[Pct] retroactive effect in USA of 'disclaiming priority' Withdraw of Priority Claim Under Rule 90bis.3

[Rick Neifeld]

Comment only.  Entitlement to an intranational claim to rights under a
prior filing are controlled by national law.  See the PCT article defining
the scope of priority.
Rick Neifeld, Ph.D., Patent Attorney, KN4JIE, Cert 144, mobile signature.
If this is an attorney client communication, it is confidential and
privileged.

On Sun, Jun 8, 2025, 8:48 AM Bob Barber via Pct <pct at oppedahl-lists.com>
wrote:

> I have a situation similar to Bill's, but which differs in two important
> ways: the US application is not a bypass but a straight 371; and the US
> patent has already been issued. More specifically:
>
> Applicant has a PCT application that claims the benefit/priority of a US
> provisional.  The 30 month deadline is approaching.
> Applicant entered us national stage (371 application) early and already
> has an issued us patent.
> Applicant now wants to withdraw the priority claim in the PCT in order to
> delay the 30-month deadline for national phase applications.
> As Bill noted, pct rule 90bis.6 (a)
> <https://www.wipo.int/pct/en/texts/rules/r90bis.html#_90bis_6> says
>
> "(a)  Withdrawal under Rule 90*bis* of the international application, any
> designation, any priority claim, the demand or any election shall have no
> effect in any designated or elected Office where the processing or
> examination of the international application has already started under
> Article 23(2) or Article 40(2)."
>
> So it seems that per rule 90*bis*.6, withdrawal of the priority claim in
> the still-pending PCT application will not affect the benefit claim in the
> USA, since that benefit claim was made before withdrawal of the priority
> claim in the PCT application. That's good, b/c the applicant doesn't want
> to forego its benefit/priority claim in the USA.
> However, I don't find PCT rule 90*bis*.6 written into the statute in the
> USA.  So in principle, an adverse party may later assert that the carve-out
> in PCT rule 90*bis*.6 doesn't apply in the USA, since the USA never
> enacted Rule90*bis*.6, and therefore the withdrawal of the priority claim
> in the still-pending PCT means that the issued US patent (a 371 of the PCT)
> is not entitled to the claimed benefit date.
> My response would be two-fold.
> First, rule 90*bis*.6 *does* apply, even in the absence of explicit US
> domestic legislation saying so, and so the withdrawn priority claim has no
> effect in the USA since national phase was already effected before the
> withdrawal.
> Second, alternatively, if they want to assert that the withdrawal counts
> in the USA, I'd say that 90*bis*.6 refers to a *priority* claim under
> Paris Article 4, and the *benefit* claim in the USA was not made under
> the Paris convention but rather under domestic US legislation, so the
> withdrawal of the *priority* claim per 90*bis*.6 is irrelevant in the
> USA, since the US *benefit* claim was never withdrawn.
>
> Anyone see holes in this?
>
> Bob
> On Tuesday, May 20, 2025 at 10:24:00 AM GMT+3, William Ahmed via Pct <
> pct at oppedahl-lists.com> wrote:
>
>
> Dear List,
> My question is below under "MY QUESTION TO THE LIST."
>
> BACKGROUND
>
> (A) On Jan 15, 2023, we filed a US provisional  -- serial number 63/XXX,XXX
> (B) On Jan 15 2024, we refiled the US provisional as a PCT (serial number
> PCT/IB2024/ABCDEF), claiming Paris convention priority to the US
> provisional 63/XXX,XXX
> (C)  In Feb 2024 the PCT entered the USA as a 111 bypass as US
> non-provisional 18/ZZZ,ZZZ
> with the following two two domestic benefit claims
>
> (1) 18/ZZZ,ZZZ is a CON of PCT/IB2024/ABCDEF filed on Jan 15, 2024
> (2) PCT/IB2024/ABCDEF claims priority to US provisional 63/XXX,XXX filed
> on Jan 15, 2023
>
> NOTE - the invention was NOT disclosed by the client before July 2024 when
> WIPO published PCT/IB2024/ABCDEF
>
>
> SITUATION NOW
>
> (i) US non-provisional 18/ZZZ,ZZZ is pending and has not received an
> office action.  A filing receipt with the both domestic claims mailed in
> March 2024
> (ii) the 30 month deadline of PCT/IB2024/ABCDEF is on July 15, 2025.
> (iii) the client has absolutely NO money for non-USA national-stage
> entries. They used to have money - now it's gone
> (iv) the client is optimistic that they will get money in late 2025 or
> early 2026
> (v) the client wants to Withdraw the Priority Claim [Under Rule 90bis.3]
> to US provisional 63/XXX,XXX [filed Jan 15, 2023] - this would reset the
> PCT's clock,
> and the national-phase entry deadline of PCT/IB2024/ABCDEF would move
> from July 2025 to July 2026
>
>
> MY CONCERN
>
> If we withdraw priority in WIPO/PCT, I am concerned about 111 bypass filed
> in Feb 2024
> There is no direct domestic benefit claim from the 111 bypass to the US
> provisional - the domestic benefit claim of the 111 bypass to the US
> provisional is "via the PCT"
>
> MY QUESTION TO THE LIST -->
>
> If I now withdraw the priority claim from the PCT to the US provisional,
> would that void the domestic benefit claim from the PCT to the US
> provisional which was recognized by the
> USPTO in the March 2024 filing receipt for the 111 bypass ?
>
> I *think* that we are OK under "90bis.6 Effect of Withdrawal"
>
>    - (a) Withdrawal under *Rule 90bis
>    <https://www.uspto.gov/web/offices/pac/mpep/mpep-9025-appx-t.html#d0e377369>* of
>    the international application, any designation, any priority claim, the
>    demand or any election shall have no effect in any designated or elected
>    Office where the processing or examination of the international application
>    has already started under *Article 23(2)
>    <https://www.uspto.gov/web/offices/pac/mpep/mpep-9025-appx-t.html#d0e363691>*
>     or *Article 40(2)
>    <https://www.uspto.gov/web/offices/pac/mpep/mpep-9025-appx-t.html#d0e364373>*
>    .
>
> but I know that in this business, there are traps, especially with these
> kinds of procedures.
>
> THOUGHTS ??
>
> IF you read this far, a WARM thank you.
>
> What do you think?
>
> Thanks,
> Bill
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