What happens if new matter is added to a pre-AIA application after March 16, 2013?

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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. If new matter is added to a pre-AIA application after March 16, 2013, it does not change the application’s status, but it may lead to rejections. According to MPEP 2159.01 : “If new matter is added via amendment, claims directed to the new matter will be rejected under pre-AIA 35 U.S.C. 112, first paragraph. See MPEP § 608.04.” This means that while the application remains subject to pre-AIA laws, any claims based on new matter introduced after the original filing date may be rejected under the pre-AIA version of 35 U.S.C. 112, first paragraph, for lack of written description or enablement. Related Rules from the Manual of Patent Examining Procedure 10 rules Collapse PCT Applications Filed Before March 16, 2013 Subject to Pre-AIA Standards MPEP 2159.01 Claims to New Matter Rejected Under Pre-AIA 112 MPEP 2159.01 Continued Examination Request Does Not Change Pre-AIA Status MPEP 2159.01 Determining Effective Filing Date for AIA Provisions MPEP 2159 Pre-AIA Rules Apply to Pre-March 16, 2013 Applications MPEP 2159.01 Continued Examination Not New Application MPEP 2159.01 Intent to Not File Foreign Application After 18 Months Required for Nonpublication MPEP 1122 Nonpublication Request for U.S. Application After PCT Filing MPEP 1122 Determine Pre-AIA and AIPA 35 U.S.C. 102(e) Dates for Rejection MPEP 1504.03 Pre-AIA and Pre-AIPA 35 U.S.C. 102(e) Date Determination MPEP 1504.03 Other Related FAQs 5 FAQs Collapse Can adding new claims after March 16, 2013, make AIA laws applicable to a pre-AIA application? How does the entry into the national stage affect the applicable patent laws for PCT applications? What determines if an application is subject to pre-AIA or AIA patent laws? Does filing a reques...