How are amendments to design patent applications evaluated for new matter?
Amendments to design patent applications are carefully evaluated to ensure they do not introduce new matter not supported by the original disclosure. Key points include: Any changes must have support in the original disclosure Converting solid lines to broken lines (or vice versa) is generally not new matter Adding or removing surface ornamentation may be…
Read MoreCan 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…
Read MoreCan 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…
Read MoreHow does the USPTO treat amendments that add new matter to a patent application?
How does the USPTO treat amendments that add new matter to a patent application? The USPTO treats amendments that add new matter to a patent application as insufficient responses. According to MPEP 711.02(a): “An amendment which adds new matter to the disclosure of an application is not a bona fide attempt to advance the application…
Read MoreWhat situations prevent a first Office action from being made final in a continuing application?
There are specific situations where it would not be proper to make a first Office action final in a continuing application. According to MPEP 706.07(b): “It would not be proper to make final a first Office action in a continuing or substitute application or an RCE where that application contains material which was presented in…
Read MoreCan an amendment after allowance introduce new matter under 37 CFR 1.312?
Can an amendment after allowance introduce new matter under 37 CFR 1.312? No, amendments after allowance under 37 CFR 1.312 cannot introduce new matter. As stated in MPEP 714.16: ‘No amendment may introduce new matter into the disclosure of an application after the filing date of the application.’ This rule applies to all amendments, including…
Read MoreHow 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…
Read MoreHow does the USPTO define ‘new matter’ in patent applications?
How does the USPTO define ‘new matter’ in patent applications? The United States Patent and Trademark Office (USPTO) defines ‘new matter’ as any content added to a patent application after the initial filing date that was not present in the original specification, claims, or drawings. According to MPEP 608.04(a): “Matter not present on the filing…
Read MoreHow 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…
Read MoreCan 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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