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Author Topic: Can you include new subject matter and claims in a PCT application?  (Read 303 times)

Patentstudent

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I have a basic question with respect to PCT applications.
Let's presume that I filed a national patent application in Canada for a new widget.
If I file a PCT application before the end of the priority year claiming priority based on my Canadian patent application, can I add new subject matter relating to the widget for features that I invented after filing the Canadian patent application?
In case of the affirmative, I assume that the added subject matter and the pertaining claims will obtain a different priority date (i.e. the date of filing of the PCT application), in contrast to the rest of the widget which will have the filing date of the Canadian patent application as priority date.
Is this assumption correct?   
Thank you for your
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ThomasPaine

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Yes.  You can "claim priority" all you want.  To anything you want.  Whether you get it is another issue.
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Toot Aps Esroh

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And yes, claims not supported by the original CA spec will have the later (PCT) filing date only.  Whether examiners pay much attention to the differing dates in their prior art searches varies.  I've had only a few US examiners cite intervening art for certain claims, s/he having reviewed my priority document and pointing out that it does not support those claims so the intervening art is legally prior art.  EPO examiners seem much more likely to examine the priority document and split priority up by claims supported/unsupported by the priority document.
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Patentstudent

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And yes, claims not supported by the original CA spec will have the later (PCT) filing date only.  Whether examiners pay much attention to the differing dates in their prior art searches varies.  I've had only a few US examiners cite intervening art for certain claims, s/he having reviewed my priority document and pointing out that it does not support those claims so the intervening art is legally prior art.  EPO examiners seem much more likely to examine the priority document and split priority up by claims supported/unsupported by the priority document.

Toot Aps Esroh, thank you for this clear answer. It is very helpful.
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