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.

714.02 Must Be Fully Responsive [R-08.2012]

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]

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.

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-01.2024]

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.

Nonelected claims that are withdrawn from consideration after a requirement for restriction will be included in determining the fees due in connection with a subsequent amendment, unless the nonelected claims are canceled. See MPEP § 607, subsection III.

714.11 Amendment Filed During Interference Proceedings [R-08.2012]

See MPEP Chapter 2300.

714.12 Amendments and Other Replies After Final Rejection or Action [R-07.2022]

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-01.2024]

If 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.

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).

If, on request by applicant for reconsideration, the primary examiner finds the final rejection to have been premature, the examiner should withdraw the finality of the rejection. The finality of the Office action must be withdrawn while the application is still pending. See also MPEP §§ 706.07(d) to 706.07(f).

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. If the amendment is approved for entry, the examiner must annotate the reply “OK TO ENTER,” with initials, and enter the annotated document into the file wrapper. If the amendment is not approved for entry, the examiner must annotate the reply “DO NOT ENTER,” with initials, and enter the annotated document into the file wrapper. 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.

Hand-carried papers for the Technology Centers (TCs) may only be delivered to the Customer Service Window. See MPEP § 501, subsection III for information regarding hand-delivery of papers.

Effective 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 Service 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 Service Window. Patent application related read-only optical discs and other non-paper submissions that are hand-carried must be delivered to the Customer Service Window.

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 the USPTO patent electronic filing system 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 Service Window. See MPEP § 501, subsection III for information regarding hand-delivery of papers. 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.

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]

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.

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.

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.
• (B) Substitute specification that does not comply with 37 CFR 1.125. See MPEP § 608.01(q) and § 714.20.
• (C) A patent claim suggested by the examiner and not presented within the time limit set or an extension thereof, unless entry is authorized by the Director. See MPEP Chapter 2300.
• (D) While copied patent claims are generally admitted even though the application is under final rejection or on appeal, under certain conditions, the claims may be refused entry. See MPEP Chapter 2300.
• (E) An unsigned or improperly signed amendment or one signed by a suspended or excluded attorney or agent.
• (F) An amendment filed in the U.S. Patent and Trademark Office after the expiration of the statutory period or set time period for reply and any extension thereof. See MPEP § 714.17.
• (G) An amendment so worded that it cannot be entered with certain accuracy. See MPEP § 714, subsection II.G.
• (H) An amendment canceling all of the claims and presenting no substitute claim or claims. See 37 CFR 1.115(b)(1), MPEP § 711.01 and § 714.01(e).
• (I) An amendment after a notice of allowance has been mailed in an application, with certain limited exceptions. See MPEP § 714.16.
• (J) Amendments to the drawing held by the examiner to contain new matter are not entered until the question of new matter is settled. This practice of nonentry because of alleged new matter, however, does not apply in the case of amendments to the specification and claims. See MPEP § 608.04et seq.
• (K) An amendatory paper containing objectionable remarks that, in the opinion of the examiner, brings it within the condemnation of 37 CFR 1.3, will be submitted to the Deputy Commissioner for Patents who oversees the Office of Petitions. See MPEP § 714.25 and MPEP § 1002.02(b). If the Deputy Commissioner determines that the remarks are in violation of 37 CFR 1.3, they will notify the applicant of the non-entry of the paper.
• (L) Amendments that cannot be scanned or clearly reproduced. See MPEP § 714.07.
• (M) An amendment presenting claims (total and independent) in excess of the number previously paid for and not accompanied by the full fee for the claims or an authorization to charge the fee to a deposit account or credit card. See MPEP § 509 and § 607.
• (N) An amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention should not be entered. Such an amendment is nonresponsive. Applicant should be notified as directed in MPEP § 714.03 and § 714.05. See MPEP § 821.03.
• (O) An amendment including changes to the specification/claims which is not in compliance with 37 CFR 1.121, e.g., one which does not include replacement paragraphs or claim listings. See MPEP § 714.
• (P) A preliminary amendment that unduly interferes with the preparation of a first Office action. Factors to be considered in denying entry of the preliminary amendment are set forth in 37 CFR 1.115(b). See MPEP § 714.01(e).
• (Q) A supplemental reply is not entered as a matter of right unless it is filed during a suspension period under 37 CFR 1.103(a) or (c). See 37 CFR 1.111(a)(2) and MPEP § 714.03(a).

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.
• (B) An amendment under 37 CFR 1.312, which in part is approved and in other part disapproved, is entered only as to the approved part. See MPEP § 714.16(e).
• (C) In an application in which prosecution on the merits is closed, i.e., after the issuance of an Ex Parte Quayle action, where an amendment is presented curing the noted formal defect and adding one or more claims some or all of which are in the opinion of the examiner not patentable, or will require a further search, the amendment in such a case will be entered only as to the formal matter. Applicant has no right to have new claims considered or entered at this point in the prosecution.
• (D) In an amendment accompanying a motion granted only in part, the amendment is entered only to the extent that the motion was granted.

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]

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.