Can you make an After-Allowance Amendment in a Patent Application?

Applicants make amendments in patent applications all the time.  Usually, these amendments are made while patent prosecution is active, before a Notice of Allowance.  However, you can actually amend the application just before it issues as a granted patent.

What is an After-Allowance Amendment?

An After-Allowance Amendment is just what it sounds like.  All patent applications that are approved for grant first receive a Notice of Allowance.  The Notice of Allowance opens a three-month window during which the patent applicant must submit the issue fees and accompanying paperwork.

During this time, you might also want to change the application a bit.  To do this, you file an After-Allowance Amendment.  Because the rules governing this kind of amendment fall under 37 C.F.R. § 1.312, a lot of Examiners and practitioners call this a “Rule 312 Amendment” or just a “312 Amendment.”

I have made only a few After-Allowance Amendments in my career.  Usually, I do it when we notice that a claim has a minor error in it, like a punctuation or spelling issue, or perhaps an antecedent basis problem.

You can, however, make an After-Allowance Amendment for several reasons.  But just because you make the amendment does not mean it will go into the application file history.  Rather, After-Allowance Amendments are discretionary.  Rule 312 states that “No amendment may be made as a matter of right in an application after the mailing of the notice of allowance.”  The Examiner has discretion whether to enter it or not.

What are the Requirements of an After-Allowance Amendment?

Whenever I made an After-Allowance Amendment, I always called the Examiner first to discuss it with him or her and let them know it was coming.  An Examiner is not required to enter an After-Allowance Amendment, so talking it over first can help the amendment get entered, or might help you change how you write it to improve the chance that the Examiner accepts it.

You can attempt to change any of the following in an amendment after the notice of allowance:

• an amendment to the specification;
• a change in the drawings;
• an amendment to the claims;
• a change in the inventorship;
• the submission of prior art;
• a request to correct the spelling of an inventor’s name; and
• a request to change the order of the names of the inventors.

The amendment must be filed on or before the day that the issue fee is paid.  However, waiting until the eleventh hour is a very bad idea.  Not only could the Patent Office electronic filing system crash (it often does (https://www.uspto.gov/blog/ebiz/feed/entries/atom)), but it will complicate the issuance of the patent.  It is a headache you don’t want unless you absolutely have no other choice.

Amazingly, at least as of this writing, there is no fee associated with the filing of a 312 Amendment.

Once a patent application has been allowed, the Examiner technically no longer has jurisdiction of it.  Nonetheless, the Examiner can still make or allow amendments to correct formal matters when those changes don’t alter the claim scope without contacting the supervisory patent examiner.  More substantive amendments have to be approved by the supervisor.

You are much more likely to be successful with an amendment after allowance if it (1) is needed for proper disclosure or protection of the invention, and (2) requires no substantial amount of additional work from the Examiner.  If both of those elements are met, the Examiner will probably (but not definitely) approve the amendment into the file wrapper.

The Examiner will almost certainly not allow the amendment if it continues prosecution of the application.  If the amendment raises any of these, it will probably be denied:

• it requires a new or additional search;
• it requires more than a cursory review of the record; or
• it involves a non-trivial amount of work by the Examiner, such as checking excessive editorial changes in the specification or claims.

Lastly, any amendment after allowance must also comply with all other requirements for amendment.  In other words, and After Allowance Amendment to change the drawings also has to comply with the rules for changing or replacing drawings during regular prosecution.

Are there Drawbacks to Amending a Patent Application  after a Notice of Allowance?

There are potential negative consequences of an after-allowance amendment in a patent application.  Some are unique to these specific types of amendments, while others are common to all amendments.

First, any amendment you make may not work.  There is always the risk that the Examiner won’t accept it.  If not, you will have spent time and money with nothing to show for it, and you will have to decide what to all over again.

Second, introducing an amendment almost always delays the eventual issuance of a patent application.  An amendment entered after mailing of a notice of allowance, depending on when it is filed, could slow down the patent, meaning your patent rights don’t begin until later.

Also, a Federal Circuit case in November of 2022 held that after-allowance amendments could provide the proper basis to deduct days from the life of a patent.  This is known as patent term adjustment, or PTA.

PTA is most frequently associated with the addition of time to a patent life because of long delays in prosecution at the Patent Office.  However, because a patent applicant could have completed prosecution of its patent application sooner had it not entered an after-allowance amendment, PTA can be used to actually subtract time from the life of the patent.  Typically, this kind of PTA will only shave a few days or maybe weeks off the patent duration, but in some industries, the loss of every day can mean large amounts of money.

Are There Other Options besides an After-Allowance Amendment?

Depending on the type of amendment you want to make, there may be better options to an After-Allowance Amendment.

You might want to file a Request for Continued Examination or RCE.  Because the Notice of Allowance officially closes substantive examination of the application, some amendments can’t be made unless examination is re-opened.  That’s what an RCE does.  You pay a fee to the Patent Office and request that the Examiner be given the chance to take another look at a change you want to make.  This is often done when submitting new prior art into an application.

You might also just file a continuing application such as a continuation patent application or continuation-in-part patent application.  One reason to do this would be if the at-issue problem is tolerable and you don’t want to delay or introduce PTA into the patent just to fix it.  Instead, ensure the issue fees are paid and then file a continuing application before the pending application issues.

Questions?

After-Allowance Amendments can seem like simple things, but their timing and potential consequences justify serious caution.  If  you have any questions about amendments after the issuance of a notice of allowance in a patent application, please reach out to Phoenix patent attorney Tom Galvani by calling 602-281-6481.