PATENT-APPLICATION AMENDMENT

patent-application amendment.A modification to a patent application, usu. narrowing or eliminating some claims in response to an examiner’s rejection. [Cases: Patents  109. C.J.S. Patents §§ 152–155.]

amendment after allowance.An amendment submitted to the U.S. Patent and Trademark Office after the PTO has mailed notice of a patent application’s approval. • Once a notice of allowance has been mailed, prosecution of the application is closed on the merits, and the entry of any amendment is within the discretion of the patent examiner. Amendments after allowance commonly address such matters as an amendment to the specification or claims, a change in the drawings or the list of inventors, and the submission of prior art. Amendments that merely correct formal matters in the specification or drawings, change the claims without changing their scope, or cancel a claim are typically approved by the Office. Amendments of greater significance require approval of the supervisory examiner under policies established by the group director. — Also termed 312 amendment; Rule 312 amendment. See amendment after payment of issue fee.

amendment after appeal.An amendment made after an appeal is taken from a patent application’s final rejection. • Such an amendment is not made as a matter of right but is frequently allowed if it puts the case in better form for consideration on appeal or helps implement an examiner’s recommendation.

amendment after final action.An amendment made after final rejection of the patent application. • The amendment may drop claims but not add them. To be entered, it may make changes in form, but may not raise new issues for the examiner. — Also termed Rule 116 amendment.

amendment after payment of issue fee.An amendment made by the applicant after the application has been allowed and the issue fee paid. • Such an amendment is not made as a matter of right but is governed by 37 CFR § 1.312. It must be accompanied by a petition to the Commissioner showing good and sufficient reasons why the amendment was not presented earlier.

See amendment after allowance.

amendment before first action.See preliminary amendment.

amendment in excess of filing fee.An amendment to a patent application that increases the

number of claims in the original application and requires payment of an additional fee.

preliminary amendment.An amendment filed before the U.S. Patent and Trademark Office issues an office action on a patent application. • An amendment that is not filed with the original application is not considered part of the original disclosure. — Also termed amendment before first action.

Rule 116 amendment.See amendment after final action.

Rule 312 amendment.See amendment after allowance.

312 amendment.See amendment after allowance.

[Blacks Law 8th]