MPEP § 608.04(b) — New Matter by Preliminary Amendment (Annotated Rules)

§608.04(b) New Matter by Preliminary Amendment

USPTO MPEP version: BlueIron's Update: 2025-12-31

This page consolidates and annotates all enforceable requirements under MPEP § 608.04(b), including statutory authority, regulatory rules, examiner guidance, and practice notes. It is provided as guidance, with links to the ground truth sources. This is information only, it is not legal advice.

New Matter by Preliminary Amendment

This section addresses New Matter by Preliminary Amendment. Primary authority: 35 U.S.C. 602 and 37 CFR 1.115(a)(1). Contains: 1 permission and 4 other statements.

Key Rules

Topic

Filing Date Requirements

3 rules
StatutoryInformativeAlways
[mpep-608-04-b-456775cb122ea74a133beff4]
Preliminary Amendment on Filing Date Is Part of Original Disclosure
Note:
A preliminary amendment filed on the filing date is considered part of the original disclosure, but amendments filed after the filing date are not.

A preliminary amendment present on the filing date of the application (e.g., filed along with the filing of the application) is considered a part of the original disclosure. See MPEP § 714.01(e) and § 602. A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 608.04(a). For applications filed on or after September 21, 2004, the Office will automatically treat any preliminary amendment under 37 CFR 1.115(a)(1) that is present on the filing date of the application as part of the original disclosure. Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application. Applicants are strongly encouraged to avoid submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application.

Jump to MPEP Source · 37 CFR 1.115(a)(1)Filing Date RequirementsComponents Required for Filing DatePatent Application Content
StatutoryInformativeAlways
[mpep-608-04-b-47817cb96ab9d5d988bb9005]
Preliminary Amendment Not Part of Original Disclosure
Note:
A preliminary amendment filed after the filing date is not considered part of the original application disclosure.

A preliminary amendment present on the filing date of the application (e.g., filed along with the filing of the application) is considered a part of the original disclosure. See MPEP § 714.01(e) and § 602. A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 608.04(a). For applications filed on or after September 21, 2004, the Office will automatically treat any preliminary amendment under 37 CFR 1.115(a)(1) that is present on the filing date of the application as part of the original disclosure. Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application. Applicants are strongly encouraged to avoid submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application.

Jump to MPEP Source · 37 CFR 1.115(a)(1)Filing Date RequirementsComponents Required for Filing DatePatent Application Content
StatutoryInformativeAlways
[mpep-608-04-b-f54e6097d77a1dfa76c58a41]
Preliminary Amendment on Filing Date Is Part of Original Disclosure
Note:
For applications filed on or after September 21, 2004, any preliminary amendment present on the filing date is considered part of the original disclosure.

A preliminary amendment present on the filing date of the application (e.g., filed along with the filing of the application) is considered a part of the original disclosure. See MPEP § 714.01(e) and § 602. A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 608.04(a). For applications filed on or after September 21, 2004, the Office will automatically treat any preliminary amendment under 37 CFR 1.115(a)(1) that is present on the filing date of the application as part of the original disclosure. Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application. Applicants are strongly encouraged to avoid submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application.

Jump to MPEP Source · 37 CFR 1.115(a)(1)Filing Date RequirementsComponents Required for Filing DatePatent Application Content
Topic

Components Required for Filing Date

2 rules
StatutoryPermittedAlways
[mpep-608-04-b-1bad51844ec72f588892701c]
Amendments Can Be Made to Specification
Note:
Applicants can incorporate desired amendments into the specification instead of filing a preliminary amendment, even for continuation or divisional applications.

A preliminary amendment present on the filing date of the application (e.g., filed along with the filing of the application) is considered a part of the original disclosure. See MPEP § 714.01(e) and § 602. A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 608.04(a). For applications filed on or after September 21, 2004, the Office will automatically treat any preliminary amendment under 37 CFR 1.115(a)(1) that is present on the filing date of the application as part of the original disclosure. Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application. Applicants are strongly encouraged to avoid submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application.

Jump to MPEP Source · 37 CFR 1.115(a)(1)Components Required for Filing DatePatent Application ContentFiling Date Requirements
StatutoryInformativeAlways
[mpep-608-04-b-cdcf3c43f3d44edfe1bd565c]
Avoid Submitting Preliminary Amendments to Minimize Processing Burden
Note:
Applicants are encouraged not to submit preliminary amendments to reduce the Office's processing workload and minimize delays in application processing.

A preliminary amendment present on the filing date of the application (e.g., filed along with the filing of the application) is considered a part of the original disclosure. See MPEP § 714.01(e) and § 602. A preliminary amendment filed after the filing date of the application is not part of the original disclosure of the application. See MPEP § 608.04(a). For applications filed on or after September 21, 2004, the Office will automatically treat any preliminary amendment under 37 CFR 1.115(a)(1) that is present on the filing date of the application as part of the original disclosure. Applicants can avoid the need to file a preliminary amendment by incorporating any desired amendments into the text of the specification, even where the application is a continuation or divisional application of a prior-filed application. Applicants are strongly encouraged to avoid submitting any preliminary amendments so as to minimize the burden on the Office in processing preliminary amendments and reduce delays in processing the application.

Jump to MPEP Source · 37 CFR 1.115(a)(1)Components Required for Filing DateFiling Date RequirementsPatent Application Content

Citations

Primary topicCitation
Components Required for Filing Date
Filing Date Requirements
35 U.S.C. § 602
Components Required for Filing Date
Filing Date Requirements
37 CFR § 1.115(a)(1)
Components Required for Filing Date
Filing Date Requirements
MPEP § 608.04(a)
Components Required for Filing Date
Filing Date Requirements
MPEP § 714.01(e)

Source Text from USPTO’s MPEP

This is an exact copy of the MPEP from the USPTO. It is here for your reference to see the section in context.

BlueIron Last Updated: 2025-12-31