1302.04 Examiner’s Amendments and Changes [R-07.2022]

1302.04 Examiner’s Amendments and Changes [R-07.2022]

With the exception of the following no corrections or interlineations may be made by the examiner in the body of written portions of the specification or any other paper filed in the application for patent, except by examiner’s amendment approved by applicant and as described hereinafter. (See 37 CFR 1.121.):

• (A) Renumber the claims in accordance with 37 CFR 1.126;
• (B) Correct erroneous citations on an Information Disclosure Statement (see MPEP § 707.05(g));
• (C) Correct an amendment filed under 37 CFR 1.312 that is non-compliant under 37 CFR 1.121 whose entry would otherwise be recommended (see MPEP § 714.16);
• (D) Cancel claims directed to a non-elected invention, where the election was made without traverse and the claims are not eligible for rejoinder (see MPEP § 821.02); and
• (E) Amendment and/or cancellation of claims following a decision by the Patent Trial and Appeal Board as described in MPEP §§ 1214, 1214.05, and 1214.06.

The prior practice of informal examiner’s amendments are not permitted in Image File Wrapper (IFW) applications. Any amendment of an IFW application must be by way of an examiner’s amendment, as described below, or be an amendment made by the applicant.

For continuing applications filed under 37 CFR 1.53(b), a reference to a parent application in the first sentence(s) of the specification is no longer required when the reference appears in an Application Data Sheet. If a reference to the parent application has not been included in the first sentence(s) of the specification an examiner should not add a reference to the prior application without the approval of the applicant and an examiner’s amendment. If applicant has included a reference to the parent application, the examiner should review the statement and the application data sheet for accuracy. Applicant may decide to delete the benefit claim in the application filed under 37 CFR 1.53(b). Furthermore, a petition under 37 CFR 1.78 to accept an unintentionally delayed benefit claim may be required if the application is a utility or plant application filed on or after November 29, 2000. See MPEP § 211.04.

An examiner’s amendment may be used to correct informalities in the body of the written portions of the specification as well as all errors and omissions in the claims. The examiner’s amendment must be signed by the primary examiner, entered into the file and a copy sent to applicant. The examiner should determine if an extension of time is required for the entry of an examiner’s amendment. See MPEP § 706.07(f), subsection II. The changes specified in the amendment are entered by the technical support staff in the regular way. An examiner’s amendment should include form paragraph 13.02 and form paragraph 13.02.01. Form paragraph 13.02.02 should be used if an extension of time is required.

Although 37 CFR 1.121 has been amended to require amendments to the specification/claims to be made in compliance with 37 CFR 1.121(b)(1), (b)(2), or (c), where appropriate, 37 CFR 1.121(g) permits the Office to make amendments to the specification, including the claims, by examiner’s amendments without the need to comply with the requirements of 37 CFR 1.121(b)(1), (b)(2), or (c) in the interest of expediting prosecution and reducing cycle time. Examiners may continue to make additions or deletions of subject matter in the specification, including the claims, in examiner’s amendments by instructions to make the change at a precise location in the specification and/or the claims. Examiners may use an examiner’s amendment to correct a non-compliant amendment filed by the applicant if the amendment would otherwise place the application in condition for allowance (e.g., a reply to a non-final Office action or an after-final amendment includes an incorrect status identifier). See MPEP § 714, subsection II.E, Examiner’s Amendments.

As an alternative, the examiner’s amendment utilizing paragraph/claim replacement can be created by the examiner with authorization from the applicant. The examiner’s amendment can also be created from a facsimile transmission or emailed amendment received by the examiner and referenced in the examiner’s amendment and attached thereto. Any subject matter, in clean version form (containing no brackets or underlining), to be added to the specification/claims should be set forth separately by applicant in the email or facsimile submission apart from the remainder of the submission. A clean version of a paragraph/claim, or portion of a paragraph/claim, submitted by applicant in a fax or email, should be printed and attached to the examiner’s amendment and may be relied on as part of the examiner’s amendment. The examiner should mark “requested” on the entire attachment to indicate that the fax or email was requested by the examiner, so as to not lead to a reduction in patent term adjustment (37 CFR 1.704(c)(8)). As the attachment is made part of the examiner’s amendment, it does not get a separate entry code and will not trigger any reduction in patent term adjustment. A paper copy of the entire email or facsimile submission should be entered in the application file. Examiners are not required to electronically save any emails once any emails or attachments thereto are printed and become part of an application file record. The email practice that is an exception for examiner’s amendments is restricted to emails to the examiner from the applicant and should not be generated by the examiner to the applicant unless such emails are in compliance with all of the requirements set out in MPEP § 502.03.

The amendment or cancellation of claims by examiner’s amendment is permitted when passing an application to issue where these changes have been authorized by applicant (or his/her attorney or agent) in an interview. The examiner’s amendment should indicate that the changes were authorized, the date and type of interview, and with whom it was held.

The examiner’s amendment practice may be used to make charges against deposit accounts or credit cards under special conditions.

An examiner’s amendment can be used to make a charge against a deposit account, provided prior approval is obtained from the applicant, attorney or agent, in order to expedite the issuance of a patent on an application otherwise ready for allowance. When such an examiner’s amendment is prepared, the prior approval is indicated by identification of the name of the authorizing party, the date and type (personal or telephone) of authorization, the purpose for which the charge is made (additional claims, etc.), and the deposit account number.

Charges can also be made against a credit card in an examiner’s amendment. Once the examiner has informed applicant of the required charges, applicant must submit by facsimile, a properly completed PTO-2038, authorizing the necessary charges. After completion of processing in the Office of Finance, form PTO-2038 will be removed from the record. Office employees may not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process or trademark process fee (as opposed to information product or service fees) to a credit card. Further identifying data, if deemed necessary and requested by the applicant, should also be included in the examiner’s amendment.

Form paragraph 13.06 may be used to charge an extension of time fee in an examiner’s amendment.

At the time of allowance, substantive changes made by the examiner to the abstract must be done by an examiner’s amendment after first obtaining approval from the applicant. As noted by the court the abstract may be used to determine the meaning of claims. See Pandrol USA, LP v. Airboss Railway Products, Inc., 320 F.3d 1354, 1363 n.1, 65 USPQ2d 1985, 1996 n.1 (Fed. Cir. 2003), Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.1, 54 USPQ2d 1437, 1443 n.1 (Fed. Cir. 2000). Since the abstract may be relied upon to determine the scope of the claimed invention, examiners should review the abstract for compliance with 37 CFR 1.72(b) and point out defects noted to the applicant in the first Office action, or at the earliest point in the prosecution that the defect is noted, so that applicant may make the necessary changes to the abstract.

No examiner’s amendment may make substantive changes to the written portions of the specification, including the abstract, without first obtaining applicant’s approval.

For applications filed prior to September 16, 2012 a reference to a prior filed application, for which benefit is claimed, is required in either the first sentence(s) of the specification or in an Application Data Sheet. For applications filed after September 16, 2012 a reference to a prior filed application, for which benefit is claimed, is required in the Application Data Sheet. If the application data sheet fails to include a required reference applicant should be contacted to supply a Supplemental or Corrected Application Data Sheet, in compliance with 37 CFR 1.76(c). See MPEP § 601.05(a) and (b). To minimize the possibility of the claim for the benefit to an earlier filing date under 35 U.S.C. 119(e), 35 U.S.C. 120, 121, 365(c), or 386(c) being overlooked it is recommended that the statement, “This is a division (continuation, continuation-in-part) of Application Number -/—, filed —” appear as the first sentence(s) of the specification. For design applications see MPEP § 1504.20. In the case of an application filed under 37 CFR 1.53(b) as a division, continuation or continuation-in-part of a CPA, there would be only one reference to the series of applications assigned the same application number with the filing date cited being that of the original non-continued application. In applications claiming the benefit under 35 U.S.C. 119(e), a statement such as “This application claims the benefit of U.S. Provisional Application No. 60/ – –, filed – –” should appear as the first sentence(s) of the specification. In addition, for an application which is claiming the benefit under 35 U.S.C. 120 of a prior application which in turn claims the benefit of a provisional application under 35 U.S.C. 119(e), a suitable reference would read, “This application is a continuation of U.S. Application No. 08/ – –, filed – –, now abandoned, which claims the benefit of U.S. Provisional Application No. 60/ – –, filed – –.” Any such statements appearing elsewhere in the specification should be relocated.

References cited as being of interest by examiners when passing an application to issue will not be supplied to applicant, but foreign patent documents and non-patent literature will be scanned and added to the IFW for viewing and downloading by the applicant, if desired. The references will be cited as usual on form PTO-892, a copy of which will be attached to the Notice of Allowability, form PTOL-37.

Where an application is ready for issue except for a slight defect in the drawing not involving a change in structure, the examiner will prepare a letter indicating the change to be made and, if necessary, including a marked-up copy of the drawing showing the addition or alteration to be made. See MPEP § 608.02(w).

No other changes may be made by any person in any record of the U.S. Patent and Trademark office without the written approval of the Director of the United States Patent and Trademark Office.

In reviewing the application, all errors should be carefully noted. It is not necessary that the language be the best; it is, however, essential that it be clear in meaning, and free from errors in syntax. Any necessary examiner’s amendment is usually made at the time an application is being prepared for issue by the examiner and a copy of any examiner’s amendment is sent to the applicant as an attachment to the Notice of Allowability, PTOL-37.

Examiners will not cancel claims on the basis of an amendment which argues for certain claims and, alternatively, purports to authorize their cancellation by the examiner if other claims are allowed. See generally In re Willingham, 282 F.2d 353, 356, 127 USPQ 211, 215 (CCPA 1960).

In all instances, both before and after final rejection, in which an application is placed in condition for allowance as by an interview or amendment, applicant should be notified promptly of this fact by means of a Notice of Allowability (PTOL-37). See MPEP § 714.13 and § 1302.03.

If after reviewing, screening, or surveying an allowed application the Office of Patent Quality Assurance discovers any informality in the application suitable for correction by examiner’s amendment or in an informality in an examiner’s amendment, the Review Quality Assurance Specialist will return the application to the Technology Center (TC) personnel via the TC Director suggesting, as appropriate, specific changes for approval and correction by the examiner through the use of an examiner’s amendment.