[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 ??

[William Ahmed]

 Yes but that is 30 months from now.  $3,000 to postpone a $6,000 fee [plus prosecution costs - they already have all the grants they wants] seems cheap IF this works.
Could someone complain about prosecution latches because of this strategy?  I suppose I could reduce the chance of that by filing the PCT with an early publication request, so that noone can complain about a 'submarine patent'
THOUGHTS? Would this work???
    On Sunday, October 5, 2025 at 09:44:48 PM GMT+3, Randall Svihla <rsvihla at nsiplaw.com> wrote:  
 
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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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