Monday, January 09, 2006

PCTs and US national phase applications

from a board:

Client funding crisis so I file PCT and US without paying fees both claiming priority to previously filed comprehensive provisional.

Client finds $ to pay PCT fees within 30 days. Great. Foreign rights preserved.

If I DON'T pay the fees in the concurrently filed U.S. case, it goes abandoned. Can I still file yet another US nationalization application by the 30mos date as if the first US application had never existed? (Side note OK to do so again w/o paying fees)? Seems somehow "wrong"?

Sorry, newbie and PCT help desk is closed. Anonymous b/c I've asked several others down the hallway w/no success. TIA.

I don't see any impediment (from a priority point of view) of abandoning the concurrently-filed U.S national app. What seems so wrong about this? The PCT is a procedural device that allows you to pay $$$ to buy more time to file national applications -- which is exactly what you are thinking about doing.

One side note -- did you file the US national app at least one day before the PCT? If so, you get a big discount on the PCT Int'l Search Fee for US as ISA. Last time I checked, it was a $700 discount. If you client is a small entity, you can keep the US national app. active and hopefully get a substantive Office action prior to 30-mos. for no additional cost. If not....neeeeeevermind.

[NOTE: A PCT application is a US application; one can file continuations from it during its lifetime. One example of this is the so-called "bypass route."]


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