What is considered ‘new matter’ in a patent application?
‘New matter’ refers to any subject matter that is added to a patent application after its filing date, which was not present in the original specification, claims, or drawings. The MPEP states: Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing…
Read MoreWhat is the difference between new matter and inherent disclosure in patent applications?
What is the difference between new matter and inherent disclosure in patent applications? New matter and inherent disclosure are distinct concepts in patent law: New matter refers to information added to a patent application after its filing date that goes beyond the original disclosure. This is generally not allowed and can result in rejection. Inherent…
Read MoreWhat is the difference between new matter and new or amended claims in patent applications?
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…
Read MoreWhen is a new oath or declaration required for a continuation-in-part application?
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…
Read MoreCan omitting information from an application be considered new matter?
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…
Read MoreHow have drawing requirements changed for patent applications filed on or after December 18, 2013?
For non-design patent applications filed on or after December 18, 2013, the drawing requirements have been relaxed. The MPEP states: Applications, which are not design applications, filed under 35 U.S.C. 111(a) or (b) on or after December 18, 2013 are entitled to a filing date even if the application does not contain drawings. However, it’s…
Read MoreCan drawings or figures in a patent application introduce new matter?
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…
Read MoreWhat is the difference between petitioning and appealing a new matter rejection?
The distinction between petitioning and appealing a new matter rejection is crucial in patent prosecution: Petition: Used when new matter is confined to amendments in the specification. Appeal: Required when new matter affects the claims, leading to their rejection. According to MPEP 608.04(c): “Where the new matter is confined to amendments to the specification, review…
Read MoreCan I petition against a new matter rejection in claims?
No, you cannot petition against a new matter rejection in claims. When new matter affects the claims, leading to their rejection, the issue must be addressed through the appeal process, not by petition. The MPEP 608.04(c) clearly states: “But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection…
Read MoreAre preliminary amendments considered new matter?
The treatment of preliminary amendments as new matter depends on when they are filed: Filing date amendments: Preliminary amendments present on the filing date of the application are considered part of the original disclosure and not new matter. Post-filing amendments: Preliminary amendments filed after the application’s filing date are not part of the original disclosure…
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