PCT Practice Presentation

Patents- Practical Aspects of International Patent Procurement/Prosecution

June 2015

Patent Cooperation Treaty (PCT) Practice Overview

Patent Foreign Filing• Options

– Directly file– Paris Convention– PCT (Patent Cooperation Treaty)

• Paris Convention– Shorter deadlines to decide where to file (1 year)– Overall, typically less expensive than PCT

• PCT– Longer time on where to file (30 months)– Usually, more expensive

Paris Convention- Overall Procedure

• Paris Convention– Utility Patents- One year to foreign file from

original filing date– Design Patents/Industrial Designs- Six months to

foreign file from original filing date

• What about non-Paris Convention (and non-PCT) Countries– Some provide a one year grace period to file

(e.g., Taiwan)– Most have an absolute novelty requirement, so

you need to file before disclosure

Overall Procedure

• Paris Convention Deadlines Utility Patent

US App.

Foreign App. Foreign App. Foreign App.

One Year fromUS Filing Date

Paris Convention- Why Pick?

• Reasons to Pick Paris Convention Filing– Less Expensive Overall– Less Delay – Know the Specific Countries & Client Will Not

Change Mind in the Future

• Reasons to Not Pick Paris Convention Filing– Uncertain where to file (e.g., not sure about

market)– Want to delay to give more time to develop

product, market, etc.– More fees up front with Paris Convention

Paris Convention

Foreign Associate

US Attorney

Foreign IP OfficeUSPTO


Foreign IP Office


Foreign Associate

• 7

PCT General Information

• Generally worldwide, about 50% of all cases foreign filed are filed through the PCT.

• Currently 148 country members to PCT.

• PCT preserves your right to foreign file for an additional 18 months.

• 8

PCT- Overall Procedure- Example #1

PCT App.

Foreign App. Foreign App. Foreign App.

US App. One Year fromUS Filing Date

To File PCT Application

Generally, 30 Months fromUS Filing Date

To File Foreign Applications

• 9

PCT- Overall Procedure- Example #2

PCT App.

Foreign App. Foreign App. US App.

Generally, 30 Months fromPCT Filing Date

To File Foreign & USApplications

PCT General Procedure• Filing: with a national or regional patent Office or WIPO, complying with the PCT formality

requirements, in one language, and one set of fees.

• International Search: an “International Searching Authority” (ISA) identifies the published patent documents and technical literature (“prior art”) and establishes a written opinion on invention’s potential patentability.

• International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of international application is published.

• Supplementary International Search (optional): a second ISA identifies, at applicant’s request, published documents which may not have been found by the first ISA which carried out the main search.

• International Preliminary Examination (optional): one of the ISAs, at applicant’s request, carries out an additional patentability analysis.

• National Phase: after the end of the PCT procedure, usually at 30 months from the earliest priority date, applicant starts to pursue the grant of patents directly before the national (or regional) patent Offices of the countries in which the applicant wants to obtain them.

Overview of PCT System

From: http://www.wipo.int/pct/en/faqs/faqs.html

PCT Terminology• Offices

• Receiving Office (RO)- office in which the International Application must be filed. For our purposes, the USPTO will be the RO, but in some circumstances the International Bureau (IB) will also act as the RO for U.S. residents and nationals.

• International Searching Authority (ISA)- responsible for the patent search and initial written opinion. In the Request form you can select U.S., AU, Korea, EPO, etc. as the ISA. Note the EPO has limitations as to subject matter that will be searched. The ISA is normally responsible for the International Search Report and Written Opinion, but the IPEA (see below) has the discretion to issue its own written opinion.

• International Bureau (IB)- maintains the master file of all international applications and acts as publisher as well as central coordinating body. The World Intellectual Property Organization in Geneva, Switzerland performs the duty of the IB.

PCT Terminology• Offices

– International Preliminary Examining Authority (IPEA)- The IPEA establishes the International Preliminary Examination Report (IPER) which presents the examiner’s final position as to whether the claim is novel, involves an inventive step, and is industrially applicable. The ISA normally creates the initial written opinion, but the IPEA has the discretion to issue its own written opinion.

– Designated Office (DO)- is the national patent office acting for the state or region designated under Chapter I. Generally, it is where you can nationalize the application under Chapter I. (Not that important now.)

– Elected Office (EO)- is the national patent office acting for the state or region elected under Chapter II. Generally, it is where you can nationalize the application under Chapter II. (Not that important now.)

PCT Terminology• Chapter I

– Examination without interaction between applicant and examiner

– Automatic- Default– Examination Result= International Preliminary

Report on Patentability (IPRP) (i.e., ISA-WO)

• Chapter II– Examination with interaction (argument) between

applicant and examiner – Requires Filing of a Demand + Fee– Examination Result= International Preliminary

Examination Report (IPER) (IPEA issues)

PCT Terminology• Paperwork

• International Search Report (ISR)- consists mainly of a listing of references to published patent documents and technical journal articles which might affect the patentability of the invention disclosed in the international application. The report contains indications for each of the documents listed as to their possible relevance to the critical patentability questions of novelty and inventive step (non-obviousness).

• X= Novelty • Y= Inventive Step• A= Of Interest


• Written Opinion (WO)- is a preliminary and non-binding opinion by the ISA on whether the invention appears to meet the patentability criteria in light of the search report results. The WO is sent together with the ISR to the Applicant’s representative.


• International Preliminary Report on Patentability (IPRP)- preliminary, non-binding report on whether the claimed invention appears to be patentable. It is issued by the International Bureau on behalf of the International Searching Authority (ISA) under Chapter I of the PCT where an International Preliminary Examination Report (IPER) has not been or will not be established. The report has essentially the same contents as the written opinion of the International Searching Authority (ISA). In other words, if the Applicant does not file a demand for Chapter II examination, IPRP will be the WO.


• International Preliminary Examination Report (IPER)- is a preliminary, non-binding opinion, established by the International Preliminary Examining Authority (IPEA) on the request of the applicant, on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. As of 1 January 2004, this report is also known as the "international preliminary report on patentability (Chapter II of the PCT)"..

PCT History Lesson

O Months

< 12 Months

16 Months

18Months

19 Months

20 Months

PCT History Lesson

O Months

< 12 Months

16 Months

18Months

19 Months

20 Months

PCT History Lesson

2O Months

30 Months

PCT History Lesson

O Months

< 12 Months

16 Months

18Months

19 Months

30 Months

PCT History Lesson• “Reservation” Countries- Gave Notice that National

Laws Not Compatible with Amended PCT

– Deadlines without Demand- Still the 20th month Chapter I deadline to nationalize the application

– Only applies to a limited number of countries:

Luxemburg; Tanzania; and Uganda.

Even if you do not file a Demand by the 19th Month deadline and do not nationalize by the 20th Month Chapter I deadline, you can still enter these countries by the Chapter II deadline through regional patent offices (EPO or ARIPO).

Filing a Demand for Chapter II examination by the 19th month will extend the deadline to directly nationalize in Luxemburg, Tanzania, and Uganda to the Chapter II deadline (30th month).

PCT History Lesson

• ISA now issue ISR and WO

• Demand for International Preliminary Examination (Chapter II) – Deadline Changed to Later of:

22 Months or 3 Months From Mailing Date of ISR/WO

• Why Now File a Demand for Examination?– Examiner Interaction- Get Positive IPER– Make Amendments to Spec. and Drawings

PCT Pointers

• Chapter II– Provides for additional procedures for

examination of the international application.– Deadline to nationalize the application is at

least 30 months from the earliest priority date.

– For most countries, the application automatically has the Chapter II deadline

Again, exceptions are Luxemburg, Tanzania, and Uganda,

PCT Pointers

• Calculation of docket deadlines is based on the earliest priority date claimed.

• Chapter I and Chapter II- distinction is less important under current PCT practice

PCT Filing

PCT TimetablePCT Timetable

Months from Earliest Priority Date Deadline/Action

8th Month Send Letter to Client Requesting Foreign Filing Instructions-What you need to do- Send the foreign filing letter.

10th-12th Month Send Reminder Letter(s)/Call Client for Foreign Filing InstructionsWhat you need to do- Remind client until you receive instructions

12th Month Deadline to File PCT ApplicationWhat you need to do- Prepare the PCT Request, application, and transmittal. On the Request, designate which figure should appear on the face of the published application and add/indicate the reference numerals that should be in the abstract for the designated figure.

14th Month Typically, receive by this deadline:-Filing Receipt (RO/105, ISA/202 & RO/102)-Record Copy Received by International Bureau (IB/304)Deadline-Restoration of Priority Deadline- In case you missed the 1 year Paris Convention DeadlineWhat you need to do- Report Filing Receipt to client.

16th Month Priority Document Deadline- This is the final deadline to update your priority claim as well as submit certified copies of the applications from which you are claiming priority. Normally list the priority applications on the Request when the application is filed. This deadline only applies when waiting on the application number for the international application.What you need to do- Make sure your priority claim is correct.

PCT- Short Flow Chart

O Months

< 12 Months

14 Months

16 Months

18Months

19 Months


20 Months

28 Months

30Months

31 Months

22 Months

PCT Application- Pre-filing Checklist

Get Applicant and Inventor InformationNationality may impact Receiving Office (RO)Foreign Filing License Granted/Needed

Pick Receiving Office (RO) USPTO IB

Pick International Searching Authority (ISA) Speed, Price, Where Nationalizing, etc.

Prepare Paperwork (format A4)

PCT Filing- Typical Flow

US AttorneyUSPTO (RO) Int’l Bureau (IB)

PCT Application

Request

PCT Application

Request Contents•Inventor(s)/Applicant(s)•Designate Agent•Not Designate Countries (DE, JP, KR)•Priority Claim & Documents•Pick Int’l Searching Authority (ISA)•Representative Figure

PCT Filing- Unusual Flow

US Attorney Int’l Bureau (IB) + RO

PCT Application

RequestDirectly File with IB•No Applicant is US Resident or National (but a resident/national of PCT Contracting State)•Restoration of Priority- within 2 month window after 12 Month Paris Convention Deadline

PCT Receiving Office (RO)

• How to Pick a Receiving Office (RO)– Depends on where applicant is a national or

residence

• Two Options– Applicant’s National Patent Office (if allowed)

Normally, USPTO– WIPO International Bureau (IB)

• From US Perspective, if no US Applicant, need to file with IB as RO and pick local attorney to prosecute.

Filing USPTO as Receiving Office (RO)1. Familiarity with E-filing procedures.

2. File pdf’s of documents.

3. Instant Electronic Acknowledgment.

4. Payment via Credit Card in US Dollars.

5. Access to Documents in Private PAIR.

6. For invention made in the US, no separate request for a foreign filing license is needed.

Filing WIPO-IB as Receiving Office (RO)

1. Will need to obtain a WIPO Digital Certificate for each person who will physically file the applications.

2. The Digital Certificate must be used ONLY on the computer on which it was validated.

3. The Digital Certificate must be renewed every two years.

4. Will need to download and use PCT Easy software, which needs updating regularly.


5. Will need to open a WIPO Deposit Account 1. Otherwise, file an application at the

International Bureau, then receive a link electronically to make an Epayment on WIPO via credit card.

2. You may have added conversion fees from US $ to Swiss francs on your credit card bill.

3. Pay by bank transfer to WIPO’s bank account or postal account

6. Will never have access to complete file history.


7. If invention made in the US, you will need a foreign filing license from the USPTO to file a PCT application at the IB.

8. Can file via fax; however, original must be delivered within 14 days from the fax transmission (FedEx preferred).

9. Lose valuable filing time since WIPO is six hours ahead of us.

PCT Searching Authorities (ISA)• Right Now, You Can Select From Among Several

Patent Offices to Conduct the Search

• US Searching Authorities Include– USPTO– EPO (European Patent Office)– KIPO (Korea)– Australia (IPAU)– Russia (Rospatent)– Israel (ILPO)

• Note: Option Secondary ISA

PCT Searching Authorities (ISA)

Receiving Office (RO) US or IB

ISA/US ISA/EP ISA/KR ISA/AU ISA/RU ISA/IL

PCT- Options to Save Money

Below is a chart summarizing the options. Please note that the search fees are based on October 1, 2013 figures.

ISA Office Search Fee Benefits Issues

Australia $1,925 Less expensive thanEurope

Only searches applications in very limited technology fields. For example, it does not search all mechanical engineering and some biotechnology type inventions.

Europe $2,366 Perceived high quality search

Expensive, and it will not conduct searches for applications that concern some types of technologies.

Korea $1,219Inexpensive and receive results relatively quickly.

Limits the technology of applications that can be searched.

United States of America $2080 Perceived high

quality search

Expensive and does not supply the search report in a timely fashion (e.g., before Chapter II deadline).

PCT- Options to Save Money

Below is a chart summarizing the options. Please note that the search fees are based on October 1, 2013 figures.

ISA Office Search Fee Benefits Issues

Russia $704 Inexpensive No experience.

Israel $969 Inexpensive Limited number of applications allowed

Generally two ways to prepare/file the "paperwork" for a PCT application. PDF forms (e.g., Request, transmittal, etc.)

PCT-SAFE (SAFE = Secure Applications Filed Electronically) software helps to prepare the electronic forms for filing. Two modes:

– Fully electronic mode: The description, claims, abstract and drawings are attached in PDF, TIFF or XML format.

– PCT-EASY mode: The request form as well as the application body are submitted on paper, accompanied by a physical medium (floppy disk, CD, etc.) which contains a zip file with the request form, the abstract and a log file created through PCT-SAFE.

For ease of viewing, the presentation will show the PDF forms.

How to File a PCT Application

Application (format for A4 Paper and line nos.) Specification- Format A4 paper & line numbers Claims Drawings- add drawing sheet numbers Abstract- add reference numerals

Transmittal Request Fee Transmittal Declaration(s) (optional)

How to File a PCT Application- Paperwork

How to File a PCT Application- Paperwork Transmittal

How to File a PCT Application- Paperwork Request- Page 1

How to File a PCT Application- Paperwork Request- Further Applicants

& Inventors

How to File a PCT Application- Paperwork Request- Supplemental Box

Request- Designations & ISA


Request Transmit Prior Search

Results Declarations


How to File a PCT Application- Paperwork Request - Sample Declarations

Request Checklist Signature


How to File a PCT Application- Paperwork Fee Calculation Sheet

PCT Search & Publication



16th Month International Searching Authority (ISA) Prepares International Search Report (ISR) and Written Opinion (WO)- This should occur 2 months before publication, but usually, the ISR is not mailed until after initial publication of the application.What you need to do- Nothing at this point until you receive a copy of the Search Report

18th Month Publication of the Application- Within 2 weeks of this deadline, normally receive a Notice of Publication (IB/311). “WO” indicates that it is a PCT publication, as opposed to a particular country. The WO is followed by the year, a slash “/”, and a sequential number. The A1, A2, A3, etc. after the publication number indicates what type of publication. For example, A1 means “Patent Application Publication”; A2 means “Patent Application Republication”; and A9 means “Patent Application Publication (Corrected Publication).”

18th Month- Earlier or Later

Receipt of International Search Report (ISR) and Written Opinion (WO)- Under the new PCT practice, the Search Report and Written Opinion will be typically issued before publication (but not always). The ISR is published with the application publication or republished later (A2) if the search was not finished by the publication date. The WO is not published.What you need to do- (1) Report ISR/WO to client; (2) If U.S. counterpart case exists, file IDS for search results; and (3) If foreign counterpart case(s) exist (unlikely), send search results to foreign associate.

PCT Search (ISA)• Search & Examination based generally on

the following:– Novelty- similar to (but not the same as) the

anticipation standard in the U.S. (absolute novelty and no grace period)

– Inventive Step- similar to (but not the same as) as the nonobviousness requirement in the U.S.

– Industrial applicability- it can be made or used (in the technological sense) in any kind of industry. Usually, it does not include business methods.

PCT Search/Examination Pointers• Unity of Invention- although similar, not the

same standard as in U.S. restriction practice.– If you want to search for other claimed

inventions you will need to pay additional search fees.

– Even if you pay additional search fees, you will then need to pay examination fees to have the additionally searched claims examined.

– Not paying search fees may limit the claims you can initially nationalize.

• Generally speaking, search and examination fees are a waste of money.

– But in view of recent EPO rules you might want to consider paying the fees if you are going to nationalize in Europe

PCT Search (ISA)- Typical Flow

Int’l Bureau (IB)

PCT Application

Searching Authority (ISA)

ISA WrittenOpinion (WO)

Int’l Search Report (ISR)


Int’l Bureau (IB) PCT Application


PCT Amendments & Examination

PCT Amendments Common Tactics

1. No Amendments (Most Common Approach)PCT Application is a glorified Extension of Time

2. Article 19 Amendments to ClaimsOnly when ISR Cites Novelty Destroying Art

3. Article 34 AmendmentsArguments, claim amendments, etc. in hopes of getting positive IPER for national stage



18th Month 1 Month Prior to File Demand For Chapter II Examination for Article 22/Chapter I Countries & 2 Months Prior to Directly Nationalize in Chapter I Countries Only applies to a limited number of countries Luxemburg, Tanzania & Uganda. Even if you do not file a Demand by the 19th Month deadline and do not nationalize by the 20th Month Chapter I deadline, you can still enter these countries by the Chapter II deadline through regional patent offices (EPO or ARIPO).What you need to do- Normally, nothing (unless client has specific instructions).

19th Month Deadline to File Demand For International Preliminary Examination (Chapter II)The Chapter I deadline only applies to a limited number of countries, Luxemburg, Tanzania & Uganda. Even if you do not file a Demand by the 19th Month deadline and do not nationalize by the 20th Month Chapter I deadline, you can still enter these countries by the Chapter II through regional patent offices (EPO or ARIPO).What you need to do- Normally, nothing (unless client has specific instructions).

20th Month Deadline to Nationalize in Chapter I Countries if Demand was Not FiledThe Chapter I deadline only applies to a limited number of countries, Luxemburg, Tanzania & Uganda. Even if you do not file a Demand by the 19th Month deadline and do not nationalize by the 20th Month Chapter I deadline, you can still enter these countries by the Chapter II through regional patent offices (EPO or ARIPO).What you need to do- Normally, nothing (unless client has specific instructions).


O Months

< 12 Months

14 Months

16 Months

18Months

19 Months


20 Months

28 Months

30Months

31 Months

22 Months



2 Months From Mailing Date of International Search Report

Deadline to File Response to International Search Report (ISR) to Have Claim Amendments Entered (Article 19)- When only responding to the ISR (and not the Written Opinion), you can only amend the claims. In order to amend the specification and/or provide substantive comments regarding the Written Opinion/prior art (in addition to amending claims), you will need to file a Demand for Substantive Examination along with a Response to the Written Opinion.What you need to do- Normally, nothing (unless you want to only amend the claims). Even if you amend the claims, the International Preliminary Report on Patentability (IPRP) will not change based on these amendments.

21st Month or 2 Months From Mailing Date of International Search Report, (which ever is later)

1 Month Prior to File Demand and Response to Written Opinion- A Demand must be filed along with the Response in order to have the Response considered by the Examiner. You will be able to amend the claims, amend the specification, and/or present arguments as to the patentability of the claims if you file a Response to the Written Opinion. If you file a Response, an IPRP will be issued. Normally, the IPRP is not issued until after the application was nationalized, so there is no real point to responding to the Written Opinion, unless you would like to make amendments before nationalization. Although very rare, a clean IPRP could save you some patent filing fees if you nationalize in the U.S. The IPRP might change based on your amendments or remarks.What you need to do- Normally, nothing. If you would like to make amendments to the claims and/or specification before nationalization, then you might want to consider submitting a Demand along with a Response to the Written Opinion.


20 Months

28 Months

30Months

31 Months

22 Months



22nd Month or 3 Months From Mailing Date of International Search Report, (which ever is later)

Deadline to File Demand and Response to Written Opinion- A Demand must be filed along with the Response in order to have the Response considered by the Examiner. You will be able to amend the claims, amend the specification, and/or present arguments as to the patentability of the claims if you file a Response to the Written Opinion. If you file a Response, an IPER will be issued. Normally, the IPER is not issued until after the application is nationalized, so there is no real point to responding to the Written Opinion, unless you would like to make amendments before nationalization. Although very rare, a clean IPER could save you some patent filing fees if you nationalize in the U.S.What you need to do- Normally, nothing. If you would like to make amendments to the claims and/or specification before nationalization, then you might want to consider submitting a Demand along with a Response to the Written Opinion.

28th Month Target Date to Issue IPRP Established by International Searching Authority (ISA) (for Chapter I) or IPEA (Chapter II)- This almost never happens. The Examination Report is usually issued after the Chapter II deadline for nationalizing the case. What you need to do- Normally, nothing. If for some rare reason you receive the IPRP in time, report it to the client and send to the foreign associate(s) where you are nationalizing the application.

28th Month Send Letter to Client Requesting Nationalization Instructions- Send a letter to the client containing a checklist of countries in which they can nationalize the PCT application. Request instructions by the 29 th Month. What you need to do- Send nationalization letter to the client.

How to Make ChangesChanges to Application Information (Formalities)

Fix Typo’s Change, Add, or Delete Applicants/Inventors

Change Claims Article 19 Amendment (Response to ISR) Article 34 Amendment (Response to WO)

Change Specification and Drawings Article 34 Amendment (Only)

Argue Against Cited Prior Art Article 34 Amendment (Only)

Formality Changes• What can be amended?

– Information provided on the request (e.g., Applicant, Typo’s, etc.)

• When- anytime before Chapter II Deadline

• How- File Replacement Sheets from Request with the updated information.

• Where- File with – Receiving Office (RO) or – International Bureau (IB)

• Paperwork– (1) Cover Letter- explains changes– (2) Substitute Sheets of Updated Request

Formality Changes Paperwork• (1) Cover Sheet Explaining Changes

• (2) Substitute Sheet(s) of Request Containing the Changes

Article 19 Amendments (Response to ISR)• What can be amended?

– Claims only The only way to make substantive changes if only using Chapter 1 route

• When- After received International Search Report (ISR) and Written Opinion (WO), and Later of

– 16 Months from priority date– 2 Months from transmittal of ISR and WO – (OR received before technical preparations of international publication has been

complete)

• Article 19 NOT allowed when International Search Authority (ISA) indicated that no ISR will be established.

• Where- Filed with IB– But if file Demand for International Preliminary Examination is filed send a copy to

International Preliminary Examining Authority (IPEA)

• Paperwork– (1) Cover letter indicating differences between claims filed and amended plus basis for

amendment. – (2) Complete set of replacement claims– (3) Optional Statement under Article 19

Article 19 Paperwork• (1) Cover Letter indicating differences between

claims filed and amended plus basis for amendment.

– Indicators (i) the claim is unchanged, (ii) the claim is cancelled; (iii) the claim is new; (iv) the claim replaces one or more claims as filed; (v) the claim is the result of the division of a claim as

filed, etc.– Example:

“Claim 1 amended; claims 2 to 7 unchanged; claims 8 and 9 amended; claims 10 to 14 cancelled; claims 15 to 17 unchanged; new claim 18 added.

- (i) Basis for the amendment: Claim 1 has been amended at lines 4 and 11 to 14 and now indicates that the filter comprises a periodic backwashing means serially coupled to a first and second chamber. The basis for this amendment can be found in original claims 2 and 4 as filed.

- (ii) Basis for the amendment: Concerning amended claims 8 and 9, the indication of ‘quick-fire piston’ is in paragraph Nos. 2 and 19 in the description as filed.

- (iii) Basis for the amendment: Claim 18 is new, the indication is in drawing No. III of the original application.”

Article 19 Paperwork• (2) Complete set of replacement sheets

for claims

– Clean Claim Set Only (no mark-ups)

– Only Cancel Claims – No renumbering of other claims is required

– However, if renumber, claims must be renumbered consecutively

Article 19 Paperwork• (3) Statement Under Article 19

(Optional)

• Brief statement explaining the amendment and indicating any impact it might have on the description and the drawings

• Must be clearly identified “Statement under Article 19(1)”

• Published with the international application

• MUST NOT– Exceed 500 words

– Contain disparaging comments about the International Search Report (ISR) or relevance of cited art

Article 34 Amendments (Response to WO)• What can you do?

– Amend Claims– Amend Specification– Amend Drawings– Present arguments as to the patentability of the claims

• When? (Later of)– 22 Months from Priority Date– 3 Months from Mailing of Search Report

• Where?- Can Pick IPEA in Demand– USPTO (if RO) or EP (if ISA)

• Paperwork– (1) Demand for International Preliminary Examination under Article 31

And Fee – (2) Response to Written Opinion- indicating changes + arguments– (3) Replacement sheets for any amended Claims, Specification, Drawings

Article 34 Paperwork (Response to WO)• (1) Demand for International Preliminary Examination under Article 31

Article 34 Paperwork (Response to WO) Demand Paperwork

Very Similar to Request Will only discuss significant differences


Common Representative Basis for Examination


Checklist Signature

Article 34 Paperwork (Response to WO)• (2) Response to Written Opinion.

– Explanation of Changes Made to Application– Arguments

Article 34 Paperwork (Response to WO)• (3) Complete set of replacement sheets

for amended claims, specification, and/or drawings

– Clean Set Only (no mark-ups)

Article 19 v. 34 Amendments• If Demand filed, no need to amend claims under Article 19, unless

you want provisional protection.– Article 19 Amendments are published, so you may gain provisional rights

to the published Article 19 claim amendments (i.e., damages clock)

• Article 19– Only need to amend the claims (not drawings or specification)– Don’t want to make any arguments

• Article 34– Does not require to first file Article 19 Amendments– Want to Argue– Need to makes changes to specification, drawings (or claims)

PCT Examination Report

• Type of Examination Report Depends on Whether Applicant Requested Examination (Chapter II) or Not


Int’l Bureau (IB)

PCT Application




PCT Chapter 1 Only- Typical Flow


PCT Chapter 1 Only From: http://www.wipo.int/edocs/mdocs/aspac/en/wipo_reg_pct_tyo_13/wipo_reg_pct_tyo_13_t5.pdf

• Paperwork• International Preliminary Report on Patentability

(IPRP)- preliminary, non-binding report on whether the claimed invention appears to be patentable. It is issued by the International Bureau on behalf of the International Searching Authority (ISA) under Chapter I of the PCT where an international preliminary examination report has not been or will not be established. The report has essentially the same contents as the written opinion of the International Searching Authority. In other words, if the Applicant does not file a demand for Chapter II examination, IPRP will be the WO.

PCT Chapter 1 Examination Report


Int’l Bureau (IB)

PCT Application




PCT Chapter 2- Typical Flow


Int’l Preliminary Examination Authority

(IPEA)

Int’l PreliminaryExamination Report

(IPER)

PCT Chapter 2

From: http://www.wipo.int/edocs/mdocs/aspac/en/wipo_reg_pct_tyo_13/wipo_reg_pct_tyo_13_t5.pdf

PCT Chapter Examination Report• Paperwork

• International Preliminary Examination Report (IPER)- is a preliminary, non-binding opinion, established by the International Preliminary Examining Authority (IPEA) on the request of the applicant, on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. As of 1 January 2004, this report is also known as the "international preliminary report on patentability (Chapter II of the PCT)"..

PCT National Phase

• Please see Nationalizing PCT Applications in the US presentation that compares the 371 National Stage Procedure with the Bypass Continuation Application Procedure– http://www.slideshare.net/wemmh/best-way-to-

nationalize-pct-applications-in – Presentation is Dated- Some Changes Required

Due to AIA– Updated Presentation Coming Soon!

PCT Timetable

PCT Timetable


29th-30th Month Send Reminder Letter(s)/Call Client for Nationalization Instructions- If instructions are not received, you need to remind the client.What you need to do- Send a copy of the nationalization letter stamped “Reminder” and/or call the client.

30th Month Deadline to Nationalize the PCT Application- For most countries, this is the deadline when you need to nationalize the application. Note that you can nationalize the PCT application at any time, but it might be helpful to at least wait until after you receive the International Search Report before deciding whether or not to nationalize.What you need to do- Send the application to the foreign associate(s) in the countries where the client wishes to seek patent protection

Final Item

• Sign up for PCT Newsletter at www.wipo.int – Updates on Fee, ISA’s, etc.

Need More Information?

Please Contact:

Chuck Schmal ([email protected])

Woodard, Emhardt, Moriarty, McNett & Henry LLPWoodard, Emhardt, Moriarty, McNett & Henry LLP111 Monument Circle, Suite 3700

Indianapolis, IN 46204(317) 634-3456

www.uspatent.com

Patents- Practical Aspects of International Patent Procurement/Prosecution

June 2015

Patent Cooperation Treaty (PCT) Practice Overview

Date post:	29-Jul-2015
Category:	Law
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