Hello readers. As most of you know, the Schwegman firm and the SLW Institute are hosting a remarkable fifteen-webinar series that make up a comprehensive Patent Cooperation Treaty training program. The first four sessions have taken place, and there are eleven more sessions to go. It is not to late to join — click here.
During the webinars, the attendees type in questions. I tried to answer some of the questions, but with 750 or more attendees, the number of questions was so great that I was not able to get to all of the questions during the scheduled time. I have collected the leftover questions from the first four sessions, and have tried to answer as many as I can make sense of, in this blog article. Happy reading!
Any upcoming webinars covering changes from ST.25 to ST.26 for sequence listings?
Yes please join the ST26 listserv. See https://blog.oppedahl.com/?p=6790 .
Could you provide the website again for the Bodenhausen book?
https://shop.oppedahl.com/?product_cat=books
Did I see today that Iraq is joining?
Yes, the PCT will enter into force for Iraq on April 30, 2022.
Are there any advantages to making the PCT the first filing?
Yes you save the government fees and professional fees that would be required for filing the priority application. And you absolutely eliminate any risk of an SAOSIT problem.
Please repeat the three popular ISAs.
The three ISAs chosen most often by US applicants (over 95% of the time) are ISA/US, ISA/EP, and ISA/KR.
Is there a difference between a DO and an EO?
Yes we call it a DO if no Demand has been filed. We call it an EO if a Demand has been filed.
Can you enter the US national stage immediately after filing a PCT application?
Yes you can. You can enter the national phase in any DO/EO immediately after filing a PCT application. You are not obligated to wait until the end of the 30 months. You are not obligated to wait until you have received your ISR/WO. But see comment below from Sharon Rosen.
How do you make the first filing a PCT application when a foreign filing license is needed?
For a filer in the US, this is only a problem if the invention was made in the US. If the invention was not made in the US, this is not a problem so far as US FFL is concerned. To the extent that it is a concern, you can address the concern by selecting RO/US as your RO.
Will you be discussing on the value and strategic use of Article 19 and Article 34?
Yes see webinar number 8.
Will today’s 92bis seminar be repeated? I was unable to attend.
See my webinar number 9. See also https://blog.oppedahl.com/?p=7502 .
Will this class show how to make your application available via DAS? or is that a different class?
Where is the DAS tracking system?
Would like to learn how to use DAS please.
Please go to my blog and go to the search box and search for “DAS quiz” and do the DAS quiz.
See also https://blog.oppedahl.com/?p=7502 .
You said we should use PatentCenter so we could report bugs. What mechanism exists for reporting bugs that gets actual attention?
See https://patentcenter-tickets.oppedahl.com/ . The main action step is to join and participate in the Patentcenter listserv.
The RO/US has an unusually high rate of drawing rejections for minor reasons. Is the RO/IB any better?
See https://blog.oppedahl.com/?p=4437
Best/easiest way to set up payment for filing RO/IB? This is what typically holds us back from using RO/IB.
You can use credit cards. You can use Paypal. You can use Wise Business. If you use a credit card, you can get frequent flyer miles.
I have no case experience filing a PCT. Is there a way to get practice, ie. in demo mode?
Yes please see the demo mode in ePCT.
What is XN and XV?
Nordic Patent Institute. Visegrad Patent Institute.
Where is Applicant of Convenience mentioned in the PCT?
It is not mentioned by name in the PCT.
Is there a way to pay issue fees via Patent Center?
Yes. Most things that you can do in EFS-Web, you can also do in Patentcenter.
Results from the ISR/WO – do you want all three positive or is 1 or 2 positive enough?
You want a “yes” answer to all three questions, for all claims, if possible.
How can we associate a PCT application to our workbench that was filed prior to using ePCT?
See https://blog.oppedahl.com/?p=7502 .
Can you use a credit card for paying ISA/EP?
I wrote: “Yes but only if you have an EPO smart card. I suggest using Wise business instead.” But see comment below from Sharon Rosen.
OK – so I used PCT-Safe in the past for some application because I was not trendy and modern [and up-to-date]. Can I get any benefits from ePCT for these applications?
Yes, use ePCT with its “workbench” functions so that you can manage your pending PCT applications. You can keep track of the status and contents of your pending PCT applications. See https://blog.oppedahl.com/?p=7502 .
“Can you use a credit card for paying ISA/EP? Yes but only if you have an EPO smart card. I suggest using Wise business instead.”
No, you don’t need a smart card. Just create a username and you can log on and pay at any time, whether it’s EP or ISA/EP or IPEA/EP related. I have to do this every now and then.
https://fee-payment.epo.org/en/login – click on “register now”
Thank you Sharon for posting. I have updated the blog article to tell readers to look at your comment.
“Can you enter the US national stage immediately after filing a PCT application? Yes you can. You can enter the national phase in any DO/EO immediately after filing a PCT application. You are not obligated to wait until the end of the 30 months. You are not obligated to wait until you have received your ISR/WO.”
Entering NP is not a problem. But some countries won’t allow for ‘early processing’, i.e. the National Office refused to act on a PPH Request (favourable ISR/WO) based on the fact that local rules mandate they wait until the 30 months are up before local examination begins. We have painfully learned that recently.
Other countries will do so, but only on request, so check with local counsel, if this is what you want.
Thank you Sharon for posting. I have updated the blog article to tell readers to look at your comment.
Hi Carl,
I have been taking your training with 2 other colleagues at my law firm, it has been very insightful. I do have one question: do you know if you can list more than one email as a correspondence email on the PCT Request form?
Thank you.
Hi Mr. Oppedahl and SLW team:
Thank you for the seminars so far – they are great.
In regards to the priority claim and SAOSIT discussion, I have a question:
When having to update/clean-up the provisional’s applicant to match the PCT’s applicant before filing the PCT, is it okay to have the applicant sign the provisional’s patent assignment on today’s date (so long as it is signed before the PCT filing); OR, do we have to do a “nunc pro tunc” patent assignment for the provisional patent assignment reflecting the filing date of the provisional as the intended execution date of said assignment?
Hi Carl – I’m probably mistaken, but I thought I understood users can enter their US Provisional application information in the ePCT system and get reminders for upcoming priority deadlines. Where do users enter priority info to get the ePCT system reminders?
Thank you!