How does new matter affect AIA status determination?

New matter in a patent application does not affect the determination of AIA status. The MPEP 2159.02 states:

“As 35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure, an application may not contain a claim to a claimed invention that does not have support under 35 U.S.C. 112(a) in the application (that is directed to new matter).“

Key points:

• An application cannot “contain” a claim directed to new matter for AIA status determination.
• Amendments with new matter are typically entered but treated as follows:
  • New drawings with new matter are not entered (MPEP § 608.02)
  • New matter in the written description or claims is required to be canceled
  • Claims directed to new matter are rejected under 35 U.S.C. 112(a)
• An amendment adding a claim with new matter to a pre-AIA application filed after March 16, 2013, but claiming priority to a pre-March 16, 2013 application, would not change the application to AIA status.

To learn more:

• new matter
• AIA status
• patent application
• 35 U.S.C. 112(a)