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Let's suppose that a patent application has 10 claims, first submitted on 01/01/2024.

A year later, the examiner rejected 1 of the 10 claims.

In response to this rejection, the applicant modified the rejected claim and added 2 more claims.

Questions.

  1. Will the modified claim now have a new "effective filing date"?
  2. Will the applicant be allowed to add the 2 more claims?
  3. If (2) is true, then will those new claims will also have their own separate "effective filing date"?

1 Answer 1

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You can add a claim but it has to be supported in the application as filed. This applies also to amending claims.

New matter can’t be added after filing. A new claim must be for something already explained in the application on the day of filing.

So all claims have the same effective priority date.

A special case - If you filed a provisional application that has less content than the non-provisional some claims (new or old) might be able to have a different date for prior art purposes.

In a continuation-in-part application (US) claims will have different effective priority dates.

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  • what do you mean by "unless it has support in the application-as-filed"? Apr 8 at 0:33
  • 1
    See edit to answer
    – George White
    Apr 8 at 15:36
  • It might be clearer if you wrote in your first sentence: "You can add a claim but it has to be supported in the application as filed."
    – Eric S
    Apr 10 at 20:54
  • Removed the double negative - thanks
    – George White
    Apr 10 at 22:26

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