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Good morning -

I have a pending non-provisional U.S. patent application. First office action is estimated in 5-6 months.

I would like to file a preliminary amendment to add new claims. 37 CFR 1.115 states that preliminary amendments may be disapproved in certain cases.

Is it common for preliminary amendments to be disapproved? Could this happen even if my first office action is half a year away?

Thank you.

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  • Did you file the application yourself (pro se)?
    – EA Kretzmer
    May 26 '20 at 12:52
  • If you plan to file a preliminary amendment, it is worth calling or emailing the examiner and letting them know that an amendment is coming. However, if the application was filed by an attorney or agent, that person needs to file the amendment and contact the examiner.
    – EA Kretzmer
    May 26 '20 at 12:53
  • Hi EA - yes, I filed pro se. Thank you for the note about contacting the examiner; that is a good idea.
    – Daniel
    May 26 '20 at 12:54
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It is very unlikely to be disallowed unless the examiner has already picked up the case and started searching. In that case, they would continue and generate an office action responsive to the claims-as-filed. Just like it says in 37 CFR 1.115 2 (i).

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