Agenda
--- ARCHIVED INFORMATION ---
UNH School of Law in cooperation with
the World Intellectual Property
Organization (WIPO)
14th Comprehensive PCT Seminar
UNH School of Law's
Franklin Pierce Center for Intellectual Property
Concord, NH
April 27-28, 2012
Detailed program
| 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
