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<p>Scott is right. Thank you for the correction.<br>
</p>
<div class="moz-cite-prefix">On 3/4/2025 3:22 PM, Scott Nielson via
Pct wrote:<br>
</div>
<blockquote type="cite"
cite="mid:SJ0PR11MB65750AA013D5DFC559F93A32B0C82@SJ0PR11MB6575.namprd11.prod.outlook.com">
<blockquote>
<div class="elementToProof">
<span>Indeed if you were to do a bypass continuation, it would
not even be necessary to throw money at it. Present the
priority claim promptly with the bypass and Bob's your
uncle.</span></div>
</blockquote>
<div class="elementToProof">
I think this needs to be clarified a bit. The original poster
used the term "priority claim" to refer to a domestic benefit
claim to a U.S. provisional. It's important to recognize that a
PCT application missing a priority claim to a foreign
application and a PCT application missing a domestic benefit
claim to a U.S. application are treated very differently for
purposes of the U.S. </div>
<div class="elementToProof">
<br>
</div>
<div class="elementToProof">
What Carl wrote is true for priority claims to non-U.S. patent
applications in the sense that MPEP 214 allows you to fix the
problem by filing a bypass continuation instead of a national
phase. However, be aware, that MPEP 214 rests on shaky ground.
The only court to consider this issue is the district court in <i>Medtronic
CoreValve v. Edwards Lifesciences Corp.</i>, Case No.
11-CV-0961 (CD Cal. 13 Nov 2012). It held that foreign priority
must be claimed in the PCT application so filing a bypass
continuation cannot fix the problem (the Fed. Cir. Affirmed the
district court on other grounds).</div>
<div class="elementToProof">
<br>
</div>
<div class="elementToProof">
So, yes, the USPTO will let you fix a priority claim to a
foreign application by filing a bypass continuation. However,
there is a significant risk that the priority claim will be
found defective later in litigation.</div>
<div class="elementToProof">
<br>
</div>
<div class="elementToProof">
On the other hand, in the case presented by the original poster,
the PCT application claims domestic benefit to a U.S.
provisional. There is no ambiguity in this situation. The
domestic benefit claim cannot be fixed by filing a bypass
continuation. The Federal Circuit made this clear in <i>Medtronic
CoreValve v. Edwards Lifesciences Corp.</i>, 741 F. 3d 1359
(Fed Cir 2014) and
<i>Natural Alternatives International, Inc. v. Iancu</i>, 904 F.
3d 1375 (Fed Cir 2018). The only way to fix a domestic benefit
claim such as this is to file a national phase application with
the petition and expensive fees.</div>
<div class="elementToProof">
<br>
</div>
<div class="elementToProof" id="Signature">
<p><span><b>Scott Nielson</b></span></p>
<p><span>801-660-4400</span></p>
</div>
<div>
<br>
</div>
<hr>
<div id="divRplyFwdMsg" dir="ltr"><span><b>From:</b> Pct
<a class="moz-txt-link-rfc2396E" href="mailto:pct-bounces@oppedahl-lists.com"><pct-bounces@oppedahl-lists.com></a> on behalf of Carl
Oppedahl via Pct <a class="moz-txt-link-rfc2396E" href="mailto:pct@oppedahl-lists.com"><pct@oppedahl-lists.com></a><br>
<b>Sent:</b> Tuesday, March 4, 2025 2:56 PM<br>
<b>To:</b> For users of the PCT and ePCT. This is not for
laypersons to seek legal advice.
<a class="moz-txt-link-rfc2396E" href="mailto:pct@oppedahl-lists.com"><pct@oppedahl-lists.com></a><br>
<b>Cc:</b> Carl Oppedahl <a class="moz-txt-link-rfc2396E" href="mailto:carl@oppedahl.com"><carl@oppedahl.com></a><br>
<b>Subject:</b> Re: [Pct] consequences of missing the dreaded
4-and-16 date?</span>
<div> </div>
</div>
<div>On 3/4/2025 2:47 PM, Carl Oppedahl via Pct wrote:</div>
<blockquote>
<p>A listserv member asks to post anonymously:</p>
<blockquote>
<p>A PCT filed 2/1/24 was based on a provisional filed 2/1/23.
The spec had the correct priority claim but the PCT Request
form did not include the priority claim at all.</p>
<p>I interpret Rule 26<i>bis</i> as being very clear that you
have 16 months from the priority date to correct a priority
claim. I believe that priority cannot be fixed for the PCT.</p>
<p>Correct or incorrect?</p>
</blockquote>
</blockquote>
<p>Part of the answer is tied to the particular Office or Offices
where the applicant chooses to enter the national phase.</p>
<p>For example if you were to enter the US national phase, this
lapse would be fixable by throwing money at it and filing a
petition.</p>
<p class="elementToProof">Indeed if you were to do a bypass
continuation, it would not even be necessary to throw money at
it. Present the priority claim promptly with the bypass and
Bob's your uncle.</p>
<p>But yes there are many Offices around the world in which, if
the priority claim had not been presented by June 1, 2024, it
would be too bad so sad.</p>
<br>
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</blockquote>
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