37 CFR § 1.116 — Amendments and affidavits or other evidence (MPEP Coverage Index) – BlueIron IP
37 CFR § 1.116 Amendments and affidavits or other evidence
Source: Patent Rule (37 CFR)BlueIron Update:
This page consolidates MPEP guidance interpreting 37 CFR § 1.116, including 219 rules 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.
Summary
When filing an amendment after a final action, practitioners must submit a notice of appeal along with an appeal brief on the same day to comply with 37 CFR 1.116.
What this section covers
- This section covers amendments filed after a final action in patent applications or appeals.
Key obligations
- Filing a notice of appeal is required when an amendment is filed after a final action.
- An appeal brief must be filed on the same date as the amendment and notice of appeal.
- Compliance with 37 CFR 1.116 is mandatory for all filings after a final action.
Practice notes
- Ensure all required documents (amendment, notice of appeal, and appeal brief) are filed on the same date to comply with 37 CFR 1.116.
- Missing the appeal brief on the same date can lead to non-compliance and potential delays in the appeal process.
Official MPEP § 1.116 — Amendments and affidavits or other evidence
Source: USPTOLast Modified: 10/30/2024 08:50:22
1.116 Amendments and affidavits or other evidence after final action and prior to appeal.
- (a) An amendment after final action must comply with § 1.114 or this section.
- (b) After a final rejection or other final action (§
1.113
) in an
application or in an ex parte reexamination filed under §
1.510
, or an
action closing prosecution (§
1.949
) in an
inter partes reexamination filed under §
1.913
, but before or on the same date of
filing an appeal (§
41.31
or §
41.61
of this
title):
- (1) An amendment may be made canceling claims or complying with any requirement of form expressly set forth in a previous Office action;
- (2) An amendment presenting rejected claims in better form for consideration on appeal may be admitted; or
- (3) An amendment touching the merits of the application or patent under reexamination may be admitted upon a showing of good and sufficient reasons why the amendment is necessary and was not earlier presented.
- (c) The admission of, or refusal to admit, any amendment after a final rejection, a final action, an action closing prosecution, or any related proceedings will not operate to relieve the application or reexamination proceeding from its condition as subject to appeal or to save the application from abandonment under § 1.135 , or the reexamination prosecution from termination under § 1.550(d) or § 1.957(b) or limitation of further prosecution under § 1.957(c) .
- (d)
- (1) Notwithstanding the provisions of paragraph
(b) of this section, no amendment other than canceling
claims, where such cancellation does not affect the scope of
any other pending claim in the proceeding, can be made in an
inter partes reexamination proceeding after the right of
appeal notice under §
1.953
except as provided in §
1.981
or
as permitted by §
41.77(b)(1)
of this title.
- (2) Notwithstanding the provisions of paragraph (b) of this section, an amendment made after a final rejection or other final action (§ 1.113 ) in an ex parte reexamination filed under § 1.510 , or an action closing prosecution (§ 1.949 ) in an inter partes reexamination filed under § 1.913 may not cancel claims where such cancellation affects the scope of any other pending claim in the reexamination proceeding except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
- (e) An affidavit or other evidence submitted after a final rejection or other final action (§ 1.113 ) in an application or in an ex parte reexamination filed under § 1.510 , or an action closing prosecution (§ 1.949 ) in an inter partes reexamination filed under § 1.913 but before or on the same date of filing an appeal (§ 41.31 or § 41.61 of this title), may be admitted upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented.
- (f) Notwithstanding the provisions of paragraph (e) of this section, no affidavit or other evidence can be made in an inter partes reexamination proceeding after the right of appeal notice under § 1.953 except as provided in § 1.981 or as permitted by § 41.77(b)(1) of this title.
- (g) After decision on appeal, amendments, affidavits and other evidence can only be made as provided in §§ 1.198 and 1.981 , or to carry into effect a recommendation under § 41.50(c) of this title.
- (1) Notwithstanding the provisions of paragraph
(b) of this section, no amendment other than canceling
claims, where such cancellation does not affect the scope of
any other pending claim in the proceeding, can be made in an
inter partes reexamination proceeding after the right of
appeal notice under §
1.953
except as provided in §
1.981
or
as permitted by §
41.77(b)(1)
of this title.
[24 FR 10332, Dec. 22, 1959; 46 FR 29183, May 29, 1981; para. (a) revised, 62 FR 53132, Oct. 10, 1997, effective Dec. 1, 1997; revised, 65 FR 14865, Mar. 20, 2000, effective May 29, 2000 (adopted as final, 65 FR 50092, Aug. 16, 2000); paras. (b) and (d) revised, 65 FR 76756, Dec. 7, 2000, effective Feb. 5, 2001; revised, 69 FR 49959, Aug. 12, 2004, effective Sept. 13, 2004]
- Abandonment
-
- Appeal Brief
- Appeal Notice
-
- Examiner Answer
- Reply Brief
- Application Types
- Continuing Applications
- Continuation Applications
-
- Correspondence Address
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-
- Common Petition Types
- Petition Make Special
-
- Reexamination Examination
- Examination Procedure
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- Examiner Allowance Review
- Amendments Practice
- Amendment Entry
- Examiner Action
- Action Mailing
-
-
- Final Rejection
- After Final Practice
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- Non Final Action
- Responding To Rejections
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- Rce Practice
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- General Requirements
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