Amending A Patent Application After Allowance

By: Mark R. Malek

As has often been the case with some of my articles in the past, I like to introduce little practice tips as something interesting happens in my day to day life of prosecuting patent applications here at Widerman & Malek.  I recently received a call from an Examiner on a case that was already allowed.  This was a great case because I was dealing with an Examiner that really tried to take every possible step to help find allowable subject matter and place the application in condition for allowance.  It was not like some of the examinations of the past where I was up against an Examiner that was in a rush to issue a Final Office Action.

Needless to say, however, I was a little tense when I received a call from an Examiner on a case that was already allowed. As it turned out, the Examiner noticed that the serial number in the reference to the parent application was incorrect. No, that is not a typo – I am referring to the previous case upon which this case relied.  This application was a continuation-in-part application, which allowed our client to claim the benefit of the previously filed application (another post will follow shortly on continuation and continuation-in-part applications). The serial number that was referenced in the application was off by one digit. The issue, however, was that prosecution of the application was already closed. The Examiner had mailed a notice of allowance. After a notice of allowance is mailed, there can be no more amendments to the application. There is, however, a mechanism to make corrections to an application that has already been allowed, but for which the issue fee has not been paid.

The mechanism that allowed us to amend the application after the notice of allowance has been mailed is found in 37 CFR 1.312.  This section of the regulations allows for the introduction of an amendment to the patent application after the mailing of a notice of allowance.  Section 714.16(d) of the Manual of Patent Examining Procedures (MPEP) which, of course, is the bible of patent prosecution, outlines the steps necessary to amend an application after the notice of allowance has been mailed.  In short, you just have to be sure not to introduce new subject matter.  In this particular case, we were merely correcting the serial number of the parent application, so no new subject matter was added.

If the issue fee had already been paid, there is another mechanism to correct a patent. This is found in Section 1400 of the MPEP.  The only downfall of this section is that the correction is not actually made to the patent itself. Instead, a certificate of correction is attached to the patent indicating the correction that has been made. I will write more about certificates of correction in a later post. In the meantime, I just wanted you have some information regarding another practice that that I came across this past week.