[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 ??

Sun Oct 5 22:30:41 UTC 2025

Bill,
Under your fact pattern of original priority date longer than six years ago, and regardless of the filing route you choose, your filing of continuation now will be presumed prosecution conduct with "unreasonable and unexplained delay" and therefore subject to PTO laches rejection even on the first action.
This six-year presumption of prosecution laches was recently introduced by the Federal Circuit, which stated: “we have held that a delay of more than six years raises a ‘presumption that it is unreasonable, inexcusable, and prejudicial.’” Hyatt v. Hirshfeld, 998 F.3d 1347, 1369 (Fed. Cir. 2021). The Court even extended the presumption to the existence of intervening rights, explaining that "an unreasonable and unexplained prosecution delay of six years or more raises a presumption of prejudice, including intervening rights." Id. at 1370.

My study shows that 8.6% of all utility patents issued in the last two months have priority longer than 6 years -- priority date earlier than August 1, 2019. Kate Gaudry’s studies show that under this Federal Circuit presumption, more than one-third of patents on the top pharmaceuticals, and 18% of all patents issued from continuing applications, are now presumed unenforceable. See her articles on the impacts of such decision in IPWatchdog on February 6, 2023<https://ipwatchdog.com/2023/02/06/hyatt-v-hirshfeld-mean-one-third-patents-top-pharmaceuticals-presumed-invalid/id=156151/>, and on July 18, 2021<https://ipwatchdog.com/2021/07/18/5-u-s-issued-patents-presumed-unenforceable-laches-due-priority-claims/id=135609/>.

I am working on an amicus brief on behalf of IEEE-USA in support of rehearing en banc to vacate this decision.  Any of you interested in the legal and equitable issues involved, or know of organizations that would be willing to sign on an amicus brief, are welcome to contact me by the email below.

Thanks,

Ron
-------------------------------------------------------
Ron D. Katznelson, Ph.D.
2020 Chairman, IEEE-USA IP Committee<https://ieeeusa.org/volunteers/committees/ipc/>
Email: rkatznelson at roadrunner.com<http://roadrunner.com/>

Get Outlook for iOS<https://aka.ms/o0ukef>
________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of William Ahmed via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Sunday, October 5, 2025 11:48:18 AM
To: For patent practitioners. This is not for laypersons to seek legal advice. <patentpractice at oppedahl-lists.com>; Randall Svihla <rsvihla at nsiplaw.com>
Cc: William Ahmed <ahmed.william at ymail.com>
Subject: Re: [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 ??

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:

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
-------------- next part --------------
An HTML attachment was scrubbed...
URL: <http://oppedahl-lists.com/pipermail/patentpractice_oppedahl-lists.com/attachments/20251005/8947037c/attachment.html>