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

[David Boundy]

The $200 micro-entity discount for fees *to the RO* is just not worth it to
deal with all the the PTO's stupid software and all unpredictable ways the
US Patent Office finds to screw things up.  (Search fee, yes.  RO fee heck
no.)

Is there a plausible reason to file in RO/US other than foreign filing
license issues?  And those can be dealt with via a provisional that
overlaps in time with getting your formal drawings?

On Wed, Nov 22, 2023 at 11:01 AM Andrew Berks via Pct <
pct at oppedahl-lists.com> wrote:

> This is in response to Carl Oppedahl's suggestion that my withdrawn case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
>
> 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/>
>
>
>
> ---------- 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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>


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