PCT Short Flow Chart Restoratio n of Priority

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

PCT- Short Flow Chart • Chapter 1 Deadline to Nationalize 20 Months • Chapter 2 Deadline (Most Countries) • Examinatio n by IPEA • Deadline. Demand Examination & Response to Written Opinion • Target Date to Issue IPRP by ISA (for Chapter 1) or IPEA (Chapter 2) • Chapter 2 Deadline (A Few Countries) 22 Months 28 30 Months 31 Months

PCT Application- Pre-filing Checklist q Get Applicant and Inventor Information q. Nationality may impact Receiving Office (RO) q. Foreign Filing License Granted/Needed q Pick Receiving Office (RO) q USPTO q IB q Pick International Searching Authority (ISA) q Speed, Price, Where Nationalizing, etc. q Prepare Paperwork (format A 4)

PCT Filing- Typical Flow PCT Application US Attorney Request PCT Application USPTO (RO) Int’l Bureau (IB) 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

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

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.

Filing USPTO as Receiving Office (RO) 1. Familiarity with E-filing procedures. 2. File pdf’s of documents. 3. Instant Electronic Acknowledgment. 4. Payment via Credit Card in US Dollars. 5. Access to Documents in Private PAIR. 6. For invention made in the US, no separate request for a foreign filing license is needed.

Filing WIPO-IB as Receiving Office (RO) 1. Will need to obtain a WIPO Digital Certificate for each person who will physically file the applications. 2. The Digital Certificate must be used ONLY on the computer on which it was validated. 3. The Digital Certificate must be renewed every two years. 4. Will need to download and use PCT Easy software, which needs updating regularly.

Filing WIPO-IB as Receiving Office (RO) 5. Will need to open a WIPO Deposit Account 1. Otherwise, file an application at the International Bureau, then receive a link electronically to make an Epayment on WIPO via credit card. 2. You may have added conversion fees from US $ to Swiss francs on your credit card bill. 3. Pay by bank transfer to WIPO’s bank account or postal account 6. Will never have access to complete file history.

Filing WIPO-IB as Receiving Office (RO) 7. If invention made in the US, you will need a foreign filing license from the USPTO to file a PCT application at the IB. 8. Can file via fax; however, original must be delivered within 14 days from the fax transmission (Fed. Ex preferred). 9. Lose valuable filing time since WIPO is six hours ahead of us.

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

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

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 Australia Europe Korea United States of America Search Fee Benefits Issues $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. $1, 219 Inexpensive and receive results relatively quickly. Limits the technology of applications that can be searched. $2080 Perceived high quality search Expensive and does not supply the search report in a timely fashion (e. g. , before Chapter II deadline).

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 Inexpensive Limited number of applications allowed

How to File a PCT Application q Generally two ways to prepare/file the "paperwork" for a PCT application. q PDF forms (e. g. , Request, transmittal, etc. ) q PCT-SAFE (SAFE = Secure Applications Filed Electronically) software helps to prepare the electronic forms for filing. Two modes: – Fully electronic mode: The description, claims, abstract and drawings are attached in PDF, TIFF or XML format. – PCT-EASY mode: The request form as well as the application body are submitted on paper, accompanied by a physical medium (floppy disk, CD, etc. ) which contains a zip file with the request form, the abstract and a log file created through PCT-SAFE. q For ease of viewing, the presentation will show the PDF forms.

How to File a PCT Application- Paperwork q Application (format for A 4 Paper and line nos. ) q Specification- Format A 4 paper & line numbers q Claims q Drawings- add drawing sheet numbers q Abstract- add reference numerals q Transmittal q Request q Fee Transmittal q Declaration(s) (optional)

How to File a PCT Application- Paperwork q Transmittal Foreign Filing License Screening

How to File a PCT Application- Paperwork q Request- Page 1 Identify the Applicant for specific State(s)- Check Supplemental Box & include continuation sheet for other Applicants Attorney identified- include continuation sheet for additional attorneys

How to File a PCT Application- Paperwork q Request- Further Applicants & Inventors Identify additional Applicant(s) Notice Last Names ALL CAPS Identify Inventors NOTE: Now US Companies can be Applicants, so US inventors should be usually “inventor only”

How to File a PCT Application- Paperwork q Request- Supplemental Box Explain where each Applicant is designated Identify Other Patent Attorneys (from page 1)

How to File a PCT Application- Paperwork q Request- Designations & ISA Priority Claim Here Ask RO transmit certified copy of priority document(s) Miss 12 Month Deadline Restore Priority Here Pick ISA Notice Date Format

How to File a PCT Application- Paperwork q Request q Transmit Prior Search Results q Declarations Identify Declarations

How to File a PCT Application- Paperwork q Request - Sample Declarations

How to File a PCT Application- Paperwork q Request q. Checklist q. Signature Itemize What is Filed FIG. # to Appear on PCT Publication Sign Here!

How to File a PCT Application- Paperwork q Fee Calculation Sheet Search Fee Changes Depending on ISA Notice Additional Sheet Fees are Common If USPTO is RO, then can charge to USPTO Deposit Account