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.

I. NOT TO BE USED FOR CONTINUED PROSECUTION

37 CFR 1.312 was never intended to provide a way for the continued prosecution of an application after it has been passed for issue. When the recommendation is against entry, a detailed statement of reasons is not necessary in support of such recommendation. The simple statement that the proposed claim is not obviously allowable and briefly the reason why is usually adequate. Where appropriate, any one of the following reasons is considered sufficient:

• (A) an additional search is required;
• (B) more than a cursory review of the record is necessary; or
• (C) the amendment would involve materially added work on the part of the Office, e.g., checking excessive editorial changes in the specification or claims.

Where claims added by amendment under 37 CFR 1.312 are all of the form of dependent claims, some of the usual reasons for nonentry are less likely to apply although questions of new matter, sufficiency of disclosure, or undue multiplicity of claims could arise.

See MPEP §§ 607 and 714.16(c) for additional fee requirements.

II. AMENDMENTS FILED AFTER PAYMENT OF ISSUE FEE

Except where the Office of Data Management has required an amendment, no amendments should be filed after the date the issue fee has been paid. See MPEP § 714.16(d), subsection III for processing an amendment required by the Office of Data Management.