Patent Cooperation Treaty and Application Conference September 24, 2012 Neal L. Slifkin 99 Garnsey Road Pittsford, NY (585)

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Alternatives to PCT  Direct national filings on the same day you file the U.S. application  Benefit – obtain the foreign patents sooner  Rarely done this way  Direct national filings within one year under Paris Convention  Benefit – cost savings over PCT 2

Neal L. Slifkin (585) © Harris Beach PLLC, Benefits of PCT  Delay  You are buying time

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Benefits of PCT  Can extend time to file until 30 months from the first filing date  Maintains options on countries while U.S. application is pending  Extends time to evaluate the results of the first-filed application  Defers costs of individual national filings at a cost of approximately $5,000  PCT Procedures can affect patentability:  Examination report can carry significant weight in national prosecution 4

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Benefits of PCT  Provides additional time to commercialize the invention  Provides time to secure funding for start-ups  Provides time to assess the demand for the invention/product 5

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Benefits of PCT  In the U.S. you are likely to have the same examiner reviewing the PCT and U.S. applications  Can correct defects once, instead of in every national application, resulting in significant savings 6

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Fees  PCT Fees  Filing fee - ~$1,500  Search fee - $2000 (U.S.), $1,101 (Korea)  Transmittal fee - $240 7

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Where to File?  Where to file?  U.S. Receiving Office  WIPO  If applicants are non-U.S. citizens, you should file with WIPO 8

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 When to File?  A U.S. applicant may file the U.S. national application first, and then the PCT application within 12 months  Consider filing a provisional first  A U.S. applicant may file the PCT application first, and then the U.S. national application at 30 months 9

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Chapter II  Should your client demand international preliminary examination? 10

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 When to Nationalize?  Deadline is 30 months from priority date (first filed application)  Exceptions  Europe 31 months  Canada 42 months (with extension fees ) 11

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Where to Nationalize?  Select places of manufacture and sale  Manufacturing in a few countries  Sales/use in key countries  Consider practical enforcement issues  Difficulties and expense of enforcing  Rampant piracy in many countries such as China, Taiwan, India, Indonesia, the Philippines, Poland, Russia, Ukraine, Brazil, Paraguay and Argentina  File national applications on the most valuable inventions  Consider having translations done in U.S. 12

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Where to Nationalize?  Rochester region exported $5.5 billion in goods in 2011, up 7.4% from 2010  Top export markets are Canada, China, Mexico, Germany and the United Kingdom 13

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Europe or Select Countries?  Cost of filing EP application  $5000  Cost of validating  Few hundred to a few thousand per country  Cost of filing direct in large markets in Europe  $2,000 to $4,000 per country  Consider DE and UK only 14

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 China  Should your client file in China?  Uncertainty of court system  Is some chance of success better than none?  Copying is more likely if there is no patent protection  Cost - $4,500 15

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 China  For highly valuable inventions consider filing a Chinese utility model application immediately under the Paris Convention in addition to a utility patent application nationalized through the PCT  Utility model applications are granted within 6 to 12 months  May have to abandon the utility model patent to get the utility patent to avoid double patenting 16

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Other Countries?  Japan  Several thousand dollars to file  India  Relatively inexpensive - $3,000 17

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Where Can’t You Nationalize?  There are about 50 non-member States  Notable non-member states include – Taiwan, Argentina, Venezuela, Bolivia  If you want protection in these countries, you must file directly within 1 year of the priority date 18

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Patent Prosecution Highway  Accelerated process  AU, AT, CA, CN, DK, EP, ES, FI, IL, IS, JP, KR, NO, RU, SE  Usually reduces number of Office Actions from foreign patent offices  Reduces cost to client  Obtain foreign patents sooner  Take care in the selection of searching authority (select the U.S. ISA) 19

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Patent Prosecution Highway  Requires a positive:  International search report  Written opinion or  International preliminary examination report 20

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Patent Prosecution Highway  File PCT in RO/US  Use favorable WO or IPER  File in USPTO and other national offices 21

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Patent Prosecution Highway  Submit a request to enter PPH to the USPTO  Submit copies of all work product indicating the patentable subject matter (e.g., WO)  Submit an IDS including the documents in (2) and cited references (include certified translations if necessary)  Show claim “correspondence” in the request form or separately 22

Neal L. Slifkin (585) © Harris Beach PLLC, 2012 Allowance Rates PPH  USPTO Statistics  USPTO Allowance Rates (AIPLA Survey)  PCT-PPH cases: 97.9%  non-PPH cases: 46% (including RCEs) 23