[Patentpractice] clever way to avoid $4000 USPTO fee for "9-year-old-old benefit claim" -file it as a PCT --> would this work ??? or is it to dangerous ??

[Randall Svihla]

Setting aside everything else, you are still going to have to pay that $4,000 fee when you enter the national state with that ADS adding the benefit claims.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of William Ahmed via Patentpractice
Sent: Sunday, October 5, 2025 2:31 PM
To: For Patent Practitioners. This Is Not for Laypersons To Seek Legal Advice. <patentpractice at oppedahl-lists.com>
Cc: William Ahmed <ahmed.william at ymail.com>
Subject: [Patentpractice] clever way to avoid $4000 USPTO fee for "9-year-old-old benefit claim" -file it as a PCT --> would this work ??? or is it to dangerous ??

Dear All,

CURRENT SITUATION

I have an allowed US non-provisional patent application where the oldest benefit claim is from May 2016.
The client wants to file a continuation to 'keep something alive' - there is no other reason for now to submit the CON.
The client also believes that investors would prefer a portfolio where the US grants have a CON alive.

THE PROBLEM

Since the client is a large entity, the filing fees would be approximately $6,000 since we would be stuck paying
$4,000 for "Filing an application or presentation of benefit claim more than nine years after earliest benefit date"

$6,000 is a lot of money.

PROPOSED SOLUTION -- file the CON as a PCT

On the other hand, if we file this continuation in the PCT, the fees now would only be around $3,000, especially if we request a search
in Philippines [ (IPOPHL)]  or in KIPO.

The search report would be 'negative' but "who cares."

This PCT would have no Paris convention claim, so it would have a lifespan of 30 months - keeping it alive for 2.5 years for only $3,000 in fees is great.

POTENTIAL PROBLEM -->
When the PCT enters into the US national phase, I would submit an ADS with many many many benefit claims [the allowed application is a CON of a CON of a CON of a 371 of a PCT]. This ADS adding MULTIPLE benefit claims [of multiple generations] would need to be submitted within 4 months of national phase entry.


MY QUESTION --> this seems too good to be true. Could something go wrong?

Many thanks,
Bill
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