Patent Law FAQ
This FAQ answers all your questions about patent law, patent procedure, and the patent examination process.
If the specification doesn’t provide adequate support or antecedent basis for claim terms, an examiner can take several actions. According to MPEP 2173.03:
“If the specification does not provide the needed support or antecedent basis for the claim terms, the specification should be objected to under 37 CFR 1.75(d)(1).”
The examiner’s actions may include:
- Objecting to the specification under 37 CFR 1.75(d)(1)
- Requiring the applicant to make appropriate amendments to the description
- Asking the applicant to amend the claims
The MPEP further states:
“Applicant will be required to make appropriate amendment to the description to provide clear support or antecedent basis for the claim terms provided no new matter is introduced, or amend the claim.”
It’s important to note that any amendments to the specification must not introduce new matter, as this would violate 35 U.S.C. 132(a).
To learn more:
Topics:
MPEP 2100 – Patentability,
MPEP 2173.03 – Correspondence Between Specification And Claims,
Patent Law,
Patent Procedure