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Basic
PCT Seminar for Paralegals, Patent Administrators and Attorneys
A
Must Attend Seminar for Anyone Involved with International Patent Matters
The Basic PCT Seminar is designed to provide a working
knowledge of the PCT to all who have little or no experience using the PCT
patent filing system. The PCT rules and procedures will be explained in
detail, with the aid of computerized and projected digital presentation
slides, and 200+ pages of bound handout materials. The teaching style is
informal, in classroom format. Attendance is limited to allow each
participant the opportunity to ask questions, and to participate in
practical exercises. Very experienced instructors and extensive handout
materials are provided by the World Intellectual Property Organization,
which administers the PCT. A tentative seminar syllabus is included below,
following the background remarks about the PCT
Background
The Patent Cooperation Treaty (PCT) is an important international patent
filing system that makes it possible to seek patent protection for an
invention simultaneously in a large number of countries by filing a single
“international” patent application under the PCT. Such a filing commences
the first of the PCT’s two phases, the so-called PCT international phase,
which in turn has two chapters: (1) Chapter I where search and publication
of the PCT application take place, and (2) and optional Chapter II where
examination of the PCT application takes place. During the first part of
Chapter I, the PCT application is subjected to an international search. The
search results in an international search report and a written opinion on
patentability for the invention disclosed and claimed in the PCT
application. Approximately 18 months after the PCT filing date or its
earlier so-called “priority” date, the PCT application is published. Under
the PCT international phase, the applicant may elect to have the application
examined for compliance with four criteria: subject matter, novelty,
inventive step and industrial applicability. If examination under optional
Chapter II is elected, an international examination report is written with
regard to the PCT application. The PCT international phase is followed by
the national phase, where the PCT application is subjected to national
examination processes, but only in the PCT countries of interest to the
applicant. While the optional PCT international examination report does not
guarantee that a patent will or will not issue in any of the elected 142 PCT
contracting states, if the application has a positive international
examination report, the likelihood of obtaining patents during national
phase is increased.
Use of the PCT system is advantageous because allows applicants to delay
national patent application fees and certain translation costs for up to a
year and one half after the PCT application is filed. During this time the
applicant maintains the option of filing national patent applications based
on the PCT application while still having the opportunity of evaluating,
from a business perspective, which application(s) cover inventions that have
sufficient commercial potential to warrant filing of patent applications in
any of the PCT contracting states.
It is important to remember that the PCT is patent filing, not a patent
granting, system. There is no “PCT patent”. Decisions to grant patents lie
solely within the jurisdiction of the national patent offices located within
each PCT contracting state.
As indicated above, at the international phase, there are two parts or
chapters to the PCT: Chapter I and Chapter II. Although the Chapters are
legally distinct, there is a convergence of certain Chapter I and Chapter II
timelines and procedures. Under Chapter I of the PCT, a US applicant can
file an international application in English, with the PCT Receiving Office
at the United States Patent and Trademark Office (USPTO), using Express
Mail. PCT applications and other PCT related documents can also be filed
electronically with the USPTO Receiving Office, using EFS-Web, or with WIPO
directly using PCT-SAFE.
Whether filing electronically or by mail, the PCT applicant can then obtain
an International Search Report (ISR) plus a detailed written opinion (IPEA)
on the patentability of the invention disclosed and claimed the PCT patent
application. These reports are prepared by International Searching and
Preliminary Examining Authorities (ISA/IPEA), which for US applicants are
the United States Patent and Trademark Office (USPTO), the European Patent
Office (EPO), the Korean Patent Office (KR) or the Australian Patent Office
(AU)), as the applicant chooses. If, after reviewing ISR and IPRP, the
applicant does not timely withdraw the PCT application, it is published 18
months from the application’s “priority date”.
Under optional Chapter II of the PCT, the application may be examined
(International Preliminary Examination) by the USPTO, the EPO, the KO or the
AU again as the applicant chooses, with regard to the four criteria used by
most national and regional patent offices in determining patentability:
subject matter, novelty, inventive step and industrial applicability.
If an applicant does not request timely International Preliminary
Examination under Chapter II, the application never enters Chapter II, and
the International Preliminary Report on Patentability (IPRP) is issued based
on the written opinion prepared by the International Searching Authority.
After the expiration of 30 months from the PCT application’s “priority
date”, this Chapter I IPRP is sent to the PCT contracting states designated
by the applicant in the PCT application.
If the applicant timely requests International Preliminary Examination, the
application enters Chapter II of the PCT. Under Chapter II the applicant
has the opportunity to have a dialogue with the PCT Examiner with regard to
issues raised in the International Preliminary Examination Opinion, which is
based on the written opinion prepared by the International Searching
Authority, and to make amendments to the PCT application before the IPRP is
issued. After the expiration of 30 months from the PCT application’s
“priority date”, this Chapter II IPRP is sent to the PCT contracting states
designated in the PCT application.
If the PCT applicant chooses, on or before the expiration of 30 months from
the PCT application’s “priority date”, the PCT application may proceed to
the national or regional patent offices of any or all of the 142 member
states designated by the applicant at the time the PCT application was
filed.
Use of the PCT system allows US practitioners to control the progress of a
PCT application from filing through the search and preliminary examination
stages. This control of an application is accompanied by substantial cost
savings, through delayed costs of translations and national office and agent
fees, as well as through having the international phase work done centrally
in the US, rather than in the offices of several different foreign patent
attorneys and agents.
Basic PCT Course
Syllabus (Tentative)
I.
Introduction to the PCT System, with Emphasis on Recent Changes to
the PCT
II.
PCT Timelines and Time Limits
III.
Basics of the PCT
IV.
Filing of PCT Applications
V.
Declarations
VI.
Choice of International Authorities for US Applicants
VII.
Electronic Filing Options: PCT-SAFE Filing Software, Electronic
Filing at the USPTO Receiving Office Using EFS-Web.
VIII.
Claiming Priority and Furnishing of Priority Documents
IX.
Correction of Defects Relating to the Filing of the Application
X.
Agents and Common Representatives under the PCT
XI.
Recording of Changes Relating to the Applicant, the Agent or the
Inventor
XII.
Functions of the Receiving Office (RO)
XIII.
The International Bureau (IB) as Receiving Office
XIV.
International Search and Written Opinion of the International
Searching Authority (ISA)
XV.
Supplementary International Search
XVI.
Filing of Demand for International Preliminary Examination
XVII.
International Preliminary Examination
XVIII.
Unity of Invention and Protest Procedure
XIX.
Functions of the International Bureau
XX.
International Publication
XXI.
Access by Third Parties to Documents in the File of the International
Application
XXII.
Fees Payable under the PCT
XXIII.
Amendments under the PCT
XXIV.
Entry into the National Phase
XXV.
US National Phase Requirements
XXVI.
Withdrawals
XXVII.
Procedure in Case of Nucleotide and/or Amino Acid Sequence Listings
XXVIII.
Indications Relating to Biological Materials
XXIX.
Procedural Safeguards for International Applications
XXX.
Future Developments in the PCT System
XXXI.
Where to Get Help
XXXII.
PCT Internet site
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