Patents- Practical Aspects of International Patent Procurement/Prosecution June 2015 Patent Cooperation Treaty (PCT) Practice Overview

Patent Foreign Filing Options –Directly file –Paris Convention –PCT (Patent Cooperation Treaty) Paris Convention –Shorter deadlines to decide where to file (1 year) –Overall, typically less expensive than PCT PCT –Longer time on where to file (30 months) –Usually, more expensive

Paris Convention- Overall Procedure Paris Convention –Utility Patents- One year to foreign file from original filing date –Design Patents/Industrial Designs- Six months to foreign file from original filing date What about non-Paris Convention (and non- PCT) Countries –Some provide a one year grace period to file (e.g., Taiwan) –Most have an absolute novelty requirement, so you need to file before disclosure

Overall Procedure Paris Convention Deadlines Utility Patent US App. Foreign App. One Year from US Filing Date

Paris Convention- Why Pick? Reasons to Pick Paris Convention Filing –Less Expensive Overall –Less Delay –Know the Specific Countries & Client Will Not Change Mind in the Future Reasons to Not Pick Paris Convention Filing –Uncertain where to file (e.g., not sure about market) –Want to delay to give more time to develop product, market, etc. –More fees up front with Paris Convention

Paris Convention Foreign Associate US Attorney Foreign IP Office USPTO One Year from US Filing Date Foreign IP Office One Year from US Filing Date Foreign Associate

7 PCT General Information Generally worldwide, about 50% of all cases foreign filed are filed through the PCT. Currently 148 country members to PCT. PCT preserves your right to foreign file for an additional 18 months.

8 PCT- Overall Procedure- Example #1 PCT App. Foreign App. US App. One Year from US Filing Date To File PCT Application Generally, 30 Months from US Filing Date To File Foreign Applications

9 PCT- Overall Procedure- Example #2 PCT App. Foreign App. US App. Generally, 30 Months from PCT Filing Date To File Foreign & US Applications

PCT General Procedure Filing: with a national or regional patent Office or WIPO, complying with the PCT formality requirements, in one language, and one set of fees. International Search: an “International Searching Authority” (ISA) identifies the published patent documents and technical literature (“prior art”) and establishes a written opinion on invention’s potential patentability. International Publication: as soon as possible after the expiration of 18 months from the earliest filing date, the content of international application is published. Supplementary International Search (optional): a second ISA identifies, at applicant’s request, published documents which may not have been found by the first ISA which carried out the main search. International Preliminary Examination (optional): one of the ISAs, at applicant’s request, carries out an additional patentability analysis. National Phase: after the end of the PCT procedure, usually at 30 months from the earliest priority date, applicant starts to pursue the grant of patents directly before the national (or regional) patent Offices of the countries in which the applicant wants to obtain them.

Overview of PCT System From:

PCT Terminology Offices Receiving Office (RO)- office in which the International Application must be filed. For our purposes, the USPTO will be the RO, but in some circumstances the International Bureau (IB) will also act as the RO for U.S. residents and nationals. International Searching Authority (ISA)- responsible for the patent search and initial written opinion. In the Request form you can select U.S., AU, Korea, EPO, etc. as the ISA. Note the EPO has limitations as to subject matter that will be searched. The ISA is normally responsible for the International Search Report and Written Opinion, but the IPEA (see below) has the discretion to issue its own written opinion. International Bureau (IB)- maintains the master file of all international applications and acts as publisher as well as central coordinating body. The World Intellectual Property Organization in Geneva, Switzerland performs the duty of the IB.

PCT Terminology Offices –International Preliminary Examining Authority (IPEA)- The IPEA establishes the International Preliminary Examination Report (IPER) which presents the examiner’s final position as to whether the claim is novel, involves an inventive step, and is industrially applicable. The ISA normally creates the initial written opinion, but the IPEA has the discretion to issue its own written opinion. –Designated Office (DO)- is the national patent office acting for the state or region designated under Chapter I. Generally, it is where you can nationalize the application under Chapter I. (Not that important now.) –Elected Office (EO)- is the national patent office acting for the state or region elected under Chapter II. Generally, it is where you can nationalize the application under Chapter II. (Not that important now.)

PCT Terminology Chapter I –Examination without interaction between applicant and examiner –Automatic- Default –Examination Result= International Preliminary Report on Patentability (IPRP) (i.e., ISA-WO) Chapter II –Examination with interaction (argument) between applicant and examiner –Requires Filing of a Demand + Fee –Examination Result= International Preliminary Examination Report (IPER) (IPEA issues)

PCT Terminology Paperwork International Search Report (ISR)- consists mainly of a listing of references to published patent documents and technical journal articles which might affect the patentability of the invention disclosed in the international application. The report contains indications for each of the documents listed as to their possible relevance to the critical patentability questions of novelty and inventive step (non-obviousness). X= Novelty Y= Inventive Step A= Of Interest

PCT Terminology Paperwork Written Opinion (WO)- is a preliminary and non-binding opinion by the ISA on whether the invention appears to meet the patentability criteria in light of the search report results. The WO is sent together with the ISR to the Applicant’s representative.

PCT Terminology 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 (IPER) has not been or will not be established. The report has essentially the same contents as the written opinion of the International Searching Authority (ISA). In other words, if the Applicant does not file a demand for Chapter II examination, IPRP will be the WO.

PCT Terminology 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)"..

PCT History Lesson Priority PCT Application Filed Search by ISA Int’l Publication + ISR Deadline to File Demand for Chapter II Examination Chapter I National Phase Deadline O Months < 12 Months 16 Months 18 Months 19 Months 20 Months

PCT History Lesson Priority PCT Application Filed Search by ISA Int’l Publication + ISR Deadline to File Demand for Chapter II Examination Chapter I National Phase Deadline O Months < 12 Months 16 Months 18 Months 19 Months 20 Months

PCT History Lesson Chapter I National Phase Deadline Chapter II National Phase Deadline 2O Months 30 Months

PCT History Lesson Priority PCT Application Filed Search by ISA Int’l Publication + ISR Deadline to File Demand for Chapter II Examination National Phase Deadline O Months < 12 Months 16 Months 18 Months 19 Months 30 Months

PCT History Lesson “Reservation” Countries- Gave Notice that National Laws Not Compatible with Amended PCT –Deadlines without Demand- Still the 20th month Chapter I deadline to nationalize the application –  Only applies to a limited number of countries: Luxemburg; Tanzania; and Uganda.  Even if you do not file a Demand by the 19th Month deadline and do not nationalize by the 20th Month Chapter I deadline, you can still enter these countries by the Chapter II deadline through regional patent offices (EPO or ARIPO).  Filing a Demand for Chapter II examination by the 19th month will extend the deadline to directly nationalize in Luxemburg, Tanzania, and Uganda to the Chapter II deadline (30th month).

PCT History Lesson ISA now issue ISR and WO Demand for International Preliminary Examination (Chapter II) –Deadline Changed to Later of:  22 Months or  3 Months From Mailing Date of ISR/WO Why Now File a Demand for Examination? –Examiner Interaction- Get Positive IPER –Make Amendments to Spec. and Drawings

PCT Pointers Chapter II –Provides for additional procedures for examination of the international application. –Deadline to nationalize the application is at least 30 months from the earliest priority date. –For most countries, the application automatically has the Chapter II deadline  Again, exceptions are Luxemburg, Tanzania, and Uganda,

PCT Pointers Calculation of docket deadlines is based on the earliest priority date claimed. Chapter I and Chapter II- distinction is less important under current PCT practice

PCT Filing

PCT Timetable Months from Earliest Priority DateDeadline/Action 8 th MonthSend Letter to Client Requesting Foreign Filing Instructions- What you need to do- Send the foreign filing letter. 10 th -12 th MonthSend Reminder Letter(s)/Call Client for Foreign Filing Instructions What you need to do- Remind client until you receive instructions 12th MonthDeadline to File PCT Application What you need to do- Prepare the PCT Request, application, and transmittal. On the Request, designate which figure should appear on the face of the published application and add/indicate the reference numerals that should be in the abstract for the designated figure. 14 th MonthTypically, receive by this deadline: -Filing Receipt (RO/105, ISA/202 & RO/102) -Record Copy Received by International Bureau (IB/304) Deadline -Restoration of Priority Deadline- In case you missed the 1 year Paris Convention Deadline What you need to do- Report Filing Receipt to client. 16 th MonthPriority Document Deadline- This is the final deadline to update your priority claim as well as submit certified copies of the applications from which you are claiming priority. Normally list the priority applications on the Request when the application is filed. This deadline only applies when waiting on the application number for the international application. What you need to do- Make sure your priority claim is correct.

PCT- Short Flow Chart Priority PCT Application Filed Restoration of Priority Deadline Search by ISA Int’l Publication + ISR Deadline to File Demand for Chapter 1 Countries O Months < 12 Months 14 Months 16 Months 18 Months 19 Months