PCT- Short Flow Chart Priority PCT Application Filed Restoration of Priority Deadline Search by ISA Int’l Publication + ISR Deadline to File Demand for

PCT- Short Flow Chart

• Priority

• PCT Application Filed

• Restoration of

Priority Deadline

• Search by ISA

• Int’l Publication + ISR

• Deadline to File

Demand for

Chapter 1

CountriesO

Months< 12

Months14

Months16

Months18

Months19

Months

PCT- Short Flow Chart

• Chapter 1 Deadline

to Nationaliz

e

• Deadline- Demand

Examination &

Response to

Written Opinion

• Examination by IPEA

• Target Date to Issue

IPRP by ISA (for Chapter

1) or IPEA

(Chapter 2)

• Chapter 2 Deadline

(Most Countries

)

• Chapter 2 Deadline (A Few

Countries)

20 Months

28 Months

30Months

31 Months

22 Months

PCT Application- Pre-filing Checklist

Get Applicant and Inventor InformationNationality may impact Receiving Office (RO)Foreign Filing License Granted/Needed

Pick Receiving Office (RO) USPTO IB

Pick International Searching Authority (ISA) Speed, Price, Where Nationalizing, etc.

Prepare Paperwork (format A4)

PCT Filing- Typical Flow

US AttorneyUSPTO (RO) Int’l Bureau (IB)

PCT Application

Request

PCT Application

Request Contents• Inventor(s)/Applicant(s)• Designate Agent• Not Designate Countries (DE, JP, KR)• Priority Claim & Documents• Pick Int’l Searching Authority (ISA)• Representative Figure

PCT Filing- Unusual Flow

US Attorney Int’l Bureau (IB) + RO

PCT Application

RequestDirectly File with IB• No Applicant is US Resident or

National (but a resident/national of PCT Contracting State)

• Restoration of Priority- within 2 month window after 12 Month Paris Convention Deadline

PCT Receiving Office (RO)• How to Pick a Receiving Office (RO)

– Depends on where applicant is a national or residence

• Two Options– Applicant’s National Patent Office (if allowed)

Normally, USPTO– WIPO International Bureau (IB)

• From US Perspective, if no US Applicant, need to file with IB as RO and pick local attorney to prosecute.

Filing USPTO as Receiving Office (RO)1. Familiarity with E-filing procedures.

2. File pdf’s of documents.

3. Instant Electronic Acknowledgment.

4. Payment via Credit Card in US Dollars.

5. Access to Documents in Private PAIR.

6. For invention made in the US, no separate request for a foreign filing license is needed.

Filing WIPO-IB as Receiving Office (RO)

1. Will need to obtain a WIPO Digital Certificate for each person who will physically file the applications.

2. The Digital Certificate must be used ONLY on the computer on which it was validated.

3. The Digital Certificate must be renewed every two years.

4. Will need to download and use PCT Easy software, which needs updating regularly.


5. Will need to open a WIPO Deposit Account 1. Otherwise, file an application at the

International Bureau, then receive a link electronically to make an Epayment on WIPO via credit card.

2. You may have added conversion fees from US $ to Swiss francs on your credit card bill.

3. Pay by bank transfer to WIPO’s bank account or postal account

6. Will never have access to complete file history.


7. If invention made in the US, you will need a foreign filing license from the USPTO to file a PCT application at the IB.

8. Can file via fax; however, original must be delivered within 14 days from the fax transmission (FedEx preferred).

9. Lose valuable filing time since WIPO is six hours ahead of us.

PCT Searching Authorities (ISA)• Right Now, You Can Select From Among

Several Patent Offices to Conduct the Search

• US Searching Authorities Include– USPTO– EPO (European Patent Office)– KIPO (Korea)– Australia (IPAU)– Russia (Rospatent)– Israel (ILPO)

• Note: Option Secondary ISA

PCT Searching Authorities (ISA)

Receiving Office (RO) US or IB

ISA/US ISA/EP ISA/KR ISA/AU ISA/RU ISA/IL

PCT- Options to Save Money

Below is a chart summarizing the options. Please note that the search fees are based on October 1, 2013 figures.

ISA Office Search Fee Benefits Issues

Australia $1,925 Less expensive thanEurope

Only searches applications in very limited technology fields. For example, it does not search all mechanical engineering and some biotechnology type inventions.

Europe $2,366 Perceived high quality search

Expensive, and it will not conduct searches for applications that concern some types of technologies.

Korea $1,219Inexpensive and receive results relatively quickly.

Limits the technology of applications that can be searched.

United States of America $2080 Perceived high

quality search

Expensive and does not supply the search report in a timely fashion (e.g., before Chapter II deadline).

PCT- Options to Save Money

Below is a chart summarizing the options. Please note that the search fees are based on October 1, 2013 figures.

ISA Office Search Fee Benefits Issues

Russia $704 Inexpensive No experience.

Israel $969 Inexpensive Limited number of applications allowed

Generally two ways to prepare/file the "paperwork" for a PCT application. PDF forms (e.g., Request, transmittal, etc.)

PCT-SAFE (SAFE = Secure Applications Filed Electronically) software helps to prepare the electronic forms for filing. Two modes:

– Fully electronic mode: The description, claims, abstract and drawings are attached in PDF, TIFF or XML format.

– PCT-EASY mode: The request form as well as the application body are submitted on paper, accompanied by a physical medium (floppy disk, CD, etc.) which contains a zip file with the request form, the abstract and a log file created through PCT-SAFE.

For ease of viewing, the presentation will show the PDF forms.

How to File a PCT Application

Application (format for A4 Paper and line nos.) Specification- Format A4 paper & line numbers Claims Drawings- add drawing sheet numbers Abstract- add reference numerals

Transmittal Request Fee Transmittal Declaration(s) (optional)

How to File a PCT Application- Paperwork

How to File a PCT Application- Paperwork Transmittal

USPTO= RO IB= RO

Foreign Filing License Screening

Same but Different

How to File a PCT Application- Paperwork Request- Page 1

Attorney identified- includecontinuation sheet foradditional attorneys

Identify the Applicant forspecific State(s)- Check

Supplemental Box & include continuation

sheet for other Applicants


Identify InventorsNOTE: Now US Companiescan be Applicants, so US

inventors should be usually“inventor only”

Identify additionalApplicant(s)

Request- Further Applicants & Inventors

Notice Last Names ALL CAPS


Explain where eachApplicant is designated

Request- Supplemental Box

Identify Other Patent Attorneys

(from page 1)

Request- Designations & ISA


Ask RO transmit certified copy of

priority document(s)

Priority Claim Here

Pick ISA

Miss 12 Month DeadlineRestore Priority Here

Notice Date Format

Request Transmit Prior Search

Results Declarations


Identify Declarations

How to File a PCT Application- Paperwork Request - Sample Declarations

Request Checklist Signature


FIG. # to Appear on PCT Publication

Itemize What is Filed

Sign Here!

How to File a PCT Application- Paperwork Fee Calculation Sheet

Notice AdditionalSheet Fees are Common

If USPTO is RO, then can charge to USPTO

Deposit Account

Search Fee ChangesDepending on ISA