The name “Bypass Application” came about by how a US/PCT application is filed – i.e., when a bypass application is filed, the National Stage of a PCT application is bypassed. Simply put, instead of filing a regular US national phase application, a new US application that is a continuation or continuation-in-part of the previously-filed & currently pending PCT application (with at least one common inventor) is filed. Additional requirements also apply and should be reviewed before the filing of an application.
When the national stage of a PCT application is going to be filed in the US, there are several decisions that have to be made. The first, and most important, is what kind of application should be filed? Should a regular national phase application be filed or should a bypass application be filed? The decision here is basically a legal one, but there are times when we need to be able to provide procedural information to our attorney to help the decision making process. We also have to figure out what paperwork needs to be prepared.
Have you ever been in this situation? You are just about ready to file a regular US national phase application when you are told … “Wait! We need to amend the specification!” I have been there and it wasn’t fun. Other than closing your eyes and sighing (at the least) the first thing that you need to do is to figure out if you need new paperwork. If the “amendment” consists of new matter, the application cannot be filed as a regular national phase application. Since a PCT application is a [virtual] application in every country that is a member of the PCT, that PCT application IS our US application. So this could be an excellent time to file that bypass application you always wanted to file!
Below is a list of the basic procedural differences between a bypass and non-bypass application.
|BYPASS US APPLICATION||NON-BYPASS – i.e., regular US national phase|
|Can pay the fees after the filing of the application with a surcharge||Currently all the fees must be paid when the application is filed (but this may be changing)|
|A complete application must be filed||If the PCT was filed in the USRO (or an IB/308 was issued), a copy of the PCT application does not need to be filed|
|If there is foreign priority, certified copies of the foreign applications will most likely need to be filed||No copies of the priority document need normally be filed|
|The filing date is the date the application is actually filed||The filing date is the filing date of the PCT application|
|Examined under the US restriction practice||Examined under the Unity of Invention standard|
The above list is not all inclusive, but is a basic summary of the differences between the two types of applications. There are lots of legal reasons why and why not a bypass application should be filed instead of a regular national phase application, including legal decisions such as whether or not new matter will be added, whether there is an issue with prior art, etc. For further information on bypass applications see MPEP 1895.
When you prepare a bypass application, the paperwork for a regular US application should be prepared – but be very careful to claim “priority” to the PCT application (and its parents) and not indicate that it is a “national phase” application.
I hope that this clarifies this issue a little – it can be very confusing! Let me know if you have any questions.
As usual, this is not legal advise, but helpful hints on patent prosecution.