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

[Carl Oppedahl]

file another application and request restoration of priority?

On 11/17/2023 7:56 PM, Andrew Berks via Pct wrote:
> 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 withdrawn" for insufficient payment of fees, there is no way to revive 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 can be "considered withdrawn" for problems not related to fees, but 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 withdrawn with no recourse.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 the withdrawn PCT case can act as a regular national filing, but this 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
>
> FRESHIP 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 <http://www.freship.com/> 
> berksiplaw.com <https://berksiplaw.com/>
>
> Direct: +1-845-558-7245
>
>
>
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