Amending Patent Claims After Allowance Under 37 CFR §1.312 – Florida Patent Lawyer Blog

Written by Mark Terry   

As a Miami Patent Attorney with an active patent prosecution docket, I feel as if I’ve encountered every possible patent prosecution situation out there. But I was recently faced with a situation I had not previously encountered.

At issue was my client’s patent application for project management software. The Examiner at the U.S. Patent and Trademark Office called me to ask if I would agree to an Examiner’s Amendment, to which I agreed. Subsequently, the Examiner issues an Examiner’s Amendment and a Notice of Allowance all at once. But after reviewing the Examiner’s Amendment, I noticed there were a few minor typos in the Examiner’s amended claims: a space, a semi-colon and the article “a” were missing from a phrase in the claims. Previously, the only method I had used to amend claims after Allowance was to file a Continuation or a Request for Continued Examination and then clear up the claims in the new application. After doing some research in the Manual for Patent Examining Procedure (MPEP), however, I found that although the aforementioned approaches are adequate in cases where substantive amendments must be made to the claims, there is a much simpler and easier method for making minor claim amendments after Allowance.

MPEP §714.16 states that “[T]he primary examiner … has authority to enter amendments submitted after Notice of Allowance of an application which embody merely the correction of … formal matters in a claim without changing the scope thereof, … without forwarding to the supervisory patent examiner for approval.” MPEP §714.16 further states that “where amendments of the type noted are shown … to require no substantial amount of additional work on the part of the Office, they may be considered and, if proper, entry may be recommended by the primary examiner.”

In this case, I simply filed an Amendment After Allowance Under 37 CFR §1.312 and added a semi-colon, the word “a” and a space to certain claims, which does not change the scope of the claims and which required no substantial amount of additional work on the part of the Office. Thus, the Examiner entered my amendment and the patent was issued with no appreciable delay. This illustrates a good tool that should be placed in every patent practitioner’s toolbox.



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