Amending a Patent Application After Allowance

The amendment of a patent application after allowance is not a matter of right according to 37 CFR 1.132 which states, “No amendment may be made as a matter of right in an application after mailing of the notice of allowance.  Any amendment filed pursuant to this section must be filed before or with the payment of the issue fee, and may be entered on the recommendation of the primary examiner, approved by the Director, without withdrawing the application from issue.”

Examiner’s Discretion

The Examiner, however, has the authority to enter amendments submitted after a Notice of Allowance that embody merely the correction of formal matters in the specification or drawing, or formal matters in a claim without changing the scope thereof, or the cancellation of claims from the application, without forwarding to the supervisory patent examiner for approval.

The primary examiner may consider and, if proper, recommend entry of amendments shown to:

  1. be necessary for proper disclosure or protection of the invention, and
  2. require no substantial amount of additional work on the part of the USPTO.

Requirements

The requirements of pointing out the patentable novelty of any claim sought to be added or amended, apply in the case of an amendment after allowance, as in ordinary amendments.  As to amendments affecting the disclosure, the scope of any claim, or that add a claim, the remarks accompanying the amendment must fully and clearly state the reasons on which reliance is placed to show:

  • (A) why the amendment is needed;
  • (B) why the proposed amended or new claims require no additional search or examination;
  • (C) why the claims are patentable; and
  • (D) why they were not presented earlier.

Deadline for Filing After-Allowance Amendment

A post-allowance amendment must be filed on or before payment of the issue fee.

Is a Continuation a Better Option?

Due to the uncertainty of whether a post-allowance amendment would be entered, a better route may be to let the allowed application proceed to grant and file a continuation to pursue different claims.  That way, the grant of the parent application will not be held up, and the applicant may pursue different claims that will hopefully lead to a second patent.

If a proposed after-allowance amendment does not qualify under 37 CFR 1.132, then options would include:

  1. withdrawing the case from issue by filing a request for continued examination with an amendment; or
  2. allowing the case to issue and filing a continuation application.
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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.