How does an examiner respond to amendments filed after an appeal has been taken?

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.

Examiners are required to respond to all amendments filed after an appeal has been taken and prior to the transfer of jurisdiction to the Board. The response process is outlined in MPEP 1206:

• If the examiner denies entry of an amendment, they should use form PTOL-303 (“Advisory Action Before the Filing of an Appeal Brief”) or PTOL-304 (“Advisory Action After the Filing of an Appeal Brief”) to notify the applicant of the non-entry and the reason for non-entry.
• If the examiner indicates that an amendment would be entered, they must also state how the individual rejection(s) set forth in the final Office action will be impacted by the entry of the amendment, except for amendments that merely cancel claims or rewrite dependent claims in independent form.
• If the examiner determines that an amendment clearly places the application in condition for allowance, they may enter the amendment and allow the application.

The MPEP emphasizes: “Examiners must respond to all amendments filed after an appeal has been taken and prior to transfer of jurisdiction to the Board under 37 CFR 41.35(a).”