Can new matter be added in a CPA?

Source: FAQ (MPEP-Based)BlueIron Update: 2024-09-09

This page is an FAQ based on guidance from the Manual of Patent Examining Procedure. It is provided as guidance, with links to the ground truth sources. This is information only: it is not legal advice.

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 the examiner. If an applicant needs to add new matter, they should consider filing a continuation-in-part application under 37 CFR 1.53(b) instead of a CPA.

Topics: MPEP 200 – Types and Status of Application; Benefit and Priority Patent Law Patent Procedure
Tags: Disclosure Individuals, Disclosure Timing, Materiality Standard, Prima Facie Case