How does the USPTO treat amendments that add new matter to a patent application?
How does the USPTO treat amendments that add new matter to a patent application? The USPTO treats amendments that add new matter to a patent application as insufficient responses. According to MPEP 711.02(a): “An amendment which adds new matter to the disclosure of an application is not a bona fide attempt to advance the application…
Read MoreWhat situations prevent a first Office action from being made final in a continuing application?
There are specific situations where it would not be proper to make a first Office action final in a continuing application. According to MPEP 706.07(b): “It would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application contains material which was presented in…
Read MoreCan an amendment after allowance introduce new matter under 37 CFR 1.312?
Can an amendment after allowance introduce new matter under 37 CFR 1.312? No, amendments after allowance under 37 CFR 1.312 cannot introduce new matter. As stated in MPEP 714.16: ‘No amendment may introduce new matter into the disclosure of an application after the filing date of the application.’ This rule applies to all amendments, including…
Read MoreHow does the USPTO handle new matter in continuation applications?
How does the USPTO handle new matter in continuation applications? The United States Patent and Trademark Office (USPTO) treats new matter in continuation applications similarly to how it handles new matter in original applications. According to MPEP 608.04: “A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change…
Read MoreHow does the USPTO define ‘new matter’ in patent applications?
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…
Read MoreHow does the USPTO determine if material is ‘new matter’ in a patent application?
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…
Read MoreCan a best mode defect be cured by a later amendment?
No, a best mode defect cannot be cured by a later amendment to the patent application. The MPEP 608.01(h) clearly states: If the best mode contemplated by the inventor at the time of filing the application is not disclosed, such defect cannot be cured by submitting an amendment seeking to put into the specification something…
Read MoreWhat constitutes ‘new matter’ in a patent application?
‘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…
Read MoreWhen can an applicant voluntarily submit a substitute specification?
An applicant can voluntarily submit a substitute specification at any point up to the payment of the issue fee, subject to certain conditions. 37 CFR 1.125(b) states: Subject to § 1.312, a substitute specification, excluding the claims, may be filed at any point up to payment of the issue fee if it is accompanied by…
Read MoreHow can I challenge an examiner’s new matter rejection?
The process for challenging an examiner’s new matter rejection depends on where the alleged new matter appears: For amendments to the specification: If the new matter is confined to amendments in the specification, you can file a petition to review the examiner’s requirement for cancellation. For new matter in claims: If the alleged new matter…
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