[Pct] PCT Application question

Thu Mar 20 02:28:19 UTC 2025

Hi Charlene,

Based on the information you provided it appears that the 16-month deadline to correct the priority claim expired on 21 Nov 2024. I think you will need to look to the law of each designated state to determine how to proceed. Here is a practical advice article from the Feb 2013 PCT Newsletter describing this exact situation. PCT Newsletter 02/2013: Practical Advice<https://www.wipo.int/pct/en/newslett/practical_advice/pa_022013.html>

As noted in the practical advice, you can file a request to have the IB publish information regarding the late correction of the priority claim pursuant to PCT Rule 26bis.2(e). The purpose of this is to alert designated offices and the public that you will likely request correction of the priority claim in the national phase.

As for the U.S., you should be able to file a national phase application and correct the priority claim, although you will have to pay a hefty petition fee.

Best regards,
Scott

Scott Nielson

801-660-4400

________________________________
From: Pct <pct-bounces at oppedahl-lists.com> on behalf of Timothy Snowden via Pct <pct at oppedahl-lists.com>
Sent: Wednesday, March 19, 2025 3:20 PM
To: pct at oppedahl-lists.com <pct at oppedahl-lists.com>
Cc: Timothy Snowden <tdsnowden at outlook.com>
Subject: Re: [Pct] PCT Application question

This is helpful. I don't have time right now, but if I were the practitioner in charge of this case, the first thing I would do is go read PCT Rule 26bis.2(c) to see if there was anything I could do directly at the IB, based on the date pattern (which I obviously don't have).

I would do it today before I left work since priority correction is a very time-sensitive matter.

On 3/19/2025 3:29 PM, Charlene L. Odom via Pct wrote:

David,

I assume you're asking about a typo in the filing date of the provisional parent, not of this PCT.-That is correct, there is a typo in the filing date of the provisional parent.

(a) In the future, file PCT applications at ePCT and RO/IB so you get the error checking.  An ounce of prevention and small extra fees (WIPO won't give you the small entity discount -- so what) is worth a pound of cure.-0-To confirm we would select IB instead of US to do the filing?

(b) Do you have a filing receipt?  What does PatentCenter or ePCT show as filing date for the provisional?  If the electronic record has it right, it doesn't matter what the paper notices say.  If the electronic record is not correct, ePCT probably has an "Action" to correct stuff like this, which you can probably use even if you filed at RO/US.- The date at epct has the transpose number. However, I see this will be sent from the IB. Does this mean I can submit the 26bis with the IB for correct?

[cid:part1.h4bxTAKR.ZuSuOPtk at outlook.com]

Charlene L. Odom

Paralegal

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Intellectual Property

P: (803) 540‑2176

COdom at maynardnexsen.com<mailto:COdom at maynardnexsen.com>

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From: David Boundy <DavidBoundyEsq at gmail.com><mailto:DavidBoundyEsq at gmail.com>
Sent: Wednesday, March 19, 2025 4:21 PM
To: For users of the PCT and ePCT. This is not for laypersons to seek legal advice. <pct at oppedahl-lists.com><mailto:pct at oppedahl-lists.com>
Cc: Charlene L. Odom <COdom at maynardnexsen.com><mailto:COdom at maynardnexsen.com>
Subject: Re: [Pct] PCT Application question

I assume you're aksing about a typo in the filing date of the provisional parent, not of this PCT.

(a) In the future, file PCT applications at ePCT and RO/IB so you get the error checking.  An ounce of prevention and small extra fees (WIPO won't give you the small entity discount -- so what) is worth a pound of cure.

(b) Do you have a filing receipt?  What does PatentCenter or ePCT show as filing date for the provisional?  If the electronic record has it right, it doesn't matter what the paper notices say.  If the electronic record is not correct, ePCT probably has an "Action" to correct stuff like this, which you can probably use even if you filed at RO/US.

On Wed, Mar 19, 2025 at 4:12 PM Charlene L. Odom via Pct <pct at oppedahl-lists.com<mailto:pct at oppedahl-lists.com>> wrote:

I hope this message finds you well.

We filed a PCT application based on a provisional application on November 16, 2023. While the application number listed was correct, there was an issue with the transposition of the filing date. We received an Invitation to Correct Defects from the US Receiving Office in January 2025, to which we responded promptly, and the date was updated as of February 2025.

However, we recently received a notification that the notice from February 2025 has been revoked. Given that the application number was correct in the original submission, we would like to inquire if there is any further action we can take to correct the transposed filing date, or if there are additional steps required to resolve this issue.

Your guidance on this matter would be greatly appreciated.

Thank you for your time and assistance. We look forward to your advice on how to proceed.

Charlene L. Odom

Paralegal

 |

Intellectual Property

P: (803) 540‑2176

COdom at maynardnexsen.com<mailto:COdom at maynardnexsen.com>

104 South Main Street
Suite 900

Greenville

,

South Carolina

29601

[cid:part2.DfrN6Lgn.biv0HwUN at outlook.com]<https://www.maynardnexsen.com/>

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