[Pct] Priority Claim to Withdrawn PCT Application

[Andrew Berks]

Further to my message from earlier today, the remarks from Roger Browdy
prompted me to dig a little deeper and I found PCT Applicant's Guide para.
6.009:  ... an international application which fulfills the requirements
necessary for it to be accorded an international filing date* may be
invoked as a priority application under the Paris Convention* for the
Protection of Industrial Property (if the conditions laid down by that
Convention are fulfilled) *even where the international application is
considered withdrawn* under the PCT (for non-payment of fees or other
reasons). [Emphasis added]. See also PCT Art. 11(4):  Any international
application fulfilling the requirements listed in items (i) to (iii) of
paragraph (1) [containing all parts of a patent application] shall be
equivalent to a regular national filing within the meaning of the Paris
Convention for the Protection of Industrial Property.  This provision makes
no mention of the effect of withdrawal.

So I think I am good with a priority claim to a withdrawn PCT patent
application. This confirms the answer to my question 1 is "yes."

This also points up a sneaky poor man's provisional filing - file a PCT
case and don't pay the fees. If the patent application meets the
requirements of PCT Art. 11(1) items (i) to (iii), then under the Paris
Convention, such a case can be used as a priority filing. However, I will
not recommend doing that.

Re: my question 2, I see that PCT Art. 48 addresses delays in meeting time
limits but it does not provide a general excuse where there is no force
majeure, communications failure, etc. So a dispute with a receiving office
is still a problem.


*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 1:00 PM Andrew Berks <andrew at freship.com> wrote:

> 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 filed at the US RO was declared "withdrawn" over a misunderstanding about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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