Can you add New Matter to the US Application of a foreign Paris filing

[dab2d]

I am thinking the answer is yes, but can you treat a Foreign application like a provisional in that you can add matter to the non-provisional?

The client wants to add new embodiments that were not included in the foreign filing. I just have never had this situation before and was under the impression that when you file under the Paris Convention, the only real change you can make is the claim language. The Specification is to be a translation.   

[ThomasPaine]

The answer may be no.  It may be yes.

Section 119(a) provides, "(a) An application for patent for an invention filed in this country by any person who has, or whose legal representatives or assigns have, previously regularly filed an application for a patent for the same invention in a foreign country which affords similar privileges in the case of applications filed in the United States or to citizens of the United States, or in a WTO member country, shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country, if the application in this country is filed within 12 months from the earliest date on which such foreign application was filed."

The "... shall have the same effect as the same application would have if filed in this country on the date on which the application for patent for the same invention was first filed in such foreign country..." arguably requires that the U.S. application that is filed be "the same application" as the foreign application.

My experience is that you would get priority to the earlier, foreign filing date for subject matter that is common to the foreign and the U.S. application, but you would not get priority to the foreign filing date for any subject matter you added to the U.S. application.

[Pat4D]

each claim will be checked against the prior art. Those claims which could be supported completely by the prior art will get the priority date other will get the filing date.

[bluerogue]

each claim will be checked against the prior art. Those claims which could be supported completely by the prior art will get the priority date other will get the filing date.

This... This is just wrong.  No.  Just no.  Prior art has nothing to do with the priority claim.  Period.  Never has.

TP is likely correct in that you'd get the foreign priority for any "old" matter that is in the foreign application while any new matter would be treated as a CIP. 

I think (don't have time to look right now) there may be something that says you cannot add anything to an application claiming foreign priority.  I may be wrong about this.

Edit: You can do a CIP with foreign priority so i was wrong that you can't add anything.

[smgsmc]

each claim will be checked against the prior art. Those claims which could be supported completely by the prior art will get the priority date other will get the filing date.

<<Emphasis added>>  What you wrote makes no sense whatsoever.  Unless you really meant to say "priority document (the foreign application)" instead of "prior art".

[two banks of four]

each claim will be checked against the prior art. Those claims which could be supported completely by the prior art will get the priority date other will get the filing date.

This... This is just wrong.  No.  Just no.  Prior art has nothing to do with the priority claim.  Period.  Never has.

TP is likely correct in that you'd get the foreign priority for any "old" matter that is in the foreign application while any new matter would be treated as a CIP. 

I think (don't have time to look right now) there may be something that says you cannot add anything to an application claiming foreign priority.  I may be wrong about this.

Edit: You can do a CIP with foreign priority so i was wrong that you can't add anything.

Only if the foreign priority document is in English or has been perfected.  Otherwise the priority for determination of what constitutes prior art is the U.S. filing date.

As an aside, CIP from a PCT is always possible (see MPEP 1895).  Only caveat there is that if one has foreign priority, PCT, and U.S. Non-Prov., that priority goes back only as far as continuity in language of filing allows (say PCT filing not in English, but FOR is, for whatever reason), the effective filing date purpose of determining what is prior art is that of the filing of the U.S. Non-Prov.