Legal Definitions - Rule 116 amendment

A Rule 116 amendment refers to a specific type of change made to a patent application *after* the U.S. Patent and Trademark Office (USPTO) has issued a "final rejection." When a patent examiner issues a final rejection, it means they believe the application, in its current form, does not meet the requirements for a patent.

An applicant can then file a Rule 116 amendment to try and overcome these rejections without having to file an appeal or a Request for Continued Examination (RCE). For such an amendment to be accepted by the examiner, it typically must either:

• Place the application in a condition where it can be allowed (meaning all issues are resolved).
• Be accompanied by a showing of good and sufficient reasons why the amendment is necessary and was not presented earlier.
• Be a direct response to a new issue raised by the examiner in the final rejection itself.

If the amendment does not meet these criteria, the examiner may not enter it unless the applicant also files an RCE.

Examples:

• Example 1: Resolving All Outstanding Issues

  A company called "GreenEnergy Innovations" has a patent application for a novel wind turbine design. After several rounds of communication, the patent examiner issues a final rejection, stating that certain claims in the application are too broad and could potentially cover existing technology. GreenEnergy's patent attorney drafts a Rule 116 amendment that precisely narrows the scope of these problematic claims by adding specific technical features and limitations. The attorney submits this amendment, explaining that these changes directly address all the examiner's rejections and put the application in a condition where it can be allowed.

  This illustrates a Rule 116 amendment because it is filed after a final rejection, and its primary purpose is to make changes that fully overcome the examiner's objections, aiming for the patent application to be granted without further examination.

• Example 2: Responding to a New Issue in the Final Rejection

  Dr. Anya Sharma has a patent application for a new method of detecting early-stage diseases. The examiner initially rejected the application based on a lack of novelty. After Dr. Sharma responded, the examiner issued a final rejection, but this time, in addition to the previous rejection, also introduced a *new* rejection based on a recently published scientific paper that was not cited in previous office actions. Dr. Sharma's attorney files a Rule 116 amendment to modify the claims specifically to distinguish her invention from this newly cited scientific paper, arguing that these changes are a direct response to the new issue raised by the examiner in the final rejection.

  This is a Rule 116 amendment because it is submitted after a final rejection, and the amendment specifically addresses a new ground for rejection that the examiner introduced for the first time in the final rejection, which is one of the accepted reasons for such an amendment.

• Example 3: Minor Clarification with Good Reason

  A small tech startup, "DataFlow Solutions," has an application for a secure data encryption algorithm. After receiving a final rejection, their patent attorney reviews the application one last time before deciding on the next course of action. They notice a minor but important grammatical error in one of the independent claims that, if corrected, would significantly clarify the intended scope of the invention and resolve a subtle ambiguity the examiner had previously mentioned. The attorney files a Rule 116 amendment to correct this specific error, providing a clear explanation that it is a simple clerical mistake that helps clarify the invention and was inadvertently overlooked in prior submissions.

  This demonstrates a Rule 116 amendment because it is filed after a final rejection. Even for minor changes, the applicant must provide "good and sufficient reasons" why the amendment is necessary and why it was not presented earlier, especially if it helps clarify issues that could lead to allowance.