When is a new oath or declaration required for a continuation-in-part application?
When is a new oath or declaration required for a continuation-in-part application? For continuation-in-part (CIP) applications, a new oath or declaration is typically required due to the addition of new matter. According to MPEP 602.05: ‘A continuation-in-part application (which may disclose and claim subject matter not disclosed in the prior application) is considered a continuing…
Read MoreCan omitting information from an application be considered new matter?
Yes, in some cases, omitting information from a patent application can be considered new matter. This might seem counterintuitive, but the removal of certain information can change the scope or meaning of the invention in a way that wasn’t supported by the original disclosure. The MPEP provides an example: New matter includes not only the…
Read MoreHow have drawing requirements changed for patent applications filed on or after December 18, 2013?
For non-design patent applications filed on or after December 18, 2013, the drawing requirements have been relaxed. The MPEP states: Applications, which are not design applications, filed under 35 U.S.C. 111(a) or (b) on or after December 18, 2013 are entitled to a filing date even if the application does not contain drawings. However, it’s…
Read MoreCan drawings or figures in a patent application introduce new matter?
Can drawings or figures in a patent application introduce new matter? Yes, drawings or figures can introduce new matter in a patent application. The MPEP 608.04 addresses this issue: ‘In establishing a disclosure, applicant may rely not only on the description and drawing as filed but also on the original claims if their content justifies…
Read MoreWhat is the difference between petitioning and appealing a new matter rejection?
The distinction between petitioning and appealing a new matter rejection is crucial in patent prosecution: Petition: Used when new matter is confined to amendments in the specification. Appeal: Required when new matter affects the claims, leading to their rejection. According to MPEP 608.04(c): “Where the new matter is confined to amendments to the specification, review…
Read MoreCan I petition against a new matter rejection in claims?
No, you cannot petition against a new matter rejection in claims. When new matter affects the claims, leading to their rejection, the issue must be addressed through the appeal process, not by petition. The MPEP 608.04(c) clearly states: “But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection…
Read MoreAre preliminary amendments considered new matter?
The treatment of preliminary amendments as new matter depends on when they are filed: Filing date amendments: Preliminary amendments present on the filing date of the application are considered part of the original disclosure and not new matter. Post-filing amendments: Preliminary amendments filed after the application’s filing date are not part of the original disclosure…
Read MoreCan replacement drawings be rejected for containing new matter?
Yes, replacement drawings can be rejected if they contain new matter. The MPEP 608.02(h) states that when reviewing replacement drawings, examiners should not overlook “such factors as new matter, the necessity for the replacement sheets and consistency with other sheets.” If an examiner identifies new matter in the replacement drawings, they may decide not to…
Read MoreWhat is the applicant’s responsibility when submitting replacement drawings after allowance?
When submitting replacement drawings after allowance, the applicant has a crucial responsibility: It is applicant’s responsibility to see that no new matter is added when submitting replacement drawings after allowance because they will not normally be reviewed by an examiner. This means that applicants must ensure that any changes made to the drawings do not…
Read MoreWhat is the process for reviewing an examiner’s new matter rejection in the specification?
When an examiner issues a new matter rejection confined to amendments in the specification, the process for review is through a petition. This is distinct from new matter rejections in claims, which require an appeal. According to MPEP 608.04(c): “Where the new matter is confined to amendments to the specification, review of the examiner’s requirement…
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