filing 371 national stage applications · article 19 amendments (cont.) •the english translation...
TRANSCRIPT
© 2017 BIRCH, STEWART, KOLASCH & BIRCH LLP
Filing Requirements for a U.S. Patent Application
Emphasis on National Stage Applications
TERMINOLOGY
Different Names (most common)?
• Regular Priority application (claiming priority via the Paris convention within 1 year of earliest priority)
– 119 application (based upon 35 USC § 119(a))
– Paris convention Priority application
• PCT; National Phase entry
– National Stage Application
– National Phase Application
– 371 Application (based upon the code for which it is filed under - 35 USC § 371)
Acronyms for PCT
ARIPO African Regional Industrial Property
Organization for English-speaking Africa
DO Designated Office
EPC European Patent Convention
EO Elected Office – Chapter II
IB International Bureau
IPE International Preliminary Examination
IPEA International Preliminary Examining Authority
Acronyms (cont.)
IPRP International Preliminary Report on
Patentability
ISA International Searching Authority
ISR International Search Report
OAPI Intellectual Property Organization for French-
speaking Africa
RO Receiving Office
WIPO World Intellectual Property Organization
WO of
ISA
Written Opinion of the International
Searching Authority
Comparison
Filing Deadline - Example
Priority Date(first filed
application)
January 1, 2013
International (PCT)
Application (PCT)
January 1, 2014
National Stage Application Deadline
July 1, 2015
(30-months from earliest filing date)
Be careful of your National Stage Deadline, not all designated states
allow 30 months. This deadline is just an example.
National Stage Deadline
The National Stage deadline is very important!!
If the deadline is unintentionally missed the application will have to be revived.
National Stage Requirements (Rules)
• Requirements for a National Stage application are:
– Designation as a National Stage application;
– The national fee;
– Inventor’s Declaration (can be filed later);
– Translation, if applicable (can be filed later); and
– Copy of International (PCT) Application (but only in certain circumstances, like filing before publication)
• Need to file a copy of the PCT/IB/308 form (2nd Notice), designating the US, if it is available, or a copy of the as-filed International (PCT) Application and PCT/RO/101
DOCUMENTS
National Stage Filings
Application Requirements
The RED() items SHOULD be filed with the new application, if applicable
* Transmittal Form
PTO-1390
Appropriate Fees (can be paid after
filing)
* Application Data
Sheet (ADS)
ADS required
* Specification Application as published (WO
document); or
If not published, the application as
originally filed
* Drawings If applicable
Translation Can be submitted after filing with
payment of a fee
Power of Attorney If available
* Nucleotide and/or
Amino Acid
Sequence Listing
If applicable
* Large Tables or
Computer Listings
If applicable
PCT/IB/301 Notification of Receipt of Record Copy
PCT/IB/304 Notification Concerning Submission Obtention or Transmittal
of Priority Document
* PCT/IB/306 Notification of the Recording of a Change
* PCT/IB/308 First and Second and Supplementary Notice
PCT/IB/311 Notification Concerning Availability of the Publication of the
International Application
PCT/IPEA/416 Notification of Transmittal of International Preliminary Report
on Patentability
*
PCT/IPEA/409
International Preliminary Report on Patentability
PCT/RO/101 Request (must be filed when there’s no WO Published and/or
PCT/IB/308 (2nd Notice)
* PCT/ISA/210 International Search Report
PCT/ISA/220 Notification of Transmittal of the International Search Report
and the Written Opinion of the ISA, or the Declaration
* PCT/ISA/237 Written Opinion of the International Searching Authority
PCT Documents (file if we have them/submit alphabetical and then numerical)
PCT/IB/332 Information Concerning Elected Offices Notified of Their
Election
PCT/IB/402 Notification of Receipt of Demand By Competent IPEA
PCT/IPEA/401 Demand – Chapter II
PCT/IPEA/408 Written Opinion of the International Preliminary Examining
Authority
PCT/RO/102 Notification Concerning Payment of Prescribed Fees
PCT/RO/105 Notification of Int’l Application No. & of the Int’l Filing Date
PCT/RO/106 Invitation to Correct Defects in the International Application
PCT/ISA/202 Notification of Receipt of Search Copy
These forms may be available from WIPO PatentScope:
http://patentscope.wipo.int/search/en/structuredSearch.jsf
PCT Documents –Not necessary to File
APPLICATION PAPERS
National Stage Transmittal
• Form PTO-1390
– Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371
Application Data Sheet (ADS)
• Covered in separate slides – essential.
Specification
• Specification– Application as published (WO document); or– If not published, the application as originally filed
• Using the Publication?– Confirm all sections are in the copy
• Description• Claims• Abstract• Drawings (if applicable)
– Confirm all pages are legible
Physically count and review the pages
Specification (cont.)
• There are times in a National Stage application when no specification (the traditional idea of a specification may be different) needs to be submitted, for example:
– if the original application was filed/published with an English language specification, you can simply submit the PCT/IB/308 (2nd Notice) form; OR
– if the application is not in English and you are NOTsubmitting the English translation with the application, you can simply submit the PCT/IB/308 (2nd Notice) form.
Specification (cont.)
• Applicant may submit a copy of the international (PCT) application as published instead of a copy of the application as originally filed, UNLESS:
– Article 19 Amendments were filed amending the abstract and/or title when the ISR was prepared and the revised abstract and/or title is published;
• then the Written Opinion publication cannot be used as the originally-filed application.
If either box is checked, the
publication cannot be used as
the originally filed application.
Form
PCT/ISA/210
PCT/IB/308
• BSKB files a copy of form PCT/IB/308 (First and Second and Supplementary).
• The first notice states NO designations were made.
• If we do NOT have the second notice, we file a copy of the International (PCT) Application as published.
• If neither of these are available:
– we file the International (PCT) Application as originally filed; AND
– a copy of PCT/RO/101 (PCT Request)
US
Designated
Translation
• The English translation of the International Publication MUST be a literal translation
– What this means is that it must be an exacttranslation of the International Publication
• No changes to the content can be made in the translation
– Content changes must be made by Preliminary Amendment
Declaration, Assignment and Power of Attorney
• There are different permutations for these documents. Imagine 3 buckets…each needs to be filled.
Declaration AssignmentPower
of Attorney
Declaration
• Pre-AIA Declaration procedures - any application having an effective PCT filing date prior to September 16, 2012 – no need to clutter up your minds, these will not be discussed. Just know that the requirements are different.
• AIA Declaration procedures – any application having an effective filing date or a PCT filing date on or after September 16, 2012.
Different Scenarios
If the Applicant is Required Forms
• Assignee Combined AIA Dec/Assignment and POA
• Inventor Combined AIA Dec/Assignment and POA (Assignee handling prosecution)
• Inventor (no Assignee) AIA Dec and POA
Regardless, the Declaration must contain specific language
required by the AIA. The suitable forms may be downloaded from
BSKB’s website.
See next page for actual language and an example
Declaration Requirements
• The Declaration for a National Stage application can be either:– a standard Declaration; or – a Declaration under rule 4.17(iv) that is filed during
the international phase.• If you do not receive a Declaration, check PatentScope
to see if a 4.17(iv) Declaration is available.• The inventor/applicant/assignee address identified on
the Declaration/Assignment documents should be used IF different from the client’s instructions (unless a PCT/IB/306 form indicates a change).
• the application was made or was authorized to be made by the affiant or declarant;
• such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application; and
• The undersigned hereby acknowledges that any willful false statement made in this
declaration is punishable under 18 U.S.C. § 1001 by fine or imprisonment of not more than
five (5) years, or both.
Assignment
Generally, the Assignment can be separate from the Declaration, but it is also possible to use the combined Declaration/Assignment document available from BSKB’s website.
Combined Declaration/Assignment
Slight variation – Declaration of Inventorship
• If Applicant files a Declaration of Inventorship, a Power of Attorney is still required
– Make sure the Declaration (correct form may be downloaded from BSKB’s website) has the new language required by the AIA changes:
– (1) the application was made or was authorized to be made by the affiant or declarant; and
– (2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.
Power of Attorney - most common scenario – 82B
Drawings
• As in Utility applications, you should always compare your actual drawings to the “Brief Description of the Drawings” located in the Specification
– Make sure that all sheets or drawings and figures have been received and are described in the specification
Drawing changes can be made in an Article 34 Amendment.
Be sure to review the Amendments for any changes to the drawings!
Sequence Listings
• Sequence Listings typically occur in Biotech cases.• They are an important part of a specification.
Assignment
• If separate, review the Assignment for completeness• Are all inventors listed?
– Spelled correctly and match the inventors on the Declaration
– Might be same form as Declaration• Did all inventors sign and date the document?• Is the Assignee name and address complete?• Is the Title of the invention complete and accurate?
PCT/IB/306
• Notification of the Recording of a Change– If issued, this document should ALWAYS be filed
• Indicates that bibliographical data was corrected/changed during the International Stage– Examples of the information changed
• Name• Address• Nationality• Adding/Deleting an inventor• Change of Applicant
• Generally, we cannot make these changes to the National Stage application without this form
PCT Amendments?
• International Preliminary Report on Patentability (IPRP)– The IPRP is issued 3 months from the International Search
Report or 22 months from the priority date, whichever is later
• Chapter 1 (without Demand) – form PCT/IB/373; or• Chapter 2 (with Demand) – form PCT/IPEA/409
(PCT/IPEA/416 coversheet)• International (PCT) Application Amendments
– Article 19 (claims only)– Article 34 Amendments (with Demand)– Letter to the USPTO submitting the Amendments
PCT/IB/373
PCT/IPEA/409
Preliminary Amendment
• Amend/Correct the Title, if needed
• Amend the claims, if needed
• Incorporate Article 19 and/or 34 Amendments
• Remove improper multiple dependencies from the claims – to avoid unnecessary USPTO fees
Cross-Reference To Related US Applications
• When claiming priority to a US Application (e.g., perhaps a provisional application), a Cross-Reference paragraphmust be inserted into the specification by way of a Preliminary Amendment
– It is not necessary in to insert a Cross Reference paragraph identifying the international (PCT) application or foreign priority applications
Title - Amendments
• Applicant may change the Title of the Invention when entering the National Stage (instead of during the International Stage)
– The client may try to submit a new title with an English language specification
– This is generally not accepted by the USPTO, unless a Preliminary Amendment is filed
Article 19 Amendments
• Article 19 Amendments are made only to the claims.• The amended pages will be included in the International
(PCT) Application as published.• The order letter and the publication should indicate that the
application includes Article 19 Amendments.• If we wish to incorporate the Article 19 Amendments into the
application, we must submit:– A copy of the amended claims, and– An English translation (if applicable) with the application
• The USPTO is very inconsistent in entering Article 19 Amendment, so our policy is to enter such claims via a Preliminary Amendment.
Article 19 Amendments (cont.)
• The English translation for the Article 19 Amendments cannot be filed at a later time.
– Provide copies of Article 19 Amendments using the Letter Submitting Article 19/34 Amendments, even if you are filing a Preliminary Amendment to amend the claims.
– If not already noted, stamp the Amended Sheets with the “Amended Sheet” stamp.
Article 34 Amendments
• Article 34 Amendments are filed with the Chapter II Demand, or in response to the Written Opinion.
• The amended pages will appear as an annex to the International Preliminary Report on Patentability (PCT/IPEA/409).
• If the Applicant wishes to incorporate the Article 34 Amendments into the application, we must submit a copy of the amended pages with the application, in order for them to be made of record in the US:
– A translation of the annexes must also be provided, but the translation can be submitted after the filing of the application.
Article 34 Amendments (cont.)
• Article 34 Amendments can include amendments to the specification, claims and drawings– We only amend the claims with a Preliminary Amendment
• Provide copies of Article 34 Amendments using the Letter Submitting Article 19/34 Amendments– Even if you are filing a Preliminary Amendment
– Copies of the Amended Sheets should be attached to the Letter
• If not already noted, stamp the Amended Sheets with the “Amended Sheet” stamp.
Priority Document
• It is NOT necessary to submit a certified copy of the priority document in National Stage applications:
– The certified copy is either filed electronically or provided to the International Bureau in the PCT application.
– The International Bureau provides a copy to the USPTO for National Stage filing.
• Form PCT/IB/304 indicates that the priority document has been filed in the International (PCT) Application and can be used to provide “proof” to the USPTO.
Make sure a
“Date of Receipt…”
has been entered
Read the fine print.
Form PCT/IB/304
New Case Filing – Quick Reference List
• Form PTO-1390• Application Data Sheet• Power Of Attorney and Transmittal (if any)• Preliminary Amendment (if any)• Article 19/34 (if any)• PCT Documents (in numerical or alphabetical order)• Information Disclosure Statement Transmittal (if any)
– Information Disclosure Statement SB/08 form – Foreign Office Action/Search Report – Foreign References – Non-Patent Literature References
• Specification (Specification, Claims & Abstract) • Declaration (if any)• Drawings (if any) • Sequence Listing (if any)
QUESTIONS