How does the USPTO handle new matter in continuation applications?

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.

The United States Patent and Trademark Office (USPTO) treats new matter in continuation applications similarly to how it handles new matter in original applications. According to MPEP 608.04:

“A continuation application cannot include new matter. Applicant is required to delete the benefit claim or change the relationship (continuation application) to continuation-in-part (CIP) if the application contains subject matter that would have been new matter in the prior-filed application.”

This means that:

• Continuation applications must be based entirely on the disclosure of the parent application
• Any new subject matter introduced in a continuation application will be rejected as new matter
• If new matter is present, the applicant must either remove it or change the application type to a continuation-in-part (CIP)

CIP applications allow for the introduction of new matter, but the new subject matter will only receive the benefit of the CIP filing date, not the earlier parent application date. It’s crucial for applicants to carefully review their continuation applications to ensure they don’t inadvertently introduce new matter, which could jeopardize their priority claim to the parent application.