University of New Hampshire

School of Law

Comprehensive PCT Seminar

ARCHIVED EVENT INFORMATION

UNH School of Law, in cooperation with the World Intellectual Property Organization (WIPO), Presents the 16th Comprehensive PCT Seminar

WIPO PCT, The International Patent System

To be held at
UNH Law's Franklin Pierce Center for Intellectual Property
in Concord, NH,
on April 25-26, 2014.
 

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Welcome  •  Topics  •  Agenda  •  Faculty  •  Contact us  •  Accommodations

Welcome

The University of New Hampshire School of Law's Franklin Pierce Center for Intellectual Property will host the 16th Comprehensive Patent Cooperation Treaty (PCT) Seminar, in cooperation with the World Intellectual Property Organization (WIPO), on April 25-26, 2014 in Concord, NH.

The Comprehensive PCT Seminar is geared toward patent attorneys, patent agents, patent administrators, paralegals, and law students who are seeking in-depth knowledge and understanding of the Patent Cooperation Treaty.

The one and one-half day seminar will include strategies for using the PCT as part of a comprehensive patent program, PCT rules of practice, and procedures for filing original international applications. It will also address recent changes to the PCT. A new module of the Seminar this year will focus on the implication of the America Invents Act on PCT practice.  All sessions will be held in UNH Law’s Franklin Pierce Center for Intellectual Property building.

Carol Bidwell and David Reed, US consultants to WIPO on PCT matters, will conduct the program, as they have in recent years. Up to 10.75 New Hampshire CLE credits can be applied for, and CLE credits for other states can be applied for upon request.

Cost

  • General public - $350
  • Pierce Law/UNH Law Alumni - $300
  • Students - $100

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Accommodations and Directions

Topics Covered

Friday, April 25, 2014 (a full day)

  • Overview of the PCT system
  • Choice of International Authorities Available
  • Filing International Applications by US Applicants
  • The International Bureau as a Receiving Office — by Choice or by Circumstance
  • Signature Requirements, Agents, Common Representatives and Withdrawals
  • Claiming Priority and Furnishing of Priority Documents
  • International Search and Written Opinion of the ISA
  • Procedural Safeguards
  • International Publication and Internet Resources
  • Supplementary International Search
  • Filing a Demand for International Preliminary Examination

Saturday, April 26, 2014 (a half day)

  • Amendments under the PCT and Informal Comments
  • Recent Changes
  • Entry Into the National Phase
  • Entry into the US National phase and By-pass Continuation Practice
  • Strategic Use of the PCT: a User’s Perspective
  • Where to Get Help

Agenda - Detailed Program (subject to change)

Friday

8:30 a.m.–10:15 a.m.
15 minute break
10:30 a.m.–noon
1 hour for lunch
1:00 p.m.–3:00 p.m.
15 minute break
3:15 p.m.–5:00 p.m.

Saturday

8:30 a.m.–10:15 a.m.
15 minute break
10:30 a.m.–12:30 p.m.

Overview to the PCT system (40 minutes)

  • 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
  • Discussion of the concept of all-inclusive designation system


Filing international applications by US applicants (1 hour 30 minutes)

  • Requirements for filing in the USPTO as receiving office
  • Using EFS-Web to e-filing in the RO/US
  • Optional use of declarations during the international phase
  • Brief review of how to properly fill out the PCT Request Form


Choice of international authorities available (20 minutes)

  • Review of ISAs available
  • Things to consider when choosing an ISA


The International Bureau as receiving office – by choice or by circumstance (40 minutes)

  • Review of who can file in RO/IB
  • Transmittal of international applications to RO/IB under PCT Rule 19.4
  • Advantages to using RO/IB where applicants are nationals of two or more contracting states and caveats
  • Using PCT-SAFE to e-file in the RO/IB


Signature Requirements, Agents, Common Representatives and Withdrawals (30 minutes)

  • 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 (45 minutes)

  • 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 (45 minutes)

  • 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 (40 minutes)

  • Incorporation by reference
  • Restoration of the right of priority
  • Addition and correction of priority claims and time limits for doing so
  • Rectification of obvious mistakes
  • Fee safeguards
  • Preventing and postponing international publication
  • Recording changes in applicant, inventor and agents
  • National phase safeguards


International publication and Internet resources (30 minutes)

  • Effects of international publication
  • Using the WIPO Internet site to view published international applications
  • Information available on the WIPO Internet site
  • New search tools


Supplementary International Search (20 minutes)

  • Objectives of supplementary international search
  • Available SISAs


Filing a demand and international preliminary examination (45 minutes)

  • 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
  • Brief review of how to properly fill out the form
  • 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 (20 minutes)

  • 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 (25 minutes)

  • Updates forthcoming


Entry into the National Phase (30 minutes)

  • Decisions that applicant must make
  • Special requirements that may be made by Offices
  • Reinstatements of rights when national phase time limits are missed


Entry into the US national phase and By-pass Continuation Practice (45 minutes)

  • Discussion of US national phase entry requirements
  • Claiming priority to an earlier US 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


Strategic Use of the PCT: a User's Perspective (1 hour 10 minutes)

  • Initial considerations when first filing an international application including discussion on when, which receiving office to file in, which ISA to select and timing
  • Deadlines to keep in mind throughout the international phase
  • Strategies after receiving the search report and written opinion of the ISA
  • Should a demand be filed – when is it advantageous to do so
  • Supplementary international search strategies
  • Discussion on where to enter the national phase


Where to get help (10 minutes)

  • Where to get help at the USPTO
  • Phone numbers for US consultants and WIPO staff

Faculty

 

Carol Bidwell, Comprehensive PCT Seminar at UNH Law David Reed, Comprehensive PCT Seminar at UNH Law

Carol Bidwell

 US Consultant to WIPO on PCT Matters, Tucson, AZ

Ms. Carol Bidwell became a consultant on PCT matters for the World Intellectual Property Organization (WIPO) in January 2006. Prior to accepting this position, she had been employed at the U. S. Patent and Trademark Office as a patent examiner in the Biotechnology Group, a special programs examiner in the PCT Special Programs Office and finally as the supervisor of the Office of PCT Legal Administration from March 1997 until she left the federal service in December 2005. Over the last twelve years, Ms. Bidwell lectured extensively on PCT practice and procedure to audiences throughout the U.S. as well as teaching PCT seminars in Canada and Mexico.

During her career at the USPTO, Ms. Bidwell was awarded a U.S. Department of Commerce Silver Medal for development of U.S. regulations and international standards for the submission of sequence listings in patent applications and a Department of Commerce Bronze Medal for developing and implementing the PCT International Search and Preliminary Examination Guidelines.

David Reed

 US Consultant to WIPO on PCT Matters, Cincinnati, OH

T. David Reed, a retiree from Intellectual Property Division of The Procter & Gamble Company, is a consultant on international patent procurement and practice doing business under the name of TDR Patents.  He is also a consultant for WIPO in the United States on matters relating to the Patent Cooperation Treaty.

For almost half of Mr. Reed's 40 years of service with The Procter & Gamble Company, he managed the international patent filing and prosecution area.  David joined P&G in 1966 as a Product Development Engineer upon graduation from Northwestern University.  Following a variety of assignments in Product Development, he was admitted to practice before the United States Patent & Trademark Office as a Patent Agent in 1988 and assumed his position in the Intellectual Property Division.

In 1990, Mr. Reed led the investigation of, and the decision to begin, a practice under the PCT.  David managed the transition from a direct national patent filing practice, and helped build Procter & Gamble’s PCT practice into one of the largest in the world.  Additionally he has had the pleasure of teaching and speaking around the globe for WIPO and others regarding the PCT and P&G's practice under the PCT as well as other issues relating to international patent practice.

Contact us

Doris M. Lachance
University of New Hampshire School of Law
Two White Street
Concord, NH 03301
Phone: (603) 513-5246
Email: doris.lachance@law.unh.edu

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