What are the statutory provisions prohibiting the introduction of new matter?
There are two primary statutory provisions that prohibit the introduction of new matter in patent applications: 35 U.S.C. 132: This provision states that “no amendment shall introduce new matter into the disclosure of the invention.” 35 U.S.C. 251: This provision applies specifically to reissue applications and states that “no new matter shall be introduced into…
Read MoreHow 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…
Read MoreWhat is the Lundak case and how does it affect biological deposits for patents?
The Lundak case (In re Lundak, 773 F.2d 1216, 227 USPQ 90 (Fed. Cir. 1985)) is a significant legal precedent in patent law regarding biological deposits. According to MPEP 2406.01: “The United States Court of Appeals for the Federal Circuit held that the requirements of access by the Office to a sample of the cell…
Read MoreCan deposit information be added to a patent application after filing?
Yes, deposit information can be added to a patent application after filing, but under specific conditions. According to MPEP 2406.01, which cites the Lundak case: “The Court further held that the addition of information designating the depository, accession number, and deposit date of the deposited cell line in ATCC after the filing date did not…
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