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.