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MPEP SECTION SUMMARY An amendment must be signed by a person having authority to prosecute the application. An unsigned or improperly signed amendment will not be entered.

714.01(a)   Unsigned or Improperly Signed Amendment

MPEP SECTION SUMMARY An unsigned amendment or one not properly signed by a person having authority to prosecute the application is not entered. This applies, for instance, where the amendment is signed by only one of two joint inventors and the one signing has not been given a power of attorney by the other inventor.

When an unsigned or improperly signed amendment is received the amendment will be listed in the contents of the application file, but not entered.

• The examiner will notify applicant of the status of the application, advising him or her to furnish a duplicate amendment properly signed or to ratify the amendment already filed.
• In an application not under final rejection, applicant should be given a two month time period in which to ratify the previously filed amendment. 

714.01(c)   Signed by Attorney or Agent Not of Record

MPEP SECTION SUMMARY A registered attorney or agent acting in a representative capacity, may sign amendments even though he or she does not have a power of attorney in the application.

714.01(d)   Amendment Signed by Applicant but Not by Attorney or Agent of Record

MPEP SECTION SUMMARY If an amendment signed by the applicant is received in an application in which there is a duly appointed attorney or agent, the amendment should be entered and acted upon.

714.01(e)   Amendments Before First Office Action

MPEP SECTION SUMMARY This section discussed amendments before the first Office action (which are termed preliminary amendments). It covers compliance with 37 C.F.R. 1.121, preliminary amendments present on the filing date of the application, the timeliness of preliminary amendments and the disproval of preliminary amendments.

A preliminary amendment is an amendment that is received in the Office on or before the mail date of the first Office action under 37 CFR 1.104.

•   For applications filed on or after September 21, 2004 (the effective date of 37 CFR 1.115(a)(1)), a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application.
•  For applications filed before September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first executed oath or declaration under 37 CFR 1.63 filed in the application.
• Any amendment filed after the filing date of the application is not part of the original disclosure of the application.
• When the Office publishes the application under 35 U.S.C. 122(b), the Office may include preliminary amendments in the patent application publication.

If a preliminary amendment is filed in a format that cannot be included in the publication, the Office of Patent Application Processing (OPAP) will issue a notice to the applicant requiring the applicant to submit the amendment in a format usable for publication purposes.

 For applications filed prior to September 16, 2012, where applicant intends to claim the benefit of a prior application under 35 U.S.C. 120 or 119(e) and 37 CFR 1.78, the specific reference to the benefit application may be submitted in an application data sheet (ADS) under 37 CFR 1.76 or in a preliminary amendment to the first sentence(s) of the specification.

• If the specific reference is submitted in a preliminary amendment, a substitute specification will not be required if the preliminary amendment only adds or amends a benefit claim to a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 119(e).

Requiring a substitute specification (with all preliminary amendments made therein) is also important to ensure that applicants do not circumvent the limitations upon redacted publications set forth in 35 U.S.C. 122(b)(2)(B)(v).

• As preliminary amendments to the specification, excluding the claims, cannot be easily published, the Office must require a substitute specification whenever an application is filed with a preliminary amendment to the specification, excluding the claims, in order to ensure that the application, including any new matter added by way of a preliminary amendment included on the filing date of the application, is published.

Because a preliminary amendment to the claims or abstract in compliance with 37 CFR 1.121(c) or 1.121(b)(2) will include a complete claim listing or replacement abstract, the Office can publish the amended claims or the replacement abstract as submitted in the preliminary amendment without a substitute specification being filed.

• Applicants should note, however, that there is no need to file a preliminary amendment to the claims on filing.
• By making the new claim set part of the originally filed specification, applicant may avoid having to pay an application size fee, as both the specification (including the claims) and any preliminary amendment are used in counting the number of pages for purposes of 37 CFR 1.16(s).
• The claim set submitted should be the set of claims intended to be examined, and when the claims submitted on filing are part of the specification (on sequentially numbered pages of the specification, no status identifiers and no markings showing the changes need to be used.

A preliminary amendment filed with a submission to enter the national stage of an international application under 35 U.S.C. 371 is not part of the original disclosure under 37 CFR 1.115(a) because it was not present on the international filing date accorded to the application under PCT Article 11.

Since a request for continued examination (RCE) is not a new application, an amendment filed before the first Office action after the filing of the RCE is not a preliminary amendment.

Any amendment canceling claims in order to reduce the excess claims fees should be filed before the expiration of the time period set forth in a notice that requires excess claims fees.

• Such an amendment would be effective to reduce the number of claims to be considered in calculating the excess claims fees.
  
  

I.   PRELIMINARY AMENDMENTS MUST COMPLY WITH 37 CFR 1.121

Any preliminary amendment must include a complete listing of all of the claims and each section of the amendment must begin on a separate sheet of paper.

Preliminary amendments made in a transmittal letter of the application will not comply with 37 CFR 1.121.

• For example, applicants should include the reference to a prior filed application in the first sentence(s) of the specification following the title (for applications filed prior to September 16, 2012) or in an application data sheet instead of submitting the reference in a preliminary amendment in a transmittal letter.

If a preliminary amendment filed after the filing date of the application fails to comply, applicant will be notified by way of a Notice of Non-Compliant Amendment and given a non-extendable period of two months to bring the amendment into compliance.

Applicants may avoid preliminary amendments by incorporating any desired amendments into the text of the specification including a new set of claims, even where the application is a continuation or divisional application of a previously filed patent application.

• In such a continuation or divisional application, a clean copy of a specification (i.e., reflecting amendments made in the parent application) may be submitted together with a copy of the oath or declaration from the previously filed application.

II.   PRELIMINARY AMENDMENTS PRESENT ON THE FILING DATE OF THE APPLICATION

 For applications filed on or after September 21, 2004, a preliminary amendment that is present on the filing date of the application is part of the original disclosure of the application.

 For applications filed before September 21, 2004, a preliminary amendment that was present on the filing date of the application is part of the original disclosure of the application if the preliminary amendment was referred to in the first oath or declaration in compliance filed in the application.

If the preliminary amendment was not referred to in the oath or declaration, applicant should submit a supplemental oath or declaration referring to both the application and the preliminary amendment filed with the original application.

• A surcharge will also be required unless it has been previously paid.

III.   PRELIMINARY AMENDMENTS MUST BE TIMELY

Any preliminary amendments should either accompany the application or be filed after the application has received its application number and filing date so that the preliminary amendments would include the appropriate identifications (e.g., the application number and filing date).

IV.   PRELIMINARY AMENDMENTS MAY BE DISAPPROVED

A preliminary amendment will be entered unless it is disapproved by the Director.

• A preliminary amendment will be disapproved by the Director if the preliminary amendment cancels all the claims in the application without presenting any new or substitute claims.

A.   Cancellations of All the Claims

If applicant files a preliminary amendment (whether submitted prior to, on or after the filing date of the application) seeking cancellation of all claims in the application without presenting any new claims, the Office will not enter such an amendment.

B.   Unduly Interferes With the Preparation of an Office Action

Once the examiner has started to prepare a first Office action, entry of a preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of the first Office action.

Applicants are encouraged to file all preliminary amendments as soon as possible. Entry of a preliminary amendment will not be disapproved if it is filed no later than:

• 3 months from the filing date of the application;
• 3 months from the date the national stage is entered in an international application;
• the filing date of a CPA in a design application; or
• the last day of any suspension period requested by applicant

Even if the examiner has spent a significant amount of time preparing the first Office action, entry of a preliminary amendment filed within these time periods should not be disapproved under 37 CFR 1.115(b)(2).

• These time periods are not extendable.

If a preliminary amendment is filed after these time periods and the conditions set forth below are met, entry of the preliminary amendment may be denied subject to the approval of the supervisory patent examiner.

1.   When Disapproval is Appropriate

The factors that will be considered for denying entry of preliminary amendments include:

• The state of preparation of a first Office action as of the date of receipt of the preliminary amendment; and
• The nature of any changes to the specification or claims that would result from entry of the preliminary amendment.

The entry of a preliminary amendment that would unduly interfere with the preparation of an Office action may be denied if the following two conditions are met:

• The examiner has devoted a significant amount of time on the preparation of an Office action before the amendment is received in the Office; and
• The entry of the amendment would require significant additional time in the preparation of the Office action.

For example, if the examiner has spent a significant amount of time to conduct a prior art search or draft an Office action before a preliminary amendment is received by the Office, the first condition is satisfied.

Entry of the amendment may be denied if it requires the examiner to spend significant additional time to conduct another prior art search or revise the Office action and it:

• amends the claims;
• adds numerous new claims;
• amends the specification to change the scope of the claims;
• amends the specification so that a new matter issue would be raised;
• includes arguments;
• includes an affidavit or declaration under 37 CFR 1.131 or 37 CFR 1.132; or
• includes evidence traversing rejections from a prior Office action in the parent application,

This list is not an exhaustive list, and the entry of a preliminary amendment may be denied in other situations that satisfy the two conditions set forth above.

2.   When Disapproval is Inappropriate

Denying entry of a preliminary amendment is inappropriate if either:

• the examiner has NOT devoted a significant amount of time on the preparation of an Office action before the amendment is received in the Office; or
• the entry of the amendment would NOT require significant additional time in the preparation of the Office action.
  

Furthermore, even if the examiner has devoted a significant amount of time to prepare an Office action prior to the date the preliminary amendment is received in the Office, it is not appropriate to disapprove the entry of such an amendment if it:

• merely cancels some of the pending claims;
• amends the claims to overcome rejections under 35 U.S.C. 112, second paragraph;
• amends the claims to place the application in condition for allowance; or
• only includes changes that were previously suggested by the examiner, and would not require the examiner to spend significant additional time to revise the Office action.
  
  

MPEP SECTION SUMMARY This section outlines how a reply by an applicant or the patent owner to a non-final Office action must be fully responsive.

  Section Frequency Chart

 

In all cases where reply to a requirement is indicated as necessary for further consideration of the claims, or where allowable subject matter has been indicated in an application, a complete reply must either comply with the formal requirements or specifically traverse each one not complied with.

Drawing and specification corrections, presentation of a new oath and the like are generally considered as formal matters, although the filing of drawing corrections in reply to an objection to the drawings cannot normally be held in abeyance.

An amendment submitted after a second or subsequent non-final action on the merits which is otherwise responsive but which increases the number of claims drawn to the invention previously acted upon is not to be held not fully responsive for that reason alone. 

The prompt development of a clear issue requires that the replies of the applicant meet the objections to and rejections of the claims.

• Applicant should also specifically point out the support for any amendments made to the disclosure.
  
  

MPEP SECTION SUMMARY This section covers what happens when an amendment contains a minor deficiency and is not fully responsive.

  Section Frequency Chart

Where an amendment substantially responds to the rejections, objections, or requirements in a non-final Office action (and is a bona fide attempt to advance the application to final action) but contains a minor deficiency (e.g., fails to treat every rejection, objection, or requirement), the examiner may simply act on the amendment and issue a new (non-final or final) Office action.

If a new time period for reply is set pursuant to 37 CFR 1.135(c), applicant must supply the omission within this new time period for reply (or any extensions under 37 CFR 1.136(a) thereof) in order to avoid abandonment of the application.

• The applicant, however, may file a continuing application during this period (in addition or as an alternative to supplying the omission), and may also file any further reply as permitted under 37 CFR 1.111.

Where there is sufficient time remaining in the period for reply (including extensions under 37 CFR 1.136(a)), the applicant may simply be notified that the omission must be supplied within the remaining time period for reply.

When a reply to a final Office action substantially places the application in condition for allowance, an examiner may request that the applicant (or representative) authorize an examiner's amendment to correct the omission and place the application in condition for allowance, in which case the date of the reply is the date of such authorization (and not the date the incomplete reply was filed).

714.03(a)   Supplemental Amendment

MPEP SECTION SUMMARY Supplement amendments are covered here in this section. In most cases, supplemental replies are not entered as a matter of right. This section covers when supplemental amendments may be entered.

Applicants are encouraged to include a complete fully responsive reply in compliance with 37 CFR 1.111(b) to an outstanding Office action in the first reply to prevent the need for supplemental replies.

• Supplemental replies will not be entered as a matter of right, except when a supplemental reply is filed within a suspended period under 37 CFR 1.103(a) or (c) (e.g., a suspension of action requested by the applicant when filing an RCE).

The Office may enter a supplemental reply if the supplemental reply is clearly limited to:

• cancellation of a claim;
• adoption of the examiner’s suggestions;
• placement of the application in condition of allowance;
• reply to an Office requirement made after the first reply was filed;
• correction of informalities (e.g., typographical errors); or
• simplification of issues for appeal.

When a supplemental reply is filed in sufficient time to be entered into the application before the examiner considers the prior reply, the examiner may approve the entry of the supplemental reply if, after a cursory review, the examiner determines that the supplemental reply is limited to one of the situations set forth above.

• This list is not exhaustive.
  
  

MPEP SECTION SUMMARY In the consideration of claims in an amended case where no attempt is made to point out the patentable novelty, the claims should not be allowed.

  Section Frequency Chart

MPEP SECTION SUMMARY Applicant is required to pay excess claims fees for each claim that is in excess of 3 in independent form or in excess of 20 (whether dependent or independent). Fees for a proper multiple dependent claim are calculated based on the number of claims to which the multiple dependent claim refers and a separate fee is also required in each application containing a proper multiple dependent claim.

MPEP SECTION SUMMARY This section covers amendments and other replies after the final rejection or final Office action. Essentially, once a final rejection that is not premature has been entered in an application, applicant or patent owner no longer has any right to unrestricted further prosecution.

 

Once a final rejection that is not premature has been entered in an application, applicant or patent owner no longer has any right to unrestricted further prosecution.

• Ordinarily, amendments filed after the final action are not entered unless approved by the examiner.

An affidavit or other evidence filed after a final rejection, but before or on the same date of filing an appeal, may be entered upon a showing of good and sufficient reasons why the affidavit or other evidence is necessary and was not earlier presented in compliance with 37 CFR 1.116(e).

The prosecution of an application before the examiner should ordinarily be concluded with the final action. However, one personal interview by applicant may be entertained after such final action if circumstances warrant.

Applicant's submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art exclusion under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even after a final rejection has been made, because if the exception or exclusion is established, the propriety of the rejection is obviated as a matter of law.

If a final rejection of certain claims is obviated by a timely reply based on a proper claim of entitlement to the prior art exception or exclusion, then the Office should acknowledge the reply by modifying the status of the claims as appropriate

The failure to make a proper submission of entitlement to except or exclude prior art following the first Office action may be considered by the Office as conduct that is considered to be a failure to engage in reasonable efforts to conclude prosecution if such prior art is thereafter excepted under 35 U.S.C. 102(b)(2)(C) or excluded under pre-AIA 35 U.S.C. 103(c).

MPEP SECTION SUMMARY This section outlines the procedures followed for amendments and other replies after final rejection or action. In these instances, entry is not a matter of right.

  Section Frequency Chart

I.   FINAL REJECTION — TIME FOR REPLY

If an applicant initially replies within 2 months from the date of mailing of any final rejection setting a 3-month shortened statutory period for reply and the Office does not mail an advisory action until after the end of the 3-month shortened statutory period, the period for reply for purposes of determining the amount of any extension fee will be the date on which the Office mails the advisory action advising applicant of the status of the application, but in no event can the period extend beyond 6 months from the date of the final rejection.

• This procedure applies only to a first reply to a final rejection.

Failure to file a reply during the shortened statutory period results in abandonment of the application unless the time is extended under the provisions of 37 CFR 1.136.

II.   ENTRY NOT A MATTER OF RIGHT

It should be kept in mind that applicant cannot, as a matter of right, amend any finally rejected claims, add new claims after a final rejection or reinstate previously canceled claims.

Except where an amendment merely cancels claims, adopts examiner suggestions, removes issues for appeal, or in some other way requires only a cursory review by the examiner, compliance with the requirement of a showing is expected in all amendments after final rejection.

Failure to properly reply under 37 CFR 1.113 to the final rejection results in abandonment. A reply under 37 CFR 1.113 is limited to:

• an amendment;
• a Notice of Appeal (and appeal fee); or
• a request for continued examination (RCE) with a submission (i.e., an amendment that meets the reply requirement of 37 CFR 1.111) and the fee.
  • RCE practice under 37 CFR 1.114 does not apply to utility or plant patent applications filed before June 8, 1995 and design applications.

Further examination of the application may be obtained by filing a continued prosecution application (CPA) if the application is a design application.

• Effective July 14, 2003, CPA practice does not apply to utility and plant applications.

Applicant's submissions concerning the prior art exception under 35 U.S.C. 102(b)(2)(C) or prior art exclusion under pre-AIA 35 U.S.C. 103(c) are entitled to being considered even after a final rejection has been made, because if the exception or exclusion is established, the propriety of the rejection is obviated as a matter of law.

If a final rejection of certain claims is obviated by a timely reply based on a proper claim of entitlement to the prior art exception or exclusion, then the Office should acknowledge the reply by modifying the status of the claims.

III.   ACTION BY EXAMINER

In the event that a proposed amendment does not place the case in better form for appeal, nor in condition for allowance, applicant should be promptly informed of this fact, whenever possible, within the statutory period.

The refusal to enter the proposed amendment should not be arbitrary. The reasons for nonentry should be concisely expressed. For example:

• The claims, if amended as proposed, would not avoid any of the rejections set forth in the last Office action, and thus the amendment would not place the case in condition for allowance or in better condition for appeal.
• The claims, if amended as proposed, would raise the issue of new matter.
• The claims as amended present new issues requiring further consideration or search.
• Since the amendment presents additional claims without canceling any finally rejected claims it is not considered as placing the application in better condition for appeal.

Any amendment timely filed after a final rejection should be immediately considered to determine whether it places the application in condition for allowance or in better form for appeal.

If no appeal has been filed within the period for reply and no amendment has been submitted to make the application allowable or which can be entered in part, the application stands abandoned.

It should be noted that under 37 CFR 1.181(f), the filing of a 37 CFR 1.181 petition will not stay the period for reply to an examiner’s action which may be running against an application.

MPEP SECTION SUMMARY After all claims in an application have been allowed the prosecution of the application on the merits is closed even though there may be outstanding formal objections which preclude fully closing the prosecution. Amendments touching the merits are treated in a manner similar to amendments after final rejection, though the prosecution may be continued as to the formal matters.

MPEP SECTION SUMMARY This section discusses instances where an amendment may have been prepared by an applicant prior to allowance, but does not reach the Office until after the notice of allowance has been mailed. Essentially, its entry is a matter of grace.

  Section Frequency Chart

Where an amendment, even though prepared by applicant prior to allowance, does not reach the Office until after the notice of allowance has been mailed, such amendment has the status of one filed under 37 CFR 1.312.

• Its entry is a matter of grace

If the amendment is filed in the Office prior to the mailing of the notice of allowance, but is received by the examiner after the mailing of the notice of allowance, it may also not be approved for entry.

• If the amendment is a supplemental reply filed when action is not suspended, such an amendment will not be approved for entry because supplemental replies are not entered as matter of right.
  
  

MPEP SECTION SUMMARY This section covers 37 C.F.R. 1.312, amendments after allowance. This rule is not to be used for continued prosecution. In addition amendments may not be filed after the date the issue fee has been paid. Both situations are briefly discussed in this section.

  Section Frequency Chart

 

An amendment under 37 CFR 1.312 must be filed on or before the date the issue fee is paid, except where the amendment is required by the Office of Data Management.

With the exception of a supplemental oath or declaration submitted in a reissue, a supplemental oath or declaration is not treated as an amendment under 37 CFR 1.312.

Consideration of an amendment under 37 CFR 1.312 cannot be demanded as a matter of right.

I.   NOT TO BE USED FOR CONTINUED PROSECUTION

37 CFR 1.312 was never intended to provide a way for the continued prosecution of an application after it has been passed for issue.

Where claims added by amendment under 37 CFR 1.312 are all of the form of dependent claims, some of the usual reasons for nonentry are less likely to apply although questions of new matter, sufficiency of disclosure, or undue multiplicity of claims could arise.

II.   AMENDMENTS FILED AFTER PAYMENT OF ISSUE FEE

No amendments should be filed after the date the issue fee has been paid.

The entry of the copied patent claims is not a matter of right.

• Where an amendment filed with a motion applies to an application in issue, the amendment is not entered unless and until the motion has been granted.

If the amendment adds claims (total and independent) in excess of the number previously paid for, additional fees are required.

• The amendment is not considered by the examiner unless accompanied by the full fee required.

714.16(e)   Amendments Under 37 CFR 1.312, Entry in Part

MPEP SECTION SUMMARY The general rule that an amendment cannot be entered in part and refused in part should not be relaxed, but when, under 37 CFR 1.312, an amendment, for example, is proposed containing a plurality of claims or amendments to claims, some of which may be entered and some not, the acceptable claims or amendments should be entered in the application. If necessary, the claims should be renumbered to run consecutively with the claims already in the case.

MPEP SECTION SUMMARY When an application is not prosecuted within the period set for reply and thereafter an amendment is filed without a petition for extension of time and fee pursuant to 37 CFR 1.136(a), such amendment shall be placed in the file of the application, but not formally entered.

MPEP SECTION SUMMARY This section exhaustively covers the types of amendments that are ordinarily denied entry.

The following types of amendments are ordinarily denied entry:

• (A) An amendment presenting an unpatentable claim, or a claim requiring a new search or otherwise raising a new issue in an application whose prosecution before the primary examiner has been closed, as where
• (1) All claims have been allowed,
• (2) All claims have been finally rejected,
• (3) Some claims have been allowed and the remainder finally rejected.
• (B) Substitute specification that does not comply with 37 CFR 1.125.
• (C) A patent claim suggested by the examiner and not presented within the time limit set or an extension thereof, unless entry is authorized by the Director.
• (D) While copied patent claims are generally admitted even though the application is under final rejection or on appeal, under certain conditions, the claims may be refused entry.
• (E) An unsigned or improperly signed amendment or one signed by a suspended or excluded attorney or agent.
• (F) An amendment filed in the U.S. Patent and Trademark Office after the expiration of the statutory period or set time period for reply and any extension thereof.
• (G) An amendment so worded that it cannot be entered with certain accuracy.
• (H) An amendment canceling all of the claims and presenting no substitute claim or claims.
• (I) An amendment after a notice of allowance has been mailed in an application, with certain limited exceptions.
• (J) Amendments to the drawing held by the examiner to contain new matter are not entered until the question of new matter is settled. This practice of nonentry because of alleged new matter, however, does not apply in the case of amendments to the specification and claims.
• (K) An amendatory paper containing objectionable remarks that, in the opinion of the examiner, brings it within the condemnation of 37 CFR 1.3, will be submitted to the Deputy Commissioner for Patent Examination Policy. If the Deputy Commissioner determines that the remarks are in violation of 37 CFR 1.3, he or she will notify the applicant of the non-entry of the paper.
• (L) Amendments that cannot be scanned or clearly reproduced.
• (M) An amendment presenting claims (total and independent) in excess of the number previously paid for and not accompanied by the full fee for the claims or an authorization to charge the fee to a deposit account or credit card.
• (N) An amendment canceling all claims drawn to the elected invention and presenting only claims drawn to the nonelected invention should not be entered. Such an amendment is nonresponsive.
• (O) An amendment including changes to the specification/claims which is not in compliance, e.g., one which does not include replacement paragraphs or claim listings.
• (P) A preliminary amendment that unduly interferes with the preparation of a first Office action.
• (Q) A supplemental reply is not entered as a matter of right unless it is filed during a suspension period.

While amendments falling within any of the foregoing categories should not be entered by the examiner at the time of filing, a subsequent showing by applicant may lead to entry of the amendment.

MPEP SECTION SUMMARY Amendments are generally not entered in part in order to avoid confusion. This section outlines exceptions to this general rule.

To avoid confusion of the record the general rule prevails that an amendment should not be entered in part.

At times, the strict observance of its letter may sometimes work more harm than would result from its infraction, especially if the amendment in question is received at or near the end of the period for reply. Thus:

• (A) An “amendment” presenting an unacceptable substitute specification along with amendatory matter, as amendments to claims or new claims, should be entered in part, rather than refused entry in toto. The substitute specification should be denied entry and so marked, while the rest of the paper should be entered. The application as thus amended is acted on when reached in its turn, the applicant being advised that the substitute specification has not been entered.

• (B) An amendment under 37 CFR 1.312, which in part is approved and in other part disapproved, is entered only as to the approved part.
  
  
• (C) In an application in which prosecution on the merits is closed, i.e., after the issuance of an Ex Parte Quayle action, where an amendment is presented curing the noted formal defect and adding one or more claims some or all of which are in the opinion of the examiner not patentable, or will require a further search, the amendment in such a case will be entered only as to the formal matter. Applicant has no right to have new claims considered or entered at this point in the prosecution.
  
  
• (D) In an amendment accompanying a motion granted only in part, the amendment is entered only to the extent that the motion was granted.
  
  

MPEP SECTION SUMMARY If the technical support staff inadvertently enters an amendment when it should not have been entered, such entry is of no legal effect, and the same action is taken as if the changes had not been actually made, inasmuch as they have not been legally made.

MPEP SECTION SUMMARY Applicants and their attorneys or agents are required to conduct their business with the United States Patent and Trademark Office with decorum and courtesy.

 

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