© 2017 BIRCH, STEWART, KOLASCH & BIRCH LLP

Filing Requirements for a U.S. Patent Application

Emphasis on National Stage Applications

TERMINOLOGY

Different Names (most common)?

• Regular Priority application (claiming priority via the Paris convention within 1 year of earliest priority)

– 119 application (based upon 35 USC § 119(a))

– Paris convention Priority application

• PCT; National Phase entry

– National Stage Application

– National Phase Application

– 371 Application (based upon the code for which it is filed under - 35 USC § 371)

Acronyms for PCT

ARIPO African Regional Industrial Property

Organization for English-speaking Africa

DO Designated Office

EPC European Patent Convention

EO Elected Office – Chapter II

IB International Bureau

IPE International Preliminary Examination

IPEA International Preliminary Examining Authority

Acronyms (cont.)

IPRP International Preliminary Report on

Patentability

ISA International Searching Authority

ISR International Search Report

OAPI Intellectual Property Organization for French-

speaking Africa

RO Receiving Office

WIPO World Intellectual Property Organization

WO of

ISA

Written Opinion of the International

Searching Authority

Comparison

Filing Deadline - Example

Priority Date(first filed

application)

January 1, 2013

International (PCT)

Application (PCT)

January 1, 2014

National Stage Application Deadline

July 1, 2015

(30-months from earliest filing date)

Be careful of your National Stage Deadline, not all designated states

allow 30 months. This deadline is just an example.

National Stage Deadline

The National Stage deadline is very important!!

If the deadline is unintentionally missed the application will have to be revived.

National Stage Requirements (Rules)

• Requirements for a National Stage application are:

– Designation as a National Stage application;

– The national fee;

– Inventor’s Declaration (can be filed later);

– Translation, if applicable (can be filed later); and

– Copy of International (PCT) Application (but only in certain circumstances, like filing before publication)

• Need to file a copy of the PCT/IB/308 form (2nd Notice), designating the US, if it is available, or a copy of the as-filed International (PCT) Application and PCT/RO/101

DOCUMENTS

National Stage Filings

Application Requirements

The RED() items SHOULD be filed with the new application, if applicable

* Transmittal Form

PTO-1390

Appropriate Fees (can be paid after

filing)

* Application Data

Sheet (ADS)

ADS required

* Specification Application as published (WO

document); or

If not published, the application as

originally filed

* Drawings If applicable

Translation Can be submitted after filing with

payment of a fee

Power of Attorney If available

* Nucleotide and/or

Amino Acid

Sequence Listing

If applicable

* Large Tables or

Computer Listings

If applicable

PCT/IB/301 Notification of Receipt of Record Copy

PCT/IB/304 Notification Concerning Submission Obtention or Transmittal

of Priority Document

* PCT/IB/306 Notification of the Recording of a Change

* PCT/IB/308 First and Second and Supplementary Notice

PCT/IB/311 Notification Concerning Availability of the Publication of the

International Application

PCT/IPEA/416 Notification of Transmittal of International Preliminary Report

on Patentability

*

PCT/IPEA/409

International Preliminary Report on Patentability

PCT/RO/101 Request (must be filed when there’s no WO Published and/or

PCT/IB/308 (2nd Notice)

* PCT/ISA/210 International Search Report

PCT/ISA/220 Notification of Transmittal of the International Search Report

and the Written Opinion of the ISA, or the Declaration

* PCT/ISA/237 Written Opinion of the International Searching Authority

PCT Documents (file if we have them/submit alphabetical and then numerical)

PCT/IB/332 Information Concerning Elected Offices Notified of Their

Election

PCT/IB/402 Notification of Receipt of Demand By Competent IPEA

PCT/IPEA/401 Demand – Chapter II

PCT/IPEA/408 Written Opinion of the International Preliminary Examining

Authority

PCT/RO/102 Notification Concerning Payment of Prescribed Fees

PCT/RO/105 Notification of Int’l Application No. & of the Int’l Filing Date

PCT/RO/106 Invitation to Correct Defects in the International Application

PCT/ISA/202 Notification of Receipt of Search Copy

These forms may be available from WIPO PatentScope:

http://patentscope.wipo.int/search/en/structuredSearch.jsf

PCT Documents –Not necessary to File

APPLICATION PAPERS

National Stage Transmittal

• Form PTO-1390

– Transmittal Letter to the United States Designated/Elected Office (DO/EO/US) Concerning a Submission Under 35 U.S.C. 371

Application Data Sheet (ADS)

• Covered in separate slides – essential.

Specification

• Specification– Application as published (WO document); or– If not published, the application as originally filed

• Using the Publication?– Confirm all sections are in the copy

• Description• Claims• Abstract• Drawings (if applicable)

– Confirm all pages are legible

Physically count and review the pages

Specification (cont.)

• There are times in a National Stage application when no specification (the traditional idea of a specification may be different) needs to be submitted, for example:

– if the original application was filed/published with an English language specification, you can simply submit the PCT/IB/308 (2nd Notice) form; OR

– if the application is not in English and you are NOTsubmitting the English translation with the application, you can simply submit the PCT/IB/308 (2nd Notice) form.

Specification (cont.)

• Applicant may submit a copy of the international (PCT) application as published instead of a copy of the application as originally filed, UNLESS:

– Article 19 Amendments were filed amending the abstract and/or title when the ISR was prepared and the revised abstract and/or title is published;

• then the Written Opinion publication cannot be used as the originally-filed application.

If either box is checked, the

publication cannot be used as

the originally filed application.

Form

PCT/ISA/210

PCT/IB/308

• BSKB files a copy of form PCT/IB/308 (First and Second and Supplementary).

• The first notice states NO designations were made.

• If we do NOT have the second notice, we file a copy of the International (PCT) Application as published.

• If neither of these are available:

– we file the International (PCT) Application as originally filed; AND

– a copy of PCT/RO/101 (PCT Request)

US

Designated

Translation

• The English translation of the International Publication MUST be a literal translation

– What this means is that it must be an exacttranslation of the International Publication

• No changes to the content can be made in the translation

– Content changes must be made by Preliminary Amendment

Declaration, Assignment and Power of Attorney

• There are different permutations for these documents. Imagine 3 buckets…each needs to be filled.

Declaration AssignmentPower

of Attorney

Declaration

• Pre-AIA Declaration procedures - any application having an effective PCT filing date prior to September 16, 2012 – no need to clutter up your minds, these will not be discussed. Just know that the requirements are different.

• AIA Declaration procedures – any application having an effective filing date or a PCT filing date on or after September 16, 2012.

Different Scenarios

If the Applicant is Required Forms

• Assignee Combined AIA Dec/Assignment and POA

• Inventor Combined AIA Dec/Assignment and POA (Assignee handling prosecution)

• Inventor (no Assignee) AIA Dec and POA

Regardless, the Declaration must contain specific language

required by the AIA. The suitable forms may be downloaded from

BSKB’s website.

See next page for actual language and an example

Declaration Requirements

• The Declaration for a National Stage application can be either:– a standard Declaration; or – a Declaration under rule 4.17(iv) that is filed during

the international phase.• If you do not receive a Declaration, check PatentScope

to see if a 4.17(iv) Declaration is available.• The inventor/applicant/assignee address identified on

the Declaration/Assignment documents should be used IF different from the client’s instructions (unless a PCT/IB/306 form indicates a change).

• the application was made or was authorized to be made by the affiant or declarant;

• such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application; and

• The undersigned hereby acknowledges that any willful false statement made in this

declaration is punishable under 18 U.S.C. § 1001 by fine or imprisonment of not more than

five (5) years, or both.

Assignment

Generally, the Assignment can be separate from the Declaration, but it is also possible to use the combined Declaration/Assignment document available from BSKB’s website.

Combined Declaration/Assignment

Slight variation – Declaration of Inventorship

• If Applicant files a Declaration of Inventorship, a Power of Attorney is still required

– Make sure the Declaration (correct form may be downloaded from BSKB’s website) has the new language required by the AIA changes:

– (1) the application was made or was authorized to be made by the affiant or declarant; and

– (2) such individual believes himself or herself to be the original inventor or an original joint inventor of a claimed invention in the application.

Power of Attorney - most common scenario – 82B

Drawings

• As in Utility applications, you should always compare your actual drawings to the “Brief Description of the Drawings” located in the Specification

– Make sure that all sheets or drawings and figures have been received and are described in the specification

Drawing changes can be made in an Article 34 Amendment.

Be sure to review the Amendments for any changes to the drawings!

Sequence Listings

• Sequence Listings typically occur in Biotech cases.• They are an important part of a specification.

Assignment

• If separate, review the Assignment for completeness• Are all inventors listed?

– Spelled correctly and match the inventors on the Declaration

– Might be same form as Declaration• Did all inventors sign and date the document?• Is the Assignee name and address complete?• Is the Title of the invention complete and accurate?

PCT/IB/306

• Notification of the Recording of a Change– If issued, this document should ALWAYS be filed

• Indicates that bibliographical data was corrected/changed during the International Stage– Examples of the information changed

• Name• Address• Nationality• Adding/Deleting an inventor• Change of Applicant

• Generally, we cannot make these changes to the National Stage application without this form

PCT Amendments?

• International Preliminary Report on Patentability (IPRP)– The IPRP is issued 3 months from the International Search

Report or 22 months from the priority date, whichever is later

• Chapter 1 (without Demand) – form PCT/IB/373; or• Chapter 2 (with Demand) – form PCT/IPEA/409

(PCT/IPEA/416 coversheet)• International (PCT) Application Amendments

– Article 19 (claims only)– Article 34 Amendments (with Demand)– Letter to the USPTO submitting the Amendments

PCT/IB/373

PCT/IPEA/409

Preliminary Amendment

• Amend/Correct the Title, if needed

• Amend the claims, if needed

• Incorporate Article 19 and/or 34 Amendments

• Remove improper multiple dependencies from the claims – to avoid unnecessary USPTO fees

Cross-Reference To Related US Applications

• When claiming priority to a US Application (e.g., perhaps a provisional application), a Cross-Reference paragraphmust be inserted into the specification by way of a Preliminary Amendment

– It is not necessary in to insert a Cross Reference paragraph identifying the international (PCT) application or foreign priority applications

Title - Amendments

• Applicant may change the Title of the Invention when entering the National Stage (instead of during the International Stage)

– The client may try to submit a new title with an English language specification

– This is generally not accepted by the USPTO, unless a Preliminary Amendment is filed

Article 19 Amendments

• Article 19 Amendments are made only to the claims.• The amended pages will be included in the International

(PCT) Application as published.• The order letter and the publication should indicate that the

application includes Article 19 Amendments.• If we wish to incorporate the Article 19 Amendments into the

application, we must submit:– A copy of the amended claims, and– An English translation (if applicable) with the application

• The USPTO is very inconsistent in entering Article 19 Amendment, so our policy is to enter such claims via a Preliminary Amendment.

Article 19 Amendments (cont.)

• The English translation for the Article 19 Amendments cannot be filed at a later time.

– Provide copies of Article 19 Amendments using the Letter Submitting Article 19/34 Amendments, even if you are filing a Preliminary Amendment to amend the claims.

– If not already noted, stamp the Amended Sheets with the “Amended Sheet” stamp.

Article 34 Amendments

• Article 34 Amendments are filed with the Chapter II Demand, or in response to the Written Opinion.

• The amended pages will appear as an annex to the International Preliminary Report on Patentability (PCT/IPEA/409).

• If the Applicant wishes to incorporate the Article 34 Amendments into the application, we must submit a copy of the amended pages with the application, in order for them to be made of record in the US:

– A translation of the annexes must also be provided, but the translation can be submitted after the filing of the application.

Article 34 Amendments (cont.)

• Article 34 Amendments can include amendments to the specification, claims and drawings– We only amend the claims with a Preliminary Amendment

• Provide copies of Article 34 Amendments using the Letter Submitting Article 19/34 Amendments– Even if you are filing a Preliminary Amendment

– Copies of the Amended Sheets should be attached to the Letter

• If not already noted, stamp the Amended Sheets with the “Amended Sheet” stamp.

Priority Document

• It is NOT necessary to submit a certified copy of the priority document in National Stage applications:

– The certified copy is either filed electronically or provided to the International Bureau in the PCT application.

– The International Bureau provides a copy to the USPTO for National Stage filing.

• Form PCT/IB/304 indicates that the priority document has been filed in the International (PCT) Application and can be used to provide “proof” to the USPTO.

Make sure a

“Date of Receipt…”

has been entered

Read the fine print.

Form PCT/IB/304

New Case Filing – Quick Reference List

• Form PTO-1390• Application Data Sheet• Power Of Attorney and Transmittal (if any)• Preliminary Amendment (if any)• Article 19/34 (if any)• PCT Documents (in numerical or alphabetical order)• Information Disclosure Statement Transmittal (if any)

– Information Disclosure Statement SB/08 form – Foreign Office Action/Search Report – Foreign References – Non-Patent Literature References

• Specification (Specification, Claims & Abstract) • Declaration (if any)• Drawings (if any) • Sequence Listing (if any)

QUESTIONS