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1302.04 Examiner's Amendments and Changes [R-2] - 1300 Allowance and Issue
1302.04 Examiner's Amendments and Changes [R-2]
Except by formal examiner's amendment duly signed or as hereinafter provided, no corrections, erasures, or interlineations may be made in the body of written portions of the specification or any other paper filed in the application for patent. (See 37 CFR 1.121.)
*>If the application file is a paper file, an< informal examiner's amendment may be used for the correction of the following obvious errors and omissions only in the body of the written portions of the specification and may only be made with pen by the examiner of the application who will then initial in the margin and assume full responsibility for the change:
(A) Misspelled words.
(B) Disagreement of a noun with its verb.
(C) Inconsistent "case" of a pronoun.
(D) Disagreement between a reference character as used in the description and on the drawing. The character may be corrected in the description but only when the examiner is certain of the propriety of the change.
(E) Entry of "Patent No........." or "Patent Application Publication No..." to identify a patent which has been granted on a U.S. application> or the publication of a U.S. application, respectively,< referred to by application number in the specification if the >domestic< priority reference is not in an application data sheet.
(F) Entry of "abandoned" if a U.S. patent application referred to by application number in the specification, or in the application data sheet has become abandoned.
(G) Correction of reversed figure numbers. Garrett v. Cox, 233 F.2d 343, 345, 110 USPQ 52, 54 (CCPA 1956).
(H) Entry of "Patent Application No. ..." to identify a patent application in an otherwise allowable application filed under former 37 CFR 1.60 or 37 CFR 1.62 (see MPEP § 201.11).
(I) Other obvious minor grammatical errors such as misplaced or omitted commas, improper parentheses, quotation marks, etc.
(J) Obvious informalities in the application, other than the ones noted above, or of purely grammatical nature.
**>Informal examiner's amendments are not permitted if the application is an Image File Wrapper (IFW) application. Any amendment of an IFW application must be by way of a formal examiner's amendment or be an amendment made by the applicant.<
For continuing applications filed under 37 CFR 1.53(b), where a reference to the parent application has been inadvertently omitted by the applicant, an examiner should not add a reference to the prior application without the approval of the applicant and a formal examiner's amendment since applicant may decide to delete the priority claim in the application filed under 37 CFR 1.53(b). **>Furthermore, a petition under 37 CFR 1.78 to accept an unintentionally delayed benefit claim may be required if the application is a utility or plant application filed on or after November 29, 2000. See MPEP § 201.11.<
When correcting originally filed papers > of applications with a paper application file wrapper<, clean red ink must be used (not blue or black ink).
A formal examiner's amendment may be used to correct all other informalities in the body of the written portions of the specification as well as all errors and omissions in the claims, but such corrections must be made by a formal examiner's amendment, signed by the primary examiner, placed in the file and a copy sent to applicant. The changes specified in the amendment are entered by the technical support staff in the regular way. A formal examiner's amendment should include form paragraph 13.02 and form paragraph 13.02.01. Form paragraph 13.02.02 should be used if an extension of time is required.
¶ 13.02 Formal Examiner's Amendment
An examiner's amendment to the record appears below. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
Examiner Note
This form paragraph is NOT to be used in a reexamination proceeding (use form paragraph 22.06 instead).
¶ 13.02.01 Examiner's Amendment Authorized
Authorization for this examiner's amendment was given in a telephone interview with [1] on [2].
**>¶ 13.02.02 Extension of Time and Examiner's Amendment Authorized by Telephone
An extension of time under 37 CFR 1.136(a) is required in order to make an examiner's amendment which places this application in condition for allowance. During a telephone conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension and authorized the following examiner's amendment. Should the changes and/or additions be unacceptable to applicant, an amendment may be filed as provided by 37 CFR 1.312. To ensure consideration of such an amendment, it MUST be submitted no later than the payment of the issue fee.
Examiner Note
See MPEP § 706.07(f), item (J) which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
<Although 37 CFR 1.121 has been amended to require amendments to the specification/claims to be made **>in compliance with 37 CFR 1.121(b)(1), (b)(2), or (c), where appropriate<, 37 CFR 1.121(g) permits the Office to make amendments to the specification, including the claims, by examiner's amendments without **>the need to comply with the requirements of 37 CFR 1.121(b)(1), (b)(2), or (c)< in the interest of expediting prosecution and reducing cycle time. Examiners may continue to make additions or deletions of subject matter in the specification, including the claims, in examiner's amendments by instructions to make the change at a precise location in the specification and/or the claims.
As an alternative, the examiner's amendment utilizing paragraph/claim replacement can be created by the examiner with authorization from the applicant. The examiner's amendment can also be created from a facsimile transmission or e-mailed amendment received by the examiner and referenced in the examiner' s amendment and attached thereto. Any subject matter, in clean version form (containing no brackets or underlining), to be added to the specification/claims should be set forth separately by applicant in the e-mail or facsimile submission apart from the remainder of the submission. A clean version of a paragraph/claim, or portion of a paragraph/claim, submitted by applicant in a fax or e-mail, should be printed and attached to the examiner's amendment and may be relied on as part of the examiner's amendment. The examiner should mark "requested" on the entire attachment to indicate that the fax or e-mail was requested by the examiner, so as to not lead to a reduction in patent term adjustment (37 CFR 1.704(c)(8)). As the attachment is made part of the examiner's amendment, it does not get a separate PALM code and will not trigger any reduction in patent term adjustment. A paper copy of the entire e-mail or facsimile submission should be entered in the application file. Examiners are not required to electronically save any e-mails once any e-mails or attachments thereto are printed and become part of an application file record. The e-mail practice that is an exception for examiner's amendments is restricted to e-mails to the examiner from the applicant and should not be generated by the examiner to the applicant unless such e-mails are in compliance with all of the requirements set out in MPEP § 502.03.
The amendment or cancellation of claims by formal examiner's amendment is permitted when passing an application to issue where these changes have been authorized by applicant (or his/her attorney or agent) in a telephone or personal interview. The examiner's amendment should indicate that the changes were authorized, the date and type (personal or telephone) of interview, and with whom it was held.
The examiner's amendment practice may be used to make charges against deposit accounts or credit cards under special conditions.
An examiner's amendment can be used to make a charge against a deposit account, provided prior approval is obtained from the applicant, attorney or agent, in order to expedite the issuance of a patent on an application otherwise ready for allowance. When such an examiner's amendment is prepared, the prior approval is indicated by identification of the name of the authorizing party, the date and type (personal or telephone) of authorization, the purpose for which the charge is made (additional claims, etc.), and the deposit account number.
Charges can also be made against a credit card in an examiner's amendment. Once the examiner has informed applicant of the required charges, applicant must submit by facsimile, a properly completed and signed PTO-2038, authorizing the necessary charges. After completion of processing in the Office of Finance, form PTO-2038 will be removed from the record. Office employees may not accept oral (telephonic) instructions to complete the Credit Card Payment Form or otherwise charge a patent process or trademark process fee (as opposed to information product or service fees) to a credit card. Further identifying data, if deemed necessary and requested by the applicant, should also be included in the examiner's amendment.
Form paragraph 13.06 may be used to charge an extension of time fee in an examiner's amendment.
**>¶ 13.06 Extension of Time by Examiner's Amendment
An extension of time under 37 CFR 1.136(a) is required to place this application in condition for allowance. During a telephone conversation conducted on [1], [2] requested an extension of time for [3] MONTH(S) and authorized the Director to charge Deposit Account No. [4] the required fee of $ [5] for this extension.
Examiner Note
1. See MPEP § 706.07(f), item J which explains when an extension of time is needed in order to make amendments to place the application in condition for allowance.
2. When an examiner's amendment is also authorized, use form paragraph 13.02.02 instead.
<**>At the time of allowance, substantive changes made by the examiner to the abstract must be done by a formal examiner's amendment after first obtaining approval from the applicant. As noted by the court in recent decisions, the abstract may be used to determine the meaning of claims. See Pandrol USA, LP v. Airboss Railway Products, Inc., 320 F.3d 1354, 1363 n.1, 65 USPQ2d 1985, 1996 n.1 (Fed. Cir. 2003), Hill-Rom Co. v. Kinetic Concepts, Inc., 209 F.3d 1337, 1341 n.1, 54 USPQ2d 1437, 1443 n.1 (Fed. Cir. 2000). Since the abstract may be relied upon to determine the scope of the claimed invention, examiners should review the abstract for compliance with 37 CFR 1.72(b) and point out defects noted to the applicant in the first Office action, or at the earliest point in the prosecution that the defect is noted, so that applicant may make the necessary changes to the abstract.
No examiner's amendment, whether formal or informal, may make substantive changes to the written portions of the specification, including the abstract, without first obtaining applicant's approval.<
The fact that applicant is entitled to an earlier U.S. effective filing date under 35 U.S.C. 120, 121, or 365(c) or 35 U.S.C. 119(e) is sometimes overlooked. To minimize this possibility, >and for the claim to the benefit of the earlier filing date to be proper,< the statement that, "This is a division (continuation, continuation-in-part) of Application Number -/---, filed ---" should appear as the first sentence of the *>specification<, or in an application data sheet of applications other than CPAs claiming priority under 35 U.S.C. 120, except in the case of design applications where it should appear as set forth in MPEP § 1504.20. The request for a CPA >(note that effective July 14, 2003, CPA practice has been eliminated as to utility and plant applications)< filed under 37 CFR 1.53(d) is itself the specific reference, as required by 35 U.S.C. 120 and 37 CFR 1.78(a)(2), to every application assigned the same application number identified in the request. In the case of an application filed under 37 CFR 1.53(b) as a division, continuation or continuation-in-part of a CPA, there would be only one reference to the series of applications assigned the same application number with the filing date cited being that of the original non-continued application. In applications claiming priority under 35 U.S.C. 119(e), a statement such as "This application claims the benefit of U.S. Provisional Application No. 60/ - --, filed - --" should appear as the first sentence of the *>specification< or in an application data sheet. In addition, for an application which is claiming the benefit under 35 U.S.C. 120 of a prior application which in turn claims the benefit of a provisional application under 35 U.S.C. 119(e), a suitable reference would read, "This application is a continuation of U.S. Application No. 08/ - --, filed - --, now abandoned, which claims the benefit of U.S. Provisional Application No. 60/ - --, filed - --." The status (whether patented or abandoned) of the nonprovisional application(s) for which priority is claimed should also be included. Any such statements appearing elsewhere in the specification should be relocated or made in an application data sheet. **
References cited as being of interest by examiners when passing an application to issue will not be supplied to applicant. The references will be cited as usual on form PTO-892, a copy of which will be attached to the Notice of Allowability, form PTOL-37.
Where an application is ready for issue except for a slight defect in the drawing not involving a change in structure, the examiner will prepare a letter indicating the change to be made and ** >, if necessary, including a marked-up copy of the drawing showing< the addition or alteration to be made. See MPEP § 608.02(w).
No other changes may be made by any person in any record of the U.S. Patent and Trademark office without the written approval of the ** >Director of the United States Patent and Trademark Office<.
In reviewing the application, all errors should be carefully noted. It is not necessary that the language be the best; it is, however, essential that it be clear in meaning, and free from errors in syntax. Any necessary examiner's amendment is usually made at the time an application is being prepared for issue by the examiner **> and a< copy of any formal examiner's amendment is sent to >the< applicant **>as an attachment to the Notice of Allowability, PTOL-37<.
Examiners will not cancel claims on the basis of an amendment which argues for certain claims and, alternatively, purports to authorize their cancellation by the examiner if other claims are allowed. See generally In re Willingham, 282 F.2d 353, 356, 127 USPQ 211, 215 (CCPA 1960).
In all instances, both before and after final rejection, in which an application is placed in condition for allowance as by an interview or amendment, applicant should be notified promptly of this fact by means of a Notice of Allowability (PTOL-37). See MPEP § 714.13 and § 1302.03.
If after reviewing, screening, or surveying an allowed application in the Office of Patent Quality *>Assurance<, an error or omission of the type noted in items (A) through (I) under the second paragraph of this section is noted, the error or omission may be corrected by the **>Review Quality Assurance Specialist< in the same manner as set forth in the second paragraph. Since all other obvious informalities may only be corrected by a formal examiner's amendment, if the Office of Patent Quality *>Assurance< discovers any such informality, the **>Review Quality Assurance Specialist< will return the application to the Technology Center (TC) personnel via the TC Director suggesting, as appropriate, specific changes for approval and correction by the examiner through the use of an examiner's amendment.
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