Can you file an amendment after allowance?

Can a patent application be amended after allowance?

Maybe. An amendment after a Notice of Allowance in a patent application is not a matter of right. This discretionary filing is governed by 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.”

See MPEP § 714.16

Let’s take a look at circumstances that might allow for amending an allowed patent application.

What is a Rule 312 amendment after allowance?

An after-allowance amendment is also known as a Rule 312 amendment, or 312 amendment for short.

312 amendment up to Examiner’s discretion

Certain Rule 312 amendments may be more easily entered. For example, the Examiner 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.

What are the requirements for a Rule 312 amendment?

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.

Can you file a post-allowance amendment after paying the issue fee?

No. 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.

Thinking of filing an amendment after allowance?

Would your proposed amendments would broaden the scope of the claims? If so, there is a good probability that such a Rule 312 amendment may be rejected. A potentially better alternative would be a continuation application.

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Frenda Williams
Frenda Williams
2023-02-21
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2023-02-20
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2023-02-20
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