Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
First Paragraph (1)
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
To learn more:
MPEP 200 – Types and Status of Application; Benefit and Priority (7)
Can a continuation-in-part application claim priority to a provisional application?
Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.
Key points to understand:
- Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
- New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
- One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
- Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.
Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.
For more information on new matter, visit: new matter.
For more information on provisional application, visit: provisional application.
Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.
The MPEP ΒΆ 2.10.01 states:
“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”
If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).
For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).
For more information on new matter, visit: new matter.
A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:
- Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
- New matter introduced in the CIP will have the filing date of the CIP application.
- Each claim in the CIP is evaluated independently for priority date determination.
MPEP 211.05 states:
A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.
To learn more:
New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
To learn more:
The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:
- Claims that are fully supported by the parent application retain the parent’s filing date.
- Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.
The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application.
This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.
For more information on effective filing date, visit: effective filing date.
For more information on new matter, visit: new matter.
No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:
‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’
This means:
- The divisional application must be limited to the subject matter disclosed in the parent application
- No new matter can be added to the divisional application
- The claims in the divisional must be supported by the disclosure of the parent application
If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.
To learn more:
When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:
- Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
- Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
- The new matter may affect the application’s ability to overcome prior art references.
As stated in MPEP 211.05:
“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”
This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.
To learn more:
MPEP 201 – Types of Applications (2)
Can a continuation-in-part application claim priority to a provisional application?
Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.
Key points to understand:
- Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
- New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
- One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
- Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.
Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.
For more information on new matter, visit: new matter.
For more information on provisional application, visit: provisional application.
The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:
- Claims that are fully supported by the parent application retain the parent’s filing date.
- Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.
The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application.
This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.
For more information on effective filing date, visit: effective filing date.
For more information on new matter, visit: new matter.
MPEP 2100 – Patentability (4)
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
To learn more:
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
To learn more:
The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
To learn more:
MPEP 211 – Claiming the Benefit of an Earlier Filing Date Under 35 U.S.C. 120 and 119(e) (1)
Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.
The MPEP ΒΆ 2.10.01 states:
“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”
If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).
For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).
For more information on new matter, visit: new matter.
MPEP 2163.04 – Burden On The Examiner With Regard To The Written Description Requirement (1)
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
MPEP 2163.06 – Relationship Of Written Description Requirement To New Matter (1)
The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
To learn more:
MPEP 2163.07 – Amendments To Application Which Are Supported In The Original Description (1)
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
To learn more:
MPEP 2166 – Rejections Under 35 U.S.C. 112(A) Or Pre – Aia 35 U.S.C. 112 (1)
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
To learn more:
Patent Law (23)
Can a continuation-in-part application claim priority to a provisional application?
Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.
Key points to understand:
- Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
- New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
- One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
- Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.
Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.
For more information on new matter, visit: new matter.
For more information on provisional application, visit: provisional application.
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
To learn more:
Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
To learn more:
The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
To learn more:
When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
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How does the USPTO define ‘new matter’ in patent applications?
The United States Patent and Trademark Office (USPTO) defines ‘new matter’ as any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. According to MPEP 608.04(a):
“Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.”
This definition is strict and encompasses any additions or modifications that introduce information not explicitly or inherently supported by the original disclosure. New matter can include:
- Additional text in the specification
- New or modified claim elements
- Changes to drawings or the addition of new figures
- Incorporation of external references not properly incorporated on the filing date
It’s important to note that new matter is prohibited under 35 U.S.C. 132(a), which states that “No amendment shall introduce new matter into the disclosure of the invention.”
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How does the USPTO determine if material is ‘new matter’ in a patent application?
The USPTO determines if material is ‘new matter’ by comparing the content of the application as originally filed with any subsequent amendments or additions. According to MPEP 608.04(a):
In establishing new matter, the examiner must find that the subject matter is unequivocally described in the application as filed.
The process typically involves:
- Reviewing the original specification, claims, and drawings
- Comparing any amendments or new submissions to the original disclosure
- Determining if the new material goes beyond what was explicitly or inherently disclosed
- Considering whether a person skilled in the art would recognize the added material as being inherently present in the original disclosure
If the examiner finds that the added material is not supported by the original disclosure, it will be rejected as new matter under 35 U.S.C. 132(a) and 37 CFR 1.121(f).
To learn more:
‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a):
Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.
This can include adding specific percentages, compounds, or even omitting steps from a method that were present in the original disclosure.
To learn more:
Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.
The MPEP ΒΆ 2.10.01 states:
“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”
If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).
For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).
For more information on new matter, visit: new matter.
A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:
- Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
- New matter introduced in the CIP will have the filing date of the CIP application.
- Each claim in the CIP is evaluated independently for priority date determination.
MPEP 211.05 states:
A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.
To learn more:
When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal.
According to MPEP 608.04(c):
“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition.”
To challenge the examiner’s holding of new matter in the specification:
- Prepare a detailed petition explaining why the amendment does not introduce new matter.
- Submit the petition to the USPTO, following the guidelines for petition submission.
- The petition will be reviewed by the appropriate office, typically the Technology Center Director or their designee.
- A decision will be issued either granting or denying the petition.
It’s important to note that this process is separate from the appeal process used for claim rejections.
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Can drawings or figures in a patent application introduce new matter?
Yes, drawings or figures can introduce new matter in a patent application. The MPEP 608.04 addresses this issue:
‘In establishing a disclosure, applicant may rely not only on the description and drawing as filed but also on the original claims if their content justifies it.’
This implies that:
- Original drawings are part of the disclosure and can support claims.
- However, new or amended drawings can potentially introduce new matter.
- Changes to drawings that go beyond what was originally disclosed may be rejected as new matter.
For example, adding specific structural details to a figure that weren’t originally disclosed, or introducing new relationships between components, could be considered new matter. Applicants should be cautious when modifying drawings and ensure any changes are fully supported by the original disclosure.
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Yes, in some cases, omitting information from a patent application can be considered new matter. This might seem counterintuitive, but the removal of certain information can change the scope or meaning of the invention in a way that wasn’t supported by the original disclosure.
The MPEP provides an example: New matter includes not only the addition of wholly unsupported subject matter, but may also include […] even the omission of a step from a method.
(MPEP 608.04(a))
This concept is particularly important in the context of:
- Changing the scope of the invention
- Altering the nature of the invention
- Removing essential features or steps
Applicants should be cautious when making any changes to their application, including deletions, to ensure they don’t inadvertently introduce new matter by omission. If in doubt, it’s advisable to consult with a patent attorney or agent.
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What is the difference between new matter and new or amended claims in patent applications?
New matter and new or amended claims are distinct concepts in patent law:
- New matter refers to content not present in the original disclosure of the application. As stated in MPEP 608.04: ‘New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure…’
- New or amended claims, on the other hand, are permissible as long as they are supported by the original disclosure. The MPEP clarifies: ‘An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed.’
In essence, while new or amended claims can be added to an application, they must not introduce new matter that wasn’t originally disclosed.
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New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
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How does the USPTO handle new matter introduced in continuation-in-part applications?
Continuation-in-part (CIP) applications are a special case when it comes to new matter. The MPEP 608.04 states:
‘In the case of a continuation-in-part application, any claim directed to matter which was not described in the parent nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112 is treated as entitled only to the filing date of the continuation-in-part application.’
This means:
- New matter can be introduced in a CIP application.
- Claims based on the new matter will only receive the filing date of the CIP application.
- Claims fully supported by the parent application can retain the earlier filing date.
Examiners will carefully review CIP applications to determine which claims are entitled to which filing dates, affecting prior art considerations and potentially the validity of the claims.
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If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:
- The examiner will notify the applicant in the next Office action.
- The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).
According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
It’s important to note that:
- Continuations and divisionals should not contain new matter relative to the prior application.
- If new matter is present, the application is more appropriately designated as a continuation-in-part.
- The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.
Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.
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What is the significance of the application filing date for new matter in patent applications?
The application filing date is crucial when determining whether content in a patent application constitutes new matter. MPEP 608.04(a) states:
‘Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.’
This means that any information added to the application after the filing date, which was not present in the original specification, claims, or drawings, is considered new matter. This is important because new matter cannot be added to an application without filing a continuation-in-part application.
The filing date serves as a cutoff point for the content that can be included in the application without being considered new matter. Inventors and patent practitioners must ensure that all necessary information is included in the application on or before the filing date to avoid issues with new matter.
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If new matter is objected to in a patent application, the applicant must take specific actions to address the objection. According to the MPEP, the examiner will use Form Paragraph 7.28, which states:
Applicant is required to cancel the new matter in the reply to this Office action.
To respond, the applicant should:
- Review the identified new matter carefully.
- If the applicant agrees it’s new matter, cancel the objected content in their response.
- If the applicant disagrees, provide a detailed explanation demonstrating how the original disclosure supports the contested material.
- Consider amending the application to use language more closely aligned with the original disclosure.
It’s crucial to address all new matter objections promptly to avoid potential rejections under 35 U.S.C. 112(a).
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The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:
- Claims that are fully supported by the parent application retain the parent’s filing date.
- Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.
The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application.
This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.
For more information on effective filing date, visit: effective filing date.
For more information on new matter, visit: new matter.
No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:
‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’
This means:
- The divisional application must be limited to the subject matter disclosed in the parent application
- No new matter can be added to the divisional application
- The claims in the divisional must be supported by the disclosure of the parent application
If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.
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When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:
- Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
- Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
- The new matter may affect the application’s ability to overcome prior art references.
As stated in MPEP 211.05:
“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”
This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.
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The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
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Patent Procedure (23)
Can a continuation-in-part application claim priority to a provisional application?
Yes, a continuation-in-part (CIP) application can claim priority to a provisional application, but with some important considerations. The MPEP 201.08 doesn’t explicitly address this scenario, but it can be inferred from the general rules governing CIP applications and provisional applications.
Key points to understand:
- Priority claim: A CIP can claim priority to a provisional application for subject matter disclosed in the provisional.
- New matter: Any new matter added in the CIP will have the filing date of the CIP itself, not the provisional application.
- One-year deadline: The CIP must be filed within one year of the provisional application’s filing date to claim its benefit.
- Multiple priorities: A CIP might claim priority to both a provisional and a non-provisional application in some cases.
Inventors should carefully document which parts of their CIP application correspond to the provisional disclosure to ensure proper priority claims.
For more information on new matter, visit: new matter.
For more information on provisional application, visit: provisional application.
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance:
“An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate correction.”
This means that if a person skilled in the relevant field would both recognize the error and know how to correct it based on the original application, fixing such an error is not considered new matter. However, it’s important to note that the error and its correction must be obvious to avoid introducing unintended changes to the application.
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Yes, patent examiners can and often do suggest amendments to claims to address written description issues. This practice is encouraged as part of the examination process to help applicants overcome rejections and move their applications forward.
The MPEP 2163.04 states:
“When appropriate, suggest amendments to the claims which can be supported by the application’s written description, being mindful of the prohibition against the addition of new matter in the claims or description.”
However, examiners must be careful not to suggest amendments that would introduce new matter into the application. Any suggested amendments must be fully supported by the original disclosure to comply with the written description requirement and avoid new matter issues.
This guidance encourages a collaborative approach between examiners and applicants to resolve written description issues while maintaining the integrity of the patent application.
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The written description requirement under 35 U.S.C. 112(a) mandates that the specification must describe the claimed invention in sufficient detail to demonstrate to a person skilled in the art that the inventor had possession of the claimed invention at the time of filing.
According to MPEP 2166, a rejection based on the written description requirement can be made using the following form paragraph:
“Claim [1] rejected under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph, as failing to comply with the written description requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to reasonably convey to one skilled in the relevant art that the inventor or a joint inventor, or for applications subject to pre-AIA 35 U.S.C. 112, the inventor(s), at the time the application was filed, had possession of the claimed invention.”
This rejection is used when the examiner believes that the specification does not provide adequate support for the claimed subject matter, including situations where new matter has been introduced into the claims.
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When is a new oath or declaration required for a continuation-in-part application?
For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05:
‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing application for purposes of 37 CFR 1.78(d), but not for purposes of 37 CFR 1.63(d). Accordingly, the inventor’s oath or declaration must also be filed in the continuation-in-part application.’
This requirement ensures that the inventors acknowledge and claim the new subject matter introduced in the CIP application. The new oath or declaration should cover both the original content from the parent application and the newly added material in the CIP.
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How does the USPTO define ‘new matter’ in patent applications?
The United States Patent and Trademark Office (USPTO) defines ‘new matter’ as any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. According to MPEP 608.04(a):
“Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.”
This definition is strict and encompasses any additions or modifications that introduce information not explicitly or inherently supported by the original disclosure. New matter can include:
- Additional text in the specification
- New or modified claim elements
- Changes to drawings or the addition of new figures
- Incorporation of external references not properly incorporated on the filing date
It’s important to note that new matter is prohibited under 35 U.S.C. 132(a), which states that “No amendment shall introduce new matter into the disclosure of the invention.”
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How does the USPTO determine if material is ‘new matter’ in a patent application?
The USPTO determines if material is ‘new matter’ by comparing the content of the application as originally filed with any subsequent amendments or additions. According to MPEP 608.04(a):
In establishing new matter, the examiner must find that the subject matter is unequivocally described in the application as filed.
The process typically involves:
- Reviewing the original specification, claims, and drawings
- Comparing any amendments or new submissions to the original disclosure
- Determining if the new material goes beyond what was explicitly or inherently disclosed
- Considering whether a person skilled in the art would recognize the added material as being inherently present in the original disclosure
If the examiner finds that the added material is not supported by the original disclosure, it will be rejected as new matter under 35 U.S.C. 132(a) and 37 CFR 1.121(f).
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‘New matter’ refers to any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. As stated in MPEP 608.04(a):
Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.
This can include adding specific percentages, compounds, or even omitting steps from a method that were present in the original disclosure.
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Claiming benefit under these statutes allows an application to receive the earlier filing date of a prior-filed application, which can be crucial for establishing priority and overcoming prior art. However, this claim also requires that the application does not contain new matter.
The MPEP ΒΆ 2.10.01 states:
“This form paragraph should be used when an application, which claims the benefit of a prior-filed application under 35 U.S.C. 120, 121, 365(c), or 386(c) contains new matter relative to the prior-filed application, and purports to be a ‘continuation,’ ‘division,’ or ‘divisional application’ of the prior-filed application.”
If new matter is found, the applicant may need to change the application type or remove the benefit claim to maintain the new subject matter.
For more information on 35 U.S.C. 120, visit: 35 U.S.C. 120.
For more information on 35 U.S.C. 365(c), visit: 35 U.S.C. 365(c).
For more information on 35 U.S.C. 386(c), visit: 35 U.S.C. 386(c).
For more information on new matter, visit: new matter.
A continuation-in-part (CIP) application can claim the benefit of a prior application’s filing date, but with important limitations:
- Only the subject matter common to both the CIP and the prior application can claim the earlier filing date.
- New matter introduced in the CIP will have the filing date of the CIP application.
- Each claim in the CIP is evaluated independently for priority date determination.
MPEP 211.05 states:
A claim in a continuation-in-part application or subsequent application may be entitled to the benefit of the filing date of the prior application if the disclosure of the prior application provides support for the claim in compliance with 35 U.S.C. 112(a), except for the best mode requirement.
This means that applicants must carefully consider the content of their prior applications when filing a CIP to ensure they receive the maximum benefit of earlier filing dates for their claims.
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When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal.
According to MPEP 608.04(c):
“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition.”
To challenge the examiner’s holding of new matter in the specification:
- Prepare a detailed petition explaining why the amendment does not introduce new matter.
- Submit the petition to the USPTO, following the guidelines for petition submission.
- The petition will be reviewed by the appropriate office, typically the Technology Center Director or their designee.
- A decision will be issued either granting or denying the petition.
It’s important to note that this process is separate from the appeal process used for claim rejections.
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Can drawings or figures in a patent application introduce new matter?
Yes, drawings or figures can introduce new matter in a patent application. The MPEP 608.04 addresses this issue:
‘In establishing a disclosure, applicant may rely not only on the description and drawing as filed but also on the original claims if their content justifies it.’
This implies that:
- Original drawings are part of the disclosure and can support claims.
- However, new or amended drawings can potentially introduce new matter.
- Changes to drawings that go beyond what was originally disclosed may be rejected as new matter.
For example, adding specific structural details to a figure that weren’t originally disclosed, or introducing new relationships between components, could be considered new matter. Applicants should be cautious when modifying drawings and ensure any changes are fully supported by the original disclosure.
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Yes, in some cases, omitting information from a patent application can be considered new matter. This might seem counterintuitive, but the removal of certain information can change the scope or meaning of the invention in a way that wasn’t supported by the original disclosure.
The MPEP provides an example: New matter includes not only the addition of wholly unsupported subject matter, but may also include […] even the omission of a step from a method.
(MPEP 608.04(a))
This concept is particularly important in the context of:
- Changing the scope of the invention
- Altering the nature of the invention
- Removing essential features or steps
Applicants should be cautious when making any changes to their application, including deletions, to ensure they don’t inadvertently introduce new matter by omission. If in doubt, it’s advisable to consult with a patent attorney or agent.
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What is the difference between new matter and new or amended claims in patent applications?
New matter and new or amended claims are distinct concepts in patent law:
- New matter refers to content not present in the original disclosure of the application. As stated in MPEP 608.04: ‘New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure…’
- New or amended claims, on the other hand, are permissible as long as they are supported by the original disclosure. The MPEP clarifies: ‘An amendment to the claims or the addition of a new claim must be supported by the description of the invention in the application as filed.’
In essence, while new or amended claims can be added to an application, they must not introduce new matter that wasn’t originally disclosed.
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New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05:
‘New or amended claims which introduce elements or limitations that are not supported by the as-filed disclosure violate the written description requirement. See, e.g., In re Lukach, 442 F.2d 967, 169 USPQ 795 (CCPA 1971) (subgenus range was not supported by generic disclosure and specific example within the subgenus range); In re Smith, 458 F.2d 1389, 1395, 173 USPQ 679, 683 (CCPA 1972) (an adequate description of a genus may not support claims to a subgenus or species within the genus).’
This means that if a later-filed application includes new matter not disclosed in the prior-filed application, it cannot claim the benefit of the earlier filing date for that new matter. The new matter will only be entitled to the filing date of the later-filed application. It’s crucial for applicants to ensure that all claimed subject matter is fully supported by the prior-filed application to maintain the benefit of the earlier filing date.
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How does the USPTO handle new matter introduced in continuation-in-part applications?
Continuation-in-part (CIP) applications are a special case when it comes to new matter. The MPEP 608.04 states:
‘In the case of a continuation-in-part application, any claim directed to matter which was not described in the parent nonprovisional application in the manner provided by the first paragraph of 35 U.S.C. 112 is treated as entitled only to the filing date of the continuation-in-part application.’
This means:
- New matter can be introduced in a CIP application.
- Claims based on the new matter will only receive the filing date of the CIP application.
- Claims fully supported by the parent application can retain the earlier filing date.
Examiners will carefully review CIP applications to determine which claims are entitled to which filing dates, affecting prior art considerations and potentially the validity of the claims.
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If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur:
- The examiner will notify the applicant in the next Office action.
- The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP).
According to MPEP 602.05: If the examiner determines that the continuation or divisional application contains new matter relative to the prior application, the examiner should so notify the applicant in the next Office action and indicate that the application should be redesignated as a continuation-in-part.
It’s important to note that:
- Continuations and divisionals should not contain new matter relative to the prior application.
- If new matter is present, the application is more appropriately designated as a continuation-in-part.
- The redesignation as a CIP may have implications for the oath or declaration requirements and the application’s effective filing date for the new subject matter.
Applicants should carefully review their applications to ensure they are correctly designated and contain appropriate oaths or declarations based on their content and relationship to the prior application.
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What is the significance of the application filing date for new matter in patent applications?
The application filing date is crucial when determining whether content in a patent application constitutes new matter. MPEP 608.04(a) states:
‘Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing date is new matter.’
This means that any information added to the application after the filing date, which was not present in the original specification, claims, or drawings, is considered new matter. This is important because new matter cannot be added to an application without filing a continuation-in-part application.
The filing date serves as a cutoff point for the content that can be included in the application without being considered new matter. Inventors and patent practitioners must ensure that all necessary information is included in the application on or before the filing date to avoid issues with new matter.
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If new matter is objected to in a patent application, the applicant must take specific actions to address the objection. According to the MPEP, the examiner will use Form Paragraph 7.28, which states:
Applicant is required to cancel the new matter in the reply to this Office action.
To respond, the applicant should:
- Review the identified new matter carefully.
- If the applicant agrees it’s new matter, cancel the objected content in their response.
- If the applicant disagrees, provide a detailed explanation demonstrating how the original disclosure supports the contested material.
- Consider amending the application to use language more closely aligned with the original disclosure.
It’s crucial to address all new matter objections promptly to avoid potential rejections under 35 U.S.C. 112(a).
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The addition of new matter in a continuation-in-part (CIP) application can significantly affect priority claims. Here’s how:
- Claims that are fully supported by the parent application retain the parent’s filing date.
- Claims that rely on the new matter added in the CIP receive the filing date of the CIP application.
The MPEP 201.08 states: The disclosure presented in the continuation-in-part application may include subject matter in common with or vary from that of the prior application.
This means that each claim in a CIP must be evaluated individually to determine its effective filing date, which can impact prior art considerations and the validity of the patent.
For more information on effective filing date, visit: effective filing date.
For more information on new matter, visit: new matter.
No, a divisional application cannot include new matter that was not disclosed in the parent application. The MPEP 201.06 clearly states:
‘A divisional application is a later application for an independent or distinct invention, carved out of a prior application and disclosing and claiming only subject matter disclosed in the prior application.’
This means:
- The divisional application must be limited to the subject matter disclosed in the parent application
- No new matter can be added to the divisional application
- The claims in the divisional must be supported by the disclosure of the parent application
If an applicant wishes to add new matter, they should consider filing a continuation-in-part (CIP) application instead of a divisional. For more information on new matter, refer to MPEP 2163.
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When a continuation-in-part (CIP) application includes new matter not disclosed in the parent application, the following consequences apply:
- Claims solely directed to subject matter adequately disclosed in the parent application are entitled to the parent application’s filing date.
- Claims that include new matter introduced in the CIP are only entitled to the filing date of the CIP application.
- The new matter may affect the application’s ability to overcome prior art references.
As stated in MPEP 211.05:
“Any claim in a continuation-in-part application which is directed solely to subject matter adequately disclosed under 35 U.S.C. 112 in the parent nonprovisional application is entitled to the benefit of the filing date of the parent nonprovisional application. However, if a claim in a continuation-in-part application recites a feature which was not disclosed or adequately supported by a proper disclosure under 35 U.S.C. 112 in the parent nonprovisional application, but which was first introduced or adequately supported in the continuation-in-part application, such a claim is entitled only to the filing date of the continuation-in-part application.”
This differentiation in filing dates for different claims within the same CIP application can significantly impact the application’s ability to overcome prior art and maintain patentability.
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The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06:
“In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)”
This case established an important principle:
- When new matter is added to the claims, the appropriate action is to reject the claims under 35 U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph – written description requirement.
- This approach ensures that the claims are properly examined for compliance with the written description requirement.
- It emphasizes that new matter in claims is treated differently from new matter in the specification or drawings.
The Rasmussen decision guides examiners in properly addressing new matter issues in patent applications, ensuring consistency in patent examination procedures.
To learn more: