Q: Who evaluates amendments for compliance with 37 CFR 1.121?

According to MPEP 714.18 , the examiner, not the technical support staff, is responsible for evaluating amendments for compliance with 37 CFR 1.121 . The MPEP states: "Evaluation of the amendment after final rejection for compliance with 37 CFR 1.121 should be left to the examiner, and not treated by the technical support staff before forwarding the amendment to the examiner." If an amendment is found non-compliant, the examiner will notify the applicant and attach a Notice of Non-Compliant Amendment to the advisory action. To learn more: amendments 37 CFR 1.121 compliance examiner responsibilities To learn more: 37 CFR 1.121

Question 1

Who evaluates amendments for compliance with 37 CFR 1.121?

Accepted Answer

According to MPEP 714.18, the examiner, not the technical support staff, is responsible for evaluating amendments for compliance with 37 CFR 1.121. The MPEP states: "Evaluation of the amendment after final rejection for compliance with 37 CFR 1.121 should be left to the examiner, and not treated by the technical support staff before forwarding the amendment to the examiner." If an amendment is found non-compliant, the examiner will notify the applicant and attach a Notice of Non-Compliant Amendment to the advisory action.

To learn more:

37 CFR 1.121

Question 2

When is a patent application considered "amended"?

Accepted Answer

According to MPEP 203.03, a nonprovisional patent application is considered "amended" after it has been initially acted on by the examiner, and the applicant has filed a reply to the examiner's action. The applicant's reply may include:

An election
A traverse of the examiner's action
An amendment to the application

Question 3

When are amendments under 37 CFR 1.312 entered for applications in issue?

Accepted Answer

For applications in issue, amendments filed under 37 CFR 1.312 along with a motion under 37 CFR 41.208 are not immediately entered. MPEP 714.16(b) states: "Where an amendment filed with a motion under 37 CFR 41.208(c)(2) applies to an application in issue, the amendment is not entered unless and until the motion has been granted." This means that the amendment will only be entered after the associated motion is approved, ensuring that any changes to the application are properly reviewed and authorized before being incorporated.

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Question 4

What is the relationship between a motion under 37 CFR 41.208 and an amendment under 37 CFR 1.312?

Accepted Answer

The relationship between a motion under 37 CFR 41.208 and an amendment under 37 CFR 1.312 is crucial for applications in issue. According to MPEP 714.16(b), "Where an amendment filed with a motion under 37 CFR 41.208(c)(2) applies to an application in issue, the amendment is not entered unless and until the motion has been granted." This means that the fate of the amendment is directly tied to the outcome of the motion. The amendment remains pending and is only entered into the application if the associated motion is approved, ensuring that changes are properly authorized before being incorporated into the application in issue.

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Question 5

What is the process for handling amendments under 37 CFR 1.312?

Accepted Answer

Amendments under 37 CFR 1.312 are handled as follows:

Sent to the Office of Patent Application Processing (OPAP) for scanning and uploading into the IFW.
OPAP messages the Office of Data Management, which reviews and forwards to the Technology Center (TC) that allowed the application.
TC completes the action and messages the Office of Data Management to resume issue processing.

As stated in the MPEP: 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. (MPEP 714.16(d))

To learn more:

37 CFR 1.312

Question 6

What is the procedure for handling amendments under 37 CFR 1.312 that include copied patent claims?

Accepted Answer

The procedure for handling amendments under 37 CFR 1.312 that include copied patent claims is outlined in MPEP Chapter 2300. According to MPEP 714.16(a), "See MPEP Chapter 2300 for the procedure to be followed when an amendment is received after notice of allowance which includes one or more claims copied or substantially copied from a patent." This means that examiners and patent attorneys must refer to the specific guidelines in Chapter 2300 when dealing with such amendments after a notice of allowance has been issued.

To learn more:

37 CFR 1.312

Question 7

What is the priority for processing amendments after final action?

Accepted Answer

Amendments replying to a final action are given high priority in processing. The MPEP states: "Every mail delivery should be carefully screened so that all amendments replying to a final action in which a time period is running against the applicant are promptly processed (e.g., within the next 24 hours)." This prioritization ensures that applicants receive timely Office communications to consider their next action if the application is not allowed.

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Question 8

What is the impact of amendments after final rejection on appeal rights?

Accepted Answer

Amendments submitted after a final rejection do not automatically remove the application from its appeal-ready or potentially abandoned status. As stated in MPEP 714.12:

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.

This means that even if an amendment is submitted, the applicant must still be mindful of appeal deadlines and the potential for abandonment. If an amendment is not entered or does not place the application in condition for allowance, the applicant may need to proceed with an appeal or file a request for continued examination (RCE) to avoid abandonment.

To learn more:

Question 9

What is the general rule for entering amendments under 37 CFR 1.312?

Accepted Answer

The general rule is that an amendment cannot be entered in part and refused in part. However, there are exceptions to this rule. As stated in the MPEP, "when, under 37 CFR 1.312, an amendment, for example, is proposed containing a plurality of claims or amendments to claims, some of which may be entered and some not, the acceptable claims or amendments should be entered in the application." This means that in certain circumstances, partial entry of amendments is possible.

To learn more:

37 CFR 1.312

Question 10

What is form paragraph 7.86 used for in patent examination?

Accepted Answer

Form paragraph 7.86 is used by patent examiners to notify applicants about the partial entry of an amendment under 37 CFR 1.312. The MPEP provides the following template for this form paragraph:

"The amendment filed on [1] under 37 CFR 1.312 has been entered-in-part. [2]"

In this template, [1] represents the date the amendment was filed, and [2] is where the examiner should provide an explanation of which changes have and have not been entered, along with the reasons for these decisions. This form paragraph helps ensure clear communication between the patent office and the applicant regarding the status of their amendment.

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Question 11

What is considered 'new matter' in a patent application?

Accepted Answer

'New matter' refers to any subject matter that is added to a patent application after its filing date, which was not present in the original specification, claims, or drawings. The MPEP states: Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter. (MPEP 608.04(a))

New matter can include:

Addition of wholly unsupported subject matter
Adding specific percentages or compounds after a broader original disclosure
Omission of a step from a method

It's important to note that new matter is not allowed in patent applications, as per 35 U.S.C. 132(a), which states: No amendment shall introduce new matter into the disclosure of the invention.

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Question 12

What is a bona fide attempt to respond in patent applications?

Accepted Answer

What is a bona fide attempt to respond in patent applications?

A bona fide attempt to respond in patent applications refers to an applicant's genuine effort to address all the issues raised by the examiner in the previous Office action. According to MPEP 714.03, "A bona fide attempt to respond to the prior Office action must be considered on its merits." This means that even if an amendment doesn't fully comply with all requirements, it should still be considered if it shows a sincere attempt to advance the application. The examiner should evaluate the response and determine whether it addresses the substantive issues raised in the Office action, even if it's not perfect or complete.

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Question 13

What happens when a Secrecy Order patent application is in condition for allowance?

Accepted Answer

As explained in MPEP 130, when a patent application under a Secrecy Order is in condition for allowance, "a notice of allowability (Form D-10) is issued, thus closing the prosecution." See 37 CFR 5.3(c).

After the notice of allowability is issued, any amendments received are not entered or responded to until the Secrecy Order is rescinded. Once the Secrecy Order is rescinded, amendments will be entered if they are free from objections, otherwise they will be denied entry.

Question 14

What happens to amendments filed under 37 CFR 1.312 with a motion under 37 CFR 41.208?

Accepted Answer

Amendments filed under 37 CFR 1.312 with a motion under 37 CFR 41.208 are subject to specific rules when they apply to an application in issue. According to MPEP 714.16(b), "Where an amendment filed with a motion under 37 CFR 41.208(c)(2) applies to an application in issue, the amendment is not entered unless and until the motion has been granted." This means that the amendment remains pending until the associated motion is approved, ensuring that changes are only incorporated after proper review and authorization.

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Question 15

What happens if an amendment under 37 CFR 1.312 is not approved by the examiner?

Accepted Answer

What happens if an amendment under 37 CFR 1.312 is not approved by the examiner?

If an amendment submitted under 37 CFR 1.312 is not approved by the examiner, it will not be entered into the application. According to MPEP 714.16: 'If the amendment is disapproved by the examiner, the amendment shall be placed in the application file, and a detailed statement of the reasons for not entering the amendment should be provided.' In such cases, the applicant has several options:

They can attempt to persuade the examiner to reconsider through further correspondence
They can file a continuation application to pursue the desired changes
They can allow the patent to issue without the amendment and potentially file a reissue application later

It's important to note that the time for filing a continuation application may be limited, so prompt action is often necessary if the amendment is crucial to the applicant's goals.

To learn more:

37 CFR 1.312

Question 16

What does MPEP 714.21 cover?

Accepted Answer

MPEP 714.21 covers amendments that are inadvertently entered but have no legal effect. However, without access to the full text, I cannot provide specific details or quotes from this section.

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Question 17

What are the requirements for signing amendments in patent applications?

Accepted Answer

Amendments and other papers filed in a patent application must be signed by specific individuals as outlined in 37 CFR 1.33(b):

A patent practitioner of record
A patent practitioner not of record who acts in a representative capacity under the provisions of 37 CFR 1.34
The applicant (37 CFR 1.42)

It's important to note that for juristic entities (e.g., corporations), 37 CFR 1.33(b)(3) specifies:

"Unless otherwise specified, all papers submitted on behalf of a juristic entity must be signed by a patent practitioner."

This requirement ensures that juristic entities are properly represented in patent proceedings.

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Question 18

What are the requirements for amendments after notice of allowance under 37 CFR 1.312?

Accepted Answer

What are the requirements for amendments after notice of allowance under 37 CFR 1.312?

Amendments after notice of allowance under 37 CFR 1.312 must meet specific requirements:

They must be filed before or with payment of the issue fee
They cannot affect the scope of the claims or require substantial additional examination
They are typically limited to matters of form or correction of typographical errors
The examiner must approve the amendment before it can be entered

As stated in MPEP 714.16: 'Any amendment filed pursuant to this section must be accompanied by the fees set forth in 37 CFR 1.17(h), if not previously paid.' This emphasizes the importance of proper fee payment when submitting such amendments.

To learn more:

37 CFR 1.312

Question 19

What are the options for amendments after final rejection?

Accepted Answer

After a final rejection, an applicant has several options for amendments:

Cancel claims or comply with form requirements from a previous Office action
Present rejected claims in better form for appeal consideration
Submit amendments touching the merits of the application, if good and sufficient reasons are shown

As stated in MPEP 714.12: Any amendment that will place the application either in condition for allowance or in better form for appeal may be entered. However, the examiner's approval is generally required for amendments filed after final action.

To learn more:

Question 20

How should an examiner handle partial entry of amendments under 37 CFR 1.312?

Accepted Answer

When an examiner decides to enter part of an amendment under 37 CFR 1.312, they should follow these steps:

Enter the acceptable claims or amendments in the application
Renumber the claims if necessary to maintain consecutive numbering
Use the Strike-Out Line tool to cross out any refused claims or amendments
Submit a Response to Rule 312 Communication form PTO-271
Forward the form to the supervisory patent examiner for approval

The MPEP states, "The examiner should then submit a Response to Rule 312 Communication form PTO-271 recommending the entry of the acceptable portion of the amendment and the nonentry of the remaining portion together with their reasons therefor." This process ensures proper documentation and approval of partial amendment entries.

To learn more:

37 CFR 1.312

Question 21

How does revocation of power of attorney affect pending amendments in a patent application?

Accepted Answer

When a power of attorney is revoked, it's important to understand its impact on pending amendments in a patent application. According to MPEP 402.05:

Any amendments made in an application after the filing date of the application will not be effective to revoke a power of attorney.

This means that if an applicant submits an amendment to revoke a power of attorney after the application's filing date, that amendment will not be effective in revoking the power of attorney. To properly revoke a power of attorney, the applicant must follow the specific procedures outlined in the MPEP, such as submitting a separate revocation document or a new power of attorney.

To learn more:

Question 22

How do I amend my application to include inadvertently omitted material under 37 CFR 1.57(b)?

Accepted Answer

To amend your application to include inadvertently omitted material under 37 CFR 1.57(b), you must:

File an amendment to include the omitted material within the time period set by the USPTO
Ensure the amendment is filed before the close of prosecution or abandonment of the application
Supply a copy of the prior-filed application (unless it's a US application filed under 35 U.S.C. 111)
Provide an English translation if the prior-filed application is in a foreign language
Identify where the omitted material can be found in the prior-filed application

The MPEP states: "The application must be amended to include the inadvertently omitted portion of the specification or drawing(s) within any time period set by the Office, but in no case later than the close of prosecution as defined by 37 CFR 1.114(b), or abandonment of the application, whichever occurs earlier."

Question 23

How can I amend 'Large Tables' submitted in ASCII plain text format?

Accepted Answer

To amend 'Large Tables' submitted in ASCII plain text format, follow these steps as per 37 CFR 1.58(g):

Submit a replacement ASCII plain text file via the USPTO patent electronic filing system or on a read-only optical disc
Label any read-only optical disc as 'REPLACEMENT MM/DD/YYYY' with the date of creation
Request incorporation by reference of the replacement file in a separate paragraph of the specification
Provide a statement identifying the location of all deletions, replacements, or additions
Include a statement that the replacement file contains no new matter

Note that amendments to information on a read-only optical disc must be made using a replacement read-only optical disc, not via the USPTO patent electronic filing system.

To learn more:

Question 24

How are trade secret materials handled when submitted in amendments or arguments?

Accepted Answer

When trade secret, proprietary, or protective order materials are submitted as part of amendments, arguments for patentability, or affidavits, they are treated differently than those submitted under MPEP § 724.02. The MPEP states:

If any trade secret, proprietary, and/or protective order materials are submitted in amendments, arguments in favor of patentability, or affidavits under 37 CFR 1.130, 1.131 or 1.132, they will be made of record in the file and will not be given any special status.

This means that such materials will become part of the public record and will not receive the confidential treatment provided by the procedures in MPEP § 724.02. Applicants should be cautious about including sensitive information in these types of submissions if they wish to maintain confidentiality.

To learn more:

Question 25

How are amendments treated after an Ex parte Quayle action?

Accepted Answer

After an Ex parte Quayle action, amendments are treated similarly to amendments after final rejection. MPEP 714.14 states:

Amendments touching the merits are treated in a manner similar to amendments after final rejection, though the prosecution may be continued as to the formal matters.

This means that while amendments addressing the formal matters are generally entered, substantive amendments may be treated more restrictively. For guidance on handling such amendments, refer to MPEP § 714.12 and MPEP § 714.13.

To learn more:

Question 26

How are amendments processed in patent applications?

Accepted Answer

Amendments in patent applications are processed and distributed to examiners through the technical support staff sections. As stated in MPEP 714.18: "All amendments received in the technical support staff sections are processed and distributed to the examiners." This ensures that examiners receive the amendments promptly for review and action.

To learn more:

Question 27

Can drawings be amended after the application filing date without introducing new matter?

Accepted Answer

Can drawings be amended after the application filing date without introducing new matter?

Amending drawings after the application filing date without introducing new matter is possible, but it requires careful consideration. According to MPEP 608.04(a):

'An amendment to the drawings, however, which adds a feature not disclosed in the original drawings or specification involves new matter.'

This means that while you can make amendments to drawings, any new features or elements not disclosed in the original application will be considered new matter. Acceptable amendments typically include:

Correcting minor errors or inconsistencies
Improving clarity or resolution of existing features
Adding reference numbers or labels to existing elements

It's crucial to ensure that any changes to drawings are fully supported by the original disclosure. If significant changes are needed that would introduce new matter, filing a continuation-in-part application may be necessary.

To learn more:

MPEP 608.04(a)

Question 28

Can an amendment after allowance introduce new matter under 37 CFR 1.312?

Accepted Answer

Can an amendment after allowance introduce new matter under 37 CFR 1.312?

No, amendments after allowance under 37 CFR 1.312 cannot introduce new matter. As stated in MPEP 714.16: 'No amendment may introduce new matter into the disclosure of an application after the filing date of the application.' This rule applies to all amendments, including those after allowance. Amendments after allowance are typically limited to correcting formal matters or typographical errors. Any attempt to introduce new subject matter would be rejected and could potentially delay the issuance of the patent.

To learn more:

37 CFR 1.312

Question 29

Can amendments be made when filing a CPA?

Accepted Answer

Amendments can be made when filing a Continued Prosecution Application (CPA), but there are important restrictions and considerations:

Any changes must be made as an amendment to the prior application as it existed before filing the CPA
No new matter can be introduced in a CPA
Preliminary amendments filed with a CPA are generally entered, but could be denied entry if they unduly interfere with examination
New specifications filed with a CPA request are treated as substitute specifications and must comply with 37 CFR 1.125

The MPEP states: Any new change must be made in the form of an amendment to the prior application as it existed prior to the filing of an application under this paragraph. No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application.

Regarding preliminary amendments, the MPEP advises: Applicants are also encouraged to file all preliminary amendments at the time of filing a CPA because the entry of any preliminary amendment filed after the filing date of the CPA could be denied under 37 CFR 1.115 if the preliminary amendment unduly interferes with the preparation of a first Office action.

If more time is needed to prepare amendments, applicants can request a three-month suspension of action under 37 CFR 1.103(b) at the time of filing the CPA.

For more information on amendments, visit: amendments.

For more information on continued prosecution application, visit: continued prosecution application.

For more information on CPA, visit: CPA.

For more information on patent applications, visit: patent applications.

Question 30

Can amendments be made to a provisional application after filing?

Accepted Answer

Generally, amendments to a provisional application are not permitted after the filing date, except for those required to comply with applicable regulations. The MPEP clearly states:

Amendments, other than those required to make the provisional application comply with applicable regulations, are not permitted after the filing date of the provisional application. (MPEP 601.01(b))

This restriction helps maintain the integrity of the provisional application as a snapshot of the invention at the time of filing.

To learn more:

Question 31

Are supplemental oaths or declarations considered amendments under 37 CFR 1.312?

Accepted Answer

No, supplemental oaths or declarations filed after allowance are not considered amendments under 37 CFR 1.312. The MPEP explicitly states:

"They should not be filed or considered as amendments under 37 CFR 1.312, since they make no change in the wording of the papers on file."

This means that supplemental oaths or declarations do not alter the content of the application and are treated differently from post-allowance amendments.

To learn more:

37 CFR 1.312

Question 32

Are additional fees required for partial entry of amendments under 37 CFR 1.312?

Accepted Answer

When considering partial entry of amendments under 37 CFR 1.312, the MPEP advises caution regarding fees. Specifically, it states:

"Entry in part is not recommended unless the full additional fee required, if any, accompanies the amendment."

This means that if there are any additional fees associated with the amendment, the full amount should be paid even if only part of the amendment is being entered. For more information on fees, the MPEP refers to MPEP § 607 and MPEP § 714.16(c). Applicants should ensure they understand and comply with all fee requirements when submitting amendments under 37 CFR 1.312.

To learn more:

37 CFR 1.312

Here’s the complete FAQ:

MPEP 130-Examination of Secrecy Order Cases (1)

What happens when a Secrecy Order patent application is in condition for allowance?

MPEP 200 - Types and Status of Application; Benefit and Priority (1)

Can amendments be made when filing a CPA?

MPEP 200 - Types and Status of Application; Benefit and Priority Claims (2)

When is a patent application considered “amended”?

How do I amend my application to include inadvertently omitted material under 37 CFR 1.57(b)?

MPEP 201 - Types of Applications (1)

Can amendments be made when filing a CPA?

MPEP 203 - Status of Applications (1)

When is a patent application considered “amended”?

MPEP 217-Incorporation by Reference Under 37 CFR 1.57(b) (1)

How do I amend my application to include inadvertently omitted material under 37 CFR 1.57(b)?

MPEP 400 - Representative of Applicant or Owner (2)

What are the requirements for signing amendments in patent applications?

How does revocation of power of attorney affect pending amendments in a patent application?

Patent Law (10)

When is a patent application considered “amended”?

What is considered ‘new matter’ in a patent application?

What happens when a Secrecy Order patent application is in condition for allowance?

What are the requirements for signing amendments in patent applications?

How does revocation of power of attorney affect pending amendments in a patent application?

How do I amend my application to include inadvertently omitted material under 37 CFR 1.57(b)?

Can drawings be amended after the application filing date without introducing new matter?

Can drawings be amended after the application filing date without introducing new matter?

Can amendments be made when filing a CPA?

Can amendments be made to a provisional application after filing?

Are supplemental oaths or declarations considered amendments under 37 CFR 1.312?

Patent Procedure (9)

When is a patent application considered “amended”?

What is considered ‘new matter’ in a patent application?

What are the requirements for signing amendments in patent applications?

How does revocation of power of attorney affect pending amendments in a patent application?

How do I amend my application to include inadvertently omitted material under 37 CFR 1.57(b)?

Can drawings be amended after the application filing date without introducing new matter?

Can drawings be amended after the application filing date without introducing new matter?

Can amendments be made when filing a CPA?

Can amendments be made to a provisional application after filing?

Are supplemental oaths or declarations considered amendments under 37 CFR 1.312?