Q: What exactly determines whether a new version of a patent specification contains new matter?
For example, if new details in a Substitute Specification fit the claims, might they still be considered new matter if they have not appeared before?
A:
Determining whether a new version of a patent specification contains new matter hinges on whether the added details were originally disclosed in the initial filing. If new information is introduced that wasn't present in the original specification, it is considered new matter, even if it fits within the scope of the claims.
When adding new details in a Substitute Specification, it's crucial to ensure that these details were implicitly or explicitly covered in the original application. Any information not originally included will be regarded as new matter and may not be allowed. This is because the patent office evaluates new submissions against the original disclosure to maintain the integrity of the filing date and prevent unauthorized changes.
Therefore, even if new details align with the claims, they can still be deemed new matter if they weren't part of the initial specification. Always review the original application thoroughly to confirm that any additions or clarifications are fully supported by the initial disclosure.
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