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714.03(a) Amendment Unduly Interferes With the Preparation of an Office Action [R-2] - 700 Examination of Applications
714.03(a) Amendment Unduly Interferes With the Preparation of an Office Action [R-2]
I. PRELIMINARY AMENDMENT
37 CFR 1.115 Preliminary amendments.
(a) A preliminary amendment is an amendment that is received in the Office (§ 1.6) on or before the mail date of the first Office action under § 1.104.
**>(b)
(1) A preliminary amendment will be entered unless disapproved by the Director. A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include:<
(i) The state of preparation of a first Office action as of the date of receipt (§ 1.6) of the preliminary amendment by the Office; and
(ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.
(2) A preliminary amendment will not be disapproved if it is filed no later than:
(i) Three months from the filing date of an application under § 1.53(b);
(ii) The filing date of a continued prosecution application under § 1.53(d); or
(iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application.
(c) The time periods specified in paragraph (b)(2) of this section are not extendable.
Once the examiner has started to prepare a first Office action, entry of a preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of the first Office action. Applicants are encouraged to *>file< all preliminary amendments with the application or as soon as possible thereafter. Entry of a preliminary amendment will not be disapproved if it is filed no later than:
(A) 3 months from the filing date of the application under 37 CFR 1.53(b);
(B) 3 months from the date the national stage is entered as set forth in 37 CFR 1.491 in an international application;
(C) the filing date of a CPA under 37 CFR 1.53(d); or
(D) the last day of any suspension period requested by applicant under 37 CFR 1.103 (see MPEP § 709).
Even if the examiner has spent a significant amount of time preparing the first Office action, entry of a preliminary amendment filed within these time periods should not be disapproved under 37 CFR 1.115(b). These time periods are not extendable. See 37 CFR 1.115(c).
If a preliminary amendment is filed after these time periods and the conditions set forth in paragraph III (below) are met, entry of the preliminary amendment may be denied subject to the approval of the supervisory patent examiner (MPEP § 1002.02(d)).
See MPEP § 714.01(e) for additional information pertaining to amendments before first Office action.
II. SECOND (OR) SUBSEQUENT SUPPLE-MENTAL AMENDMENT
37 CFR 1.111 Reply by applicant or patent owner to a non-final Office action.
(a)
(1) If the Office action after the first examination (§ 1.104) is adverse in any respect, the applicant or patent owner, if he or she persists in his or her application for a patent or reexamination proceeding, must reply and request reconsideration or further examination, with or without amendment. See §§ 1.135 and 1.136 for time for reply to avoid abandonment.
**>(2) A second (or subsequent) supplemental reply will be entered unless disapproved by the Director. A second (or subsequent) supplemental reply may be disapproved if the second (or subsequent) supplemental reply unduly interferes with an Office action being prepared in response to the previous reply. Factors that will be considered in disapproving a second (or subsequent) supplemental reply include:<
(i) The state of preparation of an Office action responsive to the previous reply as of the date of receipt (§ 1.6) of the second (or subsequent) supplemental reply by the Office; and
(ii) The nature of any changes to the specification or claims that would result from entry of the second (or subsequent) supplemental reply.
*****
Generally, a second (or subsequent) supplemental reply (i.e., the third (or subsequent) reply) will be entered unless it unduly interferes with an Office action being prepared in response to a previous reply. For example, after the mailing of a first Office action, the applicant filed an amendment (the first reply) on 1/8/01, a supplemental amendment (the second reply) on 2/8/01, and a second supplemental reply (the third reply) on 2/28/01. If the examiner has updated the search and almost completed the Office action before the Office receives the third reply, and the third reply adds numerous claims that would require the examiner to update the search, then the examiner with the SPE's approval may deny the entry of the third reply.
Applicants are encouraged to include a complete reply to an outstanding Office action in the first reply to prevent the need for supplemental replies. If the conditions set forth in paragraph III (below) are met, the entry of a second (or subsequent) supplemental amendment may be denied subject to the approval of the supervisory patent examiner (MPEP § 1002.02(d)).
III. WHEN DISAPPROVAL IS APPROPRIATE
The factors that will be considered for denying entry of preliminary amendments under 37 CFR 1.115 and second (or subsequent) supplemental replies under 37 CFR 1.111 are the same. The factors include:
(A) The state of preparation of a first Office action as of the date of receipt (37 CFR 1.6) of the preliminary amendment or the second (or subsequent) supplemental reply by the Office; and
(B) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment or the second (or subsequent) supplemental reply.
The entry of a preliminary amendment or a second (or subsequent) supplemental reply >that< would unduly *>interfere< with the preparation of an Office action * may be denied if the following two conditions are met:
(A) the examiner has devoted a significant amount of time on the preparation of an Office action before the amendment or reply is received in the Office (i.e., the 37 CFR 1.6 receipt date of the amendment or reply); and
(B) the entry of the amendment or reply would require significant additional time in the preparation of the Office action.
For example, if the examiner has spent a significant amount of time to conduct a prior art search or draft an Office action before a preliminary amendment or a second (or subsequent) supplemental reply is received by the Office, the first condition is satisfied. Entry of the amendment or reply may be denied if it:
(A) amends the claims;
(B) adds numerous new claims;
(C) amends the specification to change the scope of the claims;
(D) amends the specification so that a new matter issue would be raised;
(E) includes arguments;
(F) includes an affidavit or declaration under 37 CFR 1.131 or 37 CFR 1.132; or
(G) includes evidence traversing rejections from a prior Office action,
and would require the examiner to spend significant additional time to conduct another prior art search or revise the Office action (i.e., the second condition is satisfied). This list is not an exhaustive list, and the entry of a preliminary amendment or second (or subsequent) supplemental reply may be denied in other situations that satisfy the two conditions set forth above. Once these conditions are met, the examiner should obtain the approval of the SPE before the entry of the amendment or reply may be denied.
IV. WHEN DISAPPROVAL IS INAPPRO-PRIATE
Denying entry of a preliminary amendment under 37 CFR 1.115 or a second (or subsequent) supplemental reply under 37 CFR 1.111(a)(2) is inappropriate if either:
(A) the examiner has NOT devoted a significant amount of time on the preparation of an Office action before the amendment or reply is received in the Office (i.e., the 37 CFR 1.6 receipt date of the amendment or reply); or
(B) the entry of the amendment or reply would NOT require significant additional time in the preparation of the Office action.
Thus, the amendment or reply will be entered unless it is denied entry for other reasons such as those listed in MPEP § 714.19.
For example, if before the preliminary amendment or the second (or subsequent) supplemental reply is received in the Office, the examiner has not started working on the Office action or has started, but has merely inspected the file for formal requirements, then the examiner should enter and consider the preliminary amendment or second (or subsequent) supplemental reply.
Furthermore, even if the examiner has devoted a significant amount of time to prepare an Office action prior to the date the preliminary amendment or the second (or subsequent) supplemental reply is received in the Office, it is not appropriate to disapprove the entry of such an amendment or reply if it:
(A) merely cancels some of the pending claims;
(B) amends the claims to overcome rejections under 35 U.S.C. 112, second paragraph;
(C) amends the claims to place the application in condition for allowance; or
(D) only includes changes that were previously suggested by the examiner, and would not require the examiner to spend significant additional time to revise the Office action.
If a supplemental reply is received in the Office after the mail date of an Office action, and it is not responsive to that Office action, the Office will not mail a new Office action responsive to that supplemental reply. As a courtesy, applicant may be notified that the supplemental reply is nonresponsive to the mailed Office action and that a responsive reply (under 37 CFR 1.111 or 1.113 as the situation may be) to the mailed Office action must be timely filed to avoid abandonment. Also see MPEP § 714.03 for replies not fully responsive and MPEP § 714.05 when the Office action crosses in the mail with a supplemental reply.
Form Paragraphs
Form paragraphs 7.46 and 7.47 should be used to notify applicant that the entry of a preliminary amendment or a second (or subsequent) supplemental reply (i.e., the third (or subsequent) reply) is denied because the amendment or reply unduly interferes with the preparation of an Office action.
¶ 7.46 Preliminary Amendment Unduly Interferes with the Preparation of an Office Action
The preliminary amendment filed on [1] was not entered because entry of the amendment would unduly interfere with the preparation of the Office action. See 37 CFR 1.115(b). The examiner spent a significant amount of time on the preparation of an Office action before the preliminary amendment was received. On the date of receipt of the amendment, the examiner had completed [2].
Furthermore, entry of the preliminary amendment would require significant additional time on the preparation of the Office action. Specifically, entry of the preliminary amendment would require the examiner to [3].
A responsive reply (under 37 CFR 1.111 or 37 CFR 1.113 as appropriate) to this Office action must be timely filed to avoid abandonment.
If this is not a final Office action, applicant may wish to resubmit the amendment along with a responsive reply under 37 CFR 1.111 to ensure proper entry of the amendment.
Examiner Note
1. In bracket 1, provide the date that the Office received the preliminary amendment (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8).
2. In bracket 2, provide an explanation on the state of preparation of the Office action as of the receipt date of the preliminary amendment. For example, where appropriate insert --the claim analysis and the search of prior art of all pending claims-- or --the drafting of the Office action and was waiting for the supervisory patent examiner's approval--.
3. In bracket 3, provide a brief explanation of how entry of the preliminary amendment would require the examiner to spend significant additional time in the preparation of the Office action. For example, where appropriate insert --conduct prior art search in another classification area that was not previously searched and required-- or --revise the Office action extensively to address the new issues raised and the new claims added in the preliminary amendment--.
¶ 7.47 Second (or Subsequent) Supplemental Reply Unduly Interferes with the Preparation of an Office Action
The second (or subsequent) supplemental reply filed on [1] was not entered because entry of the reply would unduly interfere with the preparation of the Office action. See 37 CFR 1.111(a)(2). The examiner spent a significant amount of time on the preparation of an Office action before the reply was received. On the date of receipt of the reply, the examiner had completed [2].
Furthermore, entry of the reply would require significant additional time in the preparation of the Office action. Specifically, entry of the reply would require the examiner to [3].
A responsive reply (under 37 CFR 1.111 or 37 CFR 1.113 as appropriate) to this Office action must be timely filed to avoid abandonment.
If this is not a final Office action, applicant may wish to resubmit the reply along with a responsive reply under 37 CFR 1.111 to ensure proper entry of the reply.
Examiner Note
1. In bracket 1, provide the date that the Office received the second (or subsequent) supplemental reply (use the date of receipt under 37 CFR 1.6, not the certificate of mailing date under 37 CFR 1.8).
2. In bracket 2, provide an explanation on the state of preparation of the Office action as of the receipt date of the reply. For example, where appropriate insert --the prior art search and analysis of all the arguments presented in the prior replies-- or --the drafting of the Office action and was waiting for the supervisory patent examiner's approval--.
3. In bracket 3, provide a brief explanation of how entry of the reply would require the examiner to spend significant additional time in the preparation of the Office action. For example, where appropriate insert --conduct prior art search in another classification area that was not previously searched and required-- or --revise the Office action extensively to address new issues raised and new claims added in the reply--.
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