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  • Writer's pictureJeremy Rutman

Matter, ex nihil (provisorium)

Updated: Feb 17, 2022

Can new material be added to a provisional patent application in subsequent stages? The USPTO for one has a 'conservation of matter' clause - no new matter is allowed in amendments to patent applications. This is spelled out in the manual of patent examination practice [1] which cites the 'CFR' or code of federal regulations :

37 CFR 1.121 (f)

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

But as in the 'law' of conservation of matter in physics, the matter gets trickier the closer one looks - in physics matter actually isn't conserved, but can be transformed into energy -

while in patents 'new matter' is tricky to define.

New matter - Quid Est?

The MPEP has a section 608.04 New Matter which quotes 35 U.S.C. 132a

  • ...No amendment shall introduce new matter into the disclosure of the invention.

as well as the previous 37 CFR 1.121 and goes on to state that "The examiner’s holding of new matter may be petitionable or appealable. See MPEP §608.04(c). For new matter in reissue application, see MPEP § 1411.02. For new matter in substitute specification, see MPEP § 608.01(q). For new matter in a continuation or divisional application, see MPEP §211.05."

MPEP § 608.04(a) ("Matter Not Present in Specification, Claims, or Drawings on the Application Filing Date") says:

  • Matter not present on the filing date of the application in the specification, claims, or drawings that is added after the application filing is usually new matter.

  • See MPEP §§ 2163.06 ("information contained in any one of the specification, claims or drawings of the application as filed may be added to any other part of the application without introducing new matter.") and 2163.07 ("Mere rephrasing of a passage does not constitute new matter", "An amendment to correct an obvious error does not constitute new matter") for guidance in determining whether an amendment adds new matter, and for a discussion of the relationship of new matter to 35U.S.C. 112(a) or pre-AIA 35 U.S.C. 112, first paragraph. See MPEP § 2163.07(a) ("By disclosing in a patent application a device that inherently performs a function or has a property, operates according to a theory or has an advantage, a patent application necessarily discloses that function, theory or advantage, even though it says nothing explicit concerning it. The application may later be amended to recite the function, theory or advantage without introducing prohibited new matter.") to determine whether added characteristics such as chemical or physical properties, a new structural formula or a new use are inherent characteristics that do not introduce 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. See In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976) and MPEP§2163.05 for guidance in determining whether the addition of specific percentages or compounds after a broader original disclosure constitutes new matter.

  • .....see See Waldemar Link, GmbH & Co. v. Osteonics Corp., 32 F.3d 556, 559, 31 USPQ2d 1855, 1857 (Fed. Cir.1994); Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1560 (Fed. Cir.1991) (A written-description question often arises when an applicant, after filing a patent application, subsequently adds "new matter" not present in the original application.); In re Rasmussen, 650 F.2d 1212, 211 USPQ 323 (CCPA 1981).

The question an examiner will keep in mind is whether the parent application has sufficient disclosure - does it support and enable all the features claimed? Elements that don't fit this bill will likely be considered new matter.

Substantially new drawings (not just spruced up versions of existing figures) are generally considered new subject matter. But clarifying or adding detail (in text) to a feature that is already described or drawn in the parent application might pass muster.

Adding 'negative detail' as to what you exclude should generally pass, since this isn't addition of matter at all but rather removal.

All of the above is relevant to the various 'continuation' applications which are:

  • continuation

  • continuation in part

  • request for continued examination

  • divisional

But what about changing a provisional??

Changes to Provisional Patents when continuing to PCT or nonprovisional patents

But what I'd like to concentrate on here is whether changes can be made in a nonprovisional or PCT application stemming from a provisional application.

Let's say you submit a PCT or nonprovisional with changes to the original spec (anywhere - figures, claims (if there were such in the provisional) , description, etc). There are a few things that can happen.

1. If the examiner finds that the changes include 'new matter' then you may be required to :

a. have some claims with the original date and others with the new PCT filing date,

b. split the patent , one having the provisional date with 'old matter' and the with 'new matter' having the PCT filing date.

2. The examiner doesn't see any new matter, either because

a. they checked and didn't find any, or

b. they didn't check at all!

There appears to be an overwhelming likelihood that 2b. is what will happen. In this case you should still be careful not to add new matter - and to make things totally unambiguous you should draft at least some claims that are unambiguously supported by the original provisional. Those will be entitled to the priority date and will likely pass both prosecution and any potential litigation with this original date. Any claims that have even a hint of new matter may potentially be stuck with the new filing date - so those should be separated from the original claims. Some recommend keeping new material in separate paragraphs, while others segregate new material into new sections clearly labelled as such.

Most have found that neither provisionals nor any other priority documents are checked in the course of normal prosecution except, however, to the extent you have to prove entitlement to the priority date as a result of intervening prior art.

Continuation applications may well be different than nonprovisional/PCT after provisional in this respect. It seems they are always treated as if they are entitled to the parent priority date and that there is no reason to have to prove entitlement.

This article by D. Crouch (who btw has done a lot of great stats-based research on IP matters) studied the matter of new matter specifically, and provides the somewhat tangential statistic that 80% of nonprovisionals claim that the nonprovisional claims were fully supported by the provisional. He does point out that the USPTO relies on the practitioners word as to whether any new material is fully supported by the priority document - so that 80% stat is based on self-reporting.

As for continuing through the PCT or a (US) nonprovisional, it may be useful for the practitioner to check David Boundy's excellent comparison chart at the National Association of Patent Practitioners site.

Benefit under U.S. § 120

Priority under Paris Convention Art. 4

U.S. National Phase § 371 (non-bypass)

Continuity of pendency. That can last up to 20 years.

Twelve months from the earliest application (Art. 4(C)(2), with the qualifications of Art. 4(C)(4)), “whatever may be the subsequent fate of the application” (Art. 4(A)(3)). Copendency is irrelevant.

Within 30 months of the earliest priority date.

Continuity of inventorship, overlap of at least one inventor. Continuity of applicant or assignee is irrelevant.

Continuity of applicant (same applicant or successor in title) (Art. 4(A)(1)). Continuity of inventorship is irrelevant.

Continuity of applicant for any Paris Convention claims during the first year, and continuity of inventorship from PCT international phase to U.S. national phase.

Continuity of disclosure.

Essentially similar, subject to the daughter jurisdiction's analogs of U.S. § 112(a) written description and enablement (which tend to be stricter than U.S. law)

U.S. § 112(a) continuity of disclosure.

​ Continuity of priority claim, including requirement of an ADS.

Essentially the same substantively; procedure differs depending on the procedural law of the daughter jurisdiction.

Same as for U.S. § 111(a).

​No requirement for certified copy.

Proactive obligation to file a certified copy within three months, even if the daughter jurisdiction hasn’t asked for it (Art. 4(D)(3)).

Proactive obligation to file certified copy within four months of U.S. national phase entry, or sixteen months from the “prior foreign application,” even if the U.S. doesn’t ask for it. 37 C.F.R. § 1.55(f)(2)

A daughter application can only claim § 120 benefit from a U.S. application, or a PCT application designating the United States.

The parent application must be “equivalent to a regular national filing under the domestic legislation of any country” but it must be an “other country” (Art. 4(A)(1) and (3)). No same-country priority claims under the Paris Convention.

​A U.S. § 371 national phase application can claim priority to a PCT application and any application from which the PCT application claims priority.

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