Reforming 35 U.S.C. § 132(a): Why New Matter Amendments Shouldn’t Require a New Application

Most patent attorneys know the Jerome Lemelson story—the prolific inventor whose aggressive use of continuation and continuation-in-part applications resulted in some patents remaining pending for decades, earning the label of “submarine patents.” While Lemelson’s tactics sparked controversy and eventual legislative reforms aimed at curbing undue delays, one principle emerged clearly from his experiences: new matter in patent law must receive a new priority date.

This principle is strictly enforced through 35 U.S.C. § 132(a), which states that “no amendment shall introduce new matter into the disclosure of the invention.” The prohibition operates in tandem with 35 U.S.C. § 112(a), and is deeply rooted in core patent principles. The Manual of Patent Examining Procedure and Federal Circuit precedent also further detail how the prohibition protects the public’s reliance on the filing date while preserving the fundamental bargain of patent law.

To patent applicants, 35 U.S.C. § 132(a) means that the detailed description of their non-provisional patent applications must be perfect when filed, and that even if new information is discovered after filing, no changes can be made. In practice, this is an extremely harsh standard, and is disproportionately punitive to small business inventors who lack the deep pockets to absorb repeated filing costs and years of delay.

CIP Practice: Close But Not Quite

The United States does not have any fundamental problem with new matter when it comes to invention. Continuation-in-part (CIP) practice has been around for a very long time, and has legal basis in the Patent Act of 1952.

CIPs officially allow for the addition of new matter, with two important caveats. First, any claims which draw support from the new matter receive the priority date of the new matter—not the priority date of the pending application. This makes complete sense—we can’t give inventors an earlier priority date than when they told the United States Patent and Trademark Office (USPTO) about their inventions. Second, inventors have to file entirely new applications—they cannot simply add new matter to their pending applications. This often results in multiple patents being issued when only one is really needed. This requirement—forcing inventors to file new patent applications—is the unnecessary part of CIP practice and should be changed. Forcing inventors to file new applications is a drain on their resources. Some inventors can afford the costs, but for many who can’t, this obstacle represents a detour in the patent system that they cannot survive.

Current USPTO non-provisional filing fees for a small entity are $730, with attorney time for a CIP typically running 4-10 hours ($1,200-$5,000). All told, each new CIP can easily cost $2,000-$6,000 just to prepare and file.

In terms of the delay, if inventors cannot afford prioritized examination ($2,000 for a small entity), they have to wait another 1-2.5 years until their CIP is even examined. If inventors can afford prioritized examination, they still have to pay another $2,000 on top of the $2,000-$6,000, and then wait at least 2-6 months before the CIP is even examined.

These consequences are not proportionate to their causes. Pending applications are frequently close to allowance when new matter amendments are flagged. Moreover, invention is dynamic, meaning core inventive concepts often get refined post-filing. Neither scenario justifies sending inventors to the back of the examination queue.

The Proposed Solution

Inventors must be permitted to add new matter within a pending application, and be given a new priority date for claims supported by the new matter. CIP practice has always allowed new matter to be added in exchange for a new priority date, and amendment practice has always allowed the scope of the protection to be changed after the patent application has been filed. Merging these two bedrocks of patent law into one is a natural progression, and one in which a significant friction point for many inventors would be eliminated.

The USPTO is more than capable of tracking priority dates, updating prior art searches, and even publishing different priority dates on the front page of patent applications. This change would modestly increase examiner workload, but with proper resourcing—via pilot programs—it is well within their capabilities. When CIPs are filed, examiners review parent patent applications and CIP applications, and parse through the claims. They then assign different priority dates to different claims, depending on whether the claims draw support from the new matter. Asking them to do this within a single pending application is not a big ask, and would deliver meaningful relief to the inventors who need it most.

Addressing the Big Objection

The main concern with allowing inventors to add new matter is that it would invite neverending patent applications in which inventors constantly add new matter throughout the life of a patent application. For instance, many might fear that allowing new matter amendments would revive “submarine-like” behavior by enabling applicants to keep applications pending for years while adding new disclosures, thereby creating uncertainty for competitors conducting freedom-to-operate analyses. This concern is understandable, but it is overstated. Patent applications are already published 18 months from the earliest filing date. New matter amendments could very easily trigger supplemental publication requirements so that the updated disclosure and associated priority dates are promptly visible to the public.

Moreover, strong procedural safeguards can prevent abuse. New matter amendments can be barred after a notice of allowance is mailed, restricted from moving a patent application out of its original art unit, and subject to reasonable caps on frequency. The USPTO can also impose a small surcharge on new matter amendments to offset examiner search time. The point is that the procedure surrounding new matter should match its actual impact—not be used as a source of punishment that re-routes inventors around the patent system.

Call to Action

By merging current CIP practice and current amendment practice into a single, streamlined procedure, Congress can eliminate a friction point in the patent system. To make this a reality, Congress and the USPTO must both take action. The call to Congress is to amend 35 U.S.C. § 132(a) to read, “no amendment shall introduce new matter into the disclosure of the invention without changing the priority date for claims supported by the new matter.” The call to the USPTO is to implement rules to update examination procedures, priority tracking, and publication requirements.

These changes are not radical, but instead represent a modest, practical evolution of long-accepted principles to modernize an overly rigid rule. Ultimately, these changes would save inventors money and time—resources they can better direct toward innovation and commercialization.