T.M.E.P. § 1107
Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use

Executive summary:

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1107 Amendment After Issuance of the Notice of Allowance and Before Filing of the Statement of Use

Generally, the only amendments that can be entered in an application between the issuance of the notice of allowance and the submission of a statement of use are (1) the deletion of specified goods/services from the identification of goods and services (37 C.F.R. 2.77), (2) the deletion of a basis in a multi-basis application (37 C.F.R. 2.35(b)(1)), and (3) changes of attorney and changes of address.

"Deletion," within the meaning of 37 C.F.R. 2.77, means the elimination of an existing item in an identification of goods and services in its entirety. Deletion is distinct from other types of amendments to limit an identification, such as amendments to limit the goods as to types, channels of trade or class of purchasers, or to restrict an existing item in scope by the introduction of some qualifying language or the substitution of specific for more general terms.

The Office will normally not consider any other amendment to the application during this period. If the applicant submits any other amendment during this period, the Office will place the amendment in the record for consideration at the time of examination of the statement of use. 37 C.F.R. 2.77. The ITU paralegal or LIE will advise the applicant that the amendment has been received but that it will not be considered until the examining attorney examines the statement of use.

The applicant may file a petition under 37 C.F.R. §§2.146(a)(3) and (a)(5) to waive 37 C.F.R. 2.77 to permit an examining attorney to examine an amendment (other than an amendment deleting a basis or deleting specified goods/services) during the period between the issuance of the notice of allowance and the filing of the statement of use. TMEP §1107.01. In re Upsher-Smith Laboratories, Inc., 45 USPQ2d 1371 (Comm'r Pats. 1997). The petition must be accompanied by the fee required by 37 C.F.R. 2.6. See TMEP §Chapter 1700 regarding petitions.

The filing of an amendment after issuance of the notice of allowance does not extend the deadline for filing the statement of use. Unless the amendment requires republication, the applicant must file a statement of use or request for an extension of time to file a statement of use.

See TMEP §1106.04 regarding correction of errors in a notice of allowance, TMEP §806.04(a) regarding the deletion of a §1(b) basis after issuance of a notice of allowance, and TMEP §806.03(j)(ii) regarding amendments to add or substitute a basis between issuance of the notice of allowance and filing the statement of use.