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

Sun Jun 8 19:39:29 UTC 2025

*"*wants the extra year for non-US national-phase entries"

I don't see how this is remotely feasible after the application publishes,
and after the provisional has been priority-claimed by a PCT.  Look at the
wording on the face of Paris Convention Article 4
https://www.wipo.int/wipolex/en/text/288514   Withdrawal of an earlier
application is impossible after the earlier application is "laid open to
public inspection," "leaves any rights outstanding" (including U.S.
rights), or "served as a basis for claiming a right of priority."  You
don't need to see case law (and this is all domestic law anyway -- U.S.
case law is irrelevant).  Look at the words on their face.

On Sun, Jun 8, 2025 at 3:29 PM William Ahmed via Pct <pct at oppedahl-lists.com>
wrote:

> Bob wrote below -->
>
> 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 USA, since the US *benefit* claim was never withdrawn.
>
>
> 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)
> <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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