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Strategic Use of Continuation Applications in Patent Prosecution A 2024 Analysis

Strategic Use of Continuation Applications in Patent Prosecution A 2024 Analysis - PCT National Phase vs Bypass Continuation Entry to US

In the United States, inventors with international patent applications filed under the Patent Cooperation Treaty (PCT) face a choice: they can enter the national phase using the established 35 USC 371 route, or they can opt for the bypass continuation under 35 USC 111. While the traditional 371 route remains the most popular option, the bypass continuation has gained significant traction in recent years, its popularity rising from approximately 12.5% of national phase entries in 2015 to nearly 19% by 2020. This trend suggests that applicants are increasingly recognizing the strategic benefits of the bypass continuation, particularly its ability to introduce new material into the application, a valuable tool for adapting to evolving technologies and claims that may arise after the initial international filing date. This, however, comes with its own set of complexities. Choosing between these pathways is a strategic decision that reflects the applicant's broader patent protection goals and the competitive landscape they operate within. Inventors should thoroughly understand the differences between these options before making their choice.

The PCT National Phase and Bypass Continuation Entry options present inventors with distinct paths for navigating the US patent system. The PCT offers a more extended examination period, potentially leading to a stronger patent due to international searches. Bypass Continuation, on the other hand, allows direct entry into the US system, potentially speeding up the process and saving on fees for translations and local representation.

It's interesting to note that a significant number of PCT applications never reach the national phase, suggesting a potential lack of understanding or resources needed for the multi-jurisdictional filings. The Bypass Continuation approach helps inventors preserve their priority date, a key advantage, while refining claims based on examiner feedback.

Companies using the Bypass Continuation strategy tend to experience fewer office actions, resulting in faster and potentially more successful prosecution outcomes. However, the increasing focus on local patent laws might make solely relying on PCT filings problematic due to jurisdictional and language complexities, highlighting the need for a strategic approach.

It's fascinating to see the evolution of patent strategy with many applicants choosing to amend and refine their claims within the PCT entry phase. This indicates a dynamic approach, adapting to changing technologies and market demands.

After PCT applications, navigating individual country requirements can be complex, leading to resource diversions and potentially hindering international strategies. Bypass Continuations present a more streamlined approach.

While the number of PCT filings remains substantial, the increase in Bypass Continuation usage highlights a shift towards quicker patent approval, likely fueled by the fast-paced nature of technology and market entry requirements.



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