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

[Scott Nielson]

Thanks for pointing this out. Did you use ePCT to prepare the filing on 30 Mar 2023 and calculate the fees owed? I'm curious because if you did, then it would represent a hidden trap that could be more widespread.


Scott Nielson

801-660-4400

________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Andrew Berks via Pct <pct at oppedahl-lists.com>
Sent: Friday, November 17, 2023 7:56 PM
To: pct at oppedahl-lists.com <pct at oppedahl-lists.com>
Cc: Andrew Berks <andrew at berksiplaw.com>
Subject: [Pct] PCT Procedure Warning - I learned the hard way

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way that if a Receiving Office (RO) issues a declaration under PCT Art. 14(3) that a PCT application is "considered withdrawn" for insufficient payment of fees, there is no way to revive the case.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There is also a declaration under Art. 14(4) whereby an application can be "considered withdrawn" for problems not related to fees, but things can be done to revive under this provision, see Rules 29.3 and 29.4.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diligently at all times and paid the fees that I thought were due, and now I am being told this patent application is withdrawn with no recourse.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

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