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

[Carl Oppedahl]

Scott is right.  Thank you for the correction.

On 3/4/2025 3:22 PM, Scott Nielson via Pct wrote:
>
>     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 26/bis/ 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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