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

Fri Nov 17 23:53:40 EST 2023

Just a quick note on my way to bed.  If it's RO/US, look at
   Helfgott & Karas, PC v. Dickenson, 209 F. 3d 132,
https://scholar.google.com/scholar_case?case=2768330671748894744
   American Farm Lines v Black Ball Freight,  397 US 532, 539
https://scholar.google.com/scholar_case?case=5739546973400245400

and then let's talk tomorrow afternoon.

Petitioning to restore right of priority is the right place to start. I
would also contact Abe Hershkovitz immediately
http://www.hershkovitz.net/practitioners/abe-hershkovitz  Abe and I got a
practitioner out of similar hot water about five years
ago, PCT/US2015/030233

Do you have malpractice coverage?   They may cover the fees.

On Fri, Nov 17, 2023 at 11:17 PM Scott Nielson via Pct <
pct at oppedahl-lists.com> wrote:

> 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 months of the first PCT application being withdrawn and it would need to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 withdrawn.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
>
> 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
>
>
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