Can new matter be added to a patent application to overcome a written description rejection?

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Source: FAQ (MPEP-Based) BlueIron Update: 2024-09-30 10 Rules 5 Related FAQs 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 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. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse Requirement for Written Description and Best Mode Disclosure MPEP 2166 Affidavits for Written Description Must Be Analyzed MPEP 2163 Required Written Description Requirement for Invention MPEP 2166 Recommended Requirement for Adequate Written Description of Genus MPEP 2163 Required Claim to Species Must Meet Written Description Test MPEP 2163 Required Requirement for Determining Written Description Compliance MPEP 2163 Claims Must Be Supported by Original Disclosure MPEP 2163 Required Maintain Written Description Rejection If Insufficient Evidence MPEP 2163 Requirement for Adequate Written Description Support MPEP 2163 Recommended Review Basis for Lack ...