[Pct] PCT Procedure Warning - I learned the hard way

[Andrew Berks]

I just found out the hard way that if a Receiving Office (RO) issues a
declaration under PCT Art. 14(3) that a PCT application is "considered
withdrawn" for insufficient payment of fees, there is no way to revive the
case. Nothing in the PCT Treaty or Rules allows a reversal of this
declaration. See Rule 16bis.1(c).

There is also a declaration under Art. 14(4) whereby an application can be
"considered withdrawn" for problems not related to fees, but things can be
done to revive under this provision, see Rules 29.3 and 29.4.

I paid fees on Apr. 16, 2023 in a PCT application filed on Mar. 30, 2023.
It turns out the USPTO lowered the fees on Apr. 1, so the search fee for
the application filed Mar. 30 was higher - but I didn't know that. The
USPTO lowered fees on Jan. 1, 2023 and I thought this was across the board,
but later in January they amended the fee schedule and the PCT fees were
restored to the 2022 rates and weren't lowered until Apr. 1.

The RO issued an RO133 with an invitation for additional fees, and I
thought it was a mistake. We spoke to the PCT help desk (and didn't get
correct info) and I wrote a letter to the RO pointing out that I paid the
fees on the fee schedule. Without further explanation, the RO issued the
14(3) declaration (form RO117). We filed a petition and the petition
examiner got back to me explaining the fee adjustment situation, and the
impossibility of recovering from this problem.

Bottom line is I acted diligently at all times and paid the fees that I
thought were due, and now I am being told this patent application is
withdrawn with no recourse.

This is a very harsh rule. Nothing like this that permanently takes away
rights with no appeal or recovery procedure should be proper. Mistakes and
misunderstandings happen all the time and there should be procedures to
revive this kind of problem. This could happen even if the RO made a
mistake.

This situation doesn't automatically cause a loss of rights because the
application hasn't been published, so under the Paris Convention the
withdrawn PCT case can act as a regular national filing, but this puts the
client back one year (there was a provisional application here filed Mar.
30, 2022). If there had been a public disclosure during that year, we would
have a problem but fortunately that didn't happen here.

If anyone has an idea to fix this, LMK.



Andrew Berks, Ph.D., J.D. | Partner

Patent Attorney and IP Licensing

FRESH IP PLC

28 Liberty St 6th Fl

New York NY 10005 (US)

Main office: 11710 Plaza America Drive, Suite 2000, Reston, VA 20190 USA
e: andrew at freship.com | w: www.freship.com berksiplaw.com

Direct: +1-845-558-7245 <http://voice.google.com/calls?a=nc,%2B18455587245>
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