protecting your inventions internationally using the pct: a user's perspective

Protecting Your Inventions

Internationally Using the PCT

A User’s Perspective

Presented by Justin Cassell

[email protected]

© 2016 Workman Nydegger

Benefits of the PCT

Application

▶ One application

▶ One office

▶ One language

▶ Claim priority

▶ Easy entry into national phase

Services

▶ Publication

▶ Search

▶ Written Opinion

▶ Examination (optionally)

▶ Delay national processing

▶ Forwarding of documents

Amendment During Search and Examination

▶ Amendment of claims under Article 19 during Chapter I

▶ Amendment of claims and specification under Article 34 during Chapter II

Benefits of the PCT

Delay

▶ Filing fees

▶ Translation costs

▶ Attorney costs

▶ Election of countries

▶ Annuities

▶ Current state of patent law

Costs

▶ Defer upfront costs

▶ Reduce fees for national phase filings

▶ Manage budgets

Considerations for National Phase Applications

Commercial Considerations▶ Sophistication of Markets

▶ Sales

▶ Manufacturing

▶ Competition

▶ Technology

▶ Design around

Country Considerations▶ Commercial needs

▶ Long and short terms costs

▶ State of patent law

▶ Strength of protection and enforcement

▶ Valuation of patent and investment

▶ Exposure to lack of patents

Strategies for Using PCT

Provisional

Application

PCT

Application

Non-PCT

Applications

National / Regional

Phase Entry

US

EP

JP

CN0 mo. 12 mo. 30/31 mo.

▶Lower upfront costs with provisional application

▶Parallel prosecution of non-PCT and PCT applications

▶Delays US prosecution

▶PCT search likely before national phase entry


US Utility

PCT

Application

Non-PCT

Applications

National / Regional

Phase Entry

EP

JP

CN

0 mo. 12 mo. 30/31 mo.

▶More upfront costs

▶PCT search report can come from non-US office

▶PCT can be route for second US application

▶First US utility patent will have 1 year shorter in term


Provisional

Application

PCT

Application

Non-PCT

Applications

National / Regional

Phase Entry

EP

JP

CN

0 mo. 12 mo. 30/31 mo.

US Utility

▶Higher cost at 12 mo. point, but lower at onset

▶PCT search report can come from non-US office

▶PCT search report comes early in process

▶Flexibility with US prosecution (continuations)

▶Common patent expiration (subject to term adjustment)


PCT

Application

Non-PCT

Applications

National / Regional

Phase Entry

US

EP

JP

CN0 mo. 12 mo. 30/31 mo.

▶Higher cost than provisional filing

▶Delays US prosecution

▶Minimize concern as to disclosure of invention

▶Flexibility to national phase entry

▶Search report received before national phase entry

▶Possibility of reduces search and examination fees

▶No PPH

International Search Authority (ISA)

▶ Classifies the technology

▶ Evaluates for multiple inventions (Unity of invention)

▶ Searches prior art in view of the inventions

▶ Prepares an International Search Report and Written Opinion

▶ Determines the International Examining Authority

International Search Authority


Availability of the ISA

▶ The Receiving Office (RO) determines which ISAs are available

▶ Selection of RO is based on nationalities and domiciles of Applicants

▶ US Applicants can use RO/US or RO/IB

▶ May consider different RO is inventor according inventor domicile

▶ Any resident or national of PCT contracting state may file direct with RO/IB

▶ RO/US allows one of following ISAs:

AU, EP, IL, JP, KR, RU, SG, US


77445

42384

34185

20693

13180

3052

2569

2508

1543

1255

940

735

464

269

223

European Patent Office

Japan

Republic of Korea

China

United States of America

Russian Federation

Australia

Canada

Sweden

Spain

Finland

Israel

Brazil

Austria

Nordic Patent Institute

2013

2012

2011

Note: 2013 data are WIPO estimatesSource: WIPO Statistics Database, February 2014Data based on international filing year of application


Factors for Selecting the ISA

▶ Cost (short term and long term)

▶ Search other than RO

▶ Timeliness

▶ Subject Matter

▶ Scope and quality of search

▶ Effects on national or regional phase applications

▶ Language

▶ Potential patent prosecution highway benefits (PPH)



▶ USPTO as ISA/IPEA

• May eliminate or reduce search and examination fees in US

national phase entry

• Can pay small-entity and micro-entity designations

• More expensive search fees relative to, e.g., KR, RU

• Lengthy reports

• Search services are outsourced, not the same USPTO

examiner as with national phase entry or continuation

• New search is conducted upon national phase entry

• Out of order examination if no rejections or they overcome by

amendment



▶ EPO as ISA/IPEA

• May be more comprehensive than USPTO, particularly for non-US prior art

• May be more similar to use of novelty and inventive step standards outside the US

• Stricter unity of invention standards

• Stricter regarding subject matter

• Can obtain search on all claims – more than 15 claims

• Search and written opinion more direct and to point

• When entering EPO, EPO considers PCT as first stage of EPO examination

• EPO typically gives full, faith and credit to search

• Selection of EPO as IPEA, EPO examination fee is reduced



▶ KIPO as ISA/IPEA

• Lower cost than USPTO and EPO

• More proficiency with Korean and Japanese references

• Less proficiency with European references

• Looser on subject matter

• Cheaper on second through nth inventions if there is a

invitation to pay additional fees due to lack of unity

• Better proficiency in the electronic arts


Timeliness

▶ISA must establish the ISR within 3 months of receipt or 9 months

from priority date (whichever is later)

Source: WIPO Statistics Database, March 2013

Timeliness calculated as time elapsed between priority date and date ISA transmits

ISR to the International Bureau

Amending PCT Applications

Article 19 Amendment

▶ Amendments are published but not examined

▶ Provide amendments for national/regional phase entry

▶ Correct errors prior to publication

▶ Claim additional embodiments

Article 34 Amendment

▶ Amendments are examined but not published

▶ Arguments may be presented

▶ Work to get a positive IPRP

Patent Prosecution Highway

PCT-PPH

▶ Enables an applicant with a favorable determination of the claims

from an ISA/WO or IEA/IPRP to obtain expedited processing in

another office

▶ Steps

• PCT and US applications must have same priority date

• Applicant obtain favorable PCT search report and opinion indicating

patentability of one or more claims

• Substantive US examination has not yet occurred

• File a petition to make special for a corresponding US application under PPH,

and based on ISR/WO

• Claims of both applications must substantially correspond to one another

• Once granted, US examination for corresponding US application is expedited

protecting your inventions internationally using the pct: a user's perspective

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