In ordinary domestic US utility patent practice, every practitioner is accustomed to the fact that you can get away with filing your patent application with informal drawings.  And later when you get around to it, you can prepare formal drawings and file them in your application and it will almost never be a problem.

As I discuss at some length in this blog post, it is the exact opposite situation with PCT applications.  The general rule is that if you try to hand in formal drawings after filing day in a PCT application, you will not succeed.

What should practitioners keep in mind about formal and informal drawings so far as PCT applications are concerned? Continue reading →

W.C. Fields famously joked about a sweepstakes in which first prize was a week in Philadelphia … and second prize was two weeks in Philadelphia.  Well, here the second prize is listening to me drone on via Youtube for 5¾ hours about the Patent Cooperation Treaty.  Free of charge, other than the risk of nodding off. Continue reading →

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For many years the Best Practice for filing in RO/US has been to use a ZIP file as the way to provide the PCT Request to EFS-Web.  Originally the only way create the ZIP file was PCT-SAFE.  Three years ago WIPO announced that ePCT would be available starting on June 1, 2016 as a second way to create the ZIP file.  Shortly after this announcement, USPTO published a Federal Register notice that put a cloud over the use of ePCT in this way.  WIPO has made a change to ePCT that obviates concerns raised in that notice.  Hopefully now the USPTO will publish a “cloud removal” Federal Register notice that expressly cites the previous notice and that expressly removes the cloud.

In this blog article I explain that at this point ePCT is now without question the Best Practice for creating the ZIP file.  And I offer proposed language for a “cloud removal” Federal Register notice. Continue reading →

I recently blogged about an imminent PCT rules change.  The rules change, which will take effect July 1, 2019, changes the timing of when an International Preliminary Examining Authority (“IPEA”) will commence its preliminary examination activity after receiving a Demand from an applicant.

• The present situation is that the IPEA will put the activity “on ice” until the last possible date (P+22 or ISR+3, whichever is later) unless the applicant makes an express request for the activity to be commenced sooner.
• The situation on and after July 1, 2019 will be that the IPEA will commence the preliminary examination right away unless the applicant makes an express request that the activity be postponed.

Which naturally enough raises the question of what exactly counts as “right away”?  And as I explained in the blog post, “right away” is defined as the date upon which the IPEA is for the first time in possession of all of the following:

• the Demand;
• the Preliminary Examination fee and the handling fee (and late fee if applicable);  and
• the ISR/WO (or declaration of non-establishment).

Every now and then someone will suggest that the PCT has the potential to be a bit dry.  And whenever that happens, others will point out particularly fascinating aspects of the PCT that show how wrong that suggestion could be.  And so it is today, as one alert reader on the PCT listserv (which of course you should join if you have not already done so) reminded listserv members a few minutes ago.  She wondered why one would ever file a Demand if one had received a Declaration of non-establishment of an international search report.  Her comment was informed by the fact that as a general rule, IPEAs usually will not carry out preliminary examination for any subject matter for which an international search has not been carried out.

Indeed why, despite having received a declaration of non-establishment, might one nonetheless feel the need to file a Demand? Continue reading →

Each year, July 1 is very often the date upon which PCT rules changes will take effect, and 2019 is no exception.  There is a rule change regarding PCT Demands that will come into force on July 1, 2019.

The single most important thing to keep in mind about this rule change will be the importance of making sure to get one’s Article 34 Amendment (or instructions to take into account one’s Article 19 Amendment) filed with the IPEA no later than the date upon which one hands in the Demand itself and the associated fees. Continue reading →

One of the important ways that a patent office can participate in the DAS program is as a Depositing Office.  This means that the Office makes applications which have been filed at that Office available to the DAS system so that other Offices can retrieve the applications.

A particular way that a patent office can participate in DAS is in its role as a Receiving Office.  The idea is that an applicant may have filed a PCT application in that Receiving Office, and may later find the need to claim priority from that PCT application with respect to some later-filed patent application.  When such a situation arises, the normal expectation of the applicant would be that of course the Receiving Office will be a Depositing Office in the DAS system.

Such a Receiving Office would, of course, deserve the accolade of being termed “trendy, modern, and up-to-date.”

Which then raises the natural question “which Receiving Offices are trendy, modern, and up-to-date?”  Here is the list of patent offices whose Receiving Offices are trendy, modern, and up-to-date:

• Australia
• Brazil
• Chile
• China
• Denmark
• Eurasian Patent Organization
• Finland
• India
• Morocco
• Netherlands
• Spain
• Sweden
• WIPO

One might then wonder, which Receiving Offices are not trendy, modern, and up-to-date?  And in particular, one might wonder, if we rank the Receiving Offices in order by the number of filings at those Offices, which of the top-ranked Receiving Offices are not yet trendy, modern, and up-to-date? Well, one need wonder no longer.  Here I provide the answer.

Here are the top-ranked Receiving Offices by number of PCT filings.  These five Receiving Offices, taken together, account for something like 85% of all PCT applications filed in the world.  Next to each of these five Receiving Offices I have indicated whether (as of February 2019) it has or has not become a Depositing Office in the DAS system:

1. RO/US (USPTO) – not trendy, modern, and up-to-date
2. RO/CN (China) – yes trendy, modern, and up-to-date
3. RO/JP (Japan) – not trendy, modern, and up-to-date
4. RO/EP (European Patent Office) – not trendy, modern, and up-to-date
5. RO/KR (Korean Intellectual Property Office) – not trendy, modern, and up-to-date

Participation as a Depositing Office is clearly an action item for RO/US, RO/JP, RO/EP, and RO/KR.

Let’s hope that the USPTO, the JPO, the EPO, and the KIPO will soon join the DAS system as Receiving Offices.

It is by now a well-known annual event for which I told you to save the date.  The patent firm Schwegman Lundberg Woessner hosts an all-day seminar on the Patent Cooperation Treaty.   This year it will be in San Jose.  Last year it was in Minneapolis.  The year before it was in San Jose.  This one-day PCT seminar is presented by yours truly.

But what I point out to the reader is the really remarkable thing, namely that the Schwegman firm, working together with the World Intellectual Property Organization as a co-sponsor, provides this event free of charge to the patent community. Continue reading →