[Pct] unsuccessful posting to the listserv (was Re: Paris Convention Art. 4(C)(4))
Carl Oppedahl
carl at oppedahl.com
Wed Nov 22 10:09:20 EST 2023
Thank you Andrew for posting (twice!).
Yes I see from the listserv archives
<https://oppedahl-lists.com/mailman/private/pct_oppedahl-lists.com/>
that your most recent successful posting to the PCT listserv (until
today) was on November 19.
I went into the delivery tracking system to look for the most recent
three times that "andrew at berksiplaw.com" tried to send email to
"pct at oppedahl-lists.com". The delivery tracking system lists these
dates and times:
* Nov 22, 2023, 7:31:07 AM
* Nov 19, 2023, 5:01:17 PM
* Nov 17, 2023, 7:57:19 PM
The delivery tracking system does not show any attempt on November 20.
Normally if somebody tries to post and is turned away, there will be a
"bounce" event in the delivery tracking log.
So this is an odd situation that I do not understand.
Carl
On 11/22/2023 7:30 AM, Andrew Berks via Pct wrote:
> [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 PCT1 filed 2023-03-30, claimed priority to ("considered withdrawn")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 application" because it has been withdrawn.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 the said previous application (Prov) has been withdrawn, etc...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 application that was "killed" - withdrawn etc and not used for a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
>
> FRESHIP 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 <http://www.freship.com/>
> berksiplaw.com <https://berksiplaw.com/>
>
> Direct: +1-845-558-7245
>
>
>
>
> 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 <http://freship.com><https://freship.com/>,
> berksiplaw.com <http://berksiplaw.com><https://berksiplaw.com/>
> LinkedIn <https://www.linkedin.com/in/andyberks/>
>
>
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