Four webinars about inbound PCT forms

Update:  The four webinars took place as scheduled.  Recordings of all four webinars are now available.  You can see the recordings here.

Please sign up for four webinars about inbound PCT forms.

Who should attend?   Note that these webinars ought to be of interest to any PCT user, anywhere in the world.  Nothing about these webinars is limited to the US.

Any attorney who supervises PCT paralegals and docket clerks should attend, since the attorney needs to know how to docket forms-related events so as to be able to competently supervise the PCT paralegal or docket clerk.

PCT paralegals are invited to attend.

Docket clerks are invited to attend.

This series of four webinars is for attorneys and patent agents and paralegals and legal assistants and secretaries and docket clerks who handle Patent Cooperation Treaty (PCT) patent prosecution. These four webinars and the related presentation materials can serve as a valuable resource for those who handle incoming correspondence from Receiving Offices, from the International Bureau of WIPO, from International Searching Authorities, and from International Preliminary Examining Authorities.

For each of more than fifty PCT forms being discussed, the webinars will discuss what docket should be set or cleared when the form arrives. The webinars discuss what to look for in the form that might indicate that some further action is required or some particular docket needs to be set. The webinars discuss dates that need to be checked in forms that arrive.  We will identify combinations of events which require “calling a meeting” because some docket failure has occurred or there is reason to worry that other files in the office might require review to see if a similar failure has occurred.

For each form, we will discuss:

    • the meaning and purpose of the form
    • inbound docketing significance
      • is there an existing docket that we get to clear because the form has arrived?
      • for some forms, we ought to have docketed to check for receipt of the form so that we would notice if it had not arrived
    • things to check closely on the received form
      • action items depending on what it says on the received form
    • do we need to set a new docket, and if so, what?
    • reporting to the client, and
    • next steps if any.

Webinar 1.  Forms Relating to the Receiving Office

    • Form PCT/RO/102 – Notification Concerning Payment of Prescribed Fees
    • Form PCT/RO/103 – Invitation to Correct the Purported International Application
    • Form PCT/RO/104 – Notification that the Purported International Application is not and Will not Be Treated as an International Application
    • Form PCT/RO/105 – Notification of the International Application Number and of the International Filing Date
    • Form PCT/RO/106 – Invitation to Correct Defects in the International Application
    • Form PCT/RO/107 – Invitation Relating to Certain Parts of the International Application that Are, or Appear to Be, Missing
    • Form PCT/RO/108 – Invitation to Request Rectification
    • Form PCT/RO/109 – Notification of Decision Concerning Request for Rectification
    • Form PCT/RO/110 – Invitation to Correct Priority Claim and/or Notification of Possibility to Request Restoration of the Right of Priority
    • Form PCT/RO/111 – Notification Relating to Priority Claim
    • Form PCT/RO/113 – Request for the Recording of a Change (PCT Rule 92bis.1)
    • Form PCT/RO/114 – Notification on Decision of Confirmation of Incorporation by Reference of Element or Part
    • Form PCT/RO/115 – Notification of Intention to Make Declaration that International Application Considered Withdrawn
    • Form PCT/RO/117 – Notification that International Application Considered to be Withdrawn (Note that this form and the remaining forms PCT/RO/126 and PCT/RO//132 will be discussed during the December 5, 2023 webinar listed below)
    • PCT/RO/126 – Notification Concerning Later Submitted Sheets Not For Incorporation By Reference
    • Form PCT/RO/132 – Communication in Cases for which no other form is Applicable

Webinar 2.  Forms Relating to the International Bureau

    • Form PCT/IB/301 – Notification of Receipt of Record Copy
    • Form PCT/IB/304 – Notification Concerning Submission, Obtention or Transmittal of Priority Document
    • Form PCT/IB/306 – Notification of the Recording of a Change
    • Form PCT/IB/307 – Notification of Withdrawal of International Application or Designations
    • Form PCT/IB/308 (First Notice) – First Notice Informing the Applicant of the Communication of the International Application (To Designated Offices Which do not Apply the 30 Month Time Limit Under Article 22(1))
    • Form PCT/IB/308 (Second and Supplementary Notice) — Second and Supplementary Notice Informing the Applicant of the Communication of the International Application (To Designated Offices Which Apply the 30 Month Time Limit Under Article 22(1))
    • Form PCT/IB/314 – Invitation to Request Rectification
    • Form PCT/IB/315 – Notification of Decision Concerning Request for Rectification
    • Form PCT/IB/316 – Invitation to correct priority claim and/or notification of possibility to request restoration of the right of priority
    • Form PCT/IB/345 – Communication in Cases for which No Other Form is Applicable
    • Form PCT/IB/346 – Notification Concerning the Filing of Amendments of the Claims
    • Form PCT/IB/368 – Notification of Transmittal of Demand to the Competent International Preliminary Examining Authority
    • Form PCT/IB/371 – Notification Relating to Declaration Made Under PCT Rule 4.17
    • Form PCT/IB/373 – International Preliminary Report on Patentability (Chapter I of the Patent Cooperation Treaty)

Webinar 3.  Forms Relating to the International Searching Authority

    • Form PCT/ISA/202 – Notification of Receipt of Search Copy
    • Form PCT/ISA/203 – Declaration of Non-Establishment of International Search Report
    • Form PCT/ISA/206 – Invitation to Pay Additional Fees and, Where Applicable, Protest Fee
    • Form PCT/ISA/210 – International Search Report
    • Form PCT/ISA/216 – Invitation to Request Rectification
    • Form PCT/ISA/217 – Notification of Decision Concerning Request for Rectification
    • Form PCT/ISA/220 – Notification of Transmittal of the International Search Report and the Written Opinion of the International Searching Authority, or the Declaration
    • Form PCT/ISA/225 – Invitation to Furnish Nucleotide and/or Amino Acid Sequence Listing and to Pay, Where Applicable, Late Furnishing Fee
    • Form PCT/ISA/237 – Written Opinion of the International Searching Authority

Webinar 4.  Forms Relating to the International Preliminary Examining Authority

    • Form PCT/IPEA/402 – Notification of Demand by Competent International Preliminary Examining Authority
    • Form PCT/IPEA/403 – Notification concerning Payment of the Preliminary Examination and Handling Fees
    • Form PCT/IPEA/405 – Invitation to Restrict or Pay Additional Fees, and, Where Applicable, Protest Fee
    • Form PCT/IPEA/408 – Written Opinion of the International Preliminary Examining Authority
    • Form PCT/IPEA/409 – International Preliminary Report on Patentability (Chapter II of the Patent Cooperation Treaty)
    • Form PCT/IPEA/411 – Invitation to Request Rectification
    • Form PCT/IPEA/412 – Notification of Decision Concerning Request for Rectification
    • Form PCT/IPEA/416 – Notification of Transmittal of International Preliminary Report on Patentability

Registration cost?  Each webinar is free of cost to register, courtesy of the World Intellectual Property Organization.

What will I need to have in hand when I attend the webinars?  Attendees will need to have on hand each form being discussed.   Most attendees will want to have a print copy of each form at hand, to refer to when the form is being discussed.  A print copy permits the attendee to take notes on the forms.  Some attendees might choose simply to view the forms on a computer screen.  The PCT forms may be viewed and downloaded here.

Attendees will also probably want to print out the webinar presentation materials in advance of each webinar.  This permits the attendee to take notes on the forms.  (Presentation materials will be distributed a day or two in advance of each webinar.)

Do I need to purchase this book?  Many readers will recognize that the subject matter of these four webinars is nearly identical to the subject matter of the book Oppedahl on PCT Forms and PCT Docketing.  It is important to know that there is no requirement that one purchase this book to be able to attend the four webinars.  Having said this, some attendees may find the book to be an extremely helpful resource to have in hand in preparation for the webinars, and to refer to during the webinars.  Among other things, the book provides copies of all of the forms being discussed, and the book provides form-by-form discussions that will largely match the discussions that will be presented during the webinars.

Here are the four webinars:

About the author: Carl Oppedahl has spent over thirty years serving patent clients. He is a founding member of Oppedahl Patent Law Firm LLC. He has served as an adjunct professor at Cardozo Law School and University of Denver Law School, teaching advanced patent law. He has served on the Board of Directors of the American Intellectual Property Law Association and has been a Fellow of the Association. His law degree is from Harvard Law School. He holds an Amateur Extra class ham radio license. He has a BA with a double major in physics and mathematics, with honors, from Grinnell College. He has taught many dozens of continuing legal education courses about the Patent Cooperation Treaty. He is author of the Ant-Like Persistence blog.

Will the webinars be CLE accredited?  We will not be seeking CLE accreditation for these webinars.

Will the webinars be recorded?  People always ask this.  You should simply attend the live webinars!  Yes we try to set up recording.  Sometimes we fail to get the recording to work properly.  Besides, watching a recording of a potentially dry subject like this is probably even more dry than attending the live webinar.  Not only that, if you miss the live webinar, you miss the opportunity to ask questions.  But yes we will try to record each webinar for later possible viewing.