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RFC Express - New IP Lawsuits

Permissible Clarification of Patent Applications or Reissue Applications v. Impermissible Addition

By Bernard S. Hoffman 1


Section 132 of Title 35 of the United States Code provides that: "No amendment shall introduce new matter into the disclosure of the invention," and Section 251 thereof provides that: "No new matter shall be introduced into the application for reissue."

Drawing the line between permissible clarification and impermissible addition is a difficult task; one to be resolved in the context of the facts of the particular case. Harris et al. v. Air King Products Company, Inc., 86 USPQ 57 (2nd Cir. 1950). Vacillation caused by this difficulty has been confirmed in Helms Products, Inc. v. Lake Shore Manufacturing Company, Inc., 107 USPQ 313, 314 (7th Cir. 1955): "[T]he Patent Office is constantly determining and defining what is or what is not new matter...."[Emphasis added].

A discussion of "new matter" was succinctly carried out in In re Oda, Fujii, Moriga, and Higaki, 170 USPQ 268, 270-271 (CCPA 1971): "'New Matter' is a technical legal term in patent law a term of art. Its meaning has never been clearly defined for it cannot be. The term is on a par with such terms as infringement, obviousness, priority, abandonment, and the like which express ultimate legal conclusions and are in the nature of labels attached to results after they have been reached by processes of reasoning grounded on analysis of factual situations. In other words, the st...

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