best practice for patent cooperation treaty filings, part...

Best Practice for Patent Cooperation Treaty

Filings, Part I

Presented by

Michael Neas

Carl Oppedahl, Esq.

LI11

1:15 PM

The handouts and presentations attached

are copyright and trademark protected and

provided for individual use only.

1

2018 ALA IP Conference

International Patent Legal Administration

USPTO

Introduction to the

Patent Cooperation Treaty

Michael A. Neas

Deputy Director


2



USPTO

The Patent Cooperation Treaty

• A United Nations Treaty

– Signed June 1970

– Became operational June 1978

– Administered by the International Bureau (IB)

• Of the World Intellectual Property Organization (WIPO) in

Geneva, Switzerland

September 2018 ALA IP Conference 3

International Patent?

• An international application (IA) is filed under

the PCT but…

– There is no “international patent”

– The PCT functions as a patent application filing

system

– The IA must still be prosecuted

• In each national or regional office where patent protection is

desired


3



USPTO

PCT Contracting States


International Applications (IAs) Filed

• In 2016, an estimated 233,000 PCT IAs were filed

– 7.3% increase from 2015

– 56,595 filed in U.S. (24.3% of total PCT filings)

• 0.9% decrease from 2015

• Since the inception of the PCT system, over 3 million IAs have been filed

worldwideSeptember 2018 ALA IP Conference 6

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USPTO

PCT Benefits for Applicants • Simplifies the process of filing foreign applications

– One set of formality requirements

– Establishes a filing date in all PCT Contracting States

• Postpones costs

– For filing in the national/regional Offices

– Translation fees, filing fees, attorney fees

• Provides

– An early indication of prior art and

– A written opinion as to the novelty, inventive step and industrial

applicability of the claimed invention

• Gives extra time for assessment of commercial viability in

designated States


PCT Benefits for Offices• Provides every regional and national patent Office,

where protection is sought, the benefit of

– An International Search Report (ISR) and

– Written Opinion of the International Searching Authority

(WOISA)

– Optionally, a Supplementary International Search Report (SISR)

• By a Supplementary International Searching Authority

– Optionally, an International Preliminary Report on Patentability

(Chapter II) – IPRP (Chapter II)

• By an International Preliminary Examining Authority (IPEA)


5



USPTO

PCT Contracting State

• A country which is a signatory to the PCT

• Eighteen (18) Contracting States in 1978

• Currently 152 Contracting States


PCT World Map(152 Contracting States on June 9, 2017)

September 2018 10ALA IP Conference

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USPTO

The International Application• A single application

– Filed together with a Request

• By a resident/national of a PCT Contracting State

– Filed in one language

– Filed in one patent Office

• The receiving Office (RO)

• Usually the applicant's home patent Office

– Treated as a national application

• In each designated State as of the international filing date (IFD)

• Formalities in compliance with the PCT

– Must be accepted during national phase


Paris Convention Filing Timeline

• Local patent application filed first

– Multiple foreign applications filed at 12 months, claiming priority

under the Paris Convention

• Multiple formality requirements

• Multiple prosecutions of applications

• Translations and national/regional fees required at 12 months

0 12

File applicationlocally

File multipleapplications

abroad

(months)


7



USPTO

PCT Filing Timeline

0

(months)

File first application

Enternational

phase

30

File International Application

12 18

International Publication

• Local patent application filed first

– Single international application filed at 12 months,

claiming priority under the Paris Convention

• One set of formal requirements

• One international phase prosecution

• Translations and national/regional fees and prosecution

not required until 30 months


Two Phases of the PCT

• International phase

– Chapter I (mandatory)

– Chapter II (optional)

• National phase (stage)


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USPTO

Chapter I of the



Chapter I - Filing and Searching

• International application is

– Filed in a receiving Office (RO)

– Searched by an International Searching Authority (ISA)

• Documents issued

– International Search Report (ISR – Form PCT/ISA/210)

• Rarely, Declaration of Non-Establishment of ISR (Form PCT/ISA/203)

– Written Opinion of the ISA (WOISA – Form PCT/ISA/237)

• Only issued for IAs with IFD on/after 01 Jan 2004

• Reissued as IPRP (Chapter I) at 30 months (Form PCT/IB/373)

– Optional - Supplementary International Search Report (SISR)

(Form PCT/SISA/501)

• Rarely, Declaration of Non-Establishment of SISR (Form PCT/ISA/502)


9



USPTO

Chapter I - Amendment and Publication

• Optional amendment to claims only, by applicant

– Filed directly with the IB under PCT Article 19

• Complete set of claims

• Within 2 months of ISR mailing date

• Publication of international application by the IB

– With ISR and Article 19 amendments, if any

– Available on the IB’s file inspection site – PATENTSCOPE

• https://patentscope.wipo.int/


International Searching Authority (ISA)

• Each PCT Contracting State reaches agreement with

– One/more ISA(s) to search IAs filed with its receiving Office

• Applicants who are U.S. residents or nationals

– Filing in the RO/US or RO/IB can select as ISA

• ISA/US, USPTO

• ISA/EP, European Patent Office (EPO)

• ISA/KR, Korean Intellectual Property Office (KIPO)

• ISA/AU, Australian Patent Office (IPAU)

• ISA/RU, Russian Federation (Rospatent)

• ISA/IL, Israel Patent Office (ILPO)

• ISA/JP, Japan Patent Office (JPO)

• ISA/SG, Intellectual Property Office of Singapore (IPOS)

• USPTO acts as ISA for IAs filed in certain other ROs


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USPTO

30

|

0

|

12*

|

16

|

(months)

Typically a national patent

application in the country of

the applicant

28

|

Date for calculation of all PCT

time limits

18

||

File local (priority)

application

PCT System Priority Application Filed


18

||


application

0

|

12*

|

16

|

(months)

30

|

28

|

|File

international application

under the PCT

Start ofInternationalphase

Typically filed in the same national office

• International filing/search fees

• One language

• One set of formalities

• Legal effect in all PCT States

Chapter I (no Demand filed)

Where no priority application

is filed, the IFD is the date for

calculation of all PCT time

limits

*may be more than 12 months where the international

application contains a restoration-eligible priority claim

PCT System – Chapter I International Application Filed


11



USPTO

PCT System – Chapter I ISR and WOISA Issued

18

|

|File local (priority)

application

0

|

12*

|

16

|

(months)

|

30

28

|

|File PCT

Time limit is the later of:

• 3 months after the ISA receives

the search copy

• 9 months after the priority date


|International Search Report

(ISR) and Written

Opinion of ISA (WOISA)

ISA:

• Establishes ISR citing relevant prior art

(PCT/ISA/210)

– Rarely, non-establishment of ISR

(PCT/ISA/203)

• Prepares written opinion (PCT/ISA/237)

*may be more than 12 months with a restoration-eligible priority claim


International

Search ReportForm PCT/ISA/210

(second sheet)

Documents Considered

to be Relevant

22September 2018 ALA IP Conference

12



USPTO

International Search Report Cited Documents (References)

Document Citations &

Relevant Passages

Document Categories


Three Main Categories of

Prior Art in an ISR• “X” document

– Claimed invention lacks

• Novelty or

• Inventive step when considered alone (lacks inventive step = obvious)

– “Stand alone” reference

• “Y” documents

– Claimed invention lacks inventive step

• When two or more documents are used in combination

• “A” document

– General state of the art reference


13



USPTO

Three Additional Qualifier Categories of

Prior Art in an ISR• “P” document

– Intervening reference

– Published on or after the priority date but before the IFD

– Listed as “X,P” or “Y,P” or “A,P”

• “O” document

– Non-written disclosure

– Published after the IFD

– Describes earlier oral disclosure

– Listed as “X,O” or “Y,O” or “A,O”

• “E” document

– U.S. or foreign patent or patent application published on

or after the IFD but having a filing or priority date prior to the IFD

– Listed as “X,E” or “Y,E” or “A,E”


Written Opinion of the

ISA Cover Sheet

Form PCT/ISA/237

(cover sheet)

Contents of the WOISA


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USPTO

Written Opinion of the ISABasis of this Opinion

• Basis of this opinion

– Application as filed

• Translated

• Rectified

– No amendments

• In contrast to Chapter II

Form PCT/ISA/237

Box No. I


WOISA

Reasoned Statement

Citations and explanations on

• Novelty,

• Inventive step, and

• Industrial applicability (similar to

utility)

of the claimed invention

Form PCT/ISA/237

Box No. V


15



USPTO


application

PCT System – Chapter I Article 19 Amendment Filed

18

|0

|

12*

|

16

|

(months)

30

|

28

|

|File PCT

Filed in the IB

• Claim amendments only

• Within 2 months of ISR mailing

date


|ISR &

WOISA

|(optional) Article 19 amendment




PCT System – Chapter I International Application Publication

WIPO publishes IA

• Example: WO2013/018714

• Accessible via DERWENT database

and WIPO website

• Includes ISR and any

Article 19 amendments InternationalPublication

|

18

||


application

0

|

12*

|

16

|

(months)

30

|

28

|

|File PCT

|ISR &

WOISA

|Article 19 amendment(optional)



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USPTO

Japanese Language IA

Published under the PCT

Bibliographic Page

English translation of Title and

Abstract• Always present where

publication is not in English


Published IA with

Article 19 Amendment

First page of

Amended Claims

Stamped as

AMENDED SHEET (ARTICLE 19)

Date the amended claims were

received by the IB


17



USPTO

PCT System – Chapter I Supplementary International Search


||

Art19

(optional)

18

|


application

0

|

12*

|

16

|

(months)

|

30

|

28

|

|File PCT

|ISR &

WOISA

InternationalPublication

|22

|

|(optional)Supplementary International Search Request

Supplementary International

Search Report(s) (SISR) established

|

SISA:

• Establishes SISR citing relevant

prior art (PCT/SISA/501)

‒ Originally-filed claims searched

‒ No written opinion produced

Filed in the IB

• Prior to 22 months from priority date

• Indicates a Supplementary ISA (SISA)

*may be more than 12 months with a restoration-eligible priority claim 33September 2018 ALA IP Conference

Supplementary

International Search Report

• Doc code 371P

Form PCT/SISA/501

(first sheet)


18



USPTO

Supplementary

International

Search Report

Form PCT/SISA/501

(second sheet)

Documents Considered

to be Relevant


PCT System – Chapter I International Preliminary Report on Patentability (IPRP) (Chapter I)

18

|


application

0

|12*

|

16

|

(months)

30

|

28

|

|File PCT

WIPO prepares an IPRP Chapter I using

the WOISA (PCT/IB/373)


|ISR &

WOISA

|Art 19(optional)


|

|International

Preliminary Report on

Patentability (Chapter I)



19



USPTO

IPRP Chapter I

Form PCT/IB/373 (cover letter for the WOISA)



application

Chapter I (no Demand filed) Enternationalphase

PCT System – Chapter I National Phase Entry from Chapter I

18

|0

|

12*

|

16

|

(months)

30

|

28

|

|File PCT

Applicant takes steps to pursue patent

protection in various States

• Express intention to enter national phase

• Pay fees

• Provide translation

|ISR &

WOISA

|Art 19(optional)


|

|IPRP (CH I)



20



USPTO

Chapter II of the



Chapter II (optional)

Preliminary Examination by the IPEA

• A Demand is filed with an IPEA

– Usually accompanied by a response to the WOISA

• Arguments, and/or

• Article 34 amendment to the description, claims, drawings

• IPEA issues

– International Preliminary Report on Patentability (CH II)

(Form PCT/IPEA/409)

– Written Opinion of the IPEA (Form PCT/IPEA/408)

• Issued only in extraordinary circumstances

–September 2018 ALA IP Conference 40

21



USPTO

International Preliminary Examining

Authority (IPEA)• Each PCT Contracting State reaches agreement

– With one/more IPEA(s) to examine IAs filed in its receiving Office

• IPEA/US is a competent IPEA

– For IAs filed in RO/US

– Regardless of which ISA performed the search

• IPEA/US may be a competent IPEA for IAs filed

– In RO/IB

• With some restrictions

– In certain other receiving Offices

• Where ISA/US performed the search



application

PCT System – Chapter II Filing of Demand for Chapter II Entry

Chapter I Chapter II

Start ofInternationalphase

18

|0

|

12*

|

16

|

(months)

30

|

28

|

|File PCT

Applicant “demands” additional

examination/analysis based on

• Amended application, and/or

• Arguments

|ISR &

WOISA

|Art 19(optional)


|

22

|

||||

File demand for International preliminary examination

Time limit is the later of

• 3 months from mailing of

ISR (or 203) and WOISA

• 22 months after the

priority date

*may be more than 12 months with a restoration-eligible priority claim 42September 2018 ALA IP Conference

22



USPTO


application

PCT System – Chapter II IPRP (Chapter II)

18

|0

|

12*

|

16

|

(months)

30

|

28

||

File PCT

International Preliminary Examining

Authority (IPEA)

• Prepares non-binding report on

patentability

• PCT/IPEA/409 & PCT/IPEA/416

Chapter I

||

ISR & WOISA

|Art 19

(optional)


|

|International

Preliminary Report on

Patentability (Chapter II)

22

|

Chapter II

||

Demand

*may be more than 12

months with a restoration-

eligible priority claim


IPRP (Chapter II)Cover Sheet

Contents of the IPRP (Chapter II)

Form PCT/IPEA/409


23



USPTO

IPRP (Chapter II)Basis of the Report

• Basis of the report

– Application as amended

– In contrast to the Written

Opinion of the ISA

Form PCT/IPEA/409

Box No. I


IPRP (Chapter II)Reasoned Statement

Citations and explanations on

• Novelty,

• Inventive step, and

• Industrial applicability

of the claimed invention

Form PCT/IPEA/409

Box No. V


24



USPTO


application

PCT System – Chapter II National Phase Entry from Chapter II

Enternationalphase

18

|0

|

12*

|

16

|

(months)

30

|

28

||

File PCT

Chapter I

||

ISR & WOISA

|Art 19

(optional)


|

|IPRP(CH II)

22

|

Chapter II

||

Demand

Applicant takes steps to pursue patent

protection in various States

• Express intention to enter national

phase

• Pay fees

• Provide translation

*may be more than 12 months with a

restoration-eligible priority claim


Questions?

Michael Neas

Deputy Director, International Patent Legal Administration

[email protected]

PCT Help Desk

(571) 272-4300

Monday – Friday 8:30am – 5:00pm ET


Intentionally Blank

9/6/2018

1

Docketing PCT

Intellectual Property Conference for Legal Management Professionals

September 27, 2018

Carl OppedahlOppedahl Patent Law Firm LLC

WIPO Consultant

www.oppedahl.com

Copyright 2018 Carl Oppedahl1

12-month Paris time period

Any time that any patent application has been filed that might serve as a priority application, the 12-month Paris time period must be docketed.

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12-month Paris time period and ePCT

If you have a saved submission in ePCT with a priority claim that is almost 12 months old …

Then the workbench in ePCT will remind you that the 12-month anniversary is imminent

This is a good reason to use ePCT for PCT applications.

3

The International

Patent System

4The International

Patent System

Docketing PCT

When you file a PCT application, docket to check for these

forms:

Form PCT/RO/105, which memorializes the filing date and application number

Form PCT/RO/102, which memorializes that proper fees were paid

Form PCT/IB/301, which memorializes that the International Bureau has received the Record Copy from the RO

Form PCT/IB/304, which memorializes that the International Bureau has received the certified copy of the priority document

Form PCT/ISA/202, which memorializes that the International Searching Authority has received the Search Copy.

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3

The International

Patent System

5The International

Patent System

Docketing PCT

Also docket P+22 (priority date plus 22 months) for filing of a

Demand and Article 34 amendment, and docket P+30 for

entry into the national phase

After Form PCT/IB/301 arrives, check to make sure that you

have access to the PCT application in the ePCT system

After Form PCT/ISA/202 arrives, docket three months to

check for receipt of the International Search Report and the

Written Opinion (ISR/WO)

5

The International

Patent System

6The International

Patent System

Filing an Article 19 amendment

The client might make a choice to file an Article 19

amendment

If this is going to be filed, it must be filed by the later of three

dates:

• Two months after the ISR was mailed

• Prior to the IB's completion of technical preparations for

publication

• Sixteen months after the priority date

ePCT will calculate this date for you

Make sure it has been docketed

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4

The International

Patent System

7The International

Patent System

Docketing after your Article 19 amendment

When an Article 19 amendment has been filed, docket to

check for receipt of Form PCT/IB/346

This is the IB's way of letting you know it received the Article

19 amendment

When the Form arrives, check to see that it says the Article 19

amendment was filed “within the time limit”

7

The International

Patent System

8The International

Patent System

Note that ePCT will warn you that the time

limit for the Demand is imminent

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5

The International

Patent System

9The International

Patent System

Upon receipt of Form PCT/IPEA/402

Docket 28 months or sooner for receipt of the International

Preliminary Report on Patentability under Chapter II of the

Treaty

Depending upon the historical timeliness of the IPEA, be

prepared to pester the IPEA to do its job timely

9

The International

Patent System

10The International

Patent System

Further docketing relating to the Demand

Docket to check for receipt of Form PCT/IPEA/402

By this Form the IPEA acknowledges that it received the

Demand

• Check that the receipt date is correct

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6

The International

Patent System

11The International

Patent System

US National Phase – docketing

Docket the 30-month date

The 30-month date should be cleared only when the “long list”

has been fulfilled

When the “long list” is fulfilled, docket to check for receiving the

Filing Receipt and Form PCT/DO/EO/903 Notice of

Acceptance into the National Phase

11

The International

Patent System

12The International

Patent System

Note that ePCT will warn you that the end

of the 30 months is imminent

12

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