[Pct] Multiple priority in epct

Jeffrey Semprebon jesemprebon at gmail.com
Sat Jan 13 08:39:00 EST 2024


In a number of Carl's webinars and advice on these lists, he's recommended
viewing the PCT application as a bundle of national applications, rather
than as some separate entity with its own esoteric rules. For purposes of
this question, simply treat the PCT a US national application (which it
will eventually be, if entered). If it only contains the subject matter of
the DEC 2023 non-provisional, you'd naturally file it as a continuation. If
it does have new matter, you'd file it as a CIP.

Whether you eventually decide to enter this into the US national phase or
decide to file a bypass (essentially a CON or CIP of this current
application) doesn't really matter for purposes of how you designate this
application when filing it. Treat it as a US application for purposes of
the US.

-Jeff
Jeffrey E. Semprebon
Semprebon Patent Services
www.semprebonps.com
72 Myrtle Street
Claremont, New Hampshire 03743

On Fri, Jan 12, 2024 at 9:57 AM Victoria OConnor via Pct <
pct at oppedahl-lists.com> wrote:

> 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> *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>
> *Cc:* Carl Oppedahl <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.
> >
> >
> --
> Pct mailing list
> Pct at oppedahl-lists.com
> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>
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