TAKEAWAY: Applicants can make minor changes to an application after allowance and should take extra care to ensure all parts of the application are correct and written as intended before paying the issue fee.
The USPTO permits applicants to submit proposed amendments after receiving a Notice of Allowance, but such amendments are not entered as a matter of right. Amendments filed after allowance must be filed before or concurrently with payment of the issue fee and may be entered upon the recommendation of the primary examiner and approval by the supervisory patent examiner. Guidance is set forth in M.P.E.P. § 714.16 and 37 C.F.R. § 1.312.
The term “amendment” as used after allowance encompasses any change in the file record of the application. Once a Notice of Allowance has issued, the application is technically out of the jurisdiction of the primary examiner. For this reason, amendments that do more than correct formal matter without changing the scope of the claims require approval from a supervisory patent examiner.
Any amendment that affects the specification, figures, or scope of the claims, or that adds a claim, must be accompanied by remarks explaining: 1) why the amendment is needed, 2) why the proposed amendment requires no additional search or examination, 3) why the claims are patentable, and 4) why the amendment(s) was not presented earlier.
Applicants should take care to perform a double check of the file record before paying the issue fee. Proposed amendments should be filed shortly after receiving the Notice of Allowance, if possible, to reduce the chance of forgetting and being barred from doing so at a later date, and to allow time to reassess options if the examiner declines to enter the amendments. Changes that do not fall within the circumstances in which an after-final amendment may be filed could be submitted together with a Request for Continued Examination (RCE) re-opening prosecution.
There are limited options to make corrections after issuance. Errors of a clerical nature can be corrected by requesting a Certificate of Correction, together with payment of the applicable fee if the error was introduced by the applicant. It may be possible to correct errors of a more substantive nature by filing a reissue application, but patentees should carefully consult the grounds for which a reissue can be filed.