Chapter 1800 Flashcards
What are the options if a person is seeking a patent protection in several countries?
the applicant may file a separate patent applications directly with the desired countries
the applicant may file a patent application in a Paris Convention country and then file a separate patent applications in other Paris Convention countries within 12 months from the filing date of the first patent application, giving the applicant the benefit in all those countries of the filing date of the first application
the applicant may file an application under Patent Cooperation Treaty (PCT) which is simpler, easier, and cost effective than the first 2 options
What is a PCT?
it’s an international treaty, administered by WIPO between more than 142 Paris Convention countries including the US
PCT allows US applicant to file 1 application within the US Patent Office and have that application acknowledged as a regular national or regional filing in many contracting states to the PCT
PCT enables foreign applicant to file an international applications designating US in their home language in their home receiving office and have the application acknowledged as a regular US national filing
What does the Chapter 1 of the PCT discuss?
the filing, search and publication procedures
What does the Chapter 2 of the PCT discuss?
additional procedures for a preliminary examination of international applications.
chapter 2 is optional and should be thought of as an independent processing
Who are the appropriate receiving offices for US citizens and nationals?
USPTO and WIPO
What is the function of the receiving office (RO)?
to review the international application to ensure it complies with filing and other formalities
will grant an international filing date to the international applications
What is the international filing date?
If no priority claim is made, then the international filing date is the priority date
If priority claim is made, then the date of the earlier filed national application is used as the “priority date” for the international applications
What are the requirements to the international application for it to be issued an international filing date?
international application must be in the prescribed language, in which the RO is competent to receive or one accepted by IB (will require transmittal fee)
must indicate it’s an international application
designate at least 1 contracting state of the PCT
name the applicant
description
claim(s)
What happens if an international application has been filed at USPTO but the none of the applicants is a US resident or national?
Then, the USPTO would not be a competent RO for the international application, but if one of the applicant is a resident of any PCT contracting state, then the filing date will be kept and it will be considered as though USPTO is receiving the applicant on behalf of IB
If none of the applicants are a resident and national of a PCT contracting state, then the application is denied an international filing date
What happens once priority date of an international application has been issued?
By 13 months from the priority date, the RO prepares and transmits a copy of the international application to:
the International Searching Authority (ISA) and
forward the original application to the IB (record copy)
a second copy of the international application remains in the RO (home copy)
What are the functions of ISA?
to conduct a prior art search of inventions claimed in international applications
issue an international search report (ISR) and a written opinion within 3 months from the receipt of the search copy, which is usually about 16 months after the priority date of the application
What are the functions of International Bureau?
to maintain the master file of all international applications
to act as the publisher and central coordinating body under the PCT
WIPO in Geneva, Switzerland performs the duties of the IB
What is the deadline for submitting a certified copy of the priority document with the international application?
If not filed with the international application with the RO, then the applicant must submit a certified copy of the priority document to the IB or RO no later than 16 months after a priority date
Can the claims be amended in international applications?
Yes, the applicant has 2 months from the date of transmittal of the ISR by filing an amendment under Article 19 and may file a brief statement explaining the amendment directly with the IB
What will the IB publish?
The IB will normally publish the international application, ISR and any amended claims at the expiration of 18 months from the priority date
Is the written opinion made public and if so, when?
Yes, at the end of the expiration of 30 months from the priority date
How can an applicant file for Chapter II examination?
If desired, the applicant must make a “demand” for international preliminary examination
it must be filed within 22 months of the international application’s priority date of the appropriate International Preliminary Examining Authority (IPEA)
Then, the IPEA will forward a copy of the demand to IB, and IB will notify the various designated countries that the application has entered Chapter II
Who are the appropriate IPEAs?
same as those agencies who are ISAs
When does the IPEA normally start the examination process?
Once in possession of:
the demand
the fee
translation of the application and other papers, if required
ISR
ISA’s written report
What is the function of IPEA?
IPEA will utilize the ISR and written opinion and conduct further examination of the application before issuing an International Preliminary Report on Patentability (IPRP) which presents:
the IPEA examiner’s final position as to whether each claim is “novel” and involves “inventive step” and is “industrially applicable”
When is the IPRP generally issued?
28 months from the priority date
Who gets a copy of the IPRP?
applicant
IB
IB will send a copy to each designated office
Can amendments to claims be made during the PCT process?
Under Article 19, an applicant is entitled to ONE opportunity to amend the claims of the international application in the international phase
How to make amendments under Article 19?
any amendments to the claims under Article 19 must be filed with the IB
amendments must be in the language of in which the international application was filed, which will also be the publication language
applicant can make amendments under Article 19 after the applicant has received the ISR and the written opinion and until the end of 16 months from the priority date or 2 months after the transmittal of the ISR and opinion, whichever expires later
