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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. Unless such unauthorized entry is deleted, suitable notation should be made on the margin of the amendatory paper, as "Not Officially Entered."
If an amendatory paper is to be retained in the file, even though not entered, it should be given a paper number and listed on the file wrapper with the notation "Not Entered." See 37 CFR 1.3 and MPEP § 714.25 for an example of a paper which may be returned.
(a) Amendments in applications, other than reissue applications. Amendments in applications, other than reissue applications, are made by filing a paper, in compliance with § 1.52, directing that specified amendments be made.
(b) Specification other than the claims and listings provided for elsewhere (§§ 1.96 and 1.825).-
(1) Amendment by instruction to delete, replace, or add a paragraph. Amendments to the specification, other than the claims and listings provided for elsewhere (§§ 1.96 and 1.825), may be made by submitting:
(i) An instruction, which unambiguously identifies the location, to delete one or more paragraphs of the specification, replace a deleted paragraph with one or more replacement paragraphs, or add one or more paragraphs;
(ii) Any replacement or added paragraph(s) in clean form, that is, without markings to indicate the changes that have been made; and
(iii) Another version of any replacement paragraph(s), on one or more pages separate from the amendment, marked up to show all the changes relative to the previous version of the paragraph(s). The changes may be shown by brackets (for deleted matter) or underlining (for added matter), or by any equivalent marking system. A marked up version does not have to be supplied for an added paragraph or a deleted paragraph as it is sufficient to state that a particular paragraph has been added, or deleted.
(2) Amendment by replacement section. If the sections of the specification contain section headings as provided in §§ 1.77(b), 1.154(b), or § 1.163(c), amendments to the specification, other than the claims, may be made by submitting:
(i) A reference to the section heading along with an instruction to delete that section of the specification and to replace such deleted section with a replacement section;
(ii) A replacement section in clean form, that is, without markings to indicate the changes that have been made; and
(iii) Another version of the replacement section, on one or more pages separate from the amendment, marked up to show all changes relative to the previous version of the section. The changes may be shown by brackets (for deleted matter) or underlining (for added matter), or by any equivalent marking system.
(3) Amendment by substitute specification. The specification, other than the claims, may also be amended by submitting:
(i) An instruction to replace the specification;
(ii) A substitute specification in compliance with § 1.125(b); and
(iii) Another version of the substitute specification, separate from the substitute specification, marked up to show all changes relative to the previous version of the specification. The changes may be shown by brackets (for deleted matter), or underlining (for added matter), or by any equivalent marking system.
(4) Reinstatement: Deleted matter may be reinstated only by a subsequent amendment presenting the previously deleted matter.
(c) Claims. -
(1) Amendment by rewriting, directions to cancel or add. Amendments to a claim must be made by rewriting such claim with all changes (e.g, additions, deletions, modifications) included. The rewriting of a claim (with the same number) will be construed as directing the cancellation of the previous version of that claim. A claim may also be canceled by an instruction.
(i) A rewritten or newly added claim must be in clean form, that is, without markings to indicate the changes that have been made. A parenthetical expression should follow the claim number indicating the status of the claim as amended or newly added (e.g., "amended," "twice amended," or "new").
(ii) If a claim is amended by rewriting such claim with the same number, the amendment must be accompanied by another version of the rewritten claim, on one or more pages separate from the amendment, marked up to show all the changes relative to the previous version of that claim. A parenthetical expression should follow the claim number indicating the status of the claim, e.g., "amended," "twice amended," etc. The parenthetical expression "amended," "twice amended," etc. should be the same for both the clean version of the claim under paragraph (c)(1)(i) of this section and the marked up version under this paragraph. The changes may be shown by brackets (for deleted matter) or underlining (for added matter), or by any equivalent marking system. A marked up version does not have to be supplied for an added claim or a canceled claim as it is sufficient to state that a particular claim has been added, or canceled.
(2) A claim canceled by amendment (deleted in its entirety) may be reinstated only by a subsequent amendment presenting the claim as a new claim with a new claim number.
(3) A clean version of the entire set of pending claims may be submitted in a single amendment paper. Such a submission shall be construed as directing the cancellation of all previous versions of any pending claims. A marked up version is required only for claims being changed by the current amendment (see paragraph (c)(1)(ii) of this section). Any claim not accompanied by a marked up version will constitute an assertion that it has not been changed relative to the immediate prior version.
(d) Drawings. Application drawings are amended in the following manner: Any change to the application drawings must be submitted on a separate paper showing the proposed changes in red for approval by the examiner. Upon approval by the examiner, new drawings in compliance with § 1.84 including the changes must be filed.
(e) Disclosure consistency. The disclosure must be amended, when required by the Office, to correct inaccuracies of description and definition, and to secure substantial correspondence between the claims, the remainder of the specification, and the drawings.
(f) No new matter. No amendment may introduce new matter into the disclosure of an application.
(g) Exception for examiner's amendments: Changes to the specification, including the claims, of an application made by the Office in an examiner's amendment may be made by specific instructions to insert or delete subject matter set forth in the examiner's amendment by identifying the precise point in the specification or the claim(s) where the insertion or deletion is to be made. Compliance with paragraphs (b)(1), (b)(2) or (c)(1) of this section is not required.
(h) Amendments in reissue applications. Any amendment to the description and claims in reissue applications must be made in accordance with § 1.173.
(i) Amendments in reexamination proceedings: Any proposed amendment to the description and claims in patents involved in reexamination proceedings in both ex parte reexaminations filed under § 1.510 and inter partes reexaminations filed under § 1.913 must be made in accordance with § 1.530(d)-(j).
(j) Amendments in provisional applications: Amendments in provisional applications are not normally made. If an amendment is made to a provisional application, however, it must comply with the provisions of this section. Any amendments to a provisional application shall be placed in the provisional application file but may not be entered.
The term "brackets" set forth in 37 CFR 1.121 means square brackets, thus: [ ]. It does not encompass and is to be distinguished from parentheses ().
Preliminary amendments and non-final amendments which are not in compliance with 37 CFR 1.121 are handled by the technical support staff. The technical support staff notifies applicant of the defects by mailing a Notice of Non-Compliant Amendment. See MPEP § 714.03.
Amendments submitted after a final rejection are to be forwarded in unentered status to the examiners, who should address any non-compliance issues in an advisory action. If an amendment after final rejection fails to place the application in condition for allowance by removing all rejections and/or objections applied in the final rejection, applicant will be so notified by the examiner in an advisory action. If the amendment fails to comply with the requirements of 37 CFR 1.121, and the amendment is considered to be informal, the examiner should provide reasons for the non-compliance and require applicant to re-submit the amendment within any remaining period of time (set in the final rejection). No further extensions of time or new time periods which might serve to extend the six-month statutory period will be set in the advisory action. If time remains in the period set in the final rejection, applicants may re-submit the amendment, or request an extension of time (with appropriate fee) in which to do so, but will not be able to obtain an extension beyond the six-month statutory deadline. Submission of any amendment at or near the end of the statutory period should be accompanied by the filing of a Notice of Appeal, in order to eliminate the risk of abandonment prior to the examiner acting on the amendment.
It is suggested that examiners explain in an advisory action the reasons why the amendment after final fails to comply with 37 CFR 1.121, in force as of March 1, 2001.
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