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I have a customer who wants to file US application. The situation is,

  1. He has a PCT application in pending.
  2. He has a Foreign application (Korea) within one year filing date.

He wants to file Continuation in Part US application with above two applications. I figured out there is a way, which is called bypass application, filing a nonprovisional application under 35 U.S.C. 111(a) claiming priority to the PCT application instead of entering national stage.

The question is how to fill out Domestic benefit and Foreign priority section in ADS in this case. I filled out the sections as below but please let me know if this is correct.

Domestic benefit

Continuity type:continuation in part of

Priority Application Number: PCT number

Foreign priority

Application number:Foreign application number

Thank you in advance for your answer.

  • As per wipo.int/pct/guide/en/gdvol2/annexes/us.pdf pages 14-15 (US 39 and 40) your understanding seems correct. – AD Adhikary Jul 18 '18 at 4:56
  • Why make a continuation-in-part vs a continuation? Also, are you a registered practitioner with the USPTO? If not, you should seriously think about referring your customer to someone who is. It is fine for an inventor to draft and file their own invention. It is not fine to do it for someone else. – George White Jul 19 '18 at 22:45
  • Is it even possible to claim prioity to a PCT application that already claims priority? The EPO wouldn't allow this, but the USPTO might be different. – DonQuiKong Jul 20 '18 at 9:35
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    To the U.S. a PCT application designating the U.S. is a U.S. application. There is not a limit on a chain of priority claims. "This application is a continuation of application PCT/USXXXX, that in turn claims priority from application YYYY" – George White Jul 20 '18 at 22:48
  • Thank you, AD Adhikary, for the detailed information in this case. It helped a lot to file the application !! – S Lee Jul 21 '18 at 1:23
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As per wipo.int/pct/guide/en/gdvol2/annexes/us.pdf pages 14-15 (US 39 and 40) your understanding seems correct.

Since comments are not of permanent nature, I have opted to put my previous comment as an Answer.

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