PCT Timetable PCT Timetable Months from Earliest Priority Date DeadlineAction 16 th Month International Searching Authority ISA Prepares International Search Report ISR and Written Opinion WO ID: 387722
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Slide1
PCT Search & PublicationSlide2
PCT Timetable
PCT
Timetable
Months from Earliest
Priority Date
Deadline/Action
16
th
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
18
th
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).”
18
th
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.Slide3
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. Slide4
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 EuropeSlide5
PCT
Search (ISA)- Typical Flow
Int’l Bureau (
IB
)
PCT
Application
Searching
Authority (ISA)
ISA Written
Opinion (WO)
Int’l Search
Report (
ISR
)
Not Public
Around
16-18 MonthsSlide6
PCT
Search (ISA)- Typical Flow
Int’l Bureau (
IB
)
PCT
Application
Int’l Search
Report (
ISR
)
Published at
18 MonthsSlide7
PCT Amendments & ExaminationSlide8
PCT Amendments Common Tactics
No Amendments
(Most Common Approach)
PCT
Application is a glorified Extension of Time
Article 19 Amendments to Claims
Only when
ISR
Cites Novelty Destroying Art
Article 34 Amendments
Arguments, claim amendments, etc. in hopes of getting positive
IPER for national stageSlide9
PCT Timetable
PCT
Timetable
Months from Earliest
Priority Date
Deadline/Action
18
th
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 19
th
Month deadline and do not nationalize by the 20
th
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 19
th
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 20
th 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).Slide10
PCT- Short Flow Chart
O
Months
< 12
Months
14
Months
16
Months
18
Months
19
MonthsArticle 19 Amendments(Usually 2 Months From Search Report)Slide11
PCT- Short Flow Chart
20
Months
28
Months
30
Months
31
Months
22
MonthsSlide12
PCT
Timetable
PCT
Timetable
Months from Earliest
Priority Date
Deadline/Action
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.Slide13
PCT- Short Flow Chart
20
Months
28
Months
30
Months
31
Months
22
Months
Article 34
Amendments(or 3 Months From Written Opinion- Rare)Slide14
PCT Timetable
PCT
Timetable
Months from Earliest
Priority Date
Deadline/Action
22
nd
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 MonthSend 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 29th
Month.
What you need to do- Send nationalization letter to the client. Slide15
How to Make Changes
Changes 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 DrawingsArticle 34 Amendment (Only)Argue Against Cited Prior ArtArticle 34 Amendment (Only) Slide16
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 RequestSlide17
Formality Changes Paperwork
(1) Cover Sheet Explaining Changes
(2) Substitute Sheet(s) of Request Containing the ChangesSlide18
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 IBBut 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 19Slide19
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.”Slide20
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 consecutivelySlide21
Article 19 Paperwork
(3) Statement Under Article 19 (Optional)
B
rief
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 NOTExceed 500 wordsContain disparaging comments about the International Search Report (ISR) or relevance of cited artRarely DoneSlide22
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 DemandUSPTO (if RO) or EP (if ISA)Paperwork(1) Demand for International Preliminary Examination under Article 31And Fee (2) Response to Written Opinion- indicating changes + arguments(3) Replacement sheets for any amended Claims, Specification, DrawingsSlide23
Article
34
Paperwork (
Response to WO)
(1
)
Demand
for International Preliminary Examination under Article
31
Demand
FEESlide24
Article
34
Paperwork (
Response to WO)
Identify Here:
International Preliminary
Examination Authority
(
IPEA
)
Identify Applicants &
Inventors (supplemental pages)
Demand PaperworkVery Similar to RequestWill only discuss significant differencesSlide25
Article
34
Paperwork (
Response to WO)
Demand Paperwork
Common Representative
Basis for ExaminationSlide26
Article
34
Paperwork (
Response to WO)
Demand Paperwork
Checklist
Signature
Identify What
You Are Filing
Sign HereSlide27
Article 34
Paperwork (
Response to WO)
(2) Response to Written Opinion.
Explanation of Changes Made to Application
Arguments