714.03(a) Supplemental Amendment [R-10.2019]

Created OnMay 31, 2023

byChhabra Law Firm

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.
  - (ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).

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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.