PCT Forum Shopping – a Trap for the Unwary

An Israeli entity with all Israeli inventors lost priority rights in the US for a PCT application based on a US Provisional Application. This unfortunate incident highlights a trap for the unwary. This decision may be a tempest in a teapot with little practical importance.

 

 

Background

My regular readership may remember that, in the past, I have advocated taking advantage of different national holidays and weekends around the world to informally extend the 12 month Paris Convention deadline for filing PCT applications by a day or two.  See  Israel Patent Office Closed for Rosh Hashana, Yom Kippur, Sukkot and Id Ul Fitr

The incident

Apparently, a provisional application was filed in the US on 11 October 2005, and then, just over a year later, on 15 October 2006, a PCT application was filed in Israel. Since the Israel Patent Office was closed over the period 7th – 14th October 2006 due to the festival of Sukkot, the PCT was filed on Sunday 15th October 2006 when the patent office reopened and was considered as timely filed by the PCT authorities who recognized priority from the provisional application.

Eventually, a US national phase entry was filed claiming priority from the provisional application. However, the US Patent Office pointed out that since the priority application was a US (provisional) application, under Sections 119(e) and 363 of the US Patent Law and Section 8 of the PCT Agreement, the issue was whether the USPTO in Arlington Virginia was open or not, or more formally, if there was a holiday in Washington DC.

The USPTO’s decision points out that the application could have been filed on the 11th October 2006 in the US, despite it not being a competent receiving office. More relevant perhaps, it could have been filed at the International Bureau in Geneva that day.

Consequently, the USPTO has ruled that as far as the US is concerned, the priority date has been blown, and the effective filing date of the US application was 15 October 2006 and not 11 October 2005.

The decision is subject to appeal.

Comments

The USPTO seems to be over-ruling the PCT Convention Rules which seem fairly explicit. See http://www.wipo.int/pct/en/texts/rules/r2.htm#_2_4 and http://www.wipo.int/pct/en/texts/rules/r80.htm#_80_5

 Thankfully it wasn’t one of our cases. It could have happened to anyone. Only a week and a half ago we had a Paris Convention deadline over Sukkot for an application first filed as a provisional for one of the Israel Universities, who  also dictated that we file the priority application as a provisional. Luckily, the lawyer who handles our PCT filings double-checked with the patent office, so we filed early.

Where the client can afford it, we recommend filing in the US concurrently with filing a  PCT application as the US is frequently the most important jurisdiction and an early allowance is valuable. By selecting the European Patent Office as the International Search Authority the applicant can decide on where to file with searches from both the EPO and the USPTO, which provides a higher degree of certainly that the relevant prior art has been flushed out.

The Specific Case – storm in a tea cup

As the Israel Commissioner of Patents saw fit to white-out the name of the applicants, the various application numbers, etc. I shan’t publish this information. Others as nosy as me, will have little trouble making a shortlist from the filing date!

That exercise was quite revealing actually. I myself filed an application for Amitech (a chip substrate manufacturer) back on 15th October 2006 for something claiming priority from an 11th October 2005 filing.  In that instance, the priority application was an Israel Application. It is not totally clear how relevant that is. The decision certainly mentions that the priority document was a US provisional, but it is not clear whether this was the reason for the USPTO over-riding the PCT Convention rules.

Furthermore, three PCT applications were filed on that day by different Israel universities, each claiming priority from applications filed on 11 October 2005 – two of them claimed priority from US provisional applications – one was for the same university that I filed an application for a week ago and could easily have filed after Sukkot were it not for a super-efficient back office.

Interestingly, the three university applications filed that day were handled by different firms. There were also two applications filed by Israel industry that claimed priority from provisional applications. This indicates that at least eight fellow practitioners made the same ‘mistake’.

As a PCT application was filed, one presumes that the specific application was not disclosed prior to filing the provisional and could have been filed in other jurisdictions. If this is the case, the damage is minimal since the US operates a first-to-invent and not a first-to-file regime. Even without formally recognizing priority from it, the US provisional is compelling evidence that the inventors had conceived of their invention and reduced it to practice by the provisional filing date. The filing of the Provisional and the chain of events establishes diligence in pursuing a patent in the US as well. Thus it seems likely that no real harm has been done by this decision and the case is a storm in a teacup. 

Where things could be nasty though, is if the original provisional filing was made on 11th October 2005 for something to be published between 11th October 2005 and 15th October 2005.  That sort of thing can and does happen with inventions coming out of universities where the applicant needs a filing date prior to publishing a scientific paper or conference proceedings. Indeed, of the 6 or 7 applications filed in Israel on 15th October 2006 that claimed priority from an application filed on 11 October 2005, three were filed on behalf of university tech transfer companies. In such a scenario the refusal by the USPTO to accept priority from the provisional will invalidate the US patent. This could be very painful for those concerned.

Another way to look at this is that in essence, the USPTO has so far decided that since the PCT application designating the US was, under US statutory law, a US non-provisional filing, it had to have been filed with an effective date under US law within the statutory one-year life of the US provisional application (if any priority benefits were to be accorded).  The only exception would be if based on US weekends / holidays when a later filing will, under proper circumstances, still suffice under US law. 

To attempt to overcome the decision, the US Attorney of Record tried arguing that the USPTO often creates additional US holidays by executive fiat, such as when record snow fall or some other emergency effectively shuts down Washington DC.  Consequently, the absence of specific statutory authority relief in this instance was not really an obstacle and since the USPTO has taken a position that conflicts with PCT Rule 80.5 as well as with Articles 27 and 47, this seems a reasonable approach. The argument has so far fallen on deaf ears at the USPTO.

Nevertheless, the USPTO does not consider its latest action as constituting a “final” administrative action and therefore a court action under the Administrative Procedures Act would be premature.  In any event, since the current record does not indicate any factual need for the claimed priority benefit, the whole issue of priority in this specific case may be moot, and perhaps could be reconsidered if and when the claimed priority benefit becomes materially relevant.  Should the priority claim for the specific case ever become an real issue, the USPTO’s decision can be challenged at any point prior to 6 years from the “final” agency action.

One Response to PCT Forum Shopping – a Trap for the Unwary

  1. […] PCT Forum shopping – a trap for the unwary (IP Factor) […]

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