U.S. Code » Title 35 » Part PART II— PATENTABILITY OF INVENTIONS AND GRANT OF PATENTS › Chapter CHAPTER 12— EXAMINATION OF APPLICATION

35 U.S.C. § 132

Notice of rejection; reexamination

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(a) Whenever, on examination, any claim for a patent is rejected, or any objection or requirement made, the Director shall notify the applicant thereof, stating the reasons for such rejection, or objection or requirement, together with such information and references as may be useful in judging of the propriety of continuing the prosecution of his application; and if after receiving such notice, the applicant persists in his claim for a patent, with or without amendment, the application shall be re­examined. No amendment shall introduce new matter into the disclosure of the invention.(b) The Director shall prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant. The Director may establish appropriate fees for such continued examination and shall provide a 50 percent reduction in such fees for small entities that qualify for reduced fees under section 41(h)(1).(July 19, 1952, ch. 950, 66 Stat. 801; Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, §§ 4403, 4732(a)(10)(A)], Nov. 29, 1999, 113 Stat. 1536, 1501A–560, 1501A–582; Pub. L. 107–273, div. C, title III, § 13206(b)(1)(B), Nov. 2, 2002, 116 Stat. 1906; Pub. L. 112–29, § 20(j), Sept. 16, 2011, 125 Stat. 335.)Historical and Revision Notes

Based on Title 35, U.S.C., 1946 ed., § 51 (R.S. 4903, amended Aug. 5, 1939, ch. 452, § 1, 53 Stat. 1213).

The first paragraph of the corresponding section of existing statute is revised in language and amplified to incorporate present practice; the second paragraph of the existing statute is placed in section 135.

The last sentence relating to new matter is added but represents no departure from present practice.

Editorial NotesAmendments

2011—Subsec. (b). Pub. L. 112–29 struck out “of this title” after “41(h)(1)”.

2002—Pub. L. 107–273 made technical correction to directory language of Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)]. See 1999 Amendment note below.

1999—Pub. L. 106–113, § 1000(a)(9) [title IV, § 4732(a)(10)(A)], as amended by Pub. L. 107–273, substituted “Director” for “Commissioner”.

Pub. L. 106–113, § 1000(a)(9) [title IV, § 4403], designated existing provisions as subsec. (a) and added subsec. (b).

Statutory Notes and Related SubsidiariesEffective Date of 2011 Amendment

Amendment by Pub. L. 112–29 effective upon the expiration of the 1-year period beginning on Sept. 16, 2011, and applicable to proceedings commenced on or after that effective date, see section 20(l) of Pub. L. 112–29, set out as a note under section 2 of this title.

Effective Date of 1999 Amendment

Pub. L. 106–113, div. B, § 1000(a)(9) [title IV, § 4405(b)], Nov. 29, 1999, 113 Stat. 1536, 1501A–560, provided that: “The amendments made by section 4403 [amending this section]—“(1) shall take effect on the date that is 6 months after the date of the enactment of this Act [Nov. 29, 1999], and shall apply to all applications filed under section 111(a) of title 35, United States Code, on or after June 8, 1995, and all applications complying with section 371 of title 35, United States Code, that resulted from international applications filed on or after June 8, 1995; and“(2) do not apply to applications for design patents under chapter 16 of title 35, United States Code.”

Amendment by section 1000(a)(9) [title IV, § 4732(a)(10)(A)] of Pub. L. 106–113 effective 4 months after Nov. 29, 1999, see section 1000(a)(9) [title IV, § 4731] of Pub. L. 106–113, set out as a note under section 1 of this title.

Notes of Decisions
Cited in 237 cases (7 in the last 5 years), 1954–2025 · leading case: In re Hogan, 559 F.2d 595 (C.C.P.A. 1977).
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In re Hogan, 559 F.2d 595 (C.C.P.A. 1977). · cites it 7× “*600 (3) Claim 14 under 35 U.S.C. § 132 as “containing new matter in the combination of ‘homopolymer’ and the melting point range of 390° to 425 °F.”
Moba, B v. Staalkat, B v. & Fps Food Processing Sys., Inc., Plaintiffs-Cross v. Diamond Automation, Inc., 325 F.3d 1306 (Fed. Cir. 2003). · cites it 3× “at 1560 (“The question raised by these situations is most often phrased as whether the application provides ‘adequate support’ for the claim(s) at issue; it has also been analyzed in terms of ‘new matter’ under 35 U.S.C. § 132 .”); In re Wright, 866 F.”
In Re Walter Kaslow & Unif. Prod. Code Council, Inc. (Uppc), Intervenor, 707 F.2d 1366 (Fed. Cir. 1983). · cites it 4× “The claims were also rejected as being drawn to new matter under 35 U.S.C. § 132 , 2 although this rejection was treated as if it had been made under the first paragraph of 35 U.”
In re Wertheim, 541 F.2d 257 (C.C.P.A. 1976). · cites it 4× “The board held that these claims, which were added to the instant application by amendment, were not supported in the original disclosure for lack of a description of the claimed size of the ground foam particles, i.”
Brooktree Corp., Plaintiff/cross-Appellant v. Advanced Micro Devices, Inc., 977 F.2d 1555 (Fed. Cir. 1993). · cites it 3× “AMD argued that this statement of general use in a data processor includes inoperable modes, and that the addition of “for video display” in the claims during prosecution before the patent office was “new matter” in terms of 35 U.S.C. § 132 , and should not have been accepted by…”
Univ. of Massachusetts v. Kappos, 903 F. Supp. 2d 77 (D.D.C. 2012). · cites it 6× “702 (a) restates the text of the statute, providing that the patent term shall be adjusted if the issuance of the patent was delayed due to the failure of the PTO to “[m]ail at least one of a notification under 35 U.S.C. § 132 or a notice of allowance under 35 U.”
Tafas v. Doll, 559 F.3d 1345 (Fed. Cir. 2009). · cites it 6× “Additionally, 35 U.S.C. § 132 (b) requires the USPTO to "prescribe regulations to provide for the continued examination of applications for patent at the request of the applicant.”
Evideo Owners v. United States, 126 Fed. Cl. 95 (Fed. Cl. 2016). · cites it 7× “In addition, plaintiffs allege that the USP-TO violated 35 U.S.C. § 132 (a) and its implementing regulation, 37 C.”
Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co., 535 U.S. 722 (2002). “35 U. S. C. § 132 (1994 ed., Supp. V). When the patentee responds to the rejection by narrowing his claims, this prosecution history estops him from later arguing that the subject matter covered by the original, broader claim was nothing more than an equivalent.”
Commonwealth Sci. & Indus. Rsch. Organisation v. Buffalo Tech. (USA), Inc., 542 F.3d 1363 (Fed. Cir. 2008). · cites it 4× “V Buffalo next argues that the applicant for the '069 patent impermissibly added new matter to the application, in violation of 35 U.S.C. § 132 , when the applicant amended the application on July 3, 1995, and that the asserted claims of the '069 patent, all of which were first…”
The Regents of the Univ. of New Mexico v. Galen D. Knight, & [Pg] Terence J. Scallen, 321 F.3d 1111 (Fed. Cir. 2003). · cites it 2× “Relying on a presumption that the PTO had correctly determined that the amendments did not introduce new matter, the court concluded that the amendments did not violate 35 U.S.C. § 132 . Id. at 14 . Secondly, the court found that Scallen and Knight had failed to prove by clear…”
Enzo Biochem, Inc. v. Gen-Probe Inc., 42 F. App'x 439 (Fed. Cir. 2002). · cites it 5× “Before 1967, the United States Patent Office and the Court of Customs and Patent Appeals used a “new matter” rejection to ensure that applicants did not update their disclosures after the original filing date of the application.”
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