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 22314

In the event that the class and subclass in which the application is classified has been transferred to another TC after the application was allowed, the proposed amendment, file and drawing (if any) are transmitted directly to said other TC and the Publishing Division notified. If the examiner who allowed the application is still employed in the U.S. Patent and Trademark Office but not in said other TC, 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.

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.

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 22206