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The PCT Patent Process Workshop

This Workshop takes participants through the entire PCT Process. It starts with a brief discussion of patents in general and U.S. patents in particular. It explains what the Paris Convention is and provides a thorough discussion of ABSOLUTE NOVELTY versus the more familiar U.S. GRACE PERIOD (statutory bar) pursuant to 35USC102b.

Understanding these elements is necessary to understanding the PCT process. To this end, numerous examples are provided, in most cases with regard to a fictitious invention (the “KickBack” putter), a fictitious inventor (Arnold Plummer), and a fictitious Assignee (PuttRite, Inc.). The Workshop discusses the different types of patent applications that are available through the PCT process, the countries that are AND ARE NOT members of the PCT and the importance of claiming priority of the parent application. AND MUCH MORE (see ABOUT and SYLLABUS above) and print out a BROCHURE!

About the Workshop

  • A full day of exposure to the Patent Preparation and Prosecution Process.
  • A continental breakfast and a buffet (working) lunch is provided.
  • Receive a 2 Volume. 265+ page Handbook with everything you need.
  • Limited to about 40 participants, thereby permitting individualized attention.
  • Geared to patent secretaries and paralegals of all experience
  • Particularly useful to individuals having 0-2 years experience levels.
  • Helpful to new patent attorneys/agents (CLE credits available in most states).
  • Learn not only WHAT to do, but WHY you do it.
  • Concentrate on the full range of docketing dates, as described in the Handbook.
  • Evaluate filled out Forms to and from the PCT Office, as set forth in the Handbook.
  • Learn what must be filed to obtain a filing date at a PCT Office.
  • Learn how to read and understand correspondence from the PCT Receiving Office.
  • Receive a Certificate of Completion.

Some Prior Participants of other SVS Workshops

Blakely, Sokoloff, Taylor & Zafman (in-house) • Burns, Doane, Swecker & Mathis Eastman Kodak Company • Baxter Healthcare (in-house) • Carr & Ferrell • Fish & Richardson (in-house) • Flehr, Hohbach, Test, Albritton & Herbert • Nokia Corp Gray, Cary, Ware & Freidenrich • Beyer & Weaver • H-P • IBM • Ericsson Limbach & Limbach (in-house) • Rogers & Wells (in-house) • Caterpillar • Pennie & Edmonds (in-house) • Wilson, Sonsini, Goodrich & Rosati • McCutchen Doyle Brown & Enerson • Townsend & Townsend & Crew (in-house) • Graham & James • Cooley Godward • Fish & Neave • Foley & Lardner (in-house) • Sony Corporation • Dorsey & Whitney Howrey & Simon • Finnegan, Henderson, Farabow, Garett & Dunner • Banner & Witcoff (in-house) • Johnson & Johnson Corp (in-house) • Ladas & Parry

Endorsements (from other SVS workshops)

"It looks like a lot of planning and organization went into the course. I really appreciated it and wished it was offered years ago when I started out." ---- Prior Participant

"I really liked the non-threatening approach and the way such complex material was handled. I especially enjoyed the real life examples and humor and the way you [Steve Shear] involved the audience." ---- Prior Participant

"The books were great. They were mega helpful and the instructor [Steve Shear] made the class upbeat, fun and very informative." ---- Prior Participant

"The workshop helped put together everything that we have been grinding out and wondering why. ….. The books are great resources." ---- Prior Participant

"Information was given in a way that made it easy to comprehend." ---- Prior Participant

PRESENTATION OUTLINE
The PCT In General

A. What is the PCT

1. A filing procedure to delay National Filings

a. Primarily for Patents of Invention (corresponding to US Utility Patents)
b. Can be used to cover Utility Models and Petty Patents

2. Delays initial outlay of large expenditures

a. What are the costs involved

B. What does the PCT include (physically)

1. Specification

a. Must be enabling (best mode not required)
b. Cannot rely on priority document if something is missing

2. Claims (must be at least one)

a. In the EPO claims are limited to the BROADEST initially filed
b. Reduce number of claims from US at the time US case is prepared

3. Drawings

4. Request (Chapter I) + $

5. Demand (Chapter II) in certain countries +$

C. What are the ways in which the PCT can be filed

1. Invention – to PCT – to National Filing (including US)

a. Advantages and Disadvantages

2. Invention – to US – to PCT – to National Filings

a. Advantages and Disadvantages
b. Keeping US designation
c. How to Handle a CIP (Define CIP if necessary)

3. Invention – Provisional – PCT (and US) – to National Filings

a. Advantages and Disadvantages (delaying start of enforcement period)
b. Consider Successive Provisionals (typically biotech)
c. Define and discuss Provisionals if necessary

D. Timing involved in first filing for Patent Protection

1. US – One Year Grace Period (35USC102b)

a. Public Use/Offer for Sale/Publication

2. Absolute Novelty

a. Commercialization/Publication

3. Paris Convention

4. First to File/First to Invent

5. EXERCIZES

E. Timing involved in the different stages of the Patent Process

1. Starting with a Provisional to US and PCT (with and without intervening A/N)

2. Starting with US to PCT (with and without intervening A/N)

a. Consider CIP

3. From PCT Filing (the Chapter I Request) to National Filing

a. From the Request to National Filing – 20 months (from Priority date)
b. From the Request to the Chapter II Demand (19 mo) to National Filing (30 mo)

i. Japan/EPO don’t require Chapter II to get extra 10 months (EPO 31 months)
ii. Switzerland, Sweden and Finland still require Chapter II
iii. Advantages to filing Chapter II even if you don’t have to in order to get the delay

F. The PCT Process in FAST FORWARD (major events)

1. Prepare Specification, at least on Claim and Drawing(s) where necessary

2. File Chapter I Demand +$ + Specification, Claims and Dwgs

a. A number of decisions have to be made here (Form to Use, R/O, Search Authority, etc)

3. Receive Form 301 and Notification of Int. Filing Number

4. Receive International Search and Written Opinion

5. File (or not) Article 19 Amendment

6. Receive and Respond to (or not) Invitation to Correct

7. Consider and file (or not) Chapter II (the Demand)

a. with or without Article 34 Amendment

b. wait for Written Opinion and respond thereto (or not)
c. IPERs (before1/1/04) and IPRPs (1/1/04 and after)

8. Consider (or not) National Filing at 20 months

9.Consider (or not) National Filings at 30 months

The PCT In Detail

A. Chapter I – Preparing and Filing The Request

1. The Form to use – PCT Safe or Adobe

a. advantages and disadvantages of each
b. unless stated otherwise, this outline will assume the PCT Safe form
c. Electronic Filing is NOW available

2. Applicant(s) MUST formally request to File the Request box 0-5

3. Who are the PCT Applicantsboxes II and III

a. Always the inventors for US designation
b. Always the owner of the application (inventor or Assignee) for non-US designations

4. Which R/Os can you file in box 0-6

a. any R/O in which at least one Applicant resides or is domiciled

5. CONDUCT EXERCIZE RE APPLICANTS AND R/Os

6. International Searching Authority box VII-1

a. US vs EPO vs. S. Korea
b. If you choose S. Korea MUST use Adobe form
c. advantages and disadvantages of each

7. Designationsbox V

a. All PCT states are automatically designated

i. to remove any one you must petition to do so
ii. exception – Germany, S. Korea and Russia without petitioning (see box in adobe form)box V-1

a. You can now remove Japan without petitioning
b. note the Adobe form actually has boxes for Germany, S. Korea and Russia
b. Reasons to undesignated certain states

i. In case of Germany, S. Korea, Russia and Japan, they don’t allow for both PCT and National App
ii. In case of US, you may not want to name inventors as PCT Applicants

c. Keep the US in for future bites at the apple and if you need it to file in US R/O

8. Reference to Parent Application box V-3

a. This is where you refer to, for example, a CIP

9. Claiming Priority box VI-1

a. The entire chain must be provided here

10. Don’t forget to request PCT office to obtain priority document(s)box VI-2

a. This only works in US R/O for US priority documents

11. Obtaining executed Declarations from inventors re inventorship box VIII-4

a. This is especially good idea if PCT rather than US is first filing

12. CHECKLISTbox IX

a. Go over this carefully and make sure everything is there

13. Pick the right FIGURE to be publishedbox IX-19

a. later make sure that the PCT office got it right

14. Languagebox IX-20

a. Should be filed in the language of the R/O

15. THE FEES – PCT Safe automatically calculates them. Adobe does not.

16. Filing the Request with the R/0

a. File by Express Mail – BE CAREFUL and don’t wait until the last day

B. Prosecution in Chapter I

1. Look for Form 301 – Make sure it is accurate

a. Check especially the priority dates claimed

i. If wrong MUST be corrected the sooner of 16 mo. from correct priority or 4 mo from PCT date

2. International Search and Written Opinion

a. Make sure you have all the references

i. Do you require translations – look at family treefor poss English counterparts

b. See if the selected Figure, Abstract and title were approved
c. review status of the prior art cited (x, y, etc)

i. Make sure the dates of the references (x, y, in particular) are good prior art dates
ii. x references correspond to Novelty in US and y corresponds to obviousness

d. Note, a response can only be filed in the IB not the R/O

3. Article 19 Response

a. This is NOT required. You might want to wait until going national (or not)

4. Invitation to Correct

a. Check to see if there is anything that really needs to be corrected

5. Reminder letter to Client (19 mo and 30 mo) – Look this over

C. Chapter II – Preparing and Filing The Demand (Adobe Form)

1. Applicant(s) MUST formally requestto File the Demand

a. See language at top under title

2. Applicants and R/O must qualify as in the Request

3. International Preliminary Examination Authority – see top of Form

a. If Search was done in EPO you can choose either EPO or US
b. If Search was done in US you can only choose US

4. Statements concerning Amendments box IV-1

a. See example of Article 34 Amendment

5. Election of States box V

a. You can withdraw states but you can’t add once withdrawn

6. The Fee

D. Prosecution in Chapter II

1. Written Opinion (Second Examination Report)

a. You will not receive this if all claims are allowed
b. Can but don’t have to respond

i. If you do respond must do so within time period set (no extensions)

2. Response to Written Opinion (example)

3. International Preliminary Report on Patentability (IPRP) – 1/1/04 and after

a. If you don’t respond, it will reiterate Written Opinion
b. If you do respond, WO will respond to your response

END OF THE PCT – TIME TO FILE NATIONAL!

Stephen C. Shear

A Former United States Patent Examiner, Steve has been practicing patent, trademark, copyright and other forms of intellectual property law for 30 years.

Prior to establishing the Law Offices of Stephen C. Shear, he was a partner at the Palo Alto law firm of Gray, Cary, Ware & Freidenrich (Now DLA Piper) and a senior partner at the San Francisco patent law firm of Flehr, Hohbach, Test, Albritton and Herbert.

He is the executive director and founder of Silicon Valley Seminars and has been conducting patent workshops since 1984.

Steve holds a B.S. degree (electrical engineering) from Washington University in St. Louis and a J.D. from American University, Washington College of Law. He has been an Adjunct Professor and Member of the Graduate Faculty at the University of Colorado, School of Engineering, a co-founder of a number of start-up companies including Phiar Corporation and XenoPur Systems, Inc. and has served as an expert witness in patent lawsuits.

Steve is also a published Novelist, Portrait and Figure artist, and Sculptor. Most of his work can be seen at www.steveshear.net.

Richard H. Shear

Rick, a former United States Patent Examiner at the United States Patent and Trademark Office, recently retired as Chief Patent Counsel for Monsanto Company. During his 25 year career with the company, Rick had responsibility for Monsanto's most important product, Roundup ® herbicide.

Rick has extensive experience in patent prosecution, especially in the chemical and biotechnology arts, as well as in litigation, including foreign litigation. He now has his own patent law practice providing legal services for all aspects of intellectual property. 

NOTE: If you are just starting out in a patent career or starting a new office, please also see the SVS Workshop for Secretaries/Paralegals and New Attorneys/Agents. 

The Handbooks that accompany this workshop can be purchased separately by visiting the Books section of this website. 

For Information About an In-House Workshop
Contact Steve Shear ([email protected])

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