[Pct] Priority Claim to Withdrawn PCT Application

[Andrew Berks]

So what happened when you tried to claim priority to the withdrawn PCT
application? If what you say is correct, I don't understand is why ePCT let
me add the withdrawn case to the RO101 of the new case.


*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


On Wed, May 22, 2024 at 3:30 PM Roger Browdy <RLBrowdy at browdyneimark.com>
wrote:

> A withdrawn PCT application is as if it has never been filed.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 *Subject:* [Pct] Priority Claim to Withdrawn PCT Application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 filed at the US RO was declared "withdrawn" over a misunderstanding about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 the withdrawn PCT case that was filed one year before.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 Valid priority claim - is a withdrawn patent application a "regular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 The 2024 PCT application claims priority to the "withdrawn" PCT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 So the concern is that a withdrawn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)
>
> 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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