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

Wed Nov 22 09:30:21 EST 2023

[Resending - I sent this on Nov. 20 but it does not appear it was posted]

Scott is correct that in my scenario, there was a provisional (this may
have been in an offline discussion)  Here is the timeline:
Provisional (Prov) filed 2022-03-30
PCT1 filed 2023-03-30, claimed priority to ("considered withdrawn")
PCT2 filed 2024-03-30 - not yet filed. The plan is to treat PCT1 as a
priority filing in the event I cannot revive PCT1.

Scott argues here 4C4 applies in my case because PCT1 claimed priority to
the provisional, so I cannot just swap out PCT1 as the new "first
application" because it has been withdrawn.

Let me paraphrase 4C4 again using the provisional: A subsequent application
(PCT1) concerning the same subject as a previous first application (Prov)
... 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 (PCT1), the said previous application
(Prov) has been withdrawn, etc... and if it has not yet served as a basis
for claiming a right of priority. The previous application (Prov) may not
thereafter serve as a basis for claiming a right of priority.

When read this way, 4C4 reinforces the concept that a patent application
that was "killed" - withdrawn etc and not used for a priority claim -  can
be disregarded and treated as if it had never been filed. So an applicant
can file a subsequent application on the same subject matter and start the
right of priority clock. This is something we do all the time - file
provisionals and let them go for one reason or another without fear that
the provisional will surface as prior art.

In my case, the subsequent application will be PCT2 and the first
application will be PCT1. PCT1 will serve as a priority application, so 4C4
won't apply. I understand that I am giving up the provisional 2022-03-30
date here. I am not trying to keep the 2022 date, since that would reach
back two years which exceeds the right of priority which is only one year.
So my PCT2 priority claim will only be to PCT1.

Note also Bodenhausen comports with my analysis. Bodenhausen says the
reason this provision was adopted at the Lisbon conference in 1958 was
because first patent filings (what we now call provisionals) were often
crude - "the first application may be made in a hurry ... [and] does not
adequately represent the applicant's intentions. Failing a special
provision regulating this matter the applicant would be unable to replace
his application by a better one without losing the right of priority,
because the said application would not be the first concerning the same
subject." (Bodenhsausen p. 45 note b).

An argument that could get me into trouble is that if a person was to look
at the RO101 of PCT1 - it that was even made available to the public in a
withdrawn PCT case (note I did not add a reference to previously filed
cases in the first paragraph of PCT1) - you could argue that PCT1 was not
the first filing, in which case Prov will be prior art. But keep in mind
also that provisionals remain confidential unless they are the basis of a
priority claim, and my view is that the original priority claim of PCT1 is
void if PCT1 is withdrawn.

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
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On Mon, Nov 20, 2023 at 11:01 AM <pct-request at oppedahl-lists.com> wrote:

>
>
> Message: 3
> Date: Mon, 20 Nov 2023 00:56:25 +0000
> From: Scott Nielson <scnielson at outlook.com>
> To: "pct at oppedahl-lists.com" <pct at oppedahl-lists.com>
> Subject: Re: [Pct] Paris Convention Art. 4(C)(4)
> Message-ID:
>         <
> SJ0PR11MB65751576B3C1C0981095B0C9B0B4A at SJ0PR11MB6575.namprd11.prod.outlook.com
> >
>
> Content-Type: text/plain; charset="windows-1252"
>
> 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: 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>
>
> Voice/text: +1-845-558-7245
>
> Toll free: +1-866-913-3499
>
> Mailing address: 11710 Plaza America Drive Suite 2000, Reston, VA 20190
> (US)
>
> freship.com<https://freship.com/>, berksiplaw.com<https://berksiplaw.com/>
> LinkedIn <https://www.linkedin.com/in/andyberks/>
>
>
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