What happens if the examiner determines that a continuation or divisional application contains new matter?
If an examiner determines that a continuation or divisional application contains new matter relative to the prior application, the following steps will occur: The examiner will notify the applicant in the next Office action. The examiner will indicate that the application should be redesignated as a continuation-in-part (CIP). According to MPEP 602.05: If the examiner…
Read MoreHow does the USPTO handle new matter introduced in continuation-in-part applications?
How does the USPTO handle new matter introduced in continuation-in-part applications? Continuation-in-part (CIP) applications are a special case when it comes to new matter. The MPEP 608.04 states: ‘In the case of a continuation-in-part application, any claim directed to matter which was not described in the parent nonprovisional application in the manner provided by the…
Read MoreCan new matter be added in a CPA?
No, new matter cannot be added in a Continued Prosecution Application (CPA). The MPEP clearly states: No amendment in an application under this paragraph (a continued prosecution application) may introduce new matter or matter that would have been new matter in the prior application. Any attempt to add new matter will be denied entry by…
Read MoreCan new matter be added to a divisional application?
No, new matter cannot be added to a divisional application. The divisional application must only contain subject matter disclosed in the parent application. The MPEP clearly states: Thus the disclosure presented in a divisional application must not include any subject matter which would constitute new matter if submitted as an amendment to the parent application.…
Read MoreWhat is the impact of new matter on benefit claims in patent applications?
New matter can have a significant impact on benefit claims in patent applications. The introduction of new matter in a later-filed application can result in the loss of the benefit claim to the prior-filed application. According to MPEP 211.05: ‘New or amended claims which introduce elements or limitations that are not supported by the as-filed…
Read MoreCan I add new matter when submitting omitted drawings to a patent application?
When submitting omitted drawings to a patent application, it’s crucial to understand that you cannot add new matter. The MPEP 601.01(f) states: “If omitted drawing(s) are filed, the application will be given a filing date as of the date of such filing, provided the submitted drawing(s) do not add new matter to the originally filed…
Read MoreCan new matter be introduced in a supplemental oath or declaration?
No, new matter cannot be introduced into a nonprovisional application through a supplemental oath or declaration. This is explicitly stated in MPEP 603: 37 CFR 1.67(d) contains the provision of former 37 CFR 1.67(b) that no new matter may be introduced into a nonprovisional application after its filing date even if an inventor’s oath or…
Read MoreWhat is considered ‘new matter’ in a patent application?
‘New matter’ refers to any subject matter that is added to a patent application after its filing date, which was not present in the original specification, claims, or drawings. The MPEP states: Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing…
Read MoreWhat is the difference between new matter and inherent disclosure in patent applications?
What is the difference between new matter and inherent disclosure in patent applications? New matter and inherent disclosure are distinct concepts in patent law: New matter refers to information added to a patent application after its filing date that goes beyond the original disclosure. This is generally not allowed and can result in rejection. Inherent…
Read MoreWhat is the difference between new matter and new or amended claims in patent applications?
What is the difference between new matter and new or amended claims in patent applications? New matter and new or amended claims are distinct concepts in patent law: New matter refers to content not present in the original disclosure of the application. As stated in MPEP 608.04: ‘New matter includes not only the addition of…
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