What is the difference between petitioning and appealing a new matter rejection?
The distinction between petitioning and appealing a new matter rejection is crucial in patent prosecution:
- Petition: Used when new matter is confined to amendments in the specification.
- Appeal: Required when new matter affects the claims, leading to their rejection.
According to MPEP 608.04(c):
“Where the new matter is confined to amendments to the specification, review of the examiner’s requirement for cancelation is by way of petition. But where the alleged new matter is introduced into or affects the claims, thus necessitating their rejection on this ground, the question becomes an appealable one…”
This means that even if new matter is introduced in both the specification and claims, the claim-related issues must be addressed through the appeal process, not by petition.
To learn more:
Topics:
Patent Law,
Patent Procedure