Advanced PCT Seminar for Attorneys, Paralegals and Patent Administrators
A
Must Attend Seminar for Anyone Involved with International Patent Matters
The Advanced PCT Seminar is designed for participants who have
experience with the PCT patent filing system. The PCT rules and procedures
will be explored in depth, with the aid of computerized and projected
digital presentation slides, and a bound handout that includes all of the
projected slide materials. The teaching style is informal, in classroom
format. 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 file a single PCT patent
application that may ultimately be filed in all PCT contracting countries or
states. The Treaty provides for an initial PCT international phase, which
is followed by national examination processes, but only in the countries of
interest to the applicant.
As of mid 2011, there are 142 PCT contracting states. Under the
PCT, an applicant for a patent can file one PCT application in his or her
own country, which can later serve as the basis for national patent
application(s) filed in any of the 142 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.
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. It is also possible to file PCT applications and other PCT related
documents electronically with the USPTO Receiving Office, using EFS-Web.
With either type of filing, 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 Intellectual Property Office (KIPO), or the
Australian Patent Office (AUPO), as the applicant chooses. If, after
reviewing ISR and IPRP, the applicant does not withdraw the PCT application,
it is published approximately 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
KIPO, or the AUPO, again as the applicant chooses, with regard to the three
criteria used by most national and regional patent offices in determining
patentability: 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
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. Under Chapter II, the PCT applicant may make
amendments to the PCT application, and present arguments to the PCT
Examiner, as long as they are made 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. (Certain contracting states allow entry into national phase at 31
or 32 months.)
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.
Advanced PCT Course
Syllabus (Tentative)
Overview to the PCT System
•
Review of
traditional patent system vs. the PCT system.
•
Discussion of PCT
Contracting States available through regional patent Offices and national
patent Offices.
•
Review of the
requirements for being accorded an international filing date
•
Discussion of the
concept of all-inclusive designation system
Filing international applications
by US applicants
•
Requirements for
filing in the USPTO as receiving Office
•
Optional use of
declarations during the international phase
•
Brief review of how
to properly fill out the PCT Request form
•
Using EFS-Web to
e-filing in the RO/US
Choice of International
Authorities Available
•
Review of available
International Searching Authorities (ISAs)
•
Things to consider
when choosing an ISA
The International Bureau (IB) as
Receiving Office (RO) – by choice or by circumstance
•
Review of who can
file in RO/IB
•
Transmittal of
international applications to RO/IB under PCT Rule 19.4
•
Advantages to using
RO/IB where applicants are nationals of two or more Contracting States and
caveats
•
Using PCT-SAFE to
e-file in the RO/IB
Signature Requirements, Agents,
Common Representatives and Withdrawals
•
Discussion of who
can act as agent and what a common representative is
•
Waiver of power of
attorney requirements
•
Requirements for
withdrawing the international application, priority claim, designations,
etc.
Claiming priority and furnishing
priority documents
•
Discussion of
Article 4 of the Paris Convention
•
Discussion of the
right of priority in an international application
•
Furnishing
certified copy of priority document during the international phase and
advantages for doing so
International search and written
opinion of the ISA
•
Duties of the ISA
and discussion of prior art under the PCT
•
Unity of invention
procedure where claims are directed to more than one invention
•
Discussion of the
contents of the international search report and the written opinion of the
ISA
•
International
Preliminary Report on Patentability (Chapter I of the PCT)
Procedural safeguards
•
Incorporation by
reference
•
Restoration of the
right of priority
•
Addition and
correction of priority claims and time limits for doing so
•
Fee safeguards
•
Preventing and
postponing international publication
•
Recording changes
in applicant, inventor and agents
•
Rectification of
obvious mistakes
•
National phase
safeguards
International publication and
Internet resources
•
Effects of
international publication
•
Using the WIPO
Internet site to view published international applications
•
Information
available on the WIPO Internet site
•
New search tools
Supplementary International
Search (SIS)
•
Objectives of
supplementary international search
•
Available SISAs
Filing a demand and international
preliminary examination
•
Review of the
basics of Chapter II examination and who is entitled to make a demand
•
Time limits for
filing a demand and where it should be filed
•
Brief review of how
to properly fill out the form
•
Review of the
purpose of international preliminary examination and when it may begin
•
Definition of prior
art in Chapter II
•
Treatment of the
written opinion of the ISA by the IPEA and preparation of the international
preliminary report on patentability (Chapter II)
Amendments under the PCT and
Informal Comments
•
Discussion of
Article 19 amendments including where to submit, time limits for doing so
and purpose
•
Discussion of
Article 34 amendments including where to submit, time limits for doing so
and purpose
•
Informal comments
to the Written Opinion of the International Search Authority
(WOISA)
Recent changes
•
Review of January
2010 changes
•
Discussion of
PCT-Patent Prosecution Highway (PCT-PPH) pilot project
•
Discussion of July
2010 and July 2011 changes
Entry into the National Phase
•
Decisions that
applicant must make
•
Special
requirements that may be made by Offices
•
Reinstatements of
rights when national phase time limits are missed
Entry into the US national phase
and By-pass Continuation Practice
•
Discussion of US
national phase entry requirements
•
Claiming priority
to an earlier US applications and how to make a domestic benefit claim
•
Claiming priority
to a foreign application
•
Filing a by-pass
continuation as an option and the advantages and disadvantages of doing so
•
Electronic filing
options in the
United States Designated/Elected Office (DO/EO/US)
National Phase Entry: a User’s
Perspective
•
National phase
entry filing considerations
•
Key factors for
selecting countries for entry
•
Evaluating the
quality of foreign patents and enforcement systems
•
Return on
investment
Where to get help
•
Where to get help
at the USPTO
•
Phone numbers for
US consultants and WIPO staff
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