What should an applicant do if new matter is objected to in their patent application?
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…
Read MoreWhat are the filing requirements for a continuation-in-part (CIP) application?
A continuation-in-part (CIP) application has specific filing requirements. Key points include: A CIP application can only be filed under 37 CFR 1.53(b). It must be filed during the lifetime of the prior-filed application (before its abandonment or issuance). The CIP must claim the benefit of the prior application under 35 U.S.C. 120, 121, 365(c), or…
Read MoreHow do continuation, divisional, and continuation-in-part applications differ?
Continuation, divisional, and continuation-in-part (CIP) applications are all types of continuing applications, but they have key differences: Continuation application: Discloses and claims only subject matter disclosed in the prior application. No new matter is added. Divisional application: Results from a restriction requirement in the parent application. Claims an independent and distinct invention carved out of…
Read MoreWhat is a continuation-in-part (CIP) application?
A continuation-in-part (CIP) application is an application filed during the lifetime of a prior nonprovisional application, repeating some substantial portion or all of the prior application and adding matter not disclosed in the prior application. As stated in the MPEP: A continuation-in-part is an application filed during the lifetime of a prior-filed nonprovisional application, international…
Read MoreCan I add an incorporation by reference statement when submitting a benefit claim after filing?
No, you cannot add an incorporation by reference statement when submitting a benefit claim after the initial filing of your application. The MPEP clearly states: When a benefit claim is submitted after the filing of an application, the reference to the prior application cannot include an incorporation by reference statement specifying of the prior application…
Read MoreCan drawings be added to a patent application after the filing date?
Can drawings be added to a patent application after the filing date? According to MPEP 608.04(a), adding drawings to a patent application after the filing date is generally considered new matter. The MPEP states: “Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the…
Read MoreCan an applicant add examples or expand on the disclosure after filing a patent application?
Can an applicant add examples or expand on the disclosure after filing a patent application? Generally, applicants are not permitted to add new examples or expand on the disclosure after filing a patent application without risking a new matter rejection. The MPEP 608.04(a) states: Matter not present on the filing date of the application in…
Read MoreCan an applicant add drawings to a patent application after the filing date?
Adding drawings to a patent application after the filing date is possible but subject to certain restrictions. The MPEP states: no amendment may introduce new matter into the disclosure of an application after its filing date. However, there are some provisions for adding drawings in specific circumstances: For applications filed on or after September 21,…
Read MoreCan adding specific percentages to a broader original disclosure be considered new matter?
Yes, adding specific percentages to a broader original disclosure can be considered new matter. The MPEP section 608.04(a) states: 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, or even the omission of a step from a method.…
Read MoreCan I add working examples to my patent application after filing?
Can I add working examples to my patent application after filing? Adding working examples to a patent application after filing is generally not permitted if they constitute new matter. According to MPEP 608.04: “An amendment to the claims or the addition of a new claim must be supported by the description of the invention in…
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