How does new matter affect AIA status determination?
New matter in a patent application does not affect the determination of AIA status. The MPEP 2159.02 states:
“As 35 U.S.C. 132(a) prohibits the introduction of new matter into the disclosure, an application may not contain a claim to a claimed invention that does not have support under 35 U.S.C. 112(a) in the application (that is directed to new matter).“
Key points:
- An application cannot “contain” a claim directed to new matter for AIA status determination.
- Amendments with new matter are typically entered but treated as follows:
- New drawings with new matter are not entered (MPEP § 608.02)
- New matter in the written description or claims is required to be canceled
- Claims directed to new matter are rejected under 35 U.S.C. 112(a)
- An amendment adding a claim with new matter to a pre-AIA application filed after March 16, 2013, but claiming priority to a pre-March 16, 2013 application, would not change the application to AIA status.
To learn more:
Topics:
2013,
MPEP 2100 - Patentability,
MPEP 2159.02 - Applications Filed On Or After March 16,
Patent Law,
Patent Procedure