Chapter 1800

Question 1

What are the options if a person is seeking a patent protection in several countries?

Answer 1

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

Question 2

What is a PCT?

Answer 2

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

Question 3

What does the Chapter 1 of the PCT discuss?

Answer 3

the filing, search and publication procedures

Question 4

What does the Chapter 2 of the PCT discuss?

Answer 4

additional procedures for a preliminary examination of international applications.

chapter 2 is optional and should be thought of as an independent processing

Question 5

Who are the appropriate receiving offices for US citizens and nationals?

Answer 5

USPTO and WIPO

Question 6

What is the function of the receiving office (RO)?

Answer 6

to review the international application to ensure it complies with filing and other formalities

will grant an international filing date to the international applications

Question 7

What is the international filing date?

Answer 7

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

Question 8

What are the requirements to the international application for it to be issued an international filing date?

Answer 8

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)

Question 9

What happens if an international application has been filed at USPTO but the none of the applicants is a US resident or national?

Answer 9

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

Question 10

What happens once priority date of an international application has been issued?

Answer 10

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)

Question 11

What are the functions of ISA?

Answer 11

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

Question 12

What are the functions of International Bureau?

Answer 12

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

Question 13

What is the deadline for submitting a certified copy of the priority document with the international application?

Answer 13

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

Question 14

Can the claims be amended in international applications?

Answer 14

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

Question 15

What will the IB publish?

Answer 15

The IB will normally publish the international application, ISR and any amended claims at the expiration of 18 months from the priority date

Question 16

Is the written opinion made public and if so, when?

Answer 16

Yes, at the end of the expiration of 30 months from the priority date

Question 17

How can an applicant file for Chapter II examination?

Answer 17

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

Question 18

Who are the appropriate IPEAs?

Answer 18

same as those agencies who are ISAs

Question 19

When does the IPEA normally start the examination process?

Answer 19

Once in possession of:

the demand

the fee

translation of the application and other papers, if required

ISR

ISA’s written report

Question 20

What is the function of IPEA?

Answer 20

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”

Question 21

When is the IPRP generally issued?

Answer 21

28 months from the priority date

Question 22

Who gets a copy of the IPRP?

Answer 22

applicant

IB

IB will send a copy to each designated office

Question 23

Can amendments to claims be made during the PCT process?

Answer 23

Under Article 19, an applicant is entitled to ONE opportunity to amend the claims of the international application in the international phase

Question 24

How to make amendments under Article 19?

Answer 24

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

Question 25

How can an applicant have a second chance to amend his international application?

Answer 25

If the applicant chooses to file a demand for International Preliminary Examination (IPE), same as requesting chapter II examination, the applicant has a second chance to amend his application under Article 34

Article 34 amendments should accompany the chapter II demand

Question 26

What can be amended under Article 34?

Answer 26

claims

description

drawings

Question 27

What happens at the conclusion of the PCT procedure?

Answer 27

applicant may enter the national stage and pursue patent protection directly before the national (regional) Patent Offices of the countries that were designated

upon enter the national stage, the designated countries will receive ISR and written opinion, and/or IPER (if chapter II was entered)

Question 28

What is the time limit for entering the national stage?

Answer 28

Applicant must complete the requirements for entering the national stage for each designated country by the expiration of 30 months from the priority date to avoid any question of withdrawal of the application. However, some countries will allow longer period