[Pct] BENEFIT CLAIM VS. PRIORITY CLAIM --> retroactive effect in USA of 'disclaiming priority' Withdraw of Priority Claim Under Rule 90bis.3

[William Ahmed]

 Bob wrote below -->
Second, alternatively, if they want to assert that the withdrawal counts in the USA, I'd say that 90bis.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so the withdrawal of the priority claim per 90bis.6 is irrelevant in the USA, since the US benefit claim was never withdrawn.


This sounds good to me based on logic, but I am not as well versed in the case law as many on this list.
Would this argument of 'benefit vs. priority' be strong enough to rely on?From a business point of view, my client would NOT risk the US date, but she definitely wants the extra year for non-US national-phase entries if it can be done without risking the US date.
What do people think?
Thanks!Bill

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) says 
"(a)  Withdrawal under Rule 90bis 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 90bis.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 90bis.6 written into the statute in the USA.  So in principle, an adverse party may later assert that the carve-out in PCT rule 90bis.6 doesn't apply in the USA, since the USA never enacted Rule90bis.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 90bis.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 90bis.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 90bis.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,ZZZwith 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 2024There 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 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).
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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