Patent Law FAQ

If you intentionally omit material from your application that was present in a prior-filed application, the omitted material will not automatically be incorporated by reference under 37 CFR 1.57(b). The MPEP clarifies:

“Applicants can still intentionally omit material contained in the prior-filed application from the application containing the priority or benefit claim without the material coming back in by virtue of the incorporation by reference of 37 CFR 1.57(b). Applicants can maintain their intent by simply not amending the application to include the intentionally omitted material.”

In other words, the incorporation by reference under 37 CFR 1.57(b) only applies to inadvertently omitted material. If you choose not to include certain material from the prior application, it will remain omitted unless you specifically amend your application to include it.