What is Added Subject Matter in a Patent?

After submitting your patent application, it proceeds to the examination phase. During this stage, your application undergoes a comprehensive review at the Intellectual Property Office. It’s typical for the examiner to identify certain issues or objections that must be resolved before the application can advance to re-examination.

For instance, your application may result in an initial objection on the grounds of novelty. This can be due to prior art coming to light, which was not known at the time of filing but which is discovered when the official search process took place. When facing such an objection, it’s often possible to address it by modifying the claims. However, it’s crucial to note that introducing new technical subject matter into an application is strictly prohibited. Any amendment introducing new subject matter will lead to additional objections during the application’s re-examination. Even if an amendment successfully clears the initial examination, it remains susceptible to challenges by third parties following the grant of the patent. This can potentially lead to its revocation.

Therefore, seeking guidance from a patent attorney is essential to ensure the proper resolution of any objections. Also, it is necessary to check all amendments comply with added matter restrictions.

Important terms and their significance

Matter is considered “added” to any amendment that brings forth information not previously accessible from the original specification. The rule also applies to omissions of information, in particular, the claiming of “intermediate generalisations”. Intermediate generalisations can arise where your claim amendments rely solely on a specific embodiment of your invention described in your patent application. If features of your specific embodiment are operably interconnected or inextricably linked – introducing just a subset of those features into a claim can result in an impermissible intermediate generalisation. Sometimes, even minor alterations or substitutions of words, without intending to modify the underlying message, can be adequate to prompt an objection. It’s important to note that while an amendment doesn’t necessarily have to replicate the precise language of the initial application, it must not introduce any novel elements absent in the original submission.

Your patent attorney can help avoid these problems. This can be done by taking extra care to include all the right language in your patent specification at the start, and also by being well opposed to rebutting added matter objections when they arise.

Amendment is a standard part of the application process though, and most applications will need some form of amendment prior to grant. Most applications will need some form of amendment before they are granted. A skilled attorney will know how to ensure all aspects have been covered without adding technical subject matter. This can help reduce the number of times your patent goes through the examination phase.

How can we help?

Pure Ideas will gladly help with advice on patent filling or any other part of the patent application process. If you would like to speak to us, please get in touch.


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