What is...a by-pass application?

You have choices when entering the US off a PCT. Which is best for you?

Following the AIA, there are two ways to enter the U.S. at the National Phase from a PCT application. The first, more common method, is via 35 U.S.C. 371, commonly referred to as a "371 application." The second is via 35 U.S.C. § 111(a) as a continuation, divisional, or continuation-in-part, commonly referred to as a "by-pass application."

There are pros and cons for each pathway, and we will touch on a few of them in this post.

Prior Art

If a case is filed under Section 371, the PCT application cannot be used as prior art against the national stage. Thus, it is a requirement that the national phase application not add any new matter relative to the PCT.

If a case enters the National Phase under Section 111(a), as a continuation, including a bypass continuation, U.S. law allows for what is known as a continuation‐in‐part (CIP) to be filed. In a CIP, new matter can be added to the bypass application as long as it is reasonably related to the PCT, and with the understanding that any new matter will only be afforded the filing date of the CIP.

Restriction & Unity of Invention

Bypass continuation applications will be subject to a restriction requirement if the Examiner views the claims as being directed to more than one invention, and a unity of invention requirement will be raised if the case was filed as a 371 application.

Since each type of requirement employs different standards for examination, applicants would be wise to factor this into their filing decision. As a general rule, in unity of invention cases, the claims simply need to be linked to form a single general inventive concept, and the “unity” can be established by showing the various claims all involve one or more of the same “special technical features.” In contrast, the standard for a restriction requirement is more vague in that the claims must be independent or distinct from one another and not place an undue burden on the Examiner.

Safe Harbor

A divisional application filed in response to a restriction requirement (originally field as a bypass application) is given "safe harbor," where those filed as a 371 application are not. As such, a divisional of a 371 application is exposed to an Obviousness Type Double Patenting (OTDP) rejection and may require a Terminal Disclaimer. 

Fees  

If the USPTO was selected as the searching authority for a PCT application, the filing fees for a U.S. 371 application will be reduced relative to a case where another searching authority was used. In contrast, for a bypass continuation the filing fee will be the filing fee - no such discounts are available.

The timing of the fees is also different. With a 371 application, the filing fee must be paid at the time of filing or else a filing date will not be given. With a bypass continuation, the application can be filed and be given a filing date even with no filing fees being paid at the time of filing. A notice of missing parts will issue giving the Applicant a few months to pay the fees.

RCE Practice 

With a bypass continuation, a request for continued examination (RCE) can be filed as many times as needed/wanted to obtain an allowance. This is true even if signed inventor declarations have not yet been filed. Such is not the case with 371 applications. There, before an RCE can be filed, the signed inventor declarations must be on file with the USPTO. If not, and the RCE is filed, the case will be abandoned. It is always preferred the have declarations on file at the time of filing or very soon thereafter, but that is not always possible.

Prioritized Examination 

Track 1 Prioritized Examination allows applicants to jump the line and have a patent application reviewed ahead of schedule. The USPTO charges a significant fee for such a service, but depending on the importance of the invention or the activities of the competition, it may be desirable. Track 1 Prioritized Examination is only available with a bypass application, and not a 371 application.

Applicants should consider the pathways and review them in light of the specifics of their case. Just because a certain pathway is more common, it does not mean it is the best for you or your client's particular situation.

KPIP Law is happy to discuss filing strategies as they apply to your or your client's case. If you are contemplating a US filing, please visit www.kpiplaw.com and "contact us" to set up a call.