What is the proper way to file both USPTO and PCT application?

Question

I have two USPTO Provisional Applications. I'm about to file a USPTO non-provisional by claiming priority to those two Provisionals.

I'm also planning to file a PCT application. The specification, abstract and drawings are the same. But I have more than 100 claims in my PCT application. But only 20 claims in USPTO non-provisional to defer the costs.

Do I have to mention my non-provisional while filing PCT application? i.e. Do I have to claim priority to my newly filed USPTO non-provisional too in PCT?

Note: I'm not a US national.

Answer 1

Whether you have to claim priority in the PCT application from the US non-provisional depends on two factors:

• Does the US non-provisional disclose subject-matter not contained in the two US provisional applications?

• Will the US non-provisional be filed before the PCT application (i.e. will it have an earlier filing date)?

If the answer to the first is NO, then you do not need to claim priority from the US non provisional because all the subject-matter benefits from the filing date of one of the two US provisionals.

If the answer to the first is YES, then it depends on the answer to the second: if the answer to the second is YES, then you should claim priority from the US non-provisional too because the newly disclosed subject-matter can benefit from that earlier filing date; if the answer to the second is NO, then you cannot claim priority from it because it does not have an earlier filing date than your PCT application, which is a requirement for claiming priority.

Answer 2

Note - If you are not in the U.S. you need to file the PCT application either with the IB in Geneva or with your local patent office, not with the USPTO.

Specifically regarding the 100 claims in the PCT application. You might want to do something to keep the 80 that are not in the U.S. application from being considered "new matter" if you ever wanted to amend the U.S. application to include some of them in the future. Or use them in a continuation or a divisional. If the PCT application is filed first you can "incorporate it by reference" in the U.S. application. Another thing that has been done is to re-write the 80 claims in a form that makes them not claims. "Aspects of the invention include . . . " followed by numbered "aspects" that look a lot like claim but are not claims.

Alternatively, you can enter the U.S. National Stage or file a bypass U.S. application based on the PCT at some point in the future if content from the PCT is needed in a U.S. application. Or just have a future divisional claim priority to both the U.S. parent and to the PCT.