When is a supplemental amendment appropriate?
As suggested by its name, a supplemental amendment is an additional reply to a patent Office Action. Supplemental replies should be filed only under the following circumstances:
(A) Cancellation of a claim(s);
See MPEP 714.02
(B) Adoption of the examiner suggestion(s);
(C) Placement of the application in condition for allowance;
(D) Reply to an Office requirement made after the first reply was filed;
(E) Correction of informalities (e.g., typographical errors); or
(F) Simplification of issues for appeal.
Knowing when and how to use supplemental amendments can be a very useful tool to advance the prosecution of utility patent applications.
Why file a supplemental amendment?
Often times, the primary reason for considering a supplemental reply is the avoidance of USPTO extension fees. If you are facing a quickly approaching deadline, you may file an original Office Action response to avoid further extension fees. Suppose that after your original response is filed, a few minor issues remain which may be resolved by a supplemental amendment. If those remaining issues qualify under at least one of the conditions above, you may be able to file a supplemental reply during an extended period without paying the USPTO extension fee.
Supplemental response after Examiner Interview
Patent examiners have busy schedules, or so it seems. It is not always easy or possible to schedule an Examiner Interview prior to an Office Action deadline. To avoid further extension fees, an applicant may want to reply to an Office Action by a particular deadline and then conduct the interview. To the extent that the interview results in additional suggestions or requirements by the examiner, a supplemental amendment promptly field after the interview may be favorably received.
Supplemental response after inadvertent incomplete reply
Applicants are encouraged to file Office Action responses that are complete and fully responsive. Sometimes, a particular issue raised in the Office Action may be inadvertently missed in the original reply. A supplemental reply may be appropriate under such circumstances where the omission was inadvertent.
Streamlining your patent application
The goal of a supplemental reply should be to streamline the patent application process. If an additional Office Action can be avoided or the issues narrowed as a result of a supplemental response, then the probability is higher that such a filing would be well received.
Keep in mind that supplemental replies are not a matter of right. While the USPTO might, as a courtesy, notify the applicant that a supplemental amendment was not entered, no further Office Actions should be expected. If used sparingly and under the right circumstances, a supplemental reply can move the case forward efficiently.
