[Pct] Priority Claim to Withdrawn PCT Application (Roger Browdy)
David Boundy
DavidBoundyEsq at gmail.com
Sat May 25 14:39:51 UTC 2024
I think youre still missing one little thing, and it pulls the whole thing
down. The "abandoned or withdrawn" had to leave "no rights outstanding"
*before* you filed any subsequent application. The claim in PCT1 back to
the provisional is an irremediable defect in any strategy that depends on
PCT1 being the "first" application for Article 4 purposes.
On Fri, May 24, 2024, 4:12 PM Andrew Berks via Pct <pct at oppedahl-lists.com>
wrote:
> 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 used, “withdrawn, abandoned, or refused” etc.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 In my situation, PCT1 (filed March 30, 2023) has been withdrawn etc.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 where the international application is considered withdrawn under the PCT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 for a priority to claim to a withdrawn PCT that was otherwise properly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 --------------
>> An HTML attachment was scrubbed...
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>> http://oppedahl-lists.com/pipermail/pct_oppedahl-lists.com/attachments/20240522/57631e3d/attachment-0001.htm
>> >
>>
>> ------------------------------
>>
>> 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
>> -------------- next part --------------
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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 --------------
>> An HTML attachment was scrubbed...
>> URL: <
>> http://oppedahl-lists.com/pipermail/pct_oppedahl-lists.com/attachments/20240522/18234362/attachment-0001.htm
>> >
>>
>> ------------------------------
>>
>> 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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>> Pct at oppedahl-lists.com
>> http://oppedahl-lists.com/mailman/listinfo/pct_oppedahl-lists.com
>>
>>
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>>
>> End of Pct Digest, Vol 7, Issue 7
>> *********************************
>>
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> Pct at oppedahl-lists.com
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