In this edition, we consider the IP5 offices’ proscription against the introduction of new subject matter into a patent application that has already been filed. While it is not surprising that all IP5 offices disallow introduction of new matter into a patent application, what constitutes “new matter” differs among the IP5 offices, as discussed below.
According to Article 33 of the Patent Law of the People's Republic of China, “[a]n applicant may amend his or its application for a patent, but the amendment to the application for a patent for invention or utility model may not go beyond the scope of the disclosure contained in the initial description and claims, and the amendment to the application for a patent for design may not go beyond the scope of the disclosure as shown in the initial drawings or photographs.” According to the Guidelines for Patent Examination of the State Intellectual Property Office of the People's Republic of China (SIPO), the scope of initial disclosure includes contents described literally in the initial description and claims, and contents determined “directly and unambiguously according to the contents described literally in the initial description and claims, and the drawings of the description.” In practice, however, amendments to the claims, including broadening or narrowing of the claims, or rewording or rephrasing certain features, may result in a new matter rejection by the SIPO.
Under Article 17-2(3) of the Japanese Patent Law, any amendment shall be made “within the description, scope of claims or drawings originally attached to the application,” thus prohibiting the addition of new matter. According to the Examination Guidelines in Japan, subject matter “obvious” from statements in the original disclosure is not considered new matter and is permitted. Whether amended subject matter is “obvious” from the original disclosure is determined from the standpoint of a person skilled in the art.
Much like the other IP5 offices, the Korean Intellectual Property Office (KIPO) prohibits introduction of new matter. Whether any matter added is new is determined by comparison with the specification, claims, or drawing(s) attached to the patent application at the time of filing. Similar to Japan, matters that are “obvious” from the original disclosure are not considered new matter by the KIPO.
Compared to the other IP5 offices, the European Patent Office (EPO) takes a stricter approach to amendments and any added matter. Pursuant to Article 123(2) EPC, “[t]he European patent application or European patent may not be amended in such a way that it contains subject-matter which extends beyond the content of the application as filed.” Further, according to Article 123(3) EPC, “[t]he European patent may not be amended in such a way as to extend the protection it confers.” Although literal support is not required by Article 123(2) EPC, the basic principle applied is that the amendment must not add matter which the skilled person cannot “derive directly and unambiguously, using common general knowledge, from the disclosure of the invention as filed, also taking into account any features implicit to a person skilled in the art.” Guidelines for Examination, Part H, Chapter IV, Section 2.2.
The U.S. Patent and Trademark Office (USPTO) takes a less restrictive approach to amendments than the other IP5 offices, especially the SIPO and the EPO. The proscription against the introduction of new matter is codified as 35 U.S.C. §§ 132 and 251. Section 132 provides that “[n]o amendment shall introduce new matter into the disclosure of the invention,” and section 251 similarly prohibits introduction of new matter in a reissue application. The question of whether new matter has been introduced into claims is evaluated under the written description requirement of 35 U.S.C. § 112(a). The Manual of Patent Examining Procedure (MPEP) at section 2163(I)(B) further provides: newly added claim limitations must be supported in the specification through “express, implicit, or inherent” disclosure. The basic principle is whether the specification conveys with reasonable clarity to those skilled in the art that, as of the filing date sought, applicant was in possession of the invention as now claimed. See, e.g., Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).