What is a bypass application?

A PCT application that designates the US may be considered a pending US application from the international application filing date [see 35 USC 363]. Therefore, it is possible to file a PCT bypass application, which is basically a continuing application (e.g., continuation, divisional, CIP) based on such a pending US application [see MPEP 1895]. “Bypass”  has the connotation of skipping the typical national stage application filed under 35 USC 371.

Can new matter be added to a US application based on a PCT application?

Yes, an applicant may file a US continuation-in-part (CIP) application based on an international PCT application that designates the United States [see 35 USC 365(c) and 35 USC 120]. This CIP is also known as a bypass CIP which is distinguishable from a bypass continuation that does not add new matter. As always, new matter added in the CIP will not be entitled to any earlier priority date, but will instead be afforded the later priority date of the CIP filing date.

What is the deadline for filing a bypass application?

Since the continuing application must be copending with the prior international application, the continuing application must be filed before the expiration of 30 months from the priority date of the international application, which is essentially the US national stage deadline.

Timing of PCT Publication as Prior Art

Under the 1-year grace period for an inventor’s own prior disclosure [35 USC 102(b)(1)(A)], a CIP should be filed within 12 months of the PCT publication date. Otherwise, the applicant’s own PCT publication may serve as prior art under 35 USC 102(a)(1).

This 1-year deadline is only critical for a CIP, and not for a continuation which finds full support in the PCT application and thus has an earlier priority date going back to at least as early as the international filing date, if not earlier. Since the normal publication date of a PCT application is generally 18 months from the priority date, this 12-month grace period will expire around the same time as the 30-month deadline for filing any US continuing applications.

Required Documents for Bypass Applications

If the bypass continuing application claims priority to a foreign priority document, a certified copy of the foreign priority application will need to be submitted unless the foreign country is part of the PDX exchange program.

An IDS must also be filed in a bypass application.

What are differences between a US national stage application and a bypass application?

MPEP 1896 sets forth differences between these two types of US applications, including filing date, priority requirements and unity of invention (stricter standard – national stage) versus US restriction practice (looser standard – bypass application).

Here are some key differences:

  • Prioritized Examination (Track One) is not available for national stage applications
  • a minimal USPTO basic filing fee must be paid with the initial filing of a US national stage application
  • a late bypass application cannot be filed beyond the 30-month stage deadline, but a late national stage application can be filed after 30 months which then opens the door for filing a continuing application thereafter
  • new matter can be added to a bypass application as discussed above
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Vic Lin

Vic Lin

Startup Patent Attorney | IP Chair at Innovation Capital Law Group
We love working with startups and small businesses. I help entrepreneurs protect their intellectual property so they can reach their business goals.