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[dbmax]

Here's a new take on a scenario previously discussed.

02/01/2011      PCT app 1 filed  disclosing subject matter X.

( US is a designated state, but no PCT app in this chain will ever enter national stage in US.)

02/02/2011      US provisional app 2 filed disclosing  X + Y

Plan is to abandon 1 without payment and refile PCT claiming  priority to 1 and 2 within the next year.

This seems to work OK under article 4, because PCT does not appear to have a copendency requirement.


When the filing is abandoned for lack of payment, will the US consider the abandonment retroactive to the filing date, and if so, will that jeopardize the PCT priority claim despite Article 4(A)(3) ?


Thanks,

db

[Isaac]

When the filing is abandoned for lack of payment, will the US consider the abandonment retroactive to the filing date, and if so, will that jeopardize the PCT priority claim despite Article 4(3) ?

The US does not have a copending requirement, but I'm do not believe that the US (and probably most other countries) will consider an application that has never been paid for to have ever been pending for the purpose of claiming priority or benefit.

Further, if this scheme did work, aren't you still going to have a problem internationally with your final PCT application?  Namely, you cannot claim a benefit of application 2 because you've already made a benefit claim to application 1.  You have to abandon and not make a claim to application 1, but you're apparently trying to merely abandon but still reap the benefit of application 1.

It seems to me that the straight forward thing to do would be to expressly abandon application 1, and to claim the benefit of application 2 only.  You'll have to risk that 1 day of difference.

[dbmax]

The (Paris Convention) does not have a copending requirement, but (I) do not believe that the US (and probably most other countries) will consider an application that has never been paid for to have ever been pending for the purpose of claiming priority or benefit.

Hi Isaac,

This is strictly for offshore, PCT app will never be prosecuted in US national stage.

I have searched in vain for PCT and EPO cases clarifying Art 4(A)(3). Bartmans' uncontroverted assertion is that the abandonment for non payment is OK with the PCT. The only question I see is how to read the US law to find a filing date for an app that will never be prosecuted in the US.

The convention appears to require other countries to attempt to apply US law to determine whether the filing of App 1 was "adequate to establish the date on which the application was filed"  (App 1 has an EFS filing receipt with filing date and app number)

It seems to me that the straight forward thing to do would be to expressly abandon application 1, and to claim the benefit of application 2 only.  You'll have to risk that 1 day of difference.

According to Art 4(C)(4), I would have to file withdrawals of both apps 1 and 2, and then refile a new app 3 if I want  a priority document covering both X and Y, leaving me exposed on both, and still not knowing if Apps 1 and 2 adequately met the standards of abandonment necessary to satisfy 4(C)(4).  *

Or suck it up and pay the fee on App 1. 

Hence Catch 22.

db

* From form PTO/SB/24 "NOTE: A paper requesting express abandonment of an application is not effective unless and until an appropriate USPTO official recognizes and acts on the paper. See the Manual of Patent Examining Procedure (MPEP), section 711.01" 
 

[Isaac]

According to Art 4(C)(4), I would have to file withdrawals of both apps 1 and 2

Why do you need to abandon application 2?  Application 2 is a US provisional and as such it cannot claim benefit or priority to any prior application.  So why can't you just abandon application 1 and claim the benefit of application 2.

[dbmax]

Why do you need to abandon application 2? 

App 1 presumably had not been withdrawn, abandoned, or refused prior to the filing of App 2, and still had rights outstanding.

My reading of 4C4 says that App 2 therefore cannot be the "first" application, and therefore cannot not serve as a priority document for X.

Am I misreading?

db

[Isaac]

Am I misreading?

Yes in my opinion.  As long as you abandon the first app without claiming priority to it, then it can be ignored.

[bartmans]

Dbmax,

I agree with your reasoning:
1) the PCT application which has not been paid for did receive a valid filing date, and thus can serve as a priority application.
2) since the PCT application was not expressly abandoned 'without leaving any rights outstanding' before the filing date of the US provisional, said provisional can not be considered 'the first application' as needed for validly claiming priority.
3) You may file a new PCT application claiming priority from both the earlier PCT application and the US provisional (of course within 12 months + 1 day).

I only do not understand your original question about the US in view of your remark that none of the PCT applications will enter the USA national phase. Since the applications have not been prepublished before any US utility application following the US provisional, and since the PCT application will not be followed by a US application, there seem to be no prior art effects for the US application.

Regards.

[dbmax]

Yes in my opinion.  As long as you abandon the first app without claiming priority to it, then it can be ignored.

After more thoughtful analysis (and sleep), I conclude that my reading of Article 4 was in error. just plain stupid.

It does not matter what happens to App 1. I can abandon it expressly or let it expire for non payment.

My eventual PCT app will claim priority to both Apps 1 and 2 within one year of App 1 filing date. Someone else will decide whether the prority claim to 1 is valid.

If the priority claim to 1 is valid under  Article 4(A)(3) (that is, if US law does not require a retroactive erasure of the filing date) then it will be the first app (under Art 4), for X.  App 2 will be the first app for Y.

If the priority claim to 1 is not valid under  4(A)(3), then app 1 will not be the first app. It will not exist. App 2 will be the first (and only) application for both X and Y.


Bartmans:
I mentioned the US only in case it might be relevant. (It isnt)

[Isaac]

After more thoughtful analysis (and sleep), I conclude that my reading of Article 4 was just plain stupid.

Well, after reading the article, I have concluded that you were right at least about the fact that you cannot claim priority to application 2 under the article.

But you can claim priority to at least app 2 in the US.  I don't know about app 1.

My eventual PCT app will claim priority to both Apps 1 and 2 within one year of App 1 filing date. Someone else will decide whether the claim to 1 is valid.

If the claim to 1 is valid under  Article 4(A)(3), then it is the first app (under Art 4), and the basis of X.

If the claim to 1 is not valid under  4(A)(3), then app 1 is not the first app. It will not exist. App 2 will be the first (and only) application for both X and Y.

My understanding is that App 2 will always be the second app now because you did not abandon the first app in time.  That's assuming that you filed the two applications in the same country.  I suppose you could file a provisional in some other country today with the same content as app2.

[dbmax]

The theory behind my strategy is as follows:

1) In order to be the "first application" according to 4(B) and 4(C) an application presumably must be a  "duly filed application" according to 4(A)(1).

2) The definition of a "duly filed application" is found in 4(A)(2) and 4(A)(3).

3) By default, App 1 is the first application for X, because it is duly filed, even if it is abandoned, and regardless of when it is abandoned according to 4(A)(3). By default App 2 is the first application for Y.

4) If some future authority in some foreign country determines that, under 4(A)(3) U.S. law would have retroactively cancelled the "duly filed" status of App1 because of abandonment for non-payment of filing fees, then App 1, not having been duly filed, cannot be the "first application" under 4(C). App 2 becomes the first application for X and Y.

5) Even if a foriegn authority found that App1 was not duly filed, but was still the "first application," that finding still would not defeat the priority claim to App 2 for X and Y according to the OP.

This, I think, is where we got hung up. Nearly all discussions regarding Article 4 revolve around 4(C)(4) and the 1 year limit of 4(C)(1).

Although the OP had nothing to do with time limits, the questioner  (myself) reflexively presumed that 4(C)(4) would insert itself into the problem.

But the language of 4(C)(4), in its convoluted manner, seems to state in its preamble that it is to be read as a definition of "first application" only for determining the length of the priority year.

And article 4(F) allows priority claims to multiple documents within the same PCT app and subsequently at the national stage.

So long as the PCT app claiming priority is filed prior to the anniversary of App 1, it is immaterial how, when, or if App 1 is abandoned. Nothing in Article 4 prevents a priority claim to App 2 for X or Y.

In the immortal words of Bill Murray: "It just doesn't matter."

It seems I got worked up over nothing (unless someone finds a new flaw in my analysis)

Best Regards,

db

[Isaac]

4) If some future authority in some foreign country determines that, under 4(A)(3) U.S. law would have retroactively cancelled the "duly filed" status of App1 because of abandonment for non-payment of filing fees, then App 1, not having been duly filed, cannot be the "first application" under 4(C). App 2 becomes the first application for X and Y.

This is the flaky part.

5) Even if a foriegn authority found that App1 was not duly filed, but was still the "first application," that finding still would not defeat the priority claim to App 2 for X and Y according to the OP.[/quote]

This is pretty iffy too.

[dbmax]

This is the flaky part.

I agree that I would not want to have to argue point 4 if App 1 were filed outside the priority year, but I would certainly make the argument.

I am much more comfortable with point 5, which also applies only if all apps are filed within the priority year (as stated in the OP). Under those circumstances, I find nothing in Article 4 to prevent a valid priority claim to App 2 (or App 3, or 4...)for X and Y.

Best Regards
db

[bartmans]

Dbmax,

the only 'flaw' I see in your reasoning is the following:

4) If some future authority in some foreign country determines that, under 4(A)(3) U.S. law would have retroactively cancelled the "duly filed" status of App1 because of abandonment for non-payment of filing fees, then App 1, not having been duly filed, cannot be the "first application" under 4(C).

First of all, the PCT application does not fall under US law, or under any national or regional law, but should be regarded in view of the PCT treaty. This is, of course, irrespective where the PCT application was filed, and which authority is the ISA or IPEA. That thus means that the for priority the Paris Convention applies, with the results as spelled out by you.
Secondly, even assuming that US law would have some bearing on the issue, I would very much doubt if any foreign authority would question priority issues with regard to US requirements.

Regards.

[dbmax]

The weakness of point 4 in my vew is the assertion (from point 1) that unless a document  is "duly filed," it is not an "application," and therefore cannot be the "first application."  While that argument may be semantically correct, it may not be logically or legally supportable, given the tortured language of the article.

Fortunately for me that question is moot.

Regards,

db