How does submitting new matter after March 16, 2013, affect an application’s pre-AIA status?
Submitting new matter after March 16, 2013, does not affect an application’s pre-AIA status. The MPEP clearly states: “Submission of an amendment including a claim that includes new matter on or after March 16, 2013, also does not affect an application’s status as a pre-AIA application.” This is because, according to 35 U.S.C. 132(a), no…
Read MoreHow does new matter in a continuation-in-part (CIP) application affect the effective filing date?
New matter introduced in a continuation-in-part (CIP) application can significantly affect the effective filing date of certain claims. The MPEP 2152.01 provides guidance on this issue: “In the case of a continuation-in-part application, any claims that are fully supported by a prior-filed application are entitled to the benefit of the filing date of that prior-filed…
Read MoreHow are “new matter” amendments handled in reexamination proceedings?
“New matter” amendments are treated strictly in reexamination proceedings. According to MPEP 2270: “Any ‘new matter’ amendment to the disclosure (35 U.S.C. 132) will be required to be canceled, and claims containing new matter will be rejected under 35 U.S.C. 112. A ‘new matter’ amendment to the drawing is ordinarily not entered.” This means that…
Read MoreHow are “new matter” amendments treated in inter partes reexamination?
“New matter” amendments in inter partes reexamination are treated as follows: Amendments to the disclosure that introduce new matter ( 35 U.S.C. 132 ) will be required to be canceled. Claims containing new matter will be rejected under 35 U.S.C. 112. “New matter” amendments to drawings are ordinarily not entered. MPEP 2670 states: “Any ‘new…
Read MoreHow does new matter affect AIA status determination?
New matter in a patent application does not affect the determination of AIA status. The MPEP 2159.02 states: “As 35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure, an application may not contain a claim to a claimed invention that does not have support under 35 U.S.C. 112(a) in the application (that…
Read MoreHow does the MPEP address the omission of a limitation in a patent claim?
How does the MPEP address the omission of a limitation in a patent claim? The MPEP addresses the omission of a limitation in a patent claim in section 2163.05. According to this section, “[a]n amendment to a claim that omits an element that applicant describes as an essential or critical feature of the invention originally…
Read MoreHow does the MPEP address changes in numerical range limitations?
How does the MPEP address changes in numerical range limitations? The MPEP addresses changes in numerical range limitations in section 2163.05. It states that “[a] claim that omits an element which applicant describes as an essential or critical feature of the invention originally disclosed does not comply with the written description requirement.” This principle applies…
Read MoreHow does inherent disclosure affect patent applications?
Inherent disclosure in patent applications allows for later amendments that explicitly state functions, theories, or advantages that were inherently present in the original disclosure. The MPEP Section 2163.07(a) explains: “By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage,…
Read MoreWhat is the significance of In re Rasmussen in relation to new matter?
The case of In re Rasmussen is significant in the context of new matter in patent applications. As mentioned in MPEP 2163.06: “In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981)” This case established an important principle: When new matter is added to the claims, the appropriate action is to reject the claims…
Read MoreHow are obvious errors in patent applications handled?
Amendments to correct obvious errors in patent applications do not constitute new matter under certain conditions. The MPEP Section 2163.07 provides guidance: “An amendment to correct an obvious error does not constitute new matter where one skilled in the art would not only recognize the existence of error in the specification, but also the appropriate…
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