[Pct] Priority Claim to Withdrawn PCT Application

[Andrew Berks]

I previously posted on this list in Nov. 2023 that a PCT application I
filed at the US RO was declared "withdrawn" over a misunderstanding about
fees. After three petitions to resolve this problem, the USPTO is refusing
to budge, and at this point I am up against the clock with the 30-month
deadline coming up on Sept. 30, 2024. In order keep as many rights as
possible, I filed a new PCT patent application in 2024 claiming priority to
the withdrawn PCT case that was filed one year before.

Two questions for this list:
1. Valid priority claim - is a withdrawn patent application a "regular
national filing" giving rise to a right of priority?
The 2024 PCT application claims priority to the "withdrawn" PCT
application. I believe this is a valid priority claim in view of the Paris
Convention Art. 4, providing that a priority claim can be made to an
earlier patent application ("a regular national filing") “whatever may be
the subsequent fate of the application.” So the concern is that a withdrawn
patent application is no longer a "regular national filing." I note however
that ePCT found the withdrawn case and allowed the filing to proceed. I
think the answer to my question above is "yes."

2. Can the 30-month deadline be tolled? If I continue this fight, either
with additional petitions or suing in the Federal Circuit, this fight could
easily blow past the 30 month deadline. Is it still possible to make
national phase filings? I am not aware of any way to toll this deadline.

Thanks for any comments.


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

Partner, 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
e: andrew at freship.com | w: www.freship.com berksiplaw.com  LinkedIn
<https://www.linkedin.com/in/andyberks/>

Direct: +1-845-558-7245
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