Legal Definitions - Rule 312 amendment

A Rule 312 amendment refers to a specific type of change made to a patent application *after* the U.S. Patent and Trademark Office (USPTO) has decided that the invention is patentable and has issued a "Notice of Allowance." However, these changes must be submitted *before* the patent is officially issued and granted.

These amendments are typically minor in nature, such as correcting clerical errors, clarifying existing claim language, or adding new claims that are dependent on already allowed claims and do not introduce new subject matter or broaden the scope of the invention. Because the application has already been approved for issuance, any Rule 312 amendment requires the approval of the patent examiner to ensure it does not alter the substance of the allowed claims or necessitate further substantive examination.

• Example 1: Correcting a Typographical Error

  Imagine a small electronics firm has received a Notice of Allowance for its patent application covering a new type of battery charging circuit. As the patent attorney reviews the final documents, they spot a minor typographical error in a reference designator within one of the independent claims (e.g., "resistor 101" was mistakenly written as "resistor 110").

  This situation illustrates a Rule 312 amendment because the change is being made *after* the application has been allowed but *before* the patent has officially issued. The amendment is minor, correcting a clerical error, and does not change the scope or substance of the invention, thus requiring the examiner's approval under Rule 312.

• Example 2: Clarifying Ambiguous Claim Language

  An individual inventor has received an allowance for their patent application describing a unique garden tool. While reviewing the allowed claims, they notice that a particular phrase in one of the claims, though technically correct, could be slightly ambiguous to a future reader. They wish to rephrase it to enhance clarity and precision, without altering the actual coverage or scope of the claim.

  This scenario exemplifies a Rule 312 amendment. The proposed change occurs post-allowance and pre-issuance. The amendment aims to clarify existing claim language for better understanding, rather than introducing new subject matter or expanding the invention's scope, making it a suitable candidate for a Rule 312 submission.

• Example 3: Adding a Supported Dependent Claim

  A biotechnology company has secured a Notice of Allowance for its patent application on a novel method for gene sequencing. Their patent counsel realizes that while the detailed description fully supports it, they could add a new dependent claim specifying a particular temperature range for one of the sequencing steps, which would provide an additional layer of protection without introducing new information or broadening the scope of the invention.

  This is a Rule 312 amendment because the company is seeking to modify the application *after* allowance and *before* issuance. Adding a dependent claim that is fully supported by the existing specification and does not broaden the scope of the invention is a common use of a Rule 312 amendment, as it refines the patent's protection without reopening substantive examination.