Protecting Your Inventions Internationally Using the PCT: A User's Perspective
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Transcript of Protecting Your Inventions Internationally Using the PCT: A User's Perspective
Protecting Your Inventions
Internationally Using the PCT
A User’s Perspective
Presented by Justin Cassell
© 2016 Workman Nydegger
Benefits of the PCT
Application
▶ One application
▶ One office
▶ One language
▶ Claim priority
▶ Easy entry into national phase
Services
▶ Publication
▶ Search
▶ Written Opinion
▶ Examination (optionally)
▶ Delay national processing
▶ Forwarding of documents
Amendment During Search and Examination
▶ Amendment of claims under Article 19 during Chapter I
▶ Amendment of claims and specification under Article 34 during Chapter II
Benefits of the PCT
Delay
▶ Filing fees
▶ Translation costs
▶ Attorney costs
▶ Election of countries
▶ Annuities
▶ Current state of patent law
Costs
▶ Defer upfront costs
▶ Reduce fees for national phase filings
▶ Manage budgets
Considerations for National Phase Applications
Commercial Considerations▶ Sophistication of Markets
▶ Sales
▶ Manufacturing
▶ Competition
▶ Technology
▶ Design around
Country Considerations▶ Commercial needs
▶ Long and short terms costs
▶ State of patent law
▶ Strength of protection and enforcement
▶ Valuation of patent and investment
▶ Exposure to lack of patents
Strategies for Using PCT
Provisional
Application
PCT
Application
Non-PCT
Applications
National / Regional
Phase Entry
US
EP
JP
CN0 mo. 12 mo. 30/31 mo.
▶Lower upfront costs with provisional application
▶Parallel prosecution of non-PCT and PCT applications
▶Delays US prosecution
▶PCT search likely before national phase entry
Strategies for Using PCT
US Utility
PCT
Application
Non-PCT
Applications
National / Regional
Phase Entry
EP
JP
CN
0 mo. 12 mo. 30/31 mo.
▶More upfront costs
▶PCT search report can come from non-US office
▶PCT can be route for second US application
▶First US utility patent will have 1 year shorter in term
Strategies for Using PCT
Provisional
Application
PCT
Application
Non-PCT
Applications
National / Regional
Phase Entry
EP
JP
CN
0 mo. 12 mo. 30/31 mo.
US Utility
▶Higher cost at 12 mo. point, but lower at onset
▶PCT search report can come from non-US office
▶PCT search report comes early in process
▶Flexibility with US prosecution (continuations)
▶Common patent expiration (subject to term adjustment)
Strategies for Using PCT
PCT
Application
Non-PCT
Applications
National / Regional
Phase Entry
US
EP
JP
CN0 mo. 12 mo. 30/31 mo.
▶Higher cost than provisional filing
▶Delays US prosecution
▶Minimize concern as to disclosure of invention
▶Flexibility to national phase entry
▶Search report received before national phase entry
▶Possibility of reduces search and examination fees
▶No PPH
International Search Authority (ISA)
▶ Classifies the technology
▶ Evaluates for multiple inventions (Unity of invention)
▶ Searches prior art in view of the inventions
▶ Prepares an International Search Report and Written Opinion
▶ Determines the International Examining Authority
International Search Authority
International Search Authority
Availability of the ISA
▶ The Receiving Office (RO) determines which ISAs are available
▶ Selection of RO is based on nationalities and domiciles of Applicants
▶ US Applicants can use RO/US or RO/IB
▶ May consider different RO is inventor according inventor domicile
▶ Any resident or national of PCT contracting state may file direct with RO/IB
▶ RO/US allows one of following ISAs:
AU, EP, IL, JP, KR, RU, SG, US
International Search Authority
77445
42384
34185
20693
13180
3052
2569
2508
1543
1255
940
735
464
269
223
European Patent Office
Japan
Republic of Korea
China
United States of America
Russian Federation
Australia
Canada
Sweden
Spain
Finland
Israel
Brazil
Austria
Nordic Patent Institute
2013
2012
2011
Note: 2013 data are WIPO estimatesSource: WIPO Statistics Database, February 2014Data based on international filing year of application
International Search Authority
Factors for Selecting the ISA
▶ Cost (short term and long term)
▶ Search other than RO
▶ Timeliness
▶ Subject Matter
▶ Scope and quality of search
▶ Effects on national or regional phase applications
▶ Language
▶ Potential patent prosecution highway benefits (PPH)
International Search Authority
Factors for Selecting the ISA
▶ USPTO as ISA/IPEA
• May eliminate or reduce search and examination fees in US
national phase entry
• Can pay small-entity and micro-entity designations
• More expensive search fees relative to, e.g., KR, RU
• Lengthy reports
• Search services are outsourced, not the same USPTO
examiner as with national phase entry or continuation
• New search is conducted upon national phase entry
• Out of order examination if no rejections or they overcome by
amendment
International Search Authority
Factors for Selecting the ISA
▶ EPO as ISA/IPEA
• May be more comprehensive than USPTO, particularly for non-US prior art
• May be more similar to use of novelty and inventive step standards outside the US
• Stricter unity of invention standards
• Stricter regarding subject matter
• Can obtain search on all claims – more than 15 claims
• Search and written opinion more direct and to point
• When entering EPO, EPO considers PCT as first stage of EPO examination
• EPO typically gives full, faith and credit to search
• Selection of EPO as IPEA, EPO examination fee is reduced
International Search Authority
Factors for Selecting the ISA
▶ KIPO as ISA/IPEA
• Lower cost than USPTO and EPO
• More proficiency with Korean and Japanese references
• Less proficiency with European references
• Looser on subject matter
• Cheaper on second through nth inventions if there is a
invitation to pay additional fees due to lack of unity
• Better proficiency in the electronic arts
International Search Authority
Timeliness
▶ISA must establish the ISR within 3 months of receipt or 9 months
from priority date (whichever is later)
Source: WIPO Statistics Database, March 2013
Timeliness calculated as time elapsed between priority date and date ISA transmits
ISR to the International Bureau
Amending PCT Applications
Article 19 Amendment
▶ Amendments are published but not examined
▶ Provide amendments for national/regional phase entry
▶ Correct errors prior to publication
▶ Claim additional embodiments
Article 34 Amendment
▶ Amendments are examined but not published
▶ Arguments may be presented
▶ Work to get a positive IPRP
Patent Prosecution Highway
PCT-PPH
▶ Enables an applicant with a favorable determination of the claims
from an ISA/WO or IEA/IPRP to obtain expedited processing in
another office
▶ Steps
• PCT and US applications must have same priority date
• Applicant obtain favorable PCT search report and opinion indicating
patentability of one or more claims
• Substantive US examination has not yet occurred
• File a petition to make special for a corresponding US application under PPH,
and based on ISR/WO
• Claims of both applications must substantially correspond to one another
• Once granted, US examination for corresponding US application is expedited