Patent New Matter

Can You Add Things Later?

What is patent new matter? Can you add anything to a patent specification or your patent claims after filing a patent?

Let's start with the rule right out of the Code of Federal Regulations. 37 CFR 1.121 (f) says:

"No new matter. No amendment may introduce new matter into the disclosure of an application."

Well - that settles that - this could be a short page.

But let's explore this a bit. As you are aware, in the typical patent prosecution in the U.S. Patent Office the claims are often amended, sometimes more than once.

The thing to understand is that claims can be significantly amended without violating the new matter prohibition. Even to the extent of canceling all of the original claims and submitting new ones. The key for claims though is that any amended claim is not new matter if it is completely supported by the original patent specification as filed.

This is one of the reasons you must pay close attention to the patent specification before filing. It must completely disclose all of the possible claim variations that you anticipate you might have to use during prosecution.

Patent New Matter in the Patent Specification

The patent specification is another matter. Any amendment to the specification will be scrutinized by the examiner to be absolutely sure you are not introducing new matter. Adding new experimental results for example, or even adding inherent characteristics such as physical properties, a new structural formula, or a new use may be new matter. New matter includes not only the addition of wholly unsupported subject matter, but may also include adding specific percentages or compounds after a broader original disclosure, or even the omission of a step from a method.

The guiding principal is - get it in there the first time.

However - there are still many amendments to a specification which are straightforward and in my experience not a problem for an examiner. Simple typographical errors can be corrected. And minor changes can be made to sentence structures to clarify meaning. In any case - when amendments are made to the patent specification it is good practice to point out to the examiner why the change should not be viewed as new matter.

Finally - the same guidelines apply to the drawings. Errors may be found in the drawings after filing and those can be amended by submission of substitute drawings. But again they will be examined carefully for new matter - and in some cases the removal of an element in the drawing can be construed as new matter. This can be especially problematical in a rushed application when applicants submit informal drawings in an original submission with an intent to make them formal later. Even an informal drawing must have all the key aspects in it to avoid a patent new matter issue when the substitute drawings are submitted. Informal drawings in an application are not recommended.

Submitting patents is like many other processes (example - product development). The best policy is to do it right the first time.



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Mike Ervin
Mike Ervin - Cost Effective Small Business Patent Protection.

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