Can 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 addition of wholly unsupported subject matter, but may also include […] even the omission of a step from a method.
(MPEP 608.04(a))
This concept is particularly important in the context of:
- Changing the scope of the invention
- Altering the nature of the invention
- Removing essential features or steps
Applicants should be cautious when making any changes to their application, including deletions, to ensure they don’t inadvertently introduce new matter by omission. If in doubt, it’s advisable to consult with a patent attorney or agent.
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