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. In other words, you are bypassing the national stage entry normally required in a PCT application.
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.
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 12-month grace period will expire roughly around the same time as the 30-month national stage deadline since the PCT publication date is typically 18 months from the priority date (18mo. publication date + 12mo. grace period = 30mo. deadline, i.e., approximately same time as US national stage deadline).
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
Consider bypass continuation if no new matter is added
The difference between a bypass CIP and a bypass continuation is that no new matter is added in a continuation application. So a bypass continuation may be considered as an alternative to a US national stage application if, for example, Track One Prioritized Examination is desired.
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.
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.