Comprehensive Patent Cooperation Treaty Seminar
Pierce Law's Germeshausen Center for the Law of Innovation and Entrepreneuship is pleased to announce the yearly Comprehensive Patent Cooperation Treaty (PCT) Seminar traditionally held in Concord, New Hampshire, in cooperation with the World Intellectual Property Organization (WIPO), of Geneva, Switzerland.Vital for administrators and patent paralegals, as well as patent agents and attorneys, the seminar provides participants in-depth knowledge and understanding of the PCT.
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| Professor Jorda and speakers Carol Bidwell and David Reed, consultants from the WIPO Office of the PCT |
The last seminar held in April 2008
The program was directed by Pierce Law's Karl Jorda, David Rines Professor of Intellectual Property Law and Director of the Germeshausen Center. The featured speakers were Carol Bidwell and David Reed, consultants from the WIPO Office of the PCT. This seminar qualified for 10.75 NH credits. CLE credits for other states could have been applied for.
Topics of the last seminar
Introduction to the PCT System
- Review of traditional patent system vs. the PCT system.
- Discussion of PCT Contracting States available through regional patent Offices and national patent Offices.
- General remarks on the PCT system
- Minimum requirements for according an international filing date
- Missing elements and discussion of incorporation by reference procedure
- Requirements for filing in the USPTO as receiving Office
- Concept and operation of designation system
- Optional use of declarations during the international phase
- Choices of International Searching Authorities and advantages of each
- Review of how to properly fill out the PCT Request form
- Electronic filing options in RO/US
- Review of who can file in RO/IB
- Transmittal of international applications to RO/IB under PCT Rule 19.4
- Advantages to using RO/IB where applicants are nationals of two or more Contracting States and caveats
- Electronic filing options in RO/IB
- Discussion of who can act as agent and what a common representative is
- Waiver of power of attorney requirements
- Requirements for withdrawing the international application, priority claim, designations, etc.
- Discussion of the right of priority in an international application
- Restoration of the right of priority under PCT Rule 26bis.3 and requirements associated therewith
- Furnishing certified copy of priority document during the international phase and advantages for doing so
- Addition and correction of priority claims and time limits for doing so
- Duties of the ISA and discussion of prior art under the PCT
- Unity of invention procedure where claims are directed to more than one invention
- Discussion of the contents of the international search report and the written opinion of the ISA
- Effects of international publication
- Using the WIPO Internet site to view published international applications
- How to prevent and postpone international publication
- Review of the basics of Chapter II examination and who is entitled to make a demand
- Time limits for filing a demand and where it should be filed
- Brief review of how to properly fill out the form
- Review of the purpose of international preliminary examination and when it may begin
- Definition of prior art in Chapter II
- Treatment of the written opinion of the ISA by the IPEA and preparation of the international preliminary report on patentability (Chapter II)
- Rectification of obvious mistakes
- Recording changes in applicant, inventor and agents
- Discussion of Article 19 amendments including where to submit, time limits for doing so and purpose
- Discussion of Article 34 amendments including where to submit, time limits for doing so and purpose
- General overview of the process
- Decisions that applicant must make
- Special requirements that may be made by Offices
- Reinstatements of rights when national phase time limits are missed
- Discussion of US national phase entry requirements
- Claiming priority to an earlier US applications and how to make a domestic benefit claim
- Claiming priority to a foreign application
- Filing a by-pass continuation as an option and the advantages and disadvantages of doing so
- Electronic filing options in the DO/EO/US
- Initial considerations when first filing an international application including discussion on when, which receiving Office to file in, which ISA to select and timing
- Considerations after receiving the search report and written opinion of the ISA
- Should a demand be filed - when is it advantageous to do so
- Where should national phase entry be made and when (early or at the end of the time limit)
- Discussion of ways to use the PCT to better manage a patent portfolio
- PCT Information available on the Internet
- Where to get help at the USPTO
- Phone numbers for US consultants and WIPO staff
Contact us
Carol Ruh, Events Managercruh@piercelaw.edu
Phone: (603) 228-1541 ext. 1108
Fax: (603) 225-9647
for questions or more information requests
