Posts Tagged: "original claims"

Why are we talking about this in a claims primer? There is a difference between adding what we call “new matter” and adding patent claims. New matter, which is prohibited, is defined by first viewing whatever is present at the time of the original filing of the patent application. In determining the breadth of what is covered by that initial patent filing you rely not only on the description contained in the specification and any drawings filed but also on the originally filed claims. Thus, new matter is defined in the negative. If it wasn’t there in the specification, drawings or originally filed claims then it is new matter. If it was present somewhere in what you filed it is not new matter.