[Pct] Priority Claim to Withdrawn PCT Application (Roger Browdy)
Andrew Berks
andrew at freship.com
Fri May 24 16:11:22 EDT 2024
On further study, Scott Nielson raises an important point – whether the
Paris Convention Art. 4(C)(4) applies in my situation (the language he
used, “withdrawn, abandoned, or refused” etc. in is 4(C)(4)). This
provision is mandatory if the elements apply, by the use of the word
“shall” (4(C)(4) text omitted for brevity).
PC 4(C)(4) serves to further limit the applicability of PC 4(A) – the
general provision of the right of priority. The concern is that if 4(C)(4)
applies, then PCT1 cannot serve as a priority application to PCT2. If that
was true, I would lose 2 years of priority (based on my original
provisional filing date).
In my situation, PCT1 (filed March 30, 2023) has been withdrawn etc. but
*it has served as the basis for a priority claim* to PCT2 (filed March 29,
2024). So 4(C)(4) *does not apply.*
Also I commented a few days ago on PCT Applicant’s Guide 6.009 (which is
based on PCT Art. 11(4)): an international application which fulfills the
requirements necessary for it to be accorded an international filing date
[PCT1 meets this requirement] may be invoked as a priority application even
where the international application is considered withdrawn under the PCT
(for non-payment of fees or other reasons). My assertion is that the
conditions of the PC are fulfilled, so PCT Art. 11(4) also provides a basis
for a priority to claim to a withdrawn PCT that was otherwise properly
filed.
Conclusion: PCT1 is a valid priority application for PCT2.
There is also the question (that Scott and others have raised) that PCT1
has an RO101 listing a provisional filed on March 30, 2022, so the
existence of the 2022 provisional will not be a secret to anyone looking at
that RO101. Note I did not include a Cross Reference paragraph in the
specification of PCT1 so the 2022 provisional will only be known if the
RO101 is available.
However, the *2022 provisional is within the scope of 4(C)(4),* since the
provisional was abandoned effective March 31 2023, not laid open, and the
attempt of PCT1 to claim priority to the provisional failed because PCT1
was deemed withdrawn. There is no valid priority claim based on the 2022
provisional so 4(C)(4) applies, and the "subsequent application" referred
to in 4(C)(4) is PCT1.
In any event, the provisional is confidential (even the title is
confidential) because provisional patent applications are confidential
unless referred to in a later priority claim (which isn’t happening here –
priority patent applications (usually provisionals) are not published). So
no one else can access the contents of the 2022 provisional and it cannot
be used for anything even if 4(C)(4) did not apply.
My goal is to preserve a valid patent application in view of a patent
application that was involuntarily withdrawn by the USPTO Receiving Office.
So worst case here is I lose one year of priority. Not great but better
than losing two years or no valid patent application at all.
Thank you all for your helpful 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
On Thu, May 23, 2024 at 12:01 PM <pct-request at oppedahl-lists.com> wrote:
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> Today's Topics:
>
> 1. Priority Claim to Withdrawn PCT Application (Andrew Berks)
> 2. Re: Priority Claim to Withdrawn PCT Application (Roger Browdy)
> 3. Re: Priority Claim to Withdrawn PCT Application (Andrew Berks)
> 4. Re: Priority Claim to Withdrawn PCT Application (Andrew Berks)
> 5. Re: Priority Claim to Withdrawn PCT Application
> (Jeffrey Semprebon)
> 6. Re: Priority Claim to Withdrawn PCT Application (Scott Nielson)
> 7. Re: Priority Claim to Withdrawn PCT Application (David Boundy)
> 8. Re: Priority Claim to Withdrawn PCT Application (Scott Nielson)
> 9. Re: Priority Claim to Withdrawn PCT Application (Roger Browdy)
>
>
> ----------------------------------------------------------------------
>
> Message: 1
> Date: Wed, 22 May 2024 13:00:27 -0400
> From: Andrew Berks <andrew at freship.com>
> To: for users of the Patent Cooperation Treaty
> <pct at oppedahl-lists.com>
> Subject: [Pct] Priority Claim to Withdrawn PCT Application
> Message-ID:
> <CAEsYa5F=
> bbxV8cy4UuSeb28_ewxZZOGKfUHRoXYS-O5rozeERw at mail.gmail.com>
> Content-Type: text/plain; charset="utf-8"
>
> 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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> ------------------------------
>
> Message: 2
> Date: Wed, 22 May 2024 19:29:40 +0000
> From: Roger Browdy <RLBrowdy at browdyneimark.com>
> To: "For users of the PCT and ePCT. This is not for laypersons to seek
> legal advice." <pct at oppedahl-lists.com>
> Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application
> Message-ID:
> <
> BL0PR14MB3908514994D59655B862171ADCEB2 at BL0PR14MB3908.namprd14.prod.outlook.com
> >
>
> Content-Type: text/plain; charset="utf-8"
>
> 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<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
> -------------- next part --------------
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> ------------------------------
>
> Message: 3
> Date: Wed, 22 May 2024 15:55:07 -0400
> From: Andrew Berks <andrew at freship.com>
> To: Roger Browdy <RLBrowdy at browdyneimark.com>
> Cc: "For users of the PCT and ePCT. This is not for laypersons to seek
> legal advice." <pct at oppedahl-lists.com>, "Andrew H. Berks"
> <andrew at freship.com>
> Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application
> Message-ID:
> <
> CAEsYa5Gvk4BR8GwXYGit+uxaSWkzGWkYi9qO3_CW_ua+aHd3iw at mail.gmail.com>
> Content-Type: text/plain; charset="utf-8"
>
> 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
> >
> -------------- next part --------------
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>
> ------------------------------
>
> Message: 4
> Date: Wed, 22 May 2024 16:54:36 -0400
> From: Andrew Berks <andrew at freship.com>
> To: for users of the Patent Cooperation Treaty
> <pct at oppedahl-lists.com>
> Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application
> Message-ID:
> <CAEsYa5ELLyYY2mpPOs2scwMk9pnhWHgDj4i3a1d6=
> 6CM7QNMdw at mail.gmail.com>
> Content-Type: text/plain; charset="utf-8"
>
> 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
> >
> -------------- next part --------------
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>
> ------------------------------
>
> Message: 5
> Date: Wed, 22 May 2024 17:48:25 -0400
> From: Jeffrey Semprebon <jesemprebon at gmail.com>
> To: "For users of the PCT and ePCT. This is not for laypersons to seek
> legal advice." <pct at oppedahl-lists.com>
> Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application
> Message-ID:
> <CAO06Byff5N+=
> etnieNOtJDknvU97iQB4AR3FwU+8kDXWiYdxQQ at mail.gmail.com>
> Content-Type: text/plain; charset="utf-8"
>
> A couple of quick thoughts which may not be well-based upon further
> consideration (end of a long day):
>
> Assuming that you're good for Paris Convention, wouldn't there remain the
> issue of lacking co-dependency to rely on the withdrawn PCT for domestic
> benefit when the 2nd PCT is entered into the US National Phase?
>
> Timing of the approaching 30-month deadline raises a question of whether
> the withdrawn PCT itself claims benefit of an earlier application, in which
> case the withdrawn PCT would appear likely not the 1st application filed in
> order to qualify for the Paris Convention time limit of filing w/i one
> year.
>
>
> -Jeff
>
> Jeffrey E. Semprebon
> Semprebon Patent Services
> www.semprebonps.com
> 72 Myrtle Street
> Claremont, New Hampshire 03743
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>
> ------------------------------
>
> Message: 6
> Date: Wed, 22 May 2024 21:57:05 +0000
> From: Scott Nielson <scnielson at outlook.com>
> To: for users of the Patent Cooperation Treaty
> <pct at oppedahl-lists.com>
> Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application
> Message-ID:
> <
> SJ0PR11MB6575B76F52367F9EB67EEBE0B0EB2 at SJ0PR11MB6575.namprd11.prod.outlook.com
> >
>
> Content-Type: text/plain; charset="utf-8"
>
> 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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> ------------------------------
>
> Message: 7
> Date: Wed, 22 May 2024 18:18:52 -0400
> From: David Boundy <DavidBoundyEsq at gmail.com>
> To: "For users of the PCT and ePCT. This is not for laypersons to seek
> legal advice." <pct at oppedahl-lists.com>
> Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application
> Message-ID:
> <CAJwugqG9AVa2en_ZDJ0DEdir=
> wd_6P-n1pvv2e6JObP45tZYUA at mail.gmail.com>
> Content-Type: text/plain; charset="utf-8"
>
> I am troubled about something in this thread...
>
> The Paris Convention only applies when you have two different countries.
> Same-country-to-same-country is national law. A PCT application IS a
> national application. So be really cautious here.
>
> I haven't dug into the fact pattern we have here to be sure how it comes
> out, but some of the reasoning seems questionable to me.
>
> On Wed, May 22, 2024 at 5:48?PM Jeffrey Semprebon via Pct <
> pct at oppedahl-lists.com> wrote:
>
> > A couple of quick thoughts which may not be well-based upon further
> > consideration (end of a long day):
> >
> > Assuming that you're good for Paris Convention, wouldn't there remain the
> > issue of lacking co-dependency to rely on the withdrawn PCT for domestic
> > benefit when the 2nd PCT is entered into the US National Phase?
> >
> > Timing of the approaching 30-month deadline raises a question of whether
> > the withdrawn PCT itself claims benefit of an earlier application, in
> which
> > case the withdrawn PCT would appear likely not the 1st application filed
> in
> > order to qualify for the Paris Convention time limit of filing w/i one
> year.
> >
> >
> > -Jeff
> >
> > Jeffrey E. Semprebon
> > Semprebon Patent Services
> > www.semprebonps.com
> > 72 Myrtle Street
> > Claremont, New Hampshire 03743
> > --
> > Pct mailing list
> > Pct at oppedahl-lists.com
> > http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
> >
>
>
> --
>
>
> <https://www.iam-media.com/strategy300/individuals/david-boundy>
>
> *David Boundy *| Partner | Potomac Law Group, PLLC
>
> P.O. Box 590638, Newton, MA 02459
>
> Tel (646) 472-9737 | Fax: (202) 318-7707
>
> *dboundy at potomaclaw.com <dboundy at potomaclaw.com>* | *www.potomaclaw.com
> <http://www.potomaclaw.com>*
>
> Articles at http://ssrn.com/author=2936470 <http://ssrn.com/author=2936470
> >
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
>
> Click here to add me to your contacts.
> <https://www.keynect.us/requestCardAccess/USA500DBOUN?>
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>
> ------------------------------
>
> Message: 8
> Date: Wed, 22 May 2024 22:19:56 +0000
> From: Scott Nielson <scnielson at outlook.com>
> To: for users of the Patent Cooperation Treaty
> <pct at oppedahl-lists.com>
> Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application
> Message-ID:
> <
> SJ0PR11MB65750A75439E73A64DED9F5AB0EB2 at SJ0PR11MB6575.namprd11.prod.outlook.com
> >
>
> Content-Type: text/plain; charset="utf-8"
>
> 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
> -------------- next part --------------
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> >
>
> ------------------------------
>
> Message: 9
> Date: Thu, 23 May 2024 13:49:26 +0000
> From: Roger Browdy <RLBrowdy at browdyneimark.com>
> To: "For users of the PCT and ePCT. This is not for laypersons to seek
> legal advice." <pct at oppedahl-lists.com>
> Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application
> Message-ID:
> <
> BL0PR14MB3908FB3CCED940C439B7184EDCF42 at BL0PR14MB3908.namprd14.prod.outlook.com
> >
>
> Content-Type: text/plain; charset="utf-8"
>
> Apparently you can claim priority, but only for the subject matter of the
> PCT that was not disclosed in the earlier priority or benefit application.
>
> Roger
>
> From: Pct <pct-bounces at oppedahl-lists.com> On Behalf Of Scott Nielson via
> Pct
> Sent: Wednesday, May 22, 2024 6:20 PM
> To: for users of the Patent Cooperation Treaty <pct at oppedahl-lists.com>
> Cc: Scott Nielson <scnielson at outlook.com>
> Subject: Re: [Pct] Priority Claim to Withdrawn PCT Application
>
> 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<mailto: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
> <mailto: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<mailto:
> pct-bounces at oppedahl-lists.com>> on behalf of Andrew Berks via Pct <
> pct at oppedahl-lists.com<mailto: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
> <mailto:pct at oppedahl-lists.com>>
> Cc: Andrew Berks <andrew at freship.com<mailto: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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>
> Subject: Digest Footer
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