Patent Application Amendment After Allowance

Summary

This template is for an amendment after receipt of a Notice of Allowability from the United States Patent Office (USPTO) in a patent application. This template includes practical guidance and drafting notes. Amendments after allowance are made under 37 C.F.R. § 1.312, which provides as follows: No amendment may be made as a matter of right in an application after the 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. Amendments under 37 C.F.R. § 1.312 are typically made in response to either an examiner or the applicant noting a minor informality. In the Allowability Notice, which appears on page 2 of the Notice of Allowability, the examiner may indicate, for example, that an incorrect number appears on one of the drawing figures or that one of the claims is missing its concluding period. At this stage, the application has been allowed and, thus, any requested amendments should not be directed towards patentability. Similarly, in reviewing the application, the applicant may notice a minor informality and voluntarily submit an amendment to correct the defect. Note that 37 C.F.R. § 1.312 does not require an amendment after allowance to be made only in response to an issue raised in a Notice of Allowability. You are free to make other amendments at this point, but, as noted in 37 C.F.R. § 1.312, the USPTO might not enter them. The entry of the amendments is entirely at the discretion of the Director. Also, note that an amendment under 37 C.F.R. § 1.312 must be filed either before or with payment of the issue fee, but never after. Keep in mind that your amendment will form part of the intrinsic record that may later become important in patent enforcement and validity proceedings. Courts may consult amendments to help construe claim limitations and evaluate whether the applicant disclaimed particular claim scope prior to issue. Make sure that your amendment does not contain any unnecessary admissions that would limit claim scope. Also, avoid unnecessary characterizations of the invention. Stick to the claim language when referring to the invention and, preferably, refer to the "presently claimed subject matter," rather than "the present invention," whenever possible. See, e.g., Verizon Servs. Corp. v. Vonage Holdings Corp., 503 F.3d 1295, 1308 (Fed. Cir. 2007). It is important that your amendment is correctly filed and displayed in the file history. You should, therefore, include the following caption in a header in each page of your response: Attorney Docket No. [attorney docket number] Application No. [application number] Art Unit [art unit number] Amendment Under 37 C.F.R. § 1.312 Each page should also be numbered to ensure that every page has been properly filed and to facilitate reference to a particular page at a later date, if necessary. For the items that need to be reviewed and, potentially, corrected upon receipt of a Notice of Allowance from the USPTO, see Allowed Patent Application Review Checklist. See also Patent Allowance and Issue Checklist.