PCT Practice Presentation

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. Foreign 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 OfficeUSPTO
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. Foreign 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. 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: http://www.wipo.int/pct/en/faqs/faqs.html

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
O
Months
< 12
Months
16
Months
18
Months
19
Months
20
Months

PCT History Lesson
2O
Months
30
Months

PCT History Lesson
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 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.

PCT- Short Flow Chart
O
Months
< 12
Months
14
Months
16
Months
18
Months
19
Months

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

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)

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

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
5. Will never have access to complete file
history.

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 (FedEx 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
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.
Europe $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
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

 Generally two ways to prepare/file the "paperwork" for a PCT
application.
 PDF forms (e.g., Request, transmittal, etc.)
 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.
 For ease of viewing, the presentation will show the PDF forms.
How to File a PCT Application

 Application (format for A4 Paper and line nos.)
 Specification- Format A4 paper & line numbers
 Claims
 Drawings- add drawing sheet numbers
 Abstract- add reference numerals
 Transmittal
 Request
 Fee Transmittal
 Declaration(s) (optional)
How to File a PCT Application- Paperwork

 Transmittal

 Request- Page 1

 Request- Further Applicants
& Inventors

 Request- Supplemental Box

 Request- Designations
& ISA

 Request
 Transmit Prior Search
Results
 Declarations

 Request - Sample Declarations

 Request
Checklist
Signature

 Fee Calculation Sheet

PCT Timetable
PCT Timetable
16th
Month International Searching Authority (ISA) Prepares International Search Report (ISR) and Written
Opinion (WO)- This should occur 2 months before publication, but usually, the ISR is not mailed until
after initial publication of the application.
What you need to do- Nothing at this point until you receive a copy of the Search Report
18th
Month Publication of the Application- Within 2 weeks of this deadline, normally receive a Notice of Publication
(IB/311). “WO” indicates that it is a PCT publication, as opposed to a particular country. The WO is
followed by the year, a slash “/”, and a sequential number. The A1, A2, A3, etc. after the publication
number indicates what type of publication. For example, A1 means “Patent Application Publication”; A2
means “Patent Application Republication”; and A9 means “Patent Application Publication (Corrected
Publication).”
18th
Month- Earlier or
Later
Receipt of International Search Report (ISR) and Written Opinion (WO)- Under the new PCT
practice, the Search Report and Written Opinion will be typically issued before publication (but not
always). The ISR is published with the application publication or republished later (A2) if the search was
not finished by the publication date. The WO is not published.
What you need to do- (1) Report ISR/WO to client; (2) If U.S. counterpart case exists, file IDS for search
results; and (3) If foreign counterpart case(s) exist (unlikely), send search results to foreign associate.

PCT Search (ISA)
• Search & Examination based generally on
the following:
– Novelty- similar to (but not the same as) the
anticipation standard in the U.S. (absolute
novelty and no grace period)
– Inventive Step- similar to (but not the same as)
as the nonobviousness requirement in the U.S.
– Industrial applicability- it can be made or used
(in the technological sense) in any kind of
industry. Usually, it does not include business
methods.

PCT Search/Examination Pointers
• Unity of Invention- although similar, not the
same standard as in U.S. restriction practice.
– If you want to search for other claimed
inventions you will need to pay additional
search fees.
– Even if you pay additional search fees, you will
then need to pay examination fees to have the
additionally searched claims examined.
– Not paying search fees may limit the claims
you can initially nationalize.
• Generally speaking, search and examination
fees are a waste of money.
– But in view of recent EPO rules you might want
to consider paying the fees if you are going to
nationalize in Europe

PCT Search (ISA)- Typical Flow
Int’l Bureau (IB)
PCT
Application
Searching
Authority (ISA)
ISA Written
Opinion (WO)
Int’l Search
Report (ISR)

PCT Search (ISA)- Typical Flow
Int’l Bureau (IB) PCT
Application
Int’l Search
Report (ISR)

PCT Amendments Common Tactics
1. No Amendments (Most Common Approach)
PCT Application is a glorified Extension of Time
1. Article 19 Amendments to Claims
Only when ISR Cites Novelty Destroying Art
1. Article 34 Amendments
Arguments, claim amendments, etc. in hopes of
getting positive IPER for national stage

PCT Timetable
PCT Timetable
18th
Month 1 Month Prior to File Demand For Chapter II Examination for Article 22/Chapter I Countries & 2
Months Prior to Directly Nationalize in Chapter I Countries
Only applies to a limited number of countries Luxemburg, Tanzania & 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).
What you need to do- Normally, nothing (unless client has specific instructions).
19th
Month Deadline to File Demand For International Preliminary Examination (Chapter II)
The Chapter I deadline only applies to a limited number of countries, Luxemburg, Tanzania & Uganda.
Even if you do not file a Demand by the 19th
Month
Chapter I deadline, you can still enter these countries by the Chapter II through regional patent offices
(EPO or ARIPO).
20th
Month Deadline to Nationalize in Chapter I Countries if Demand was Not Filed
The Chapter I deadline only applies to a limited number of countries, Luxemburg, Tanzania & Uganda.
Even if you do not file a Demand by the 19th
Month
Chapter I deadline, you can still enter these countries by the Chapter II through regional patent offices
(EPO or ARIPO).

PCT Timetable
PCT Timetable
2 Months From Mailing
Date of International
Search Report
Deadline to File Response to International Search Report (ISR) to Have Claim Amendments
Entered (Article 19)- When only responding to the ISR (and not the Written Opinion), you can only
amend the claims. In order to amend the specification and/or provide substantive comments regarding the
Written Opinion/prior art (in addition to amending claims), you will need to file a Demand for Substantive
Examination along with a Response to the Written Opinion.
What you need to do- Normally, nothing (unless you want to only amend the claims). Even if you amend
the claims, the International Preliminary Report on Patentability (IPRP) will not change based on these
amendments.
21st
Month or 2 Months
From Mailing Date of
International Search
Report, (which ever is
later)
1 Month Prior to File Demand and Response to Written Opinion- A Demand must be filed along with
the Response in order to have the Response considered by the Examiner. You will be able to amend the
claims, amend the specification, and/or present arguments as to the patentability of the claims if you file a
Response to the Written Opinion. If you file a Response, an IPRP will be issued. Normally, the IPRP is
not issued until after the application was nationalized, so there is no real point to responding to the Written
Opinion, unless you would like to make amendments before nationalization. Although very rare, a clean
IPRP could save you some patent filing fees if you nationalize in the U.S. The IPRP might change based
on your amendments or remarks.
What you need to do- Normally, nothing. If you would like to make amendments to the claims and/or
specification before nationalization, then you might want to consider submitting a Demand along with a
Response to the Written Opinion.

PCT Timetable
PCT Timetable
22nd
Month or 3
Months From Mailing
Date of International
Search Report, (which
ever is later)
Deadline to File Demand and Response to Written Opinion- A Demand must be filed along with the
Response in order to have the Response considered by the Examiner. You will be able to amend the
claims, amend the specification, and/or present arguments as to the patentability of the claims if you file a
Response to the Written Opinion. If you file a Response, an IPER will be issued. Normally, the IPER is
not issued until after the application is nationalized, so there is no real point to responding to the Written
Opinion, unless you would like to make amendments before nationalization. Although very rare, a clean
IPER could save you some patent filing fees if you nationalize in the U.S.
What you need to do- Normally, nothing. If you would like to make amendments to the claims and/or
specification before nationalization, then you might want to consider submitting a Demand along with a
Response to the Written Opinion.
28th
Month Target Date to Issue IPRP Established by International Searching Authority (ISA) (for Chapter I)
or IPEA (Chapter II)- This almost never happens. The Examination Report is usually issued after the
Chapter II deadline for nationalizing the case.
What you need to do- Normally, nothing. If for some rare reason you receive the IPRP in time, report it to
the client and send to the foreign associate(s) where you are nationalizing the application.
28th
Month Send Letter to Client Requesting Nationalization Instructions- Send a letter to the client containing a
checklist of countries in which they can nationalize the PCT application. Request instructions by the 29th
Month.
What you need to do- Send nationalization letter to the client.

How to Make Changes
Changes to Application Information (Formalities)
 Fix Typo’s
 Change, Add, or Delete Applicants/Inventors
Change Claims
 Article 19 Amendment (Response to ISR)
 Article 34 Amendment (Response to WO)
Change Specification and Drawings
 Article 34 Amendment (Only)
Argue Against Cited Prior Art
 Article 34 Amendment (Only)

Formality Changes
• What can be amended?
– Information provided on the request (e.g., Applicant, Typo’s, etc.)
• When- anytime before Chapter II Deadline
• How- File Replacement Sheets from Request with the updated
information.
• Where- File with
– Receiving Office (RO) or
– International Bureau (IB)
• Paperwork
– (1) Cover Letter- explains changes
– (2) Substitute Sheets of Updated Request

Formality Changes Paperwork
• (1) Cover Sheet Explaining Changes
• (2) Substitute Sheet(s) of Request Containing the Changes

Article 19 Amendments (Response to ISR)
• What can be amended?
– Claims only
 The only way to make substantive changes if only using Chapter 1 route
• When- After received International Search Report (ISR) and Written Opinion
(WO), and Later of
– 16 Months from priority date
– 2 Months from transmittal of ISR and WO
– (OR received before technical preparations of international publication has been
complete)
• Article 19 NOT allowed when International Search Authority (ISA) indicated
that no ISR will be established.
• Where- Filed with IB
– But if file Demand for International Preliminary Examination is filed send a copy to
International Preliminary Examining Authority (IPEA)
• Paperwork
– (1) Cover letter indicating differences between claims filed and amended plus basis for
amendment.
– (2) Complete set of replacement claims
– (3) Optional Statement under Article 19

Article 19 Paperwork
• (1) Cover Letter indicating differences between
claims filed and amended plus basis for
amendment.
– Indicators
 (i) the claim is unchanged,
 (ii) the claim is cancelled;
 (iii) the claim is new;
 (iv) the claim replaces one or more claims as filed;
 (v) the claim is the result of the division of a claim as
filed, etc.
– Example:
 “Claim 1 amended; claims 2 to 7 unchanged; claims
8 and 9 amended; claims 10 to 14 cancelled; claims
15 to 17 unchanged; new claim 18 added.
- (i) Basis for the amendment: Claim 1 has been
amended at lines 4 and 11 to 14 and now
indicates that the filter comprises a periodic
backwashing means serially coupled to a first
and second chamber. The basis for this
amendment can be found in original claims 2
and 4 as filed.
- (ii) Basis for the amendment: Concerning
amended claims 8 and 9, the indication of
‘quick-fire piston’ is in paragraph Nos. 2 and 19
in the description as filed.
- (iii) Basis for the amendment: Claim 18 is new,
the indication is in drawing No. III of the original
application.”

• (2) Complete set of replacement sheets
for claims
– Clean Claim Set Only (no mark-ups)
– Only Cancel Claims – No renumbering of
other claims is required
– However, if renumber, claims must be
renumbered consecutively

• (3) Statement Under Article 19
(Optional)
• Brief statement explaining the
amendment and indicating any impact
it might have on the description and the
drawings
• Must be clearly identified “Statement
under Article 19(1)”
• Published with the international
application
• MUST NOT
– Exceed 500 words
– Contain disparaging comments about the
International Search Report (ISR) or
relevance of cited art

Article 34 Amendments (Response to WO)
• What can you do?
– Amend Claims
– Amend Specification
– Amend Drawings
– Present arguments as to the patentability of the claims
• When? (Later of)
– 22 Months from Priority Date
– 3 Months from Mailing of Search Report
• Where?- Can Pick IPEA in Demand
– USPTO (if RO) or EP (if ISA)
• Paperwork
– (1) Demand for International Preliminary Examination under Article 31
 And Fee
– (2) Response to Written Opinion- indicating changes + arguments
– (3) Replacement sheets for any amended Claims, Specification, Drawings

Article 34 Paperwork (Response to WO)
• (1) Demand for International Preliminary Examination under Article 31

 Demand Paperwork
 Very Similar to Request
 Will only discuss significant differences

 Common Representative
 Basis for Examination

 Checklist
 Signature

• (2) Response to Written Opinion.
– Explanation of Changes Made to Application
– Arguments

• (3) Complete set of replacement sheets
for amended claims, specification,
and/or drawings
– Clean Set Only (no mark-ups)

Article 19 v. 34 Amendments
• If Demand filed, no need to amend claims under Article 19, unless
you want provisional protection.
– Article 19 Amendments are published, so you may gain provisional rights
to the published Article 19 claim amendments (i.e., damages clock)
• Article 19
– Only need to amend the claims (not drawings or specification)
– Don’t want to make any arguments
• Article 34
– Does not require to first file Article 19 Amendments
– Want to Argue
– Need to makes changes to specification, drawings (or claims)

PCT Examination Report
• Type of Examination Report Depends on
Whether Applicant Requested Examination
(Chapter II) or Not

PCT Chapter 1 Only- Typical Flow
ISA Written
Opinion (WO)

PCT Chapter 1 Only From:
http://www.wipo.int/edocs/mdocs/aspa
c/en/wipo_reg_pct_tyo_13/wipo_reg_p
ct_tyo_13_t5.pdf

• 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 has not been or will not be established.
The report has essentially the same contents
as the written opinion of the International
Searching Authority. In other words, if the
Applicant does not file a demand for Chapter II
examination, IPRP will be the WO.
PCT Chapter 1 Examination Report

PCT Chapter 2- Typical Flow
ISA Written
Opinion (WO)
Int’l Preliminary
Examination Authority
(IPEA)
Int’l Preliminary
Examination Report
(IPER)

PCT Chapter 2
From:
http://www.wipo.int/edocs/mdocs/aspac/en/wipo_reg_pct_tyo_13/wipo_reg_pct_tyo_13_t5.pdf

PCT Chapter Examination Report
• 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 National Phase
• Please see Nationalizing PCT Applications in
the US presentation that compares the
371 National Stage Procedure with the
Bypass Continuation Application Procedure
– http://www.slideshare.net/wemmh/best-way-to-
nationalize-pct-applications-in
– Presentation is Dated- Some Changes Required
Due to AIA
– Updated Presentation Coming Soon!

PCT Timetable
PCT Timetable
29th
-30th
Month Send Reminder Letter(s)/Call Client for Nationalization Instructions- If instructions are not received,
you need to remind the client.
What you need to do- Send a copy of the nationalization letter stamped “Reminder” and/or call the client.
30th
Month Deadline to Nationalize the PCT Application- For most countries, this is the deadline when you need to
nationalize the application. Note that you can nationalize the PCT application at any time, but it might be
helpful to at least wait until after you receive the International Search Report before deciding whether or
not to nationalize.
What you need to do- Send the application to the foreign associate(s) in the countries where the client
wishes to seek patent protection

Final Item
• Sign up for PCT Newsletter at www.wipo.int
– Updates on Fee, ISA’s, etc.

Need More Information?
Please Contact:
Chuck Schmal (cschmal@uspatent.com)
Woodard, Emhardt, Moriarty, McNett & Henry LLPWoodard, Emhardt, Moriarty, McNett & Henry LLP
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
(317) 634-3456
www.uspatent.com

PCT Practice Presentation

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