getting ready for the SLW 2022 Virtual PCT Training Seminar

Update:  Today is Tuesday, February 8, the day for Session 1 of the 2022 Virtual PCT Training Seminar sponsored by the SLW Institute.

This page is intended for those who have registered for the 2022 Virtual PCT Training Seminar sponsored by the Schwegman Lundberg Woessner Institute.  I will update this page from time to time as we proceed through this great adventure that commences on Tuesday, February 8, 2022 and finishes on Friday, March 18, 2022.  If you have registered for the webinar series, you might want to bookmark this page.

As a reminder you should have received at least one email, maybe more than one, from the folks at the SLW Institute, letting you know about the Attendee Hub and the password which is “PCTattendee2022”.  The Attendee Hub will be your constant resource for the next six weeks for lots of things including the following:

  • the “ics” files that you can use for adding each session to your calendar
  • the “Join Session” buttons which get you into the Zoom sessions
  • recordings of the sessions that just took place (once each recording gets posted, soon after each session)
  • presentation slides (once each presentation slide handout gets posted, hopefully at least a day or two in advance of the corresponding session)
  • answers to some of the attendee questions from our sessions (to the extent that I manage to answer some of the questions afterwards that we did not get to during the webinar itself)

In general your go-to place to get presentation slides will be the Attendee Hub.  Just for today (Tuesday, February 8, session 1) I am also posting a handout of the presentation slides for today’s program here so that you will have a second convenient place to download the handout in case you have not yet gotten familiar with the Attendee Hub.  And just for today (Tuesday, February 8, session 1) I am also providing today’s Join Session link right here on this page to get you into today’s Zoom session.  I emphasize that this is just for today.  Going forward, you need to get yourself to be familiar with the Attendee Hub.  You might as well also bookmark this page, but you need to get familiar with the Attendee Hub because your organizers at the SLW Institute are counting on you to be familiar with it as a go-to place for lots of things during these next six weeks.

I invite you to read my blog article Good news for those who have been hesitant to commit to fifteen hours of PCT webinars.

If you have not already done so, I invite you to subscribe to the Patent Cooperation Treaty listserv.  It is an email discussion group for users of the Patent Cooperation Treaty, that is sponsored by my law firm.  Your email address will not be sold to spammers.  You can unsubscribe at any time if you decide the listserv is not for you.

If you have not already done so, I invite you to subscribe to my blog, the Ant-like Persistence blog.  This blog has over 280 past articles about the Patent Cooperation Treaty which you can see here.  You could set a goal of reading the past articles one by one until you have read all of the past articles.

If you have not already done so, you should subscribe to WIPO’s PCT Newsletter.  This monthly newsletter is filled with helpful information about the Patent Cooperation Treaty.

If you have not already done so, I invite you to register for and complete WIPO’s PCT Distance Learning Course.  This online self-study course has fourteen modules, each with a quiz.  Successful completion of this course gives you a certificate of completion that represents quite a lot of learning about the PCT.  

Here are some webinar recordings that you could watch ahead of time if you absolutely cannot wait for this webinar series to begin:

I’ve published a book entitled Oppedahl on PCT Forms and PCT Docketing.

Here is a slightly expanded description for each of the fifteen sessions:

  • Session 1 | Tuesday, February 8 – What is PCT?, Why We Care?, Paris Path Versus PCT – We provide some background about what it costs to file patent applications in various patent offices around the world. We remind ourselves that if we file a large number of patent applications in various patent offices around the world, and if later we learn for the first time that the invention is not patentable, then we might regret having spent the money to file those patent applications. We review the time line that the Paris Convention offers for filing of patent applications in Offices of Second Filing around the world. We see how the Patent Cooperation Treaty offers an opportunity to get a preliminary indication as to the patentability of our invention before the expensive and difficult decisions need to be made as to whether to proceed with patent filings around the world.
  • Session 2 | Thursday, February 10 – Planning for PCT and Paris, Article 4 of Paris, SAOSIT, Making Use of WIPO DAS – Long before foreign filings are carried out under the Paris Convention, long before a PCT patent application is filed, the applicant should be planning ahead to avoid a number of traps for the unwary. Among these is the requirement that in an Office of Second Filing, the applicant needs to be the same applicant (or successor in title) as the applicant in the priority application (the application that was filed in the Office of First Filing. The filer of any application that has the prospect of later serving as a priority application should also pay attention to the importance of making that application available to the WIPO DAS system. The US filing system offers a particularly rich variety of ways to get these things wrong, and we will discuss Best Practices for such priority filings.
  • Session 3 | Monday, February 14 – Selecting a Receiving Office, RO/US Versus RO/IB – For any applicant that has the ability to make use of the PCT at all, the applicant nearly always has at least two Receiving Offices to choose from. Often there will be factors that make one RO or another a better choice for a particular applicant depending on the applicant’s situation. What’s more, for a particular applicant there can be factors that might make one RO a best choice for one application and that might make another RO a best choice for another application. We will discuss the factors that might influence one’s choice of RO. We will discuss how a practitioner may have no choice but to settle for the status of “address for correspondence” rather than the status of “agent” depending on the filing situation.
  • Session 4 | Wednesday, February 16 – Selecting an International Searching Authority – Some of our attendees are located in countries where the usual expectation is that the applicant does not have any choice as to an International Searching Authority. We will discuss how the use of a so-called “applicant of convenience” can provide other ISA choices for an applicant in such a country. Some of our attendees are located in countries (such as the US) where as many as eight ISAs are available. We will discuss factors that might prompt an applicant to choose one ISA or another depending on the detailed situation of a particular application. We will marvel at the fact that in the EPO, they “drink their own champagne”.
  • Session 5 | Friday, February 18 – Preparing a PCT Request – Making Use of ePCT and Getting Benefit of Validations, Avoiding Malpractice on Priority Claim Mistakes – Every time we are training a new person in the patent world, we try to describe which kinds of mistakes can be fixed by paying money, which mistakes can be fixed by filing a petition, and so on. And we try to impress upon the new person that there are some kinds of mistakes which, if not discovered soon enough, are just not fixable no matter how much money we would be willing to pay, no matter how many petitions we would be willing to file, no matter how sorry we are, and no matter how good our excuse is for having made the mistake. Getting a priority claim wrong can fall into this category. We will discuss how the informed use of the WIPO DAS system, together with the informed use of the ePCT system, can completely eliminate certain categories of priority-claim mistakes that might otherwise be unfixable if not detected in time. Other Best Practices for the preparation of a PCT Request will also be discussed.
  • Session 6 | Tuesday, February 22 – Using Workplace Collaboration Features of ePCT as You Lead up to the PCT Filing, Shared Address Book, External Signatures, Document Reviews – The developers of the ePCT system have built into the ePCT system a delightful array of functions and features that make it very easy for colleagues within a firm or corporation to work together in the process that leads up to the filing of a PCT application. These functions and features also permit collaborative workflow externally, between a corporation and its outside counsel, for example, and between the practitioners and paralegals on the one hand and the inventors and client and corporate decisionmakers on the other hand. Even the participants who are dinosaur-like in their limited computer skills can participate through such functions as the external signature function. The Best Practices that we will discuss reduce greatly the risk of typographical errors and facilitate work across time zones.
  • Session 7 | Thursday, February 24 – E-Filing of the PCT Application and Docketing of PCT Thereafter – In any patent office there will be some online system for e-filing of new patent applications. There will be some online system for filing “follow-on papers” (sometimes called “subsequently filed documents”). There will be some online system for viewing the status and content of pending patent applications. In the USPTO, for example, these systems include Patentcenter, EFS-Web, and PAIR. In the USPTO, do any of these systems send you notifications of upcoming due dates in particular applications? No! In the USPTO, do any of these systems send you reminders that there are only a few days remaining to get an application filed if you wish to satisfy a desired filing date? No! Guess what? If you go to the trouble of making use of the ePCT system, and if you are making preparations to file a PCT application that claims priority from some previous application, it will remind you that there are only a few days remaining to get the PCT application filed. Guess what? If you go to the trouble of making use of the ePCT system for a pending PCT application, it will remind you that the last possible date for filing a Demand is drawing near. It will remind you that there are only a few weeks left to enter the national phase. We will discuss Best Practices for use of the ePCT system.
  • Session 8 | Monday, February 28 – What to Do When the International Search Report and Written Opinion Arrive, Do You File a Demand? – What are some of the action steps to take when the ISR/WO arrives? What dockets can you clear? What new dockets should you set? What decisions now lie before you? Among those decisions is whether or not to file a Demand. How do you decide? Should you file an Article 19 amendment? How about the “informal comments to the IB”? Should you file such comments?
  • Session 9 | Wednesday, March 2 – Using ePCT for “Actions” Such as 92bis Requests, Communicating with ISAs – What are the Best Practices for filing various SFDs (subsequently filed documents) during the PCT process in a pending PCT application? We know that ePCT can make it very easy to file documents at the IB. But did you know that ePCT can also make it very easy to file documents at your ISA? Did you know that ePCT can also make it very easy to file documents at your IPEA? Why is it almost always a big mistake to file an SFD at your Receiving Office?
  • Session 10 | Friday, March 4 – Mechanics of Filing a Demand, Steps Before and After Filing the Demand – Years ago it was nearly routine for almost all PCT applicants to file a Demand. Nowadays a Demand is filed in only about 10% of PCT applications. If indeed you have decided that you are going to file a Demand, what are things that you should do as you prepare to file it? What are some of the dockets you should set? What are some of the things that you should do after you have filed your Demand? What is the “one phone call” that you are entitled to under the PCT rules if you have filed a Demand? And what, by the way, is the difference between a Written Opinion of the ISA and a Written Opinion of the IPEA?
  • Session 11 | Tuesday, March 8 – Understanding and Using the Five Kinds of PCT Declarations – What are the five kinds of PCT Declarations? What are the factors in a particular filing situation that might prompt you to use one or another of the PCT Declarations? There are certain Declarations that nearly all PCT applicants ought to file but fail to file. Which Declarations are those?
  • Session 12 | Thursday, March 10 – National Phase Entry Generally – Tips for Some Offices – We will discuss the process of entry into the national phase generally. We will offer a few tips that are specific to particular Offices including the USPTO. By far the majority of national-phase entries take place very near the end of the 30-month period (or 31-month period). What are some of the factors that might sometimes make it smart to carry out a national-phase entry much sooner? We will remind ourselves a second time that in the EPO, they “drink their own champagne”.
  • Session 13 | Monday, March 14 – Choosing between US National-Phase Entry and Bypass Continuation – In many Offices around the world, there is only one filing path for obtaining national patent protection from a PCT application. But for the applicant seeking to obtain US patent protection from a PCT application, there are at least two distinct paths, national phase and bypass. There are very striking advantages and disadvantages to the two paths, depending on the detailed circumstances of a particular applicant’s situation.
  • Session 14 | Wednesday, March 16 – Best Practices and Procedure for US National-Phase Entry – If you are located outside the US, you will be interested to learn of some of the ways that US counsel might screw up your US national-phase entry. There are things you could ask your US counsel to do that would permit you to keep well informed of the status of the US application. We will discuss a number of Best Practices for US national-phase entry.
  • Session 15 | Friday, March 18 – Making Use of PCT-PPH, and Comparison with Track I and AE – We will discuss half a dozen initiatives within the USPTO that permit an applicant to try to get a faster US patent, and the pros and cons of the various initiatives as they relate to the PCT. We will discuss why filers in the EPO very rarely feel any need to use the PPH.