Is national stage the only way a PCT application can enter the US?

No, an alternative option to enter the US from a PCT application is called a bypass application. A bypass application is filed as a US continuing application claiming domestic priority to the PCT application as if it were a US parent nonprovisional application. In other words, the PCT is considered a US parent application and the bypass a US child application. PCT applicants can file two types of bypass continuing applications in the US:

  1. Bypass Continuation – appropriate when no new matter is being added.
  2. Bypass CIP (Continuation-in-part) – appropriate when new matter in relation to the PCT application is being added to the US application.

When is the deadline for filing a PCT bypass application in the US?

A bypass application is due on the same 30-month deadline as a typical US national stage application. The general rule for continuing child applications is that they must be filed while the parent application is pending. For US purposes, a PCT application would be considered a parent application that is abandoned after 30 months from the priority date.

How is bypass similar to PCT national stage?

Bypass applications share many similarities with US national stage applications including:

  • same deadline (30 months from priority date)
  • use the PCT published application for the initial filing
  • maintain same priority dates
  • expiration of patent term (unless you claim only foreign priority and not domestic priority, in which case the patent term will be longer)

How is bypass different from PCT national stage?

Bypass applications have less limitations than US national stage applications. Here are certain key differences:

  • Track One Prioritized Examination is available for bypass applications
  • certified copy of foreign priority application required
  • new matter may be added in a bypass CIP
  • USPTO filing fees (bypass is generally a bit more expensive than national stage)
  • DOCX filing requirement starting Jan. 1, 2023

Why file bypass instead of national stage?

Two compelling reasons for filing a bypass application instead of a national stage application is if the applicant desires Track One or wants to add new matter.

Adding new matter may be helpful if the PCT application is relatively scant in detail. The specifications of non-US PCT applications are often less detailed than those of typical US patent applications drafted by US patent attorneys. Such details may come in handy when attempting to claim features to get around prior art.

Is bypass basically a continuing application?

A bypass application is a continuing application of a PCT application which is considered the parent. Though a bypass application is technically a child application, the bypass would still be the first nonprovisional application that can mature into a granted US utility patent.

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Vic Lin

Startup Patent Attorney, Cofounder at Innovation Capital Law Group
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