How are “new matter” amendments treated in inter partes reexamination?

“New matter” amendments in inter partes reexamination are treated as follows:

  • Amendments to the disclosure that introduce new matter ( 35 U.S.C. 132 ) will be required to be canceled.
  • Claims containing new matter will be rejected under 35 U.S.C. 112.
  • “New matter” amendments to drawings are ordinarily not entered.

MPEP 2670 states: “Any ‘new matter’ amendment to the disclosure ( 35 U.S.C. 132 ) will be required to be canceled, and claims containing new matter will be rejected under 35 U.S.C. 112. A ‘new matter’ amendment to the drawing is ordinarily not entered.” For more information on new matter, refer to MPEP §§ 608.04, 608.04(a) and 608.04(c).

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Topics: MPEP 2600 - Optional Inter Partes Reexamination, MPEP 2670 - Clerical Handling, Patent Law, Patent Procedure
Tags: 35 u.s.c. 112, 35 U.S.C. 132, amendments, inter partes reexamination, new matter