How are “new matter” amendments treated in inter partes reexamination?

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.

“New matter” amendments in inter partes reexamination are treated as follows:

• Amendments to the disclosure that introduce new matter ( 35 U.S.C. 132 ) will be required to be canceled.
• Claims containing new matter will be rejected under 35 U.S.C. 112.
• “New matter” amendments to drawings are ordinarily not entered.

MPEP 2670 states: “Any ‘new matter’ amendment to the disclosure ( 35 U.S.C. 132 ) will be required to be canceled, and claims containing new matter will be rejected under 35 U.S.C. 112. A ‘new matter’ amendment to the drawing is ordinarily not entered.” For more information on new matter, refer to MPEP §§ 608.04, 608.04(a) and 608.04(c).