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

[Dan Feigelson]

I agree with Bill on this. In fact, there was an example here in Israel
some years ago which illustrates the application of PCT Article 8(b) in the
US context:

An Israeli entity filed a US provisional. The 12-month deadline fell on
date when the Israel PTO was closed, so the Israeli agent who drafted the
application waited until RO/IL opened several days later to file the PCT (
PCT/IL2006/001187
<https://patentscope.wipo.int/search/en/detail.jsf?docId=WO2007043057&_cid=P20-MBOSL3-52348-1>),
and claimed priority from the provisional.  All good, the RO recognized the
priority claim.

But when the applicant entered the national phase in the USA, the USPTO
said, "Sorry Charlie, your PCT was filed more than a year after the
provisional was filed and the USPTO was open at the 12-month deadline. So
your claim to benefit of the provisional isn't recognized."  Applicant
petitioned, asserting since the RO/IL was closed, it shouldn't lose the
benefit of the earlier date, and the USPTO clarified: you could have filed
at any RO that was open that day, either at RO/IB, or at an "incompetent"
RO (the inventors and applicant were all Israeli). And the combination of
PCT Article 8, PCT rule 80.5 and (pre-AIA) 35 USC 119(3) and 363 mean that,
under the circumstances, the application was not entitled to the benefit
claim in the USA.  The application number was 12/078317 and was eventually
granted as US 8911751.

In contrast, in Europe and Japan, for example, the priority claim was
acknowledged.

Dan

On Sun, Jun 8, 2025 at 11:39 PM William Ahmed via Pct <
pct at oppedahl-lists.com> wrote:

> Thank you David.
>
> Rule 90bis.3 *[reproduced below]* refers to a priority claim under
> Article 8(1) of the PCT treaty *[also reproduced below]*
>
> It seems like "priority claim" is defined under Article 8(1) of the PCT
> treaty as a *Paris convention claim*.
> AND
> It seems like domestic benefit claims (i.e. as far as the PCT treaty is
> concerned) would be under Article 8(2) of the PCT treaty.
>
> SEE APPENDIX BELOW *-- emphasis added*
>
> Do you agree?
>
> Thanks,
> Bill
>
> APPENDIX
>
>
> 90*bis*.3       *Withdrawal of Priority Claims*
>
> (a)  The applicant may withdraw a* priority clai*m, made in the
> international application under Article 8(1)
> <https://www.wipo.int/pct/en/texts/articles/a8.html#_8_1>, at any time
> prior to the expiration of 30 months from the priority date.
>
>
> Patent Cooperation Treaty (PCT)Article 8
> Claiming Priority
>
> (1)  The international application may contain a declaration, as
> prescribed in the Regulations, *claiming the priority of one or more
> earlier applications filed in or for any country party to the Paris
> Convention for the Protection of Industrial Property.*
>
> (2)(a)  Subject to the provisions of subparagraph (b)
> <https://www.wipo.int/pct/en/texts/articles/a8.html#_8_2_b>, the
> conditions for, and the effect of, any priority claim declared under paragraph
> (1) <https://www.wipo.int/pct/en/texts/articles/a8.html#_8_1> shall be as
> provided in Article 4 of the Stockholm Act of the Paris Convention for the
> Protection of Industrial Property
>
> (b)  The international application for which the priority of one or more
> earlier applications filed in or for a Contracting State is claimed may
> contain the designation of that State. Where, in the international
> application, the priority of one or more national applications filed in or
> for a designated State is claimed, or where the *priority of an
> international application having designated only one State is claimed, the
> conditions for, and the effect of, the priority claim in that State shall
> be governed by the national law of that State.*
>
>
>
>
>
> On Sunday, June 8, 2025 at 11:13:22 PM GMT+3, David Boundy <
> davidboundyesq at gmail.com> wrote:
>
>
> OK, I see. The dates you're asking about are governed by national law in
> each daughter jurisdiction.  So it could well be that country x allows you
> to disclaim the provisional in the way you contemplate (and thus when you
> file national stage at 42 months in x, you are welcomed with open arms),
> and country y doesn't (and says, when you file at 42 months, "too bad so
> sad.  You can't move the filing deadlines in our country via that move.")
> I have no knowledge of any of that.
>
> The U.S. application--and its entire parentage--is governed by U.S.
> statutory law, sections 119(e), 120, 361, 365 (from memory).  Paris Art
> 4(A)(1) expressly excludes the rest of Art 4 from
> same-country-to-same-country priority chains ("in the other countries").
> The word "benefit" vs "priority" is a helpful mnemonic to help you keep two
> things straight, but the real substantive difference is the word "other" in Art
> 4(A)(1.
>
> On Sun, Jun 8, 2025 at 4:02 PM William Ahmed <ahmed.william at ymail.com>
> wrote:
>
> HI David,
> For purposes of Europe and Japan, the Applicant would lose the priority
> date, and the earliest date would be the date the PCT was filed (i.e. the
> PCT filing-date)
> The invention was never disclosed during the priority year. 18 month
> publication was 6 months after the PCT filing-date.
>
> So the WIPO publication would not hurt the application.
>
> There is a small risk that someone else filed (or published) during the
> priority year, but the Applicant has no money for non-US filings, so this
> is better than nothing.
>
> BOTTOM LINE --> I am confident for non-USA jurisdictions -- it is QUITE
> possible to prosecute an EPO patent with no priority claim. That is what
> would happen here - the Paris convention claim would just die.
>
> But I AM concerned about 'collateral damage' of PCT 90.bis.3 to the US
> designation (in my case, the CON).
>
>
> The text of PCT Rule 90.bis.3 is -->
>
> 90*bis*.3       *Withdrawal of Priority Claims*
>
> (a)  The applicant may withdraw a* priority claim*, made in the
> international application under Article 8(1)
> <https://www.wipo.int/pct/en/texts/articles/a8.html#_8_1>, at any time
> prior to the expiration of 30 months from the priority date.
> Could we argue that the term *priority claim *is very specific, and only
> applies to the 'foreign priority' for the purposes of the US designation of
> the PCT?
>
> If yes, is this a 'bullet-proof argument'?
>
> Thanks,
> Bill
>
> On Sunday, June 8, 2025 at 10:39:47 PM GMT+3, David Boundy <
> davidboundyesq at gmail.com> wrote:
>
>
> *"*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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