How are amendments handled in inter partes reexamination proceedings?

Amendments in inter partes reexamination proceedings are handled as follows: Amendments should be submitted in proper form If appropriate, amendments will be entered for the reexamination proceeding, even if they don’t have legal effect until the certificate is issued “New matter” amendments to the disclosure will be required to be canceled Claims containing new matter…

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Can dictionary definitions be added to a patent application without being considered new matter?

Generally, adding dictionary or art-recognized definitions known at the time of filing an application may not be considered new matter. However, there are important considerations. The MPEP Section 2163.07 states: “The mere inclusion of dictionary or art recognized definitions known at the time of filing an application may not be considered new matter. If there…

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Can corrections be made to sequence listings after filing?

Corrections to sequence listings are subject to strict rules regarding the introduction of new matter. According to MPEP 2422.07: “The correction of errors in sequencing or any other errors that are made in describing an invention are subject to the statutory prohibition (35 U.S.C. 132 and 35 U.S.C. 251) against the introduction of new matter.”…

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What is the impact of continuation-in-part applications on effective filing dates?

Continuation-in-part (CIP) applications can have a significant impact on effective filing dates. According to MPEP 2154.01(b): The AIA draws a distinction between actually filed and effectively filed dates. The “effectively filed” date of a subject matter described in a U.S. patent document is the earlier of: (1) The actual filing date of the patent or…

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