What is the difference between a non-responsive amendment and a non-compliant amendment?

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

It’s important to distinguish between a non-responsive amendment and a non-compliant amendment in patent prosecution:

• Non-responsive amendment: This occurs when the amendment fails to address the substance of the previous Office action, such as by canceling all elected claims and presenting only non-elected claims. It is a matter of substance.
• Non-compliant amendment: This refers to amendments that fail to meet the formal requirements for amendments, such as improper markings or formatting. It is a matter of form.

The MPEP 821.03 advises examiners:

“Examiners should take care to correctly designate the issue as a non-responsive amendment, which is not to be confused with a notice of non-compliant amendment.”

A non-responsive amendment typically requires a substantive correction, while a non-compliant amendment usually requires formal corrections. Understanding this difference is crucial for properly responding to Office actions and maintaining the prosecution of your patent application.