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

[Scott Nielson]

It seems that filing another PCT application and requesting restoration of priority could work to restore priority in the U.S. all the way back to the provisional. The new PCT application would need to be filed within two months of the first PCT application being withdrawn and it would need to claim priority to the first PCT application under 35 USC 120 (e.g., the new PCT application is a continuation of the first PCT application).

A request for restoration of priority to the first PCT application could be filed and, if granted, should fix the priority to the first PCT patent application and the underlying provisional patent application for purposes of the US.

I suspect (but don't really know) that this procedure would not fix the priority claim in other countries given that the first PCT application is considered the national application in those countries and it was withdrawn. It seems doubtful that you can file a new PCT application claiming priority to the first PCT application and fix everything with a request for restoration of priority. However, this is a question best posed to an attorney in each country where national phase applications are of interest.

The original plan of claiming Paris Convention priority to the first PCT application is problematic due to Article 4(C)(4) of the Paris Convention (link<https://www.wipo.int/wipolex/en/text/288514#P83_6610>). It seemingly prevents any foreign applications from claiming priority to the first PCT application. If the first PCT application contained some new matter relative to the provisional patent application, then you could file foreign applications directed to the new matter and claiming priority to the first PCT application.


Scott Nielson

801-660-4400

________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Carl Oppedahl via Pct <pct at oppedahl-lists.com>
Sent: Friday, November 17, 2023 8:17 PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com>
Cc: Carl Oppedahl <carl at oppedahl.com>
Subject: Re: [Pct] PCT Procedure Warning - I learned the hard way


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way that if a Receiving Office (RO) issues a declaration under PCT Art. 14(3) that a PCT application is "considered withdrawn" for insufficient payment of fees, there is no way to revive the case.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

FRESH IP PLC

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