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[dlupkes]

Can a pending patent, which is not patentable because of prior art discovery by the inventor after filing, be patentable by adding new matter in a CIP?

[Wiscagent]

Potentially yes.  The claim that was found to be anticipated in the original application, would still be anticipated, you can't get around that.  But a new claim could be written that incorporates the new matter and thus avoids the earlier rejection.

Of course it all depend on the details of the case.  Also keep in mind that any new matter added in the CIP application does not benefit from the priority date of the original application.

[simrin]

Is there any substantial advantage to a CIP? Since new matter does not get the priority date, and old matter can always be claimed in a preliminary amendment. I was wondering what strategic teeth does a CIP give to an application as against just filing a regular application and incorporating by reference the application to which it refers. Any thoughts?