pct search & publication. pct timetable months from earliest priority datedeadline/action 16 th...

PCT Search & Publication

PCT TimetablePCT Timetable

Months from Earliest Priority Date Deadline/Action

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)

Not Public

AROUND16-18 MONTHS

PCT Search (ISA)- Typical Flow

Int’l Bureau (IB) PCT Application

Int’l Search Report (ISR)

PUBLISHED AT 18 MONTHS

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).

PCT- Short Flow Chart

• Priority

• PCT Application Filed

• Restoration of

Priority Deadline

• Search by ISA

• Int’l Publication + ISR

• Deadline to File

Demand for

Chapter 1

CountriesO

Months< 12

Months14

Months16

Months18

Months19

Months

Article 19 Amendments(Usually 2 Months From

Search Report)


• Chapter 1 Deadline to Nationalize

• Examination by IPEA

• Chapter 2 Deadline

(Most Countries)

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.


• Chapter 1 Deadline to Nationalize

• Examination by IPEA

• Chapter 2 Deadline

(Most Countries)

20 Months

28 Months

30Months

31 Months

22 Months

Article 34 Amendments

(or 3 Months From Written Opinion- Rare)



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

Rarely Done

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

DEMAND FEE

Article 34 Paperwork (Response to WO)

Identify Here:International PreliminaryExamination Authority

(IPEA)

Identify Applicants &Inventors

(supplemental pages)

Demand Paperwork Very Similar to Request Will only discuss significant differences

Article 34 Paperwork (Response to WO) Demand Paperwork

Common Representative Basis for Examination

Article 34 Paperwork (Response to WO) Demand Paperwork

Checklist Signature

Identify What You Are Filing

Sign Here

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

– Explanation of Changes Made to Application– Arguments

pct search & publication. pct timetable months from earliest priority datedeadline/action 16 th...

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