Patent Protection and Bypass Continuation Applications: Evaluating Benefits and Risks, Navigating Priority

Description

There are two routes into the U.S. from the Patent Cooperation Treaty (PCT)--national stage application under Section 371 and “bypass” continuation under Section 111. Patent applicants may claim priority to a PCT by filing a national phase application under Section 371. Alternatively, a regular national application filed under Section 111(a), as a continuation or divisional U.S. application of a PCT application (known as a “bypass” application), may get the filing date of an international application designating the United States. The application's filing date is important because it may be cited as prior art and impact an argument against Section 103 rejection.

If an applicant modifies or refines an invention that is the subject of the originally filed PCT application, they can use a bypass continuation to add the more recent developments.

Timing is essential as the bypass continuation application must be filed while the PCT application is pending within 30 months of the PCT priority date. If a new matter is added, the applicant may want to file early to avoid prior art issues.

Listen as our authoritative panel of patent attorneys examines the bypass application. The panel will discuss the advantages of using the application along with the potential risks. The panel will also offer best practices for utilizing the bypass application and navigating the process.