Seed IP partner Bobby Soltani recently authored the following article, "Navigating U.S. Entry Options for PCT Patent Applications: National Stage vs. Bypass Continuation Applications," which addresses U.S. entry options for PCT patent applications.

Navigating U.S. Entry Options for PCT Patent Applications: National Stage vs. Bypass Continuation Applications

For applicants seeking patent protection across multiple jurisdictions, including the United States, the Patent Cooperation Treaty (PCT) provides a unified approach by offering a single application process. When patent applicants decide to enter the U.S. based on a PCT application, they have two distinct paths: entering the national stage as a “371 application” in accordance with 35 U.S.C. 371, or filing a new U.S. application, known as a “bypass continuation,” under 35 U.S.C. 111(a) while claiming priority to the PCT application. Each route has its advantages, influenced by factors such as cost, procedural requirements, and the potential for expedited examination. This article delves into the details of these two pathways, and demonstrates that choosing between the two requires strategic consideration of a number of factors.

 Official Fees

An advantage to national stage applications may be that they qualify for discounted official fees, particularly when the U.S. serves as the International Searching Authority (ISA) or International Preliminary Examining Authority (IPEA), and even more so if all claims in the PCT application were deemed allowable. Bypass continuations, on the other hand, can be filed without paying any fees up front, unlike national stage applications, which require at least the basic filing fee upon filing. Therefore, national stage applications may offer cost savings in certain instances, whereas bypass continuations may be more appealing for applicants wishing to avoid official fees at the time of filing.

 Prioritized Examination

Bypass continuations can include a request for Prioritized Examination, also known as "Track One," which significantly speeds up the examination process—an avenue not available to national stage applications. This feature could be especially appealing to applicants seeking expedited patent protection, given that Track One applications generally advance through the examination process in under a year, in contrast to the two to four year timeline—or even longer—common for other applications.

 Missed Deadlines

In situations where the 30-month deadline to file a national stage application was unintentionally missed, national stage applications provide an opportunity for revival that is not available to bypass continuations. In such situations, filing a national stage application is the only option for applicants seeking U.S. patent protection.

 Inventor Declarations

The approach to handling inventor declarations is similar across both filing options, with one significant distinction worth noting. Both pathways allow for inventor declarations to be filed as late as the deadline for the issue fee to be paid, but national stage applications have a significant condition: a Request for Examination (RCE) cannot be filed if the inventor declarations have not been filed. If this requirement is not met, the application may be deemed abandoned. This distinction places a higher procedural burden on national stage applications, making bypass continuations a safer choice for applicants concerned about the timely collection of inventor signatures.

 New Matter

Bypass continuation applications allow for the addition of new matter, although such additions do not receive the priority date of the PCT application. In some circumstances this flexibility may be a useful strategy for inventors who have made improvements on their invention post-PCT filing. In contrast, a national stage application cannot contain new matter.

 Examination of Multiple Applications

Both pathways have examination standards—PCT’s "Unity of Invention" for national stage applications, and the US’s "Restriction" standard for bypass continuations.  While both standards reflect somewhat differing approaches to patent examination, the “Unity of Invention” standard can be more lenient and may also be somewhat easier to rebut, which is another advantage of national stage entry over bypass continuations.

 Priority Document Filing

For national stage applications, the priority documents are automatically transferred to the USPTO, reducing administrative burden. In contrast, bypass continuations require the filing of certified copies of priority documents or providing Digital Access Service (DAS) codes for their retrieval. This distinction highlights the national stage route as a more streamlined and potentially less labor-intensive option, which is particularly valuable under tight filing deadlines.

 Refund After Express Abandonment

With bypass continuations, it may be possible to obtain a refund for certain fees upon express abandonment, a perk not available to national stage applications. This refund option can be particularly appealing for applicants that have shifted their patent filing strategy for business needs or other conditions and would value the option to obtain a partial refund of the official fees.

 Conclusion

The choice between a 371 national stage application and a bypass continuation is shaped by numerous factors, each carrying implications. Applicants must carefully consider aspects such as cost, timing, flexibility, and procedural requirements when navigating these filing decisions. National stage applications are particularly advantageous for their potential to revive after the filing deadline, offer reduced fees under specific conditions, and provide the automatic transfer of priority documents. Conversely, bypass continuations stand out when expedited examination is desired, minimizing upfront costs is critical, or there is a difficulty in obtaining the inventor declarations. Understanding these distinctions is vital for applicants to strategically navigate the complexities of US patent filing, ensuring the selection of the most suitable and advantageous route for each unique filing situation.

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About the author

Bobby Soltani's practice focuses on the U.S. and foreign patent prosecution of electrical engineering and computer software matters and patent litigation, infringement opinions, licensing, and strategic portfolio management. He received a B.S. in Electrical Engineering from the University of Oklahoma (2001), and an M.S. in Electrical Engineering from Oklahoma State University (2003). Bobby holds a J.D. from the University of Oklahoma College of Law (2007).

Bobby is admitted to practice in Washington (2010) and Colorado (2007) and is registered to practice before the U.S. Patent and Trademark Office. He is a board member for the Washington State Patent Law Association (WSPLA). Bobby is also a member of the American Intellectual Property Law Association (AIPLA) and the Institute of Electrical and Electronics Engineers (IEEE). Bobby also lectures on U.S. patent practice at the University of Washington's renowned Center for Advanced Study and Research on Innovation Policy (CASRIP).

Read more about Bobby Soltani.

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