Can an applicant amend the specification to meet the written description requirement?
Can an applicant amend the specification to meet the written description requirement? Yes, an applicant can amend the specification to address written description issues, but there are important limitations. According to MPEP 2163.02: “The fundamental factual inquiry is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the…
Read MoreWhat are the restrictions on amending the specification during ex parte reexamination?
What are the restrictions on amending the specification during ex parte reexamination? During ex parte reexamination, amendments to the specification are subject to specific restrictions. According to MPEP 2250: No new matter may be introduced into the specification. Amendments must be made by adding, deleting, or replacing a paragraph, by replacing a section, or by…
Read MoreCan I amend my patent application to include inherent functions or properties?
Yes, you can amend your patent application to include inherent functions, theories, or advantages of your invention without introducing prohibited new matter. This is supported by MPEP 2163.07(a), which states: “The application may later be amended to recite the function, theory or advantage without introducing prohibited new matter.” This means that if your original application…
Read MoreCan deposit information be added to a patent application after filing?
Yes, deposit information can be added to a patent application after filing, but under specific conditions. According to MPEP 2406.01, which cites the Lundak case: “The Court further held that the addition of information designating the depository, accession number, and deposit date of the deposited cell line in ATCC after the filing date did not…
Read MoreWhen can a continuation-in-part (CIP) application be filed for a PCT application?
A continuation-in-part (CIP) application can be filed for a PCT application designating the United States during its pendency, before abandonment. However, it’s important to note that CIP applications are typically filed when applicants need to add new matter to the disclosure. The MPEP states: “Continuation-in-part applications are generally filed in instances where applicants seek to…
Read MoreCan a reissue application add new matter to the original patent?
No, a reissue application cannot add new matter to the original patent. This is a fundamental principle in patent reissue law. According to MPEP 1412.01: No new matter may be introduced into an application for reissue. This means that all aspects of the reissue claims must be supported by the disclosure in the original patent.…
Read MoreCan PCT Article 34 amendments introduce new matter?
Can PCT Article 34 amendments introduce new matter? PCT Article 34 amendments are subject to strict rules regarding the introduction of new matter. According to MPEP 1864.01: “No amendment may go beyond the disclosure in the international application as filed. (PCT Article 34(2)(b)).” This means: Amendments cannot introduce new subject matter not present in the…
Read MoreCan new matter be introduced in a reissue application?
No, new matter cannot be introduced in a reissue application. This is explicitly stated in 35 U.S.C. 251(a): “No new matter shall be introduced into the application for reissue.” This means that the reissue application must be based on the invention disclosed in the original patent. You can’t add new inventive concepts or expand the…
Read MoreCan new matter be introduced when correcting patent application drawings?
No, new matter cannot be introduced when correcting patent application drawings. The MPEP 608.02(p) clearly states: No amendment may introduce new matter into the disclosure of an application. This prohibition is based on 35 U.S.C. 132(a), which specifies: No amendment shall introduce new matter into the disclosure of the invention. When correcting drawings, applicants must…
Read MoreWhat happens if an International Application was filed with color drawings but published with black and white drawings?
If an International Application was filed with color drawings but published by the International Bureau with only black and white drawings, the applicant retains certain rights regarding the original color drawings. MPEP 1893.03(f) states: “In the event that an International Application was filed with color drawings and published by the International Bureau with only black…
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