What are the restrictions on amendments in patent reexamination?
Amendments in patent reexamination are subject to several restrictions: They may not enlarge the scope of a claim of the patent or introduce new matter. Amended or new claims that broaden or enlarge the scope of a claim should be rejected under 35 U.S.C. 305. Amendments do not become effective in the patent until the…
Read MoreCan a patent examiner suggest amendments to claims to address written description issues?
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…
Read MoreHow does a patent examiner handle new matter in a patent application?
When a patent examiner encounters new matter in a patent application, they must take specific actions as outlined in MPEP 2163.06: If new subject matter is added to the disclosure (abstract, specification, or drawings), the examiner should object to the introduction of new matter under 35 U.S.C. 132 or 251 and require the applicant to…
Read MoreCan originally claimed subject matter be considered new matter?
Interestingly, originally claimed subject matter is generally not considered new matter, even if it’s not described in the rest of the specification. According to MPEP 2163.06: “The claims as filed in the original specification are part of the disclosure and therefore, if an application as originally filed contains a claim disclosing material not disclosed in…
Read MoreCan new matter be added to a patent application to overcome a written description rejection?
Can new matter be added to a patent application to overcome a written description rejection? No, new matter cannot be added to a patent application to overcome a written description rejection. This is a fundamental principle in patent law, as outlined in MPEP 2163: “No amendment may introduce new matter into the disclosure of an…
Read MoreHow does new matter differ from lack of written description?
While both new matter and lack of written description relate to the content of a patent application, they are distinct concepts with different implications. The MPEP 2163.01 clarifies: “The claim should not be rejected or objected to on the ground of new matter. As framed by the court in In re Rasmussen, 650 F.2d 1212,…
Read MoreWhat happens if new matter is added to a pre-AIA application after March 16, 2013?
If new matter is added to a pre-AIA application after March 16, 2013, it does not change the application’s status, but it may lead to rejections. According to MPEP 2159.01: “If new matter is added via amendment, claims directed to the new matter will be rejected under pre-AIA 35 U.S.C. 112, first paragraph. See MPEP…
Read MoreCan new matter be introduced during ex parte reexamination?
New matter cannot be introduced into the disclosure during ex parte reexamination. The MPEP states: “35 U.S.C. 305 provides for examination under 35 U.S.C. 132, which prohibits the introduction of new matter into the disclosure.” If new matter is added to the claims or affects claim limitations, the claims should be rejected under 35 U.S.C.…
Read MoreWhat are the guidelines for addressing new matter in ex parte reexamination?
In ex parte reexamination, addressing new matter is subject to specific guidelines as outlined in MPEP 2262: New matter is not permitted in reexamination proceedings. If new matter is introduced in an amendment, it must be objected to and not entered. The examiner must provide a detailed explanation of why the proposed amendment introduces new…
Read MoreCan new matter be added to claims during ex parte reexamination?
Can new matter be added to claims during ex parte reexamination? No, new matter cannot be added to claims during ex parte reexamination: The MPEP 2258 clearly states: “No amendment may introduce new matter into the disclosure of the patent.” This prohibition is based on 35 U.S.C. 305, which specifies that no proposed amended or…
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