How To Identify Support For A Claim Amendment And When To Do So

June 3, 2008

in Examples of Responses,Prosecution Strategy

This post discusses strategic considerations concerning identifications of support for claim amendments.

New Matter is Prohibited

Section 706.03(o) of the Manual of Patent Examining Procedure (MPEP) addresses rejections based on new matter (matter not supported by the disclosure at the time of filing). This section of the MPEP, citing 35 U.S.C. § 132, articulates the rule that no amendment may introduce new matter into the disclosure of an invention.

The question of what constitutes new matter may sometimes be difficult to resolve. After all, an Applicant may rely on every part of the application as originally filed for support for a claim amendment. Additionally, an Applicant is entitled to rely on any inherent or implied teachings of the specification, drawing(s), and claims, in addition to the express teachings. Still further, because there is no in haec verba requirement, an Applicant is not constrained to the terminology used in the application as filed.

In view of the occasional difficulty in resolving new matter issues, and the objection/rejection an Examiner is instructed to make if there is a question of whether a claim amendment might introduce new matter, it may be prudent to consider including identifications of support for claim amendments to help avoid good faith, but ultimately incorrect, new matter rejections.

Identifying Support For a Claim Amendment May Have Risk

A cautious prosecutor, however, will recognize that every identification of support carries with it some risk. For example, there is a possible risk of error. This is of particular concern since an Applicant is correlating claim features to portions of the disclosure. Also, unless all support is identified, an Applicant risks an implication that only the identified portion(s) of a disclosure support an amendment. Both the argument estoppel of the former example and the implication of the latter can be problematic in litigation.

Because of the issues, it may be worth considering reserving identifications of specific support for situations when doing so will be advantageous to the Applicant.

A Risk/Reward Analysis Is Useful to Minimize Unnecessary Identifications of Support

A prosecutor can provide value to a client by engaging in a risk/reward analysis and, when the analysis weighs in favor of identifying support, doing so strategically. Here, the analysis might be whether the likelihood of an objection/rejection outweighs the risk of potential litigation issues, in view of factors such as whether: an Examiner has a history of questioning support for claim amendments; claim terminology deviates from what was used in the application as filed; and support will be difficult to locate in the originally filed disclosure.

Strategic Examples

1. A Generic Identification
When a risk/reward analysis does not weigh in favor of identifying support, the following paragraph might be used:

Applicant submits that support for these amendments can be found in the disclosure as originally filed, and therefore no new matter has been added.

2. A Specific, Non-Limiting Identification of Support
When a risk/reward analysis weighs in favor of identifying support for a claim amendment, the question becomes “how to do it?” An adequate way might be to state:

Applicant has amended claim 1. Paragraph [0025] of the Specification supports this amendment. Thus, no new matter has been added.

This identification is acceptable; it is efficient and direct. I submit, however, that this statement does little to address some of the risks inherent to identifications of support. Thus, there is room for improvement. Consider the following example:

Applicant has amended claim 1. Support for this amendment may be found at least at, for example, paragraph [0025] of the Specification as originally filed. Thus, no new matter has been added.

I submit that the latter paragraph is an improvement over the former because it is non-limiting. Consequently, it at least arguably avoids the potential litigation issues discussed above. First, the latter paragraph uses the word “may” instead of “is” or “can.” The word “is” conveys certainty. The word “can” expresses the ability to do something. In contrast, according to many authorities, the word “may” indicates only a measure of likelihood or possibility. Thus, “may” is arguably more appropriate, since the specified location is “an example.” Second, the latter paragraph is crafted to state only that paragraph [0025] provides an example of support, which can be beneficial if other, better, or more advantageous support is identified later in prosecution or litigation.

In the end, the way an applicant identifies support is not as important as understanding when it is necessary and the risks involved. These considerations will dictate how and when to identify support for a claim amendment.

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© 2008, Michael E. Kondoudis

The Law Office of Michael E. Kondoudis
DC Patent Attorney
www.mekiplaw.com

{ 7 comments… read them below or add one }

MaxDrei June 5, 2008 at 6:01 am

So, do I understand it right? The US definition of “New Matter” is “anything which does not find “support” in the original filing documents” whereas, in Europe and Japan (and everywhere else?), it is “anything that is not directly and unambiguously derivable by the PHOSITA from the original filing documents”? Two entirely different definitions. Unstoppable force meets immovable object, perhaps? In Europe a patent issuing with “new matter” in it is invalid, Art 138 EPC, so risk/reward analysis is straightforward. As to an issuing US patent with new matter in it, what do you mean, Mr Kondoudis, by “problematic in litigation”? And thanks for the interesting conversation topic.

Babel Boy June 9, 2008 at 4:49 pm

Max

Not sure I see your EPO/US distinction in the definition of new matter.

Is “does not find support” different from “not directly and unambiguously derivable by PHOSITA?” I believe there is US case law using the derivable language.

As for the problematic issue, in US litigation, improper new matter does not defeat the whole patent, it is analyzed on a claim by claim basis. So new matter would be problematic as opposed to fatal.

The US lacks the clean EPC Art 138 patent revocation language, but it seems to me that re-examination accomplishes the same goal. I don’t know whether on re-examination a whole patent can get deep-6’d on the basis of verbotten new matter in the original application.

During the new rules scare someone suggested that one could file a PCT derived from a US application and add new matter to the PCT. The new matter in the PCT would not be entitled to the original US filing date but would not be forbidden. Use a PCT as a continuation-in-part, essentially. I presume that PCT would be valid going into the EPO national phase even if it contains matter not in the parent US application.

MaxDrei June 12, 2008 at 6:24 am

Babel, I am sure you are right, that “no new matter” means “no new matter” anywhere in the world. That’s the theory. The practice is different, as between Europe and the USA. As to the PCT, you can direct it all to invention Y and claim priority from an earlier filing, in the USPTO, not more than one year earlier, directed to completely non-overlapping invention X. In such a case, every single word in the PCT is “new matter”. Nothing wrong. It is just that no claim of the PCT is entitled to the US prio date and, with absolute novelty any publication of Y, any day before the PCT filing date, will invalidate all claims of the PCT.

Babel Boy June 13, 2008 at 3:53 pm

Thanks, Max

This distinction in PCT/USPTO new matter practice has a potential for serious blow-back. Michael’s suggestions may have even more importance in non-US prosecution.

We file app disclosing and claiming X in US. 9 months later we file PCT disclosing and claiming X + Y. Y was not disclosed in the original app. 6 months after that we file identical national phase apps in US and EPO for X + Y. We abandon the original US app for X.

My understanding is that in the national prosecutions, the US will segregate X claims from Y claims with respect to the priority dates and apply the early priority date on a claim by claim basis. But the EPO will ignore the original US filing date for all claims — so all the early priority to X is lost in the EPO but not the USPTO. Not a problem unless, as you say, there is intervening art.

But toss the patent highway into the mix. In those cases starting in the US, the US is going to allow claims from X that other countries would reject because of intervening art. And yet the US allowance, presumably, factors heavily at the other end of the highway.

The PCT as CIP tactic was one response to the proposed USPTO continuation rules. I don’t know that there would be any advantage if those rules never surface again.

I feel the US claim by claim analysis of new matter is a lot more difficult for everybody, but a lot fairer.

e6k June 17, 2008 at 1:06 am

“How to p*ss off your examiner and when to do so”.

Nice topic. Seriously, just point out all the support every time and don’t make me have to call you because it doesn’t exist.

mike June 17, 2008 at 8:36 pm

e6K,

Please remember that someone, the applicant, has to pay for our time when we prepare responses. We should not have to hold your hand EVERY time an amendment is made. Sometimes that is just a waste of an applicant’s money. Also, remember that patent law extends beyond prosecution in the USPTO and practitioners have to be mindful of this fact, in addition to how we spend an applicant’s money.

Sorry for your frustration.

MaxDrei June 17, 2008 at 8:47 pm

Babel, if I understand your understanding of how the Paris Convention works, it’s wrong. In Europe you get the original US prio date for any claim directed to X. Not seeing your problem. Europe’s law in this regard is deadly simple, and fair. Forget the Highway. It’s not going to come to anything significant, for as long as there’s such a yawning chasm between the USA and the ROW, on the Paris Convention. Sorry.

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