Normally patent prosecution moves in a relatively conventional path. For example, after the application is filed, an examiner issues a first office action. The applicant then amends the claims in response and receives either a notice of allowance or a final rejection. At that point, amendments are not entered as a matter of right (except for some limited circumstances), and the applicant wants further amendments they must file an RCE.
But things can get murky once one departs from the typical. For example, after filing a response to the first Office action, but before receiving the next action, can the applicant file further amendments? Can the applicant file amendments before the first action and then again after the first action (but before a final rejection)? What happens when an examiner refuses entry of an amendment at a time when the applicant is entitled to entry of the amendment?
To answer these questions we look first to the MPEP, which summarizes when an applicant may amend. Specifically, MPEP 714 discusses when an applicant may amend:
(A) before or after the first Office action and also after the second Office actions as specified in 37 CFR 1.112;
(B) after final rejection, if the amendment meets the criteria of 37 CFR 1.116;
(C) after the date of filing a notice of appeal pursuant to 37 CFR 41.31(a), if the amendment meets the criteria of 37 CFR 41.33; and
(D) when and as specifically required by the examiner.
Part (A) covers quite a lot of ground, and references the CFR 1.112 (note CFR 1.111 is also relevant here):
1.112 Reconsideration before final action.
After reply by applicant or patent owner (§ 1.111 or § 1.945 ) to a non-final action and any comments by an inter partes reexamination requester (§ 1.947 ), the application or the patent under reexamination will be reconsidered and again examined. The applicant, or in the case of a reexamination proceeding the patent owner and any third party requester, will be notified if claims are rejected, objections or requirements made, or decisions favorable to patentability are made, in the same manner as after the first examination (§ 1.104 ). Applicant or patent owner may reply to such Office action in the same manner provided in § 1.111 or § 1.945 , with or without amendment, unless such Office action indicates that it is made final (§ 1.113 ) or an appeal (§ 41.31 of this title) has been taken (§ 1.116 ), or in an inter partes reexamination, that it is an action closing prosecution (§ 1.949 ) or a right of appeal notice (§ 1.953 ).
It should be appreciated that Both Rules 111 and 112 deal with what happens after a non-final action, not before. But, Rule 111 does answer our first question above - can the applicant file a supplemental response?
37 CFR 1.111 (2) Reply by applicant or patent owner to a non-final Office action.
(2) Supplemental replies.
(i) A reply that is supplemental to a reply that is in compliance with § 1.111(b) will not be entered as a matter of right except as provided in paragraph (a)(2)(ii) of this section. The Office may enter a supplemental reply if the supplemental reply is clearly limited to: (A) Cancellation of a claim(s); (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.
(ii) A supplemental reply will be entered if the supplemental reply is filed within the period during which action by the Office is suspended under § 1.103(a) or (c).
Here we see that an examiner is well within their right to refuse entry of a supplemental response filed after the response to non-final rejection, even if the supplemental response is filed before a final rejection is issued. Nevertheless, in practice, when the applicant is making a good faith effort to advance prosecution and the examiner is taking reasonable steps, a supplemental amendment is often entered by the examiner, particularly when it is limited to one of the enumerated options in Subsection (i).
But what about when the applicant files a preliminary amendment before the first action (but well after the original filing of the application)? Here we go to 37 CFR 1.115 (b).
1.115 (b) A preliminary amendment in compliance with §1.121 will be entered unless disapproved by the Director. (1) A preliminary amendment seeking cancellation of all the claims without presenting any new or substitute claims will be disapproved. (2) A preliminary amendment may be disapproved if the preliminary amendment unduly interferes with the preparation of a first Office action in an application. Factors that will be considered in disapproving a preliminary amendment include: (i) The state of preparation of a first Office action as of the date of receipt (§1.6 ) of the preliminary amendment by the Office; and (ii) The nature of any changes to the specification or claims that would result from entry of the preliminary amendment. (3) A preliminary amendment will not be disapproved under (b)(2) of this section if it is filed no later than: (i) Three months from the filing date of an application under §1.53(b); (ii) The filing date of a continued prosecution application under § 1.53(d); or (iii) Three months from the date the national stage is entered as set forth in § 1.491 in an international application. (4) The time periods specified in paragraph (b)(3) of this section are not extendable.
So, the answer to the second question here is that generally, an amendment before the first action will be entered as a matter of right if filed within 3 months. After that, there is some discretion on the part of the Office to disapprove the amendment. Thus, while MPEP 714(A) would seem to generically cover this situation and indicate a preliminary amendment should always be entered, we see that is not the case.
Things get a little murkier when we start to consider an RCE. Let’s say you file an RCE to have a previously un-entered amendment actually entered, but then before you get the new (presumably non-final) action, you decide to file another amendment. Can the examiner refuse entry? It would seem that MPEP 714(A) would allow it and 37 CFR 1.115 (b) would not seem apply because at this stage it cannot really be called a “preliminary” amendment. Different examiners seem to react differently. If anyone has an example petition decision on this issue, please let us know in the comments.
So what happens when an examiner refuses entry of an amendment at a time when the applicant is entitled to entry of the amendment? The applicant must petition, but of course also deal with any deadlines that may be imposed by other actions taken by the Office.
Situations often arise when an applicant would like to make an amendment other than the “typical” time after a first non-final action an so it is important to know the limits of what can and cannot be done during these atypical situations.