[Pct] Multiple priority in epct

Fri Jan 12 10:10:39 EST 2024

If a PCT application claims priority to a US non-provisional, then my opinion is that it should include a designation for purposes of the US that it is either a continuation or CIP. The designation has no effect for other countries, but might play a role in the U.S.

This is discussed in MPEP 1828.02, which says in part:
The inclusion of a proper reference to the parent application in the PCT Request form or the presence of such reference on the front page of the published international application will satisfy the requirement in 37 CFR 1.78<https://mpep.uspto.gov/RDMS/MPEP/current#/current/aia_d0e320662.html>  for the presentation of a benefit claim in an application data sheet. See 37 CFR 1.76(g)<https://mpep.uspto.gov/RDMS/MPEP/current#/current/plt_d0e320348.html##ar_d24abc_25165_ce>. In such cases, a reference to the parent application in an application data sheet would not be required in the national stage application. Furthermore, inclusion of a proper reference to the parent application in the PCT Request form is also beneficial where applicant chooses to file a continuing application claiming benefit under 35 U.S.C. 365(c)<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e307034.html##d0e307053>  to the international application (i.e., a bypass application) rather than entering the U.S. national phase under 35 U.S.C. 371<https://mpep.uspto.gov/RDMS/MPEP/current#/current/d0e307164.html>. See MPEP § 211.02<https://mpep.uspto.gov/RDMS/MPEP/current#/current/ch200_d1ff71_22f37_244.html>, which indicates the right to rely on a prior application may be waived by an applicant if a reference to the prior application is not included in the later-filed application.
My reading of this is that failure to include a designation only impacts a later U.S. national phase application in that you must file an ADS in the national phase application to have the benefit claim to the U.S. nonprovisional recognized (everyone should file an ADS anyway so this doesn't strike me as a big deal). However, failure to include a designation may waive the benefit claim in a bypass continuation.

Scott Nielson

801-660-4400

________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Victoria OConnor via Pct <pct at oppedahl-lists.com>
Sent: Friday, January 12, 2024 7:54 AM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Victoria OConnor <Victoria at brakehughes.com>
Subject: Re: [Pct] Multiple priority in epct

I’m sorry for the multiple emails.  I said one thing in the email below and meant another.  To clarify, Under the Designation section you can designate the PCT as a CON or CIP of the US NP Apn is what I meant to say.

Thanks everyone.

Victoria

From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Victoria OConnor via Pct
Sent: Friday, January 12, 2024 8:28 AM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Victoria OConnor <Victoria at brakehughes.com>
Subject: Re: [Pct] Multiple priority in epct

Good morning list mates - Not to hijack the post but I have a somewhat related question to this.  What is the benefit, if any, in claiming a PCT as a continuation to a US non-provisional application?  For example, I have a US Non-Provisional Apn as the priority of this PCT we are about to file.  Under the “designations” section, you can add the US non-provisional apn as a Con or CIP as well.  Is there an added benefit of including that the PCT is also a CON of that US NP apn versus just having the US Apn listed as a priority only?  Could someone point me to the MPEP or PCT rules that discuss this?  When I tried to search for further info on this, I keep getting information about filing bypass cons of the PCT in the US instead of a US National Phase, not the other way around.  That’s not what I am looking for.

Thanks in advance.  And TGIF!

Victoria

From: Pct <pct-bounces at oppedahl-lists.com<mailto:pct-bounces at oppedahl-lists.com>> On Behalf Of Carl Oppedahl via Pct
Sent: Friday, January 12, 2024 3:35 AM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>>
Cc: Carl Oppedahl <carl at oppedahl.com<mailto:carl at oppedahl.com>>
Subject: Re: [Pct] Multiple priority in epct

(Note to listserv members -- Sudarkodi Venkatesan is a patent agent, see
https://www.linkedin.com/in/sudarkodi-patentagent/<https://protect-us.mimecast.com/s/NVv0Cn56KDuQwrwU9a8VO?domain=linkedin.com> .)

You are logged in at ePCT, I gather, and you are preparing a PCT
request, I gather.  So you scroll down to the "Priority claims" area.
See the "Add" button?

So if you are claiming two priorities instead of just one, then you
click the "Add" button twice instead of just once.

I'd be grateful if later you can post a followup to the listserv to let
me know whether this posting answered your question.

On 1/12/2024 12:29 AM, Sudarkodi Venkatesan via Pct wrote:
> I am filing an application in epct. The priority is a parent patent
> filed on 13 jan 23 and the additional patent filed on 18 dec 23.
>
> How can I give the details of both the priority documents in epct?
>
> The specification of the pct application is a combination of the
> parent and addition patents with claims having priority in the two
> priorities separately.  This is my first pct filing so please guide me.
>
>
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