[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]

The unintentional delay requirement for the petition to add the benefit claims when entering the national stage kills this plan.


From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> On Behalf Of Scott Nielson via Patentpractice
Sent: Monday, October 6, 2025 4:12 PM
To: For Patent Practitioners. This Is Not for Laypersons To Seek Legal Advice. <patentpractice at oppedahl-lists.com>
Cc: Scott Nielson <scnielson at outlook.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 ??

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.
I am a bit unclear about this part of your proposal. Are you suggesting that the PCT will not claim the domestic benefit of the earlier chain of US applications, and that you will only add the domestic benefit claim when you enter the US national phase? If that is the case, you will need to file a petition to accept a delayed benefit claim in the US national phase. This petition comes with a substantial fee and is only applicable if the delay was unintentional, which does not seem to apply in your situation.

Additionally, you cannot file a bypass continuation to fix the domestic benefit claim in the PCT application because the chain is broken by the PCT application. See Medtronic CoreValve v. Edwards Lifesciences Corp., 741 F. 3d 1359 (Fed Cir 2014), and Natural Alternatives International, Inc. v. Iancu, 904 F. 3d 1375 (Fed Cir 2018).

Scott Nielson

801-660-4400

________________________________
From: Patentpractice <patentpractice-bounces at oppedahl-lists.com> on behalf of William Ahmed via Patentpractice <patentpractice at oppedahl-lists.com>
Sent: Sunday, October 05, 2025 12:31 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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