Who should attend the SLW Institute 2022 Virtual PCT Training Seminar?

By now I am astonished (in a good way) to see that more than 1300 people have registered so far for this series of fifteen webinars about the Patent Cooperation Treaty, a series that will commence on Tuesday, February 8, 2022.

My first topic for this blog article are a couple of related questions about this webinar series that came in the other day from a first loyal reader.  He asked:

Is this geared more towards attorneys (i.e., strategic considerations) or paralegals (e.g., filing requirements)?  If for attorneys, is it for newer attorneys not familiar with the PCT, or would someone with 25+ years of experience benefit?

A second topic for this blog article is a question that came in from a second loyal reader located outside of the US.  She asked:

Will your presentations be focused on considerations that apply only to US practice and options and choices available only to US applicants?   Can you let me know which portions to skip if they will not be of interest to me as a non-US filer?

These are all really good questions.  I will try to answer these questions as best I can in this blog article. 

To do a good job of trying to answer these questions, I first offer a bit of background.  The history is that the SLW Institute has, for many years, provided a live, in-person PCT Training Seminar.  Like any live, in-person event, it took place in an actual physical location!  The physical locations happened to be in the US.  (I had the honor to be given the opportunity to teach the most recent two such live seminars, in 2017 and 2018.)  Then of course Covid happened and the question came up, how to try to offer such a seminar virtually.  And here you see our grand experiment — fifteen lectures provided by webinar.  

When the Seminar was in a physical location in the US, this had the natural effect of tending to encourage mostly attendance by people in the US.   I usually prepared my presentation materials with a particular focus on US applicants and strategic decisions that US filers would face.

But with a webinar format, it is of course pretty easy for people to attend from many locations.  A few days ago I blogged about the places where our attendees hail from.  We have attendees from over sixty countries.  So a natural question is what it will be like for a non-US attendee.  Will there be long stretches of time during which I will drone on and on about US-specific things, meaning long stretches of time during which an attendee located outside the US would not find the webinar to be very interesting?  

I think the answer is that yes, from time to time during each of our fifteen sessions, there will be some places where my comments will be focused on US-specific points.  I guess one thing that might help a little for the attendees who are located outside of the US is that you will be able to download the presentation materials ahead of time.  This will permit you look to see what the topics of the day will be and you might conclude that some topic might not be of great interest to you.

But I will offer a reminder that some US-specific topics would nonetheless be of interest to all applicants no matter what their location.  For example, I will devote most of a webinar to the fact that there are two ways to pursue US patent protection from a PCT application.  They are called “bypass continuation” and “US national phase entry”.  There are advantages and disadvantages to these two paths.  The fact is that a PCT applicant could be located anywhere in the world and might be interested in pursuing US patent protection from that PCT application.  

As another example, an applicant who is located outside the US might be accustomed to the notion of only being able to use one particular International Searching Authority based upon that applicant’s location.   Such an applicant might think that the webinar about “picking an ISA” would not be at all interesting.  But there might be some business reason why the applicant might want to try to make use of a different ISA (for example the ISA/US).  The applicant might want to make use of an “applicant of convenience” to provide additional options as to the range of available ISAs.  This might mean that the webinar about “picking an ISA” might be of interest after all.

With some of this background, we can return to the first set of questions posed above.  

Many of the topics that I will cover are Best Practice topics.  Best ways to carry out certain filing tasks.  Best ways to plan certain collaborative tasks.  Some of these topics will be of particular interest to the people Who Actually Do Things.  By this I mean the people who actually click “submit” in ePCT to file a document, and the people who actually click a button the WIPO DAS system to set up tracking for a priority application.  

Many of the topics that I will cover are strategic topics.  How should an applicant go about deciding whether or not to file a Demand in a particular case?  How should an applicant choose whether or not to go to the trouble of filing an Article 19 amendment?  Some strategic topics are really quite interesting.  Any PCT applicant, no matter where it might be located, always has at least two Receiving Offices to choose from (if it has any at all to choose from!).  What are reasons to pick one or the other?  Are there things that an applicant might do before filing the PCT application that might make a difference in the prospects of using the Patent Prosecution Highway later?  How should an applicant even figure out where are the smart places to enter the national or regional phase in a particular case?

There are many paralegals and legal assistants whose daily work, correctly understood, is at least partly directed to saving their bosses (attorneys) from day-to-day commission of malpractice.  The paralegals and legal assistants that I am thinking of have, in many cases, figured out that their bosses do not even realize that they do not fully understand seemingly simple things about the PCT.  Such paralegals and legal assistants have a very understandable goal of always keeping up to date with every change and every development in PCT procedure and rules.  They have a goal of learning every Best Practice.  Some of those paralegals and legal assistants probably know their work so well that they could trade places with me in teaching some of the topics of this series of webinars.  For them, much of this webinar series will serve a goal of reinforcing things they already know, bringing them up to date on the handful of recent changes that they did not already know, and tipping them off to any Best Practices that they did not already know.

What we finish with in this discussion of “who should attend?” is what I sometimes call “lean-back attorneys”.  By this I mean an attorney who almost never Actually Does Anything but spends most of his or her time leaning back in a fancy chair, talking into a speakerphone, giving strategic advice to clients, and mailing out big bills to clients for the advice.  Such an attorney perhaps never actually e-files any patent applications, and maybe it has been a decade or more since the last time that the attorney actually did the tedious business of drafting a patent application.  Yet this attorney might want to know where “the good parts are” in this fifteen-webinar series.  By this I suppose the attorney means the half a dozen really important strategic topics where an experienced attorney can make a big difference in helping a client plan out a filing strategy for protecting some important invention.  The goal, perhaps, is to play the PCT like the exquisite musical instrument that it is, to make the beautiful music that is a successful effort to obtain patent protection around the world for an invention.  

But this attorney’s time is so valuable (in the mind of the attorney).  There is no way that the attorney can justify sitting through all fifteen webinars, adding up to more than fifteen hours of talk time, just to pick out the half a dozen nuggets of strategic-thinking subject matter that the attorney hopes to collect, so that the next few lean-back speakerphone sessions can be even more wise than the last few.

To which my answer is, I guess you can make your own choices what to attend and what not to attend.  But at least in the US, the rules of professional responsibility for lawyers are such that it is the lawyer who is professionally responsible for the work that is carried out by the paralegals and assistants who work for that lawyer.  From the malpractice point of view, the lawyer is supposed to be training the paralegals and the assistants, and the lawyer is supposed to be supervising the work of the paralegals and the assistants.  If it were to turn out that something that a paralegal or assistant did was not correct, or led to a client losing legal rights, from the professional responsibility point of view it is the lawyer who was supervising that paralegal or assistant who is responsible for that loss.

So to put things plainly, how could a lawyer know whether his or her paralegal or assistant is doing some task correctly, unless the lawyer has gone to the trouble of learning how to do that task correctly?   How can a lawyer know whether the paralegal or assistant is following Best Practices for some task, unless the lawyer has done the pesky work of actually learning what the Best Practices are for that task?

It seems to me that even a lean-back attorney, the kind of attorney who normally assumes that he or she would never actually get dirt under his or her fingernails by having to actually file a PCT application, or by actually clicking around in ePCT to check the status of a PCT application, or by actually calculating the date of completion of technical preparations for publication of a PCT application (you docket clerks know where I am going with that one!), could make very good use of his or her time by attending all fifteen of these webinars.  

In fact, what I would encourage such a lean-back attorney to do is this:  go and find one of your paralegals who really does e-file documents in ePCT, and one of your docket clerks.  Make a plan that the three of you will sit together through all fifteen of these webinars.  I think later you will feel that this is one of the best investments you have made in your firm, and in your own growth as a professional.

Okay, so you figured out that you do want to register to attend.  If so, click here.

One Reply to “Who should attend the SLW Institute 2022 Virtual PCT Training Seminar?”

  1. Thank you all your post, which actually reinforces many of my own thoughts. As I run a tiny IP practice and I do all the on-line filings and record-keeping myself, I had already decided that I should sign up to this webinar series although I should be on holiday for the last 3 webinars in a different country. I used to be the head of the IP department in a global company and I always reinforced to our attorneys that they were the ones who were effectively responsible and the good work done by our paralegals should be viewed as a useful double check – in fact all those involved in the filing procedure should be keeping an eye on everyone else’s work. This has become particularly important to me now that I work on my own and I try wherever possible to use my foreign associates, Renewals Agents etc. to provide the double check that I think is so important.

    I had been very interested in your comments on “applicant of convenience” in a previous webinar that you ran, but I recently attended a PCT webinar called “What’s new for applicants in ePCT 4.9” and one practical demonstration concerned me because it appeared that I would not be able to use an “applicant of convenience” in the US because of some extra checks that had been introduced into the new system.

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