[Pct] Priority Claim to Withdrawn PCT Application

Wed May 22 18:19:56 EDT 2024

I went back and looked at the earlier email thread about this issue. Here is the timeline you provided:
Provisional (Prov) filed 2022-03-30

PCT1 filed 2023-03-30, claimed priority to ("considered withdrawn")

PCT2 filed 2024-03-30 - not yet filed. The plan is to treat PCT1 as a priority filing in the event I cannot revive PCT1.
PCT2 can claim foreign priority to PCT1. The issue you have is Paris Convention Article 4, which prohibits PCT1 from being considered the first application unless certain conditions are met—i.e., at the time of filing PCT1 the provisional must have been "withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding," the provisional must "not yet served as a basis for claiming a right of priority," and the provisional "may not thereafter serve as a basis for claiming a right of priority."

I cannot see how the fact pattern you provided satisfies those conditions.

Also, if you claim foreign priority to PCT1, then you will need to provide a copy of PCT1 in the file of PCT2, which means anyone can review PCT1 and see that it claimed priority to an even earlier provisional application.

Scott Nielson

801-660-4400

________________________________
From: Scott Nielson <scnielson at outlook.com>
Sent: Wednesday, May 22, 2024 3:57 PM
To: for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>
Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application

Your U.S. application can claim priority to the PCT application under the Paris Convention, but only if the U.S. application is filed within 12 months of the filing date of the PCT application. If the U.S. application is filed more than 12 months after the PCT application, then you must claim priority under 35 USC 120, which requires that the applications be copending—i.e., the PCT application cannot be abandoned or withdrawn when you file the U.S. application.

Scott Nielson

801-660-4400

________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Andrew Berks via Pct <pct at oppedahl-lists.com>
Sent: Wednesday, May 22, 2024 2:54 PM
To: for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>
Cc: Andrew Berks <andrew at freship.com>
Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application

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<mailto:andrew at freship.com> | w: www.freship.com<http://www.freship.com/> berksiplaw.com<https://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<mailto: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<mailto:andrew at freship.com> | w: www.freship.com<http://www.freship.com/> berksiplaw.com<https://berksiplaw.com/>  LinkedIn<https://www.linkedin.com/in/andyberks/>

Direct: +1-845-558-7245
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