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I filed a PCT application in 2019.

I filed a US application without claiming priority from PCT application.

My PCT application is not expired yet.

In hindsight only I realised, some of the claims found in my PCT application looks very strong. I noticed a company violating my provisional rights found in that PCT application.

Since I already filed the US application for the subject matter found in my PCT, I don't want to go for a continuation.

Is there a way I can make USPTO amendment to claim priority from the PCT application?

If that is possible, then I believe I also need to make corrections to ADS. Is that correct?

Thanks

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  • Does the specification of the U.S. application have support for the PCT claims? – George White Oct 20 '20 at 18:51
  • @GeorgeWhite Yes. Both PCT and US Application has same content. – PrivateUser Oct 20 '20 at 19:01
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    You could just amend your U.S. application to add the PCT claims that you like. If the specifications are the same and the PCT has support for the claims then the U.S. application has support for the claims. – George White Oct 20 '20 at 19:44
  • @GeorgeWhite Thanks. – PrivateUser Oct 20 '20 at 20:51
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You may be able to claim priority to the PCT application if it designated the United States. The USPTO has a petitions webpage that provides information concerning the petition you should file to claim priority to the PCT application. Bear in mind though that in the petition you must state that the delay in claiming priority was unintentional and you must pay a petition fee, which is $525.00 for micro entities, $1,050.00 for small entities, or $2,100.00 for all other entities.

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  • Thanks for the answer. It is always nice to meet people who provide credible answer. – PrivateUser Oct 20 '20 at 19:37
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    If push comes to shove and a future assertion of your rights depends on this delayed claim of priority, then the accuracy of your statement under this may be questioned by the other side "(3) A statement that the ENTIRE DELAY between the date the benefit claim was due under 37 CFR 1.78 (d)(3) of this section and the date the benefit claim was filed was unintentional. The Director may require additional information where there is a question whether the delay was unintentional." – George White Oct 20 '20 at 19:49

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