[Pct] consequences of missing the dreaded 4-and-16 date?

[Scott Nielson]

Indeed if you were to do a bypass continuation, it would not even be necessary to throw money at it.  Present the priority claim promptly with the bypass and Bob's your uncle.
I think this needs to be clarified a bit. The original poster used the term "priority claim" to refer to a domestic benefit claim to a U.S. provisional. It's important to recognize that a PCT application missing a priority claim to a foreign application and a PCT application missing a domestic benefit claim to a U.S. application are treated very differently for purposes of the U.S.

What Carl wrote is true for priority claims to non-U.S. patent applications in the sense that MPEP 214 allows you to fix the problem by filing a bypass continuation instead of a national phase. However, be aware, that MPEP 214 rests on shaky ground. The only court to consider this issue is the district court in Medtronic CoreValve v. Edwards Lifesciences Corp., Case No. 11-CV-0961 (CD Cal. 13 Nov 2012). It held that foreign priority must be claimed in the PCT application so filing a bypass continuation cannot fix the problem (the Fed. Cir. Affirmed the district court on other grounds).

So, yes, the USPTO will let you fix a priority claim to a foreign application by filing a bypass continuation. However, there is a significant risk that the priority claim will be found defective later in litigation.

On the other hand, in the case presented by the original poster, the PCT application claims domestic benefit to a U.S. provisional. There is no ambiguity in this situation. The domestic benefit claim cannot be fixed by filing a bypass continuation. The Federal Circuit made this clear in 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). The only way to fix a domestic benefit claim such as this is to file a national phase application with the petition and expensive fees.


Scott Nielson

801-660-4400

________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via Pct <pct at oppedahl-lists.com>
Sent: Tuesday, March 4, 2025 2:56 PM
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] consequences of missing the dreaded 4-and-16 date?

On 3/4/2025 2:47 PM, Carl Oppedahl via Pct wrote:

A listserv member asks to post anonymously:

A PCT filed 2/1/24 was based on a provisional filed 2/1/23. The spec had the correct priority claim but the PCT Request form did not include the priority claim at all.

I interpret Rule 26bis as being very clear that you have 16 months from the priority date to correct a priority claim. I believe that priority cannot be fixed for the PCT.

Correct or incorrect?

Part of the answer is tied to the particular Office or Offices where the applicant chooses to enter the national phase.

For example if you were to enter the US national phase, this lapse would be fixable by throwing money at it and filing a petition.

Indeed if you were to do a bypass continuation, it would not even be necessary to throw money at it.  Present the priority claim promptly with the bypass and Bob's your uncle.

But yes there are many Offices around the world in which, if the priority claim had not been presented by June 1, 2024, it would be too bad so sad.
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