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[terrier05]

I was hoping someone could help me out with this PCT question, of which I have very little experience with...here is the situation:

PCT 1 was filed in 2006. It later entered into the US national phase and is currently pending at the USPTO.

PCT 2 was filed in 2011, but doesn't request priority to PCT 1.

When entering the US national phase for PCT 2, is it possible to have the US national phase application for PCT 2 to be a continuation in part of PCT 1 that entered into the US national phase and is still pending at the USPTO?

[bleedingpen]

I think you can file a "bypass continuation" (in lieu of a national stage) and claim priority to both PCT 2 and the national phase app of PCT 1.

[terrier05]

Wow, I didn't even know about a bypass continuation. Thanks for the help!

[bleedingpen]

Wow, I didn't even know about a bypass continuation. Thanks for the help!

Many attorneys don't!  I love bypass continuations--- much less paperwork. 

[JustAnotherExaminer]

Bypass continuations are the bomb for non-English-published PCTs cause the application gets a 102e date as of its US filing date.  Whereas if you went national stage, the application never gets a 102e date (according to the MPEP).

You still get the domestic benefit claim, and I still get a 102e date.  Booya.

Sponsored by examiners-for-bypass-continuations-of-non-english-published-PCTs.

[bleedingpen]

Bypass continuations are the bomb for non-English-published PCTs cause the application gets a 102e date as of its US filing date.  Whereas if you went national stage, the application never gets a 102e date (according to the MPEP).

You still get the domestic benefit claim, and I still get a 102e date.  Booya.

Sponsored by examiners-for-bypass-continuations-of-non-english-published-PCTs.

So bypass continuations are better as also being defensive publications, correct?

[JustAnotherExaminer]

Bypass continuations are the bomb for non-English-published PCTs cause the application gets a 102e date as of its US filing date.  Whereas if you went national stage, the application never gets a 102e date (according to the MPEP).

You still get the domestic benefit claim, and I still get a 102e date.  Booya.

Sponsored by examiners-for-bypass-continuations-of-non-english-published-PCTs.

So bypass continuations are better as also being defensive publications, correct?

Allegedly.  According to the MPEP. But not according to USC and CFR and my interpretations.

MPEP 706.02(f). Example 5.  Versus MPEP 706.02(f). Example 8.

Example 5:
This asserts that a US-PGPUB of a 371 national stage application claiming the benefit of an international application filed after the magic 2000 date but NOT published in English has no 102e date. Not the IA filing date nor the 371 date.  No 102e date whatsoever.

In order to come to this finding you have to look at 35usc 102e's language.  The MPEP, in this section, interprets "an international application filed under the treaty defined in section 351(a)" to include every stage resulting from the International Application.  That is, it interprets the international stage to be "an international application" and interprets the national stage to be "an international application".

On the contrary, 37 CFR 1.9 (see MPEP 1893) defines "national application" as being either a normal 35usc111 filing OR a national stage entry under 371. Using this definition and the first part of 35 USC102e ("the invention was described in - (1) an application for patent, published under section 122(b), by another filed in the United States..."), one may successfully find that the 371 national stage entry is also a national application for patent in the United States. And thus its filing date (ie, the 371 date) is a 102e date.