Can new matter be added to a patent application to overcome a written description rejection?
Can new matter be added to a patent application to overcome a written description rejection?
No, new matter cannot be added to a patent application to overcome a written description rejection. This is a fundamental principle in patent law, as outlined in MPEP 2163:
“No amendment may introduce new matter into the disclosure of an application.”
This rule is based on 35 U.S.C. 132(a), which states:
“No amendment shall introduce new matter into the disclosure of the invention.”
When facing a written description rejection, applicants must rely on the content of the original disclosure as filed. To overcome the rejection, they can:
- Point out where the original disclosure supports the claimed subject matter
- Argue that a person skilled in the art would recognize the inventor’s possession of the claimed invention based on the original disclosure
- Amend the claims to align with the content of the original disclosure
Adding new matter to overcome a written description rejection is not permitted and can result in additional rejections or objections to the application.
To learn more:
Topics:
First Paragraph,
MPEP 2100 - Patentability,
MPEP 2166 - Rejections Under 35 U.S.C. 112(A) Or Pre - Aia 35 U.S.C. 112,
Patent Law,
Patent Procedure