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

2. Patent Foreign Filing Options PCT Directly file Paris Convention
PCT (Patent Cooperation Treaty)
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

3. Paris Convention- Overall Procedure
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

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

5. 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

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

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
US App.
One Year from
US Filing Date
To File
PCT Application
Generally,
30 Months from
US Filing Date
To File Foreign
Applications
PCT App.
Foreign App.
Foreign App.
Foreign App.

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

10. 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.

11. From: http://www.wipo.int/pct/en/faqs/faqs.html
Overview of PCT System
From:

12. 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.

13. 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.)

14. PCT Terminology Chapter I Chapter II
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)

15. Chapter 1 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

16. Chapter 1 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.

17. Chapter 1 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.

18. Chapter 2 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)"..

19. Pre- April 2002 No Demand- Needed to Nationalize By Chapter I Deadline
Priority
PCT Application Filed
Search by ISA
Int’l Publication + ISR
Deadline to File Demand for Chapter II Examination
Chapter I National Phase Deadline
PCT History Lesson
Pre- April 2002
No Demand-
Needed to Nationalize
By Chapter I Deadline O
Months
< 12
Months 16
Months 18
Months 19
Months 20
Months

20. Chapter II Pre- April 2002 Demand Filed PCT History Lesson O Months
Priority
PCT Application Filed
Search by ISA
Int’l Publication + ISR
Deadline to File Demand for Chapter II Examination
Chapter I National Phase Deadline
PCT History Lesson
Pre- April 2002
Demand Filed
Chapter II O
Months
< 12
Months 16
Months 18
Months 19
Months 20
Months

21. Pre- April 2002 Demand Extended Deadline to 30 Months
PCT History Lesson
Pre- April 2002
Chapter I National Phase Deadline
Chapter II National Phase Deadline
Demand Extended
Deadline to
30 Months 2O
Months 30
Months

22. Matter- still get 30 Months
Priority
PCT Application Filed
Search by ISA
Int’l Publication + ISR
Deadline to File Demand for Chapter II Examination
National Phase Deadline
PCT History Lesson
Post April 2002
PCT Amended
Demand Does not
Matter- still get 30 Months
To nationalize O
Months
< 12
Months 16
Months 18
Months 19
Months 30
Months

23. 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).

24. Demand for International Preliminary Examination (Chapter II)
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

25. 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,

26. 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

27. PCT Filing

28. PCT Timetable PCT Timetable Months from Earliest Priority Date
Deadline/Action
8th Month
Send Letter to Client Requesting Foreign Filing Instructions-
What you need to do- Send the foreign filing letter.
10th-12th Month
Send Reminder Letter(s)/Call Client for Foreign Filing Instructions
What you need to do- Remind client until you receive instructions
12th Month
Deadline 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.
14th Month
Typically, 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.
16th Month
Priority 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.

29. PCT- Short Flow Chart O Months < 12 Months 14 Months 16 Months 18
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

30. PCT- Short Flow Chart 20 Months 22 Months 28 Months 30 Months 31
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 22
Months 28
Months 30
Months 31
Months

31. PCT Application- Pre-filing Checklist
Get Applicant and Inventor Information
Nationality may impact Receiving Office (RO)
Foreign Filing License Granted/Needed
Pick Receiving Office (RO)
USPTO IB
Pick International Searching Authority (ISA)
Speed, Price, Where Nationalizing, etc.
Prepare Paperwork (format A4)

32. PCT Filing- Typical Flow
PCT Application
PCT Application
USPTO (RO)
US Attorney
Int’l Bureau (IB)
Request
Request Contents
Inventor(s)/Applicant(s)
Designate Agent
Not Designate Countries (DE, JP, KR)
Priority Claim & Documents
Pick Int’l Searching Authority (ISA)
Representative Figure

33. PCT Filing- Unusual Flow
PCT Application
US Attorney
Int’l Bureau (IB) + RO
Request
Directly File with IB
No Applicant is US Resident or National (but a resident/national of PCT Contracting State)
Restoration of Priority- within 2 month window after 12 Month Paris Convention Deadline

34. PCT Receiving Office (RO)
How to Pick a Receiving Office (RO)
Depends on where applicant is a national or residence
Two Options
Applicant’s National Patent Office (if allowed)
Normally, USPTO
WIPO International Bureau (IB)
From US Perspective, if no US Applicant, need to file with IB as RO and pick local attorney to prosecute.

35. Filing USPTO as Receiving Office (RO)
Familiarity with E-filing procedures.
File pdf’s of documents.
Instant Electronic Acknowledgment.
Payment via Credit Card in US Dollars.
Access to Documents in Private PAIR.
For invention made in the US, no separate request for a foreign filing license is needed.

36. Filing WIPO-IB as Receiving Office (RO)
Will need to obtain a WIPO Digital Certificate for each person who will physically file the applications.
The Digital Certificate must be used ONLY on the computer on which it was validated.
The Digital Certificate must be renewed every two years.
Will need to download and use PCT Easy software, which needs updating regularly.

37. Filing WIPO-IB as Receiving Office (RO)
Will need to open a WIPO Deposit Account
Otherwise, file an application at the International Bureau, then receive a link electronically to make an Epayment on WIPO via credit card.
You may have added conversion fees from US $ to Swiss francs on your credit card bill.
Pay by bank transfer to WIPO’s bank account or postal account
Will never have access to complete file history.

38. Filing WIPO-IB as Receiving Office (RO)
If invention made in the US, you will need a foreign filing license from the USPTO to file a PCT application at the IB.
Can file via fax; however, original must be delivered within 14 days from the fax transmission (FedEx preferred).
Lose valuable filing time since WIPO is six hours ahead of us.

39. PCT Searching Authorities (ISA)
Right Now, You Can Select From Among Several Patent Offices to Conduct the Search
US Searching Authorities Include
USPTO
EPO (European Patent Office)
KIPO (Korea)
Australia (IPAU)
Russia (Rospatent)
Israel (ILPO)
Note: Option Secondary ISA

40. PCT Searching Authorities (ISA)
Receiving Office (RO)
US or IB
ISA/US
ISA/EP
ISA/KR
ISA/AU
ISA/RU
ISA/IL

41. PCT- Options to Save Money
Below is a chart summarizing the options. Please note that the search fees are based on October 1, 2013 figures.
ISA Office
Search Fee
Benefits
Issues
Australia
$1,925
Less expensive than
Europe
Only searches applications in very limited technology fields. For example, it does not search all mechanical engineering and some biotechnology type inventions.
$2,366
Perceived high quality search
Expensive, and it will not conduct searches for applications that concern some types of technologies.
Korea
$1,219
Inexpensive and receive results relatively quickly.
Limits the technology of applications that can be searched.
United States of America
$2080
Expensive and does not supply the search report in a timely fashion (e.g., before Chapter II deadline).

42. PCT- Options to Save Money
Below is a chart summarizing the options. Please note that the search fees are based on October 1, 2013 figures.
ISA Office
Search Fee
Benefits
Issues
Russia
$704
Inexpensive
No experience.
Israel
$969
Limited number of applications allowed

43. Woodard, Emhardt, Moriarty, McNett & Henry LLP
Need More Information?
Please Contact:
Chuck Schmal
Woodard, Emhardt, Moriarty, McNett & Henry LLP
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
(317)