserved]
- 706.02(l)(2)-[Reserved]
- 706.02(l)(3)-[Reserved]
- 706.03(a)-[Reserved]
- 706.03(b)-[Reserved]
- 706.03(c)-[Reserved]
- 706.03(d)-[Reserved]
- 706.03(e)-[Reserved]
- 706.03(f) - 706.03(j)-[Reserved]
- 706.03(k)-[Reserved]
- 706.03(l) - 706.03(n)-[Reserved]
- 706.03(o)-[Reserved]
- 706.03(p) - 706.03(r)-[Reserved]
- 706.03(s)-[Reserved]
- 706.03(t)-[Reserved]
- 706.03(u)-[Reserved]
- 706.03(v)-[Reserved]
- 706.03(w)-[Reserved]
- 706.03(x)-[Reserved]
- 706.03(y)-[Reserved]
- 706.07(a)-Final Rejection, When Proper on Second Action
- 706.07(b)-Final Rejection, When Proper on First Action
- 706.07(c)-Final Rejection, Premature
- 706.07(d)-Final Rejection, Withdrawal of, Premature
- 706.07(e)-Withdrawal of Final Rejection, General
- 706.07(f)-Time for Reply to Final Rejection
- 706.07(g)-Transitional After-Final Practice
- 706.07(h)-Request for Continued Examination (RCE) Practice
- 707.01-Primary Examiner Indicates Action for New Assistant
- 707.02-Applications Up for Third Action and 5-Year Applications
- 707.03‑707.04-[Reserved]
- 707.05-Citation of References
- 707.05(a)-Copies of Cited References
- 707.05(b)-Citation of Related Art and Information by Applicants
- 707.05(c)-Order of Listing
- 707.05(d)-Reference Cited in Subsequent Actions
- 707.05(e)-Data Used in Citing References
- 707.05(f)-Non-Patent Documents Having a Lengthy Citation
- 707.05(g)-Incorrect Citation of References
- 707.07(a)-Complete Action on Formal Matters
- 707.07(b) - 707.07(c)-[Reserved]
- 707.07(d)-Language To Be Used in Rejecting Claims
- 707.07(e)-Note All Outstanding Requirements
- 707.07(f)-Answer All Material Traversed
- 707.07(g)-Piecemeal Examination
- 707.07(h)-Notify of Inaccuracies in Amendment
- 707.07(i)-Each Claim To Be Mentioned in Each Office Action
- 707.07(j)-State When Claims Are Allowable
- 707.07(k)-Numbering Paragraphs
- 707.07(l)-Comment on Examples
- 708.01-List of Special Cases
- 708.02-Petition To Make Special
- 708.02(a)-Accelerated Examination
- 708.02(b)-Prioritized Examination
- 708.02(c)-Patent Prosecution Highway Program
- 709.01-Overlapping Applications by Same Applicant or Owned by Same Assignee
- 710.01-Statutory Period
- 710.01(a)-Statutory Period, How Computed
- 710.02(a)-[Reserved]
- 710.02(b)-Shortened Statutory Period: Situations in Which Used
- 710.02(c)-Specified Time Limits: Situations in Which Used
- 710.02(d)-Difference Between Shortened Statutory Periods for Reply and Specified Time Limits
- 710.02(e)-Extension of Time
- 710.04(a)-Copying Patent Claims
- 711.01-Express or Formal Abandonment
- 711.02-Failure To Take Required Action During Statutory Period
- 711.02(a)-Insufficiency of Reply
- 711.02(b)-Special Situations Involving Abandonment
- 711.02(c)-Termination of Proceedings
- 711.03(a)-Holding Based on Insufficiency of Reply
- 711.03(b)-Holding Based on Failure To Reply Within Period
- 711.03(c)-Petitions Relating to Abandonment
- 711.03(d)-Examiner’s Statement on Petition To Set Aside Examiner’s Holding
- 711.04(a)-Date of Abandonment
- 711.04(b)-Ordering of Patented and Abandoned Files
- 711.04(c)-Notifying Applicants of Abandonment
- 711.06(a)-Citation and Use of Abstracts, Abbreviatures, and Defensive Publications as References
- 713.01-General Policy, How Conducted
- 713.02-Interviews Prior to First Official Action
- 713.03-Interview for “Sounding Out” Examiner Not Permitted
- 713.04-Substance of Interview Must Be Made of Record
- 713.05-Interviews Prohibited or Granted, Special Situations
- 713.06-No Inter Partes Questions Discussed Ex Parte
- 713.07-Exposure of Other Cases
- 713.08-Demonstration, Exhibits, Models
- 713.09-Interviews Between Final Rejection and Notice of Appeal
- 713.10-Interview Preceding Filing Amendment Under 37 CFR 1.312
- 714.01-Signatures to Amendments
- 714.01(a)-Unsigned or Improperly Signed Amendment
- 714.01(b)-[Reserved]
- 714.01(c)-Signed by Attorney or Agent Not of Record
- 714.01(d)-Amendment Signed by Applicant but Not by Attorney or Agent of Record
- 714.01(e)-Amendments Before First Office Action
- 714.03(a)-Supplemental Amendment
- 714.16(a)-Amendments Under 37 CFR 1.312, Copied Patent Claims
- 714.16(b)-Amendments Under 37 CFR 1.312 Filed With a Motion Under 37 CFR 41.208
- 714.16(c)-Amendments Under 37 CFR 1.312, Additional Claims
- 714.16(d)-Amendments Under 37 CFR 1.312, Handling
- 714.16(e)-Amendments Under 37 CFR 1.312, Entry in Part
- 715.01-37 CFR 1.131(a) Affidavits Versus 37 CFR 1.132 Affidavits
- 715.01(a)-Reference Is a Patent or Published Application Naming Different Inventive Entity With at Least One Common Inventor
- 715.01(b)-Reference and Application Have Common Assignee
- 715.01(c)-Reference Is Publication of Inventor’s Own Invention
- 715.01(d)-Activities Applied Against the Claims
- 715.07(a)-Diligence
- 715.07(b)-Interference Testimony Sometimes Used
- 715.07(c)-Acts Relied Upon Must Have Been Carried Out in This Country or a NAFTA or WTO Member Country
- 715.07(d)-Disposition of Exhibits
- 716.01-Generally Applicable Criteria
- 716.01(a)-Objective Evidence of Nonobviousness
- 716.01(b)-Nexus Requirement and Evidence of Nonobviousness
- 716.01(c)-Probative Value of Objective Evidence
- 716.01(d)-Weighing Objective Evidence
- 716.02(a)-Evidence Must Show Unexpected Results
- 716.02(b)-Burden on Applicant
- 716.02(c)-Weighing Evidence of Expected and Unexpected Results
- 716.02(d)-Unexpected Results Commensurate in Scope With Claimed Invention
- 716.02(e)-Comparison With Closest Prior Art
- 716.02(f)-Advantages Disclosed or Inherent
- 716.02(g)-[Reserved]
- 716.03(a)-Commercial Success Commensurate in Scope With Claimed Invention
- 716.03(b)-Commercial Success Derived From Claimed Invention
- 717.01-Affidavit or Declaration Under 37 CFR 1.130
- 717.01(a) -Declarations or Affidavits under 37 CFR 1.130(a) – Attribution
- 717.01(a)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(a)
- 717.01(b)(1) -Evaluation of Declarations or Affidavits under 37 CFR 1.130(b)
- 717.01(b)(2) -Determining if the Subject Matter of the Intervening Disclosure is the Same as the Subject Matter of the Inventor–Originated Prior Public Disclosure
- 717.02(a) -Invoking the Prior Art Exception under 35 U.S.C. 102(b)(2)(C)
- 717.02(b) -Evaluating Whether the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C) is Properly Invoked
- 717.02(c) -Examination Procedure With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
- 717.02(d) -Form Paragraphs With Respect to the Prior Art Exception under AIA 35 U.S.C. 102(b)(2)(C)
- 719.01-Papers in Image File Wrapper
- 719.02-Residence of Inventor Changed
- 719.03-Classification During Examination
- 719.04-Index of Claims
- 719.05-Field of Search
- 724.01-Completeness of the Patent File Wrapper
- 724.02-Method of Submitting Trade Secret, Proprietary, and/or Protective Order Materials
- 724.03-Types of Trade Secret, Proprietary, and/or Protective Order Materials Submitted Under MPEP § 724.02
- 724.04-Office Treatment and Handling of Materials Submitted Under MPEP § 724.02
- 724.04(a)-Materials Submitted in an Application Covered by 35 U.S.C. 122
- 724.04(b)-Materials Submitted in Reissue Applications Open to the Public Under 37 CFR 1.11(b)
- 724.04(c)-Materials Submitted in Reexamination File Open to the Public Under 37 CFR 1.11(d)
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- 717.01(a) -Declarations or Affidavits under 37 CFR 1.130(a) – Attribution
- 706.02(a)-[Reserved]
- (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to:
- (i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to: