Can Article 34 Amendments introduce new matter into the application?

No, Article 34 Amendments are not permitted to introduce new matter into the application. This is explicitly stated in MPEP 1893.01(a)(3): “The fact that an amendment made to the international application during the international phase was entered in the national stage application does not necessarily mean that the amendment is proper. Specifically, amendments are not…

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Can Article 19 amendments go beyond the original disclosure?

Article 19 amendments are subject to certain limitations regarding the scope of the changes. The MPEP states: The PCT provides that amendments are not to go beyond the disclosure in the international application as filed. However, it’s important to note that This requirement is not directly enforceable during Chapter I of the international phase, but…

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How does the USPTO handle new matter in continuation applications?

How does the USPTO handle new matter in continuation applications? The United States Patent and Trademark Office (USPTO) treats new matter in continuation applications similarly to how it handles new matter in original applications. According to MPEP 608.04: “A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change…

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How does the USPTO determine if material is ‘new matter’ in a patent application?

How does the USPTO determine if material is ‘new matter’ in a patent application? The USPTO determines if material is ‘new matter’ by comparing the content of the application as originally filed with any subsequent amendments or additions. According to MPEP 608.04(a): In establishing new matter, the examiner must find that the subject matter is…

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Can a best mode defect be cured by a later amendment?

No, a best mode defect cannot be cured by a later amendment to the patent application. The MPEP 608.01(h) clearly states: If the best mode contemplated by the inventor at the time of filing the application is not disclosed, such defect cannot be cured by submitting an amendment seeking to put into the specification something…

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