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

[Scott Nielson]

My apologies. I inadvertently sent the previous email before it was complete (using a different keyboard)

In the scenario you described previously, there were three applications you were considering: (1) US Provisional (filed, now expired), (2) PCT1 (filed, claims priority to US Prov; current status is withdrawn), and (3) PCT2 (filing status unknown but would be filed within one year of PCT1, claim foreign priority to PCT 1).

The Paris Convention allows you to claim priority to the "first application" if the subsequent application is filed within a year of the first application. The problem you have is that the first application is the US provisional and it is more than since it was filed.

Article 4 allows you to change the first application to a later application but only if the applicable conditions are satisfied—i.e., the original first application (the US provisional) is abandoned, withdrawn, etc. without having served as the basis of a priority claim. Unfortunately, this is not applicable in this case because PCT1 claimed priority to the US provisional. You cannot just swap out PCT1 as the new "first application" because it has been withdrawn.


Scott Nielson

801-660-4400

________________________________
From: Scott Nielson <scnielson at outlook.com>
Sent: Sunday, November 19, 2023 5:51 PM
To: pct at oppedahl-lists.com <pct at oppedahl-lists.com>
Subject: Re: [Pct] Paris Convention Art. 4(C)(4)

In the scenario you described previously, there were three applications you were considering: (1) US Provisional (filed, now expired), (2) PCT1 (filed, claims priority to US Prov; current status is withdrawn), and (3) PCT2 (filing status unknown but would be filed within one year of PCT1, would claim foreign priority to PCT 1


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: Sunday, November 19, 2023 5:00 PM
To: pct at oppedahl-lists.com <pct at oppedahl-lists.com>
Cc: Andrew Berks <andrew at berksiplaw.com>
Subject: [Pct] Paris Convention Art. 4(C)(4)

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(PC) was recently pointed out to me, because I had a situation where I filed a PCT application (PCT1) that was withdrawn involuntarily (the details are irrelevant to this discussion).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<mailto:andrew at freship.com>

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