[Pct] Paris Convention Art. 4(C)(4)

[Andrew Berks]

This provision of the Paris Convention (PC) was recently pointed out to me,
because I had a situation where I filed a PCT application (PCT1) that was
withdrawn involuntarily (the details are irrelevant to this discussion). A
potential way to recover from this situation would be to file a second PCT
application (PCT2) on the anniversary of the PCT1 filing date.

This should be a good plan under the PC Art. 4(A)
<https://www.wipo.int/wipolex/en/text/288514#P83_6610>: its a duly filed
regular national patent application, and it should give me a right to
priority "whatever may be the subsequent fate of the application" (which in
my case, PCT1 was withdrawn).

But Art. 4(C)(4) seems to directly contradict this: 4(C)(4) states that a
subsequent application (here PCT2) *shall *be considered as the first
application, of which the filing date shall be the starting point of the
period of priority, if, at the time of filing the subsequent application,
the previous application (here PCT1) has been withdrawn, abandoned, or
refused, without having been laid open to public inspection and without
leaving any rights outstanding. The previous application *may not
thereafter serve as a basis for claiming a right of priority*. (paraphrased
slightly and emphasis added).

The use of the word "shall" in 4(C)(4) seems to directly contradict 4(A).
Bodenhausen states that the phrase in 4(A)(3) "whatever may be the
subsequent fate of the application" means the right of priority subsists
when the first application is withdrawn, abandoned or rejected - which is
what happened to PCT1.

So a plain reading of 4(C)(4) seems to mean that PCT2 cannot in any
circumstance (use of the word "shall") claim priority to PCT1 if PCT1 is
withdrawn, abandoned or rejected. So what happened to the "subsequent fate"
language?

The only solution that makes sense here is that 4(C)(4) is optional. That
means that a PCT2 can optionally disregard a PCT1 if the conditions of
being withdrawn, etc. are met, because PCT1 is a dead patent application,
but PCT2 can still claim priority to PCT1, regardless of the subsequent
fate of PCT1, if the applicant so chooses.


Andrew H. Berks, Ph.D., J.D.

Partner, Fresh IP PLC

New York, New York 10004 (US)

andrew at freship.com

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