[Pct] Filing at RO/IB and electing ISA/US - problem

[Andrew Berks]

This is in response to Carl Oppedahl's suggestion that my withdrawn case
problem may have been averted if I filed this case at the RO/IB with ePCT.
I didn't do that - I filed at the RO/US with an ePCT zip file.

I had a problem earlier this year in another case filed at the RO/IB and
electing the ISA/US. First of all, I frequently recommend the ISA/US with
small entity clients because the search fee is lower with small
entity prices. The problem was that the ISA/US made a unity of invention
objection and issued an invitation to pay an additional search fee. The
client was OK with this, but this case did not appear on Patent
Center/EFSweb/Private PAIR - because it was filed at RO/IB. We had to pay
the fee with a credit card form that was faxed, which is really ridiculous.
Putting full credit card info on a paper and faxing it is not secure. The
fee payment form was clearly marked with what the money was for - the
additional search fees.

But the people who do the searching didn't get the message that the
additional fees were paid and issued the WOSA without searching the second
invention. Bottom line - this bad WOSA was issued in March 2023 and as of
today (Nov. 21, 2023) this situation is still not resolved.

So now I am back to filing the ePCT zip files at the US/RO if we are going
to use the ISA/US.

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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---------- Forwarded message ---------
From: Carl Oppedahl <carl at oppedahl.com>
Date: Fri, Nov 17, 2023 at 9:19 PM
Subject: Re: [Pct] PCT Procedure Warning - I learned the hard way
To: For users of the PCT and ePCT. This is not for laypersons to seek legal
advice. <pct at oppedahl-lists.com>


I bet this would never have gone wrong if the case had been filed at the
RO/IB via ePCT.
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withdrawn" for insufficient payment of fees, there is no way to revive the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).
 ...


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

Partner, Fresh IP PLC

New York, New York 10004 (US)

andrew at freship.com

Voice/text: +1-845-558-7245
<http://voice.google.com/calls?a=nc,%2B18455587245>
<http://voice.google.com/calls?a=nc,%2B18455587245>
<http://voice.google.com/calls?a=nc,%2B18455587245>
<http://voice.google.com/calls?a=nc,%2B18455587245>
<http://voice.google.com/calls?a=nc,%2B18455587245>

Toll free: +1-866-913-3499
<http://voice.google.com/calls?a=nc,%2B18669133499>
<http://voice.google.com/calls?a=nc,%2B18669133499>
<http://voice.google.com/calls?a=nc,%2B18669133499>
<http://voice.google.com/calls?a=nc,%2B18669133499>
<http://voice.google.com/calls?a=nc,%2B18669133499>

Mailing address: 11710 Plaza America Drive Suite 2000, Reston, VA 20190 (US)

freship.com, berksiplaw.com LinkedIn
<https://www.linkedin.com/in/andyberks/>
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