[Pct] Priority Claim to Withdrawn PCT Application

[Roger Browdy]

A withdrawn PCT application is as if it has never been filed.  You cannot rely on it for priority or benefit purposes.  You cannot revive it as a US application.  This happened to us recently, unfortunately.  A new PCT could start a new Paris priority period from its date of filing, but only for content of the original PCT that was not in the priority or benefit application.

Roger

From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Andrew Berks via Pct
Sent: Wednesday, May 22, 2024 1:00 PM
To: for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>
Cc: Andrew Berks <andrew at freship.com>
Subject: [Pct] Priority Claim to Withdrawn PCT Application

I previously posted on this list in Nov. 2023 that a PCT application I filed at the US RO was declared "withdrawn" over a misunderstanding about fees.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 In order keep as many rights as possible, I filed a new PCT patent application in 2024 claiming priority to the withdrawn PCT case that was filed one year before.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 Valid priority claim - is a withdrawn patent application a "regular national filing" giving rise to a right of priority?
The 2024 PCT application claims priority to the "withdrawn" PCT application.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 So the concern is that a withdrawn patent application is no longer a "regular national filing." I note however that ePCT found the withdrawn case and allowed the filing to proceed.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)

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Direct: +1-845-558-7245
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