Seminar Agenda/Topics
Comprehensive PCT Seminar – Seattle - October 7 – 8, 2010
Featured Speakers:
Carol Bidwell, US Consultant to WIPO on PCT Matters, Tucson, AZ
David Reed, US Consultant to WIPO on PCT Matters, Cincinnati, OH
New Feature: An official from the USPTO has been invited to speak on the new link between the PCT and the Patent Prosecution Highway (PPH)
Topics:
Overview of the PCT System
- Review of traditional patent system vs. the PCT system.
- Discussion of PCT Contracting States available through regional patent Offices and national patent Offices.
- Review of the requirements for being accorded an international filing date
Filing international applications in the USPTO and CIPO as Receiving Offices
- Requirements for filing in the USPTO as receiving Office
- Concept and operation of designation system
- Optional use of declarations during the international phase
- Electronic filing options in RO/US
- Requirements for filing in RO/CA including e-filing options
Choice of International Authorities Available for Applications Filed in RO/US
- Review of ISAs available
- Things to consider when choosing an ISA
The International Bureau as receiving Office – by choice or by circumstance
- Review of who can file in RO/IB
- Transmittal of international applications to RO/IB under PCT Rule 19.4
- Electronic filing options in RO/IB
- Advantages to using RO/IB where applicants are nationals of two or more Contracting States and caveats
Signature Requirements, Agents, Common Representatives and Withdrawals
- Discussion of who can act as agent and what a common representative is
- Waiver of power of attorney requirements
- Requirements for withdrawing the international application, priority claim, designations, etc.
Claiming priority and furnishing priority documents
- Discussion of Paris Convention priority
- Discussion of the right of priority in an international application
- Furnishing certified copy of priority document during the international phase and advantages for doing so
International search and written opinion of the ISA
- Duties of the ISA and discussion of prior art under the PCT
- Unity of invention procedure where claims are directed to more than one invention
- Discussion of the contents of the international search report and the written opinion of the ISA
- International Preliminary Report on Patentability (Chapter I of the PCT)
Procedural safeguards
- Incorporation by reference
- Restoration of the right of priority
- Adding and correcting priority claims
- Rectification of obvious mistakes
- Fee safeguards
- Preventing and postponing international publication
- Recording changes in applicant, inventor and agents
International Publication and Internet Resources
- Effects of international publication
- Using the WIPO Internet site to view published international applications
- PCT resources available on the WIPO Internet site
Supplementary International Search
- Objectives of supplementary international search
- Available SISAs
Filing a demand and international preliminary examination
- Review of the basics of Chapter II examination and who is entitled to make a demand
- Time limits for filing a demand and where it should be filed
- Review of the purpose of international preliminary examination and when it may begin
- Definition of prior art in Chapter II
- Treatment of the written opinion of the ISA by the IPEA and preparation of the international preliminary report on patentability (Chapter II)
Amendments under the PCT and Informal Comments
- Discussion of Article 19 amendments including where to submit, time limits for doing so and purpose
- Discussion of Article 34 amendments including where to submit, time limits for doing so and purpose
- Informal comments to the WOISA
Recent Changes
- Summary of 2009 changes
- Review of January and July 2010 changes
National Phase Entry in General and Specifics for Canada
- Decisions that applicant must make
- Special requirements that may be made by Offices
- Reinstatements of rights when national phase time limits are missed
- National Phase entry requirements for DO/EO/CA
Entry into the US national phase and By-pass Continuation Practice
- Discussion of US national phase entry requirements
- Claiming priority to an earlier applications and how to make a domestic benefit claim
- Claiming priority to a foreign application
- Filing a by-pass continuation as an option and the advantages and disadvantages of doing so
- Electronic filing options in the DO/EO/US
Where to get help
- PCT Information available on the Internet
- Where to get help at the USPTO and CIPO
- Phone numbers for US consultants and WIPO staff
