Legal Definitions - new-matter rejection

A new-matter rejection occurs when an applicant attempts to amend an existing application (such as a patent application) by introducing information, claims, or descriptions that were not part of the original submission. If these additions are considered to be "new matter"—meaning they fundamentally alter or expand the scope of what was initially disclosed—the examining body (like a patent office) can reject the application or the specific amendment. This rule ensures that the scope of an application is determined by its initial filing date and prevents applicants from adding new concepts or features that were not originally contemplated or supported by the initial disclosure.

Here are some examples to illustrate this concept:

• Patent Application for a Device:

  Imagine an inventor files a patent application for a unique type of bicycle helmet that incorporates a specific ventilation system. During the examination process, the inventor realizes their design could also include an integrated, self-charging LED lighting system and tries to amend the patent application to add claims for this lighting system.

  The patent examiner would likely issue a new-matter rejection. The original application focused solely on the ventilation system and did not describe or even hint at an integrated lighting system. Adding this new feature would introduce subject matter not supported by the initial filing, effectively trying to claim a new invention under the umbrella of the old application.

• Regulatory Filing for a Chemical Compound:

  A chemical company submits an application to a regulatory agency for approval of a new compound, detailing its use as an industrial solvent. The application includes extensive data on its chemical properties, safety, and effectiveness for this specific purpose.

  Months later, the company discovers the compound also has potential as a fire retardant and attempts to amend their existing application to include this new use and its supporting data.

  The regulatory agency would likely issue a new-matter rejection for this amendment. While the chemical compound is the same, its intended use as a fire retardant is a distinct application with different regulatory requirements and safety considerations that were not part of the original submission. The company would typically need to file a separate, new application for the fire retardant use.

• Design Patent for a Product's Appearance:

  A furniture designer files a design patent application for the unique aesthetic shape of a chair, providing detailed drawings of its form and contours. The application focuses exclusively on the visual appearance of the chair.

  Later, the designer decides to add claims to the same application for a novel reclining mechanism that they developed for the chair, which was not depicted or described in the original design patent filing.

  The patent office would issue a new-matter rejection. A design patent protects ornamental appearance, not functional mechanisms. Introducing claims for a reclining mechanism would be adding entirely new subject matter (a utility invention) that was not supported by the initial design patent application, which only covered the chair's visual design.