Category: PCT

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 “Filing a Demand if no ISR has been established?”

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 “Important PCT rule change effective July 1, 2019”

(Update:  A letter got sent on February 22, 2020 to the Commissioner for Patents at the USPTO, asking the RO/US to become a Depositing Office in the DAS system.  See blog post.  The Commissioner for Patents answered.  See blog post.)

(Updated to reflect that RO/EP, RO/GE, RO/IL and RO/NO joined the trendy, modern and up-to-date club.)

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
• European Patent Office
• Finland
• Georgia
• India
• Israel
• Morocco
• Netherlands
• Norway
• 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 April 2020) 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) – yes 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, and RO/KR.

Let’s hope that the USPTO, the JPO, 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 “Register now for PCT Seminar in San Jose April 4”

WIPO offers a series of twenty-nine video lectures which can be very helpful if you want to learn about the Patent Cooperation Treaty.  These videos are very well made, and the presenter, Mr. Matthias Reischle, is a very good presenter.  I particularly like the intro theme song music. Continue reading “Learn the Patent Cooperation Treaty from video lectures”

The North Carolina Bar Association, carrying on a tradition of many years, will offer yet another Patent Cooperation Treaty seminar on November 21-22, 2019.  This will be in Cary, North Carolina, at the NCBA conference center.

Yours truly will serve on the faculty of this very nice seminar.

Save the date!

The Schwegman firm, carrying on a tradition of many years now, will offer a full-day live PCT Seminar in San Jose, California on Thursday, April 4, 2019.  Schwegman provides a wonderful service to the patent community with these seminars, which it provides free of charge.

Yours truly will be teaching this all-day seminar which will take place at the San Jose Marriott hotel.

Save the date!

Not only does this seminar provide a full day of training on the Patent Cooperation Treaty, but it offers invaluable networking opportunities during the breaks.

New topics since last year’s Schwegman PCT seminar will include a discussion of the five types of PCT Declarations, and best use of the DAS system.

When the registration web page becomes available, I will post the link in this blog. This seminar always sells out!  So you don’t want to miss the opportunity to register for this seminar.

If you want to make sure that you hear about the availability of the registration web page right away, make sure you are subscribed to this blog.

 

Yours truly will serve on the faculty of a Patent Cooperation Treaty seminar in Houston, Texas February 25 and 26.  You can read about it here.  The seminar is sponsored by the PCT Learning Center.

These days if you enter the US national phase you can expect to wait at least three months for your Filing Receipt.

We try to track this kind of thing pretty closely in our active files.  For a domestic filing receipt the delays these days are a mere 2-3 weeks.  But if the filing receipt that you are waiting for is a DO/EO/US filing receipt, you will have to wait three months.

This three months is, these days, the “best case”.  This assumes that you e-filed the case (not paper) and that you did not have any missing parts (no missing inventor declaration, no missing translation into English, no missing fees).  This assumes that you provided not only an ADS but also a computer-readable ADS but not only that, you provided it in the first EFS-Web submission meaning that the bibliographic data auto-loaded into Palm.  You also provided an Express Request for immediate national-phase entry if the other requirements were satisfied before the end of the 30 months.  Put plainly, you did everything that you possibly could to make as easy as possible the work of the DO/EO/US person.

With all of this, the waiting time for a Filing Receipt these is three months.

If, however, you do anything that requires the DO/EO/US person to do actual work, like not having paid all of the fees, not having provided the inventor declaration, etc. then the waiting time for the Filing Receipt will be much longer.

How long are you having to wait for your US national phase Filing Receipts?  Post a comment below.