Bypass Continuation . . . It Is Still Available

The Patent Cooperation Treaty (PCT) is an international treaty that makes it possible to seek patent protection for an invention simultaneously in a large number of countries by filing a single patent application. The international patent application is filed with a receiving office in a national or regional patent office, which then sends the application to the International Bureau of WIPO. It is also possible to file the application with the International Bureau directly. Applicants may choose to file in a national patent office up to one year before filing the international application. In that case, the national patent filing date is the priority date. 

At 30 months after the priority date or earlier, the application enters the national phase, where the applicant undergoes the national (or regional) process for obtaining a patent (including paying fees for entering the national phase).

Alternatively, rather than submitting a national stage application under 35 U.S.C. 371, an applicant may file a U.S. national application under 35 U.S.C. § 111(a) as a continuation, divisional, or continuation-in-part of the international (PCT) application claiming the benefit of the filing date of an international application designating the United States. Such applications are often referred to as “bypass” applications. See M.P.E.P. § 1895.01 [R-07.2022] and 312 [R-08.2017].

To obtain benefit under 35 U.S.C. §§ 120 and 365(c) of a prior international application designating the U.S., the continuing application must:

• (A) include a specific reference to the prior international application
• (B) be copending with the prior international application, and
• (C) have at least one inventor in common with the prior international application.

When would an applicant choose a bypass application rather than entering the national phase? One reason may be to access speedier prosecution in the US via Track One Prioritized Examination. Another reason may be to add new matter. Further, it may be to draw a restriction requirement so then subsequent related applications obtain the benefit of the safe harbor provisions of 35 U.S.C. §121 against obviousness-type double patenting rejections (as long as consonance is maintained).