June 2015 Patent Cooperation Treaty (PCT) Amendment & Response Practice

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  • June 2015 Patent Cooperation Treaty (PCT) Amendment & Response Practice
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  • PCT Amendments Common Tactics 1.No Amendments (Most Common Approach) PCT Application is a glorified Extension of Time 2.Article 19 Amendments to Claims Only when ISR Cites Novelty Destroying Art 3.Article 34 Amendments Arguments, claim amendments, etc. in hopes of getting positive IPER for national stage
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  • PCT Timetable Months from Earliest Priority DateDeadline/Action 18 th Month1 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). 19 th MonthDeadline 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 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). 20 th MonthDeadline to Nationalize in Chapter I Countries if Demand was Not Filed 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 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).
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  • PCT- Short Flow Chart Priority PCT Application Filed Restoration of Priority Deadline Search by ISA Intl Publication + ISR Deadline to File Demand for Chapter 1 Countries O Months < 12 Months 14 Months 16 Months 18 Months 19 Months
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  • PCT- Short Flow Chart Chapter 1 Deadline to Nationalize Deadline- Demand Examination & Response to Written Opinion Examination by IPEA Target Date to Issue IPRP by ISA (for Chapter 1) or IPEA (Chapter 2) Chapter 2 Deadline (Most Countries) Chapter 2 Deadline (A Few Countries) 20 Months 28 Months 30 Months 31 Months 22 Months
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  • PCT Timetable Months from Earliest Priority DateDeadline/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. 21 st 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.
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  • PCT- Short Flow Chart Chapter 1 Deadline to Nationalize Deadline- Demand Examination & Response to Written Opinion Examination by IPEA Target Date to Issue IPRP by ISA (for Chapter 1) or IPEA (Chapter 2) Chapter 2 Deadline (Most Countries) Chapter 2 Deadline (A Few Countries) 20 Months 28 Months 30 Months 31 Months 22 Months
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  • PCT Timetable Months from Earliest Priority DateDeadline/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. 28 th MonthTarget 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. 28 th 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 29 th Month. What you need to do- Send nationalization letter to the client.
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  • How to Make Changes Changes to Application Information (Formalities) Fix Typos 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)
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  • Formality Changes What can be amended? Information provided on the request (e.g., Applicant, Typos, 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
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  • Formality Changes Paperwork (1) Cover Sheet Explaining Changes (2) Substitute Sheet(s) of Request Containing the Changes
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  • 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
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  • 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.
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  • 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
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  • 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
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  • 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
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  • Article 34 Paperwork (Response to WO) (1) Demand for International Preliminary Examination under Article 31
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  • Article 34 Paperwork (Response to WO) Demand Paperwork Very Similar to Request Will only discuss significant differences
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  • Article 34 Paperwork (Response to WO) Demand Paperwork Common Representative Basis for Examination
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  • Article 34 Paperwork (Response to WO) Demand Paperwork Checklist Signature
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  • Article 34 Paperwork (Response to WO) (2) Response to Written Opinion. Explanation of Changes Made to Application Arguments
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  • Article 34 Paperwork (Response to WO) (3) Complete set of replacement sheets for amended claims, specification, and/or drawings Clean Set Only (no mark-ups)
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  • Article 19 v. 34 Amendments If Demand filed, no need to amend claims under Article 19, unless you want provisional protection. Article 19 Amendments are published, so you may gain provisional rights to the published Article 19 claim amendments (i.e., damages clock) Article 19 Only need to amend the claims (not drawings or specification) Dont want to make any arguments Article 34 Does not require to first file Article 19 Amendments Want to Argue Need to makes changes to specification, drawings (or claims)
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  • PCT Examination Report Type of Examination Report Depends on Whether Applicant Requested Examination (Chapter II) or Not
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  • PCT Search (ISA)- Typical Flow Intl Bureau (IB) PCT Application Searching Authority (ISA) ISA Written Opinion (WO) Intl Search Report (ISR)
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  • PCT Chapter 1 Only- Typical Flow ISA Written Opinion (WO)
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  • PCT Chapter 1 Only From: http://www.wipo.int/edocs/mdocs/aspa c/en/wipo_reg_pct_tyo_13/wipo_reg_ pct_tyo_13_t5.pdf http://www.wipo.int/edocs/mdocs/aspa c/en/wipo_reg_pct_tyo_13/wipo_reg_ pct_tyo_13_t5.pdf
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  • Paperwork International Preliminary Report on Patentability (IPRP)- preliminary, non-binding report on whether the claimed invention appears to be patentable. It is issued by the International Bureau on behalf of the International Searching Authority (ISA) under Chapter I of the PCT where an international preliminary examination report has not been or will not be established. The report has essentially the same contents as the written opinion of the International Searching Authority. In other words, if the Applicant does not file a demand for Chapter II examination, IPRP will be the WO. PCT Chapter 1 Examination Report
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  • PCT Search (ISA)- Typical Flow Intl Bureau (IB) PCT Application Searching Authority (ISA) ISA Written Opinion (WO) Intl Search Report (ISR)
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  • PCT Chapter 2- Typical Flow ISA Written Opinion (WO) Intl Preliminary Examination Authority (IPEA) Intl Preliminary Examination Report (IPER)
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  • PCT Chapter 2 From: http://www.wipo.int/edocs/mdocs/aspac/en/wipo_reg_pct_tyo_13/wipo_reg_pct_tyo_13_t5.pdf http://www.wipo.int/edocs/mdocs/aspac/en/wipo_reg_pct_tyo_13/wipo_reg_pct_tyo_13_t5.pdf
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  • PCT Chapter Examination Report Paperwork International Preliminary Examination Report (IPER)- is a preliminary, non-binding opinion, established by the International Preliminary Examining Authority (IPEA) on the request of the applicant, on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. As of 1 January 2004, this report is also known as the "international preliminary report on patentability (Chapter II of the PCT)"..
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  • PCT National Phase Please see Nationalizing PCT Applications in the US presentation that compares the 371 National Stage Procedure with the Bypass Continuation Application Procedure http://www.slideshare.net/wemmh/best-way-to- nationalize-pct-applications-inhttp://www.slideshare.net/wemmh/best-way-to- nationalize-pct-applications-in Presentation is Dated- Some Changes Required Due to AIA Updated Presentation Coming Soon!
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  • PCT Timetable Months from Earliest Priority DateDeadline/Action 29 th -30 th MonthSend Reminder Letter(s)/Call Client for Nationalization Instructions- If instructions are not received, you need to remind the client. What you need to do- Send a copy of the nationalization letter stamped Reminder and/or call the client. 30 th MonthDeadline to Nationalize the PCT Application- For most countries, this is the deadline when you need to nationalize the application. Note that you can nationalize the PCT application at any time, but it might be helpful to at least wait until after you receive the International Search Report before deciding whether or not to nationalize. What you need to do- Send the application to the foreign associate(s) in the countries where the client wishes to seek patent protection
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  • Final Item Sign up for PCT Newsletter at www.wipo.intwww.wipo.int Updates on Fee, ISAs, etc.
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  • Need More Information? Please Contact: Chuck Schmal ([email protected]) Woodard, Emhardt, Moriarty, McNett & Henry LLP 111 Monument Circle, Suite 3700 Indianapolis, IN 46204 (317) 634-3456 www.uspatent.com