MPEP Ch. 1800 Flashcards
MPEP Ch. 1800
PCTs (International Apps)
PCTs
Does not bestow rights, just reserves right to later enter a WIPO country national stage.
Two stages International Phase and National Phase.
International Phase
Steps include:
(1) Filing of International App by applicant and processing by “receiving office”
(2) Establishment of the international search report by one of the international search authorities
(3) a preliminary non-binding written opinion sent to applicant by the ISA as to novelty, inventive step, and industrial applicability
(4) Publication (electronically) of the international app along with international search report
(5) [optional] establishment of an international preliminary examination that results in a second written report entitle “International Preliminary Report on Patentability”
- Applicant must make demand for report by the later of 3 months from issuance or the ISR and the written opinion of the ISA or 22 months from priority date.
Search report typically about 16 months from priority date. Publication usually around 18 months. Non-binding opinion made public at end of 30 months from priority date, but sent to applicant around 16 months.
National Phase
To enter National Stage in US applicant must:
(1) pay the required national fees
(2) furnish a translation of the international app; and
(3) submit the require oath or declaration
National Phase time limits
copy of app and fee must be provided 30 months from the priority date. NON-EXTENDABLE. Oath and translation may be submitted one month late if accompanied with appropriate fee.
Failure to provide app by 30 months will cause the app to lapse in that territory.
Elements of International App
Must contain:
(1) request (indication it is intended as international app);
(2) designation of at least one contracting state (country);
(3) name of the applicant;
(4) an abstract; and
(5) the fee
International Request
Must contain the title of the invention, ID the applicant and any agent. Must be (initially) filed in a country where at least one applicant is a resident or national.
Designation of Contracting States
One member country must be formally designated at the time of filing. No fees until applicant enters respective national phases. q
Priority Claims
Priority claim must indicate the country in which the earlier app was filed, the date on which it was file, and the number under which it was filed.
Before the expiration of 16 months from priority, a certified copy of the prior app must be submitted by applicant to International Bureau or to the Receiving office.
Unity of Invention
App needs to set forth claims that relate to only one invention or to a group of inventions so lines as to form a single general inventive concept. (No restrictions).
If lacking in unity of invention, subject to additional fees in order to request reconsideration of requirement.
Amendments to International Apps
One opportunity, under Article 19, to amend claims of international app prior to publication after applicant has received the international search report and written opinion of the ISA.
A second opportunity, under Article 34, is available until 22 months from the priority date or 3 months after the date of mailing of the search report and written opinion, whichever expires later.
Amendments must be furnished to USPTO or are deemed canceled.
Once national stage is entered, free to amend as if any other filing.
PCT app claiming domestic priority
PCT can claim domestic priority from an earlier US app if filed w/in one year of the filing date of that US app.
Typically tested PCT rules -
Min. part of I.A.
PCT filed at US office must have
(1) at least one “applicant” who is a US national or resident;
(2) English description (spec, claims, and drawings)
(3) Request for treatment as an international application;
(4) designation of at least one country (automatic) , which can be U.S.;
(5) priority claim (if appropriate);
(6) abstract
Typically tested PCT Rules - Tricky issues regarding initial filing
Fee and abstract may be submitted late
Applicant means inventor or owner
Priority claim cannot be added late
An all-encompassing designation is automatic
Standard for restriction is based on unity of invention and the US restriction rules do not apply
Typically tested PCT Rules - National Phase
To enter US national phase the following must be provided to PTO:
copy of I.A. and
national filing fee
Both due no later than 30 months after priority date. Cannot submit these late.
Oath and translation must also be provided, but can be provided later with a surcharge.
