Are preliminary amendments considered new matter?

The treatment of preliminary amendments as new matter depends on when they are filed:

1. Filing date amendments: Preliminary amendments present on the filing date of the application are considered part of the original disclosure and not new matter.
2. Post-filing amendments: Preliminary amendments filed after the application’s filing date are not part of the original disclosure and may be considered new matter.

The MPEP states: A preliminary amendment present on the filing date of the application (e.g., filed along with the filing of the application) is considered a part of the original disclosure. (MPEP 608.04(b))

For applications filed on or after September 21, 2004, the USPTO automatically treats any preliminary amendment under 37 CFR 1.115(a)(1) present on the filing date as part of the original disclosure.

To avoid potential new matter issues, applicants are encouraged to incorporate desired amendments into the text of the specification rather than submitting separate preliminary amendments.

To learn more:

• preliminary amendments
• new matter
• patent application
• filing date