June 2015 Patent Cooperation Treaty (PCT) Amendment &
Response Practice
Slide 2
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
Slide 3
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).
Slide 4
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
Slide 5
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
Slide 6
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.
Slide 7
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
Slide 8
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.
Slide 9
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)
Slide 10
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
Slide 11
Formality Changes Paperwork (1) Cover Sheet Explaining Changes
(2) Substitute Sheet(s) of Request Containing the Changes
Slide 12
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
Slide 13
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.
Slide 14
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
Slide 15
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
Slide 16
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
Slide 17
Article 34 Paperwork (Response to WO) (1) Demand for
International Preliminary Examination under Article 31
Slide 18
Article 34 Paperwork (Response to WO) Demand Paperwork Very
Similar to Request Will only discuss significant differences
Slide 19
Article 34 Paperwork (Response to WO) Demand Paperwork Common
Representative Basis for Examination
Slide 20
Article 34 Paperwork (Response to WO) Demand Paperwork
Checklist Signature
Slide 21
Article 34 Paperwork (Response to WO) (2) Response to Written
Opinion. Explanation of Changes Made to Application Arguments
Slide 22
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)
Slide 23
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)
Slide 24
PCT Examination Report Type of Examination Report Depends on
Whether Applicant Requested Examination (Chapter II) or Not
Slide 25
PCT Search (ISA)- Typical Flow Intl Bureau (IB) PCT Application
Searching Authority (ISA) ISA Written Opinion (WO) Intl Search
Report (ISR)
Slide 26
PCT Chapter 1 Only- Typical Flow ISA Written Opinion (WO)
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
Slide 29
PCT Search (ISA)- Typical Flow Intl Bureau (IB) PCT Application
Searching Authority (ISA) ISA Written Opinion (WO) Intl Search
Report (ISR)
Slide 30
PCT Chapter 2- Typical Flow ISA Written Opinion (WO) Intl
Preliminary Examination Authority (IPEA) Intl Preliminary
Examination Report (IPER)
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)"..
Slide 33
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!
Slide 34
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
Slide 35
Final Item Sign up for PCT Newsletter at
www.wipo.intwww.wipo.int Updates on Fee, ISAs, etc.
Slide 36
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