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Added matter in applications having declared a priority due to later filed description (Section 84(1A))

7.52 According to Section 26(1), an applicant for a patent can secure a date of filing at the earliest time when the documents filed at the Registry to initiate the application satisfy the following conditions: (a) the documents indicate that a patent is sought; (b) the documents identify the applicant; and (c) the documents contain something which is or appears to be a description of the invention sought. In the event where the application contains a priority declaration under Section 17(2), the description of the invention sought in condition (c) may be substituted by:

(A) a reference to an earlier relevant application specified in the declaration under section 17(2) made in or in connection with the application;

(B) such information on the earlier relevant application as may be prescribed; and

(C) a statement that the description of the invention for which the patent is sought is incorporated in the application by reference to, and is completely contained in, the earlier relevant application, as filed.

7.53 In such an event, within the prescribed period after the filing, the applicant is required under Section 26(7) to file: (a) a written notice confirming the above statement (C); (b) the description of the invention for which the patent is sought; and (c) other prescribed documents in relation to the application. Failing to do so will cause the application to be treated as having been abandoned according to Section 2 (12).

7.54 The afore-mentioned later filed description under Section 26(7)(b) could possibly introduce added matter, that is, matter extending beyond that disclosed in the earlier relevant application as specified in the Section 17(2) declaration. Such applications shall not be allowed to proceed unless amended so as to exclude the additional matter.

7.55 In deciding whether such applications having made a Section 1 (2) priority declaration would introduce additional matter due to the later filed descriptions, the Examiner should take into account the same test and considerations that apply for added subject matter in patent applications and patent specifications as discussed in the previous sections.