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Patent Cooperation Treaty and Application Conference  September 24, 2012

Patent Cooperation Treaty and Application Conference  September 24, 2012 . Neal L. Slifkin nslifkin@harrisbeach.com 99 Garnsey Road Pittsford, NY 14534 (585) 419-8636 www.harrisbeach.com. Alternatives to PCT. Direct national filings on the same day you file the U.S. application

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Patent Cooperation Treaty and Application Conference  September 24, 2012

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  1. Patent Cooperation Treaty and Application Conference September 24, 2012 Neal L. Slifkin nslifkin@harrisbeach.com 99 Garnsey Road Pittsford, NY 14534 (585) 419-8636 www.harrisbeach.com

  2. Alternatives to PCT • Direct national filings on the same day you file the U.S. application • Benefit – obtain the foreign patents sooner • Rarely done this way • Direct national filings within one year under Paris Convention • Benefit – cost savings over PCT

  3. Benefits of PCT • Delay • You are buying time

  4. Benefits of PCT • Can extend time to file until 30 months from the first filing date • Maintains options on countries while U.S. application is pending • Extends time to evaluate the results of the first-filed application • Defers costs of individual national filings at a cost of approximately $5,000 • PCT Procedures can affect patentability: • Examination report can carry significant weight in national prosecution

  5. Benefits of PCT Provides additional time to commercialize the invention Provides time to secure funding for start-ups Provides time to assess the demand for the invention/product

  6. Benefits of PCT In the U.S. you are likely to have the same examiner reviewing the PCT and U.S. applications Can correct defects once, instead of in every national application, resulting in significant savings

  7. Fees • PCT Fees • Filing fee - ~$1,500 • Search fee - $2000 (U.S.), $1,101 (Korea) • Transmittal fee - $240

  8. Where to File? • Where to file? • U.S. Receiving Office • WIPO • If applicants are non-U.S. citizens, you should file with WIPO

  9. When to File? • A U.S. applicant may file the U.S. national application first, and then the PCT application within 12 months • Consider filing a provisional first • A U.S. applicant may file the PCT application first, and then the U.S. national application at 30 months

  10. Chapter II Should your client demand international preliminary examination?

  11. When to Nationalize? • Deadline is 30 months from priority date (first filed application) • Exceptions • Europe 31 months • Canada 42 months (with extension fees)

  12. Where to Nationalize? • Select places of manufacture and sale • Manufacturing in a few countries • Sales/use in key countries • Consider practical enforcement issues • Difficulties and expense of enforcing • Rampant piracy in many countries such as China, Taiwan, India, Indonesia, the Philippines, Poland, Russia, Ukraine, Brazil, Paraguay and Argentina • File national applications on the most valuable inventions • Consider having translations done in U.S.

  13. Where to Nationalize? Rochester region exported $5.5 billion in goods in 2011, up 7.4% from 2010 Top export markets are Canada, China, Mexico, Germany and the United Kingdom

  14. Europe or Select Countries? • Cost of filing EP application • $5000 • Cost of validating • Few hundred to a few thousand per country • Cost of filing direct in large markets in Europe • $2,000 to $4,000 per country • Consider DE and UK only

  15. China • Should your client file in China? • Uncertainty of court system • Is some chance of success better than none? • Copying is more likely if there is no patent protection • Cost - $4,500

  16. China • For highly valuable inventions consider filing a Chinese utility model application immediately under the Paris Convention in addition to a utility patent application nationalized through the PCT • Utility model applications are granted within 6 to 12 months • May have to abandon the utility model patent to get the utility patent to avoid double patenting

  17. Other Countries? • Japan • Several thousand dollars to file • India • Relatively inexpensive - $3,000

  18. Where Can’t You Nationalize? There are about 50 non-member States Notable non-member states include – Taiwan, Argentina, Venezuela, Bolivia If you want protection in these countries, you must file directly within 1 year of the priority date

  19. Patent Prosecution Highway • Accelerated process • AU, AT, CA, CN, DK, EP, ES, FI, IL, IS, JP, KR, NO, RU, SE • Usually reduces number of Office Actions from foreign patent offices • Reduces cost to client • Obtain foreign patents sooner • Take care in the selection of searching authority (select the U.S. ISA)

  20. Patent Prosecution Highway • Requires a positive: • International search report • Written opinion or • International preliminary examination report

  21. Patent Prosecution Highway File PCT in RO/US Use favorable WO or IPER File in USPTO and other national offices

  22. Patent Prosecution Highway Submit a request to enter PPH to the USPTO Submit copies of all work product indicating the patentable subject matter (e.g., WO) Submit an IDS including the documents in (2) and cited references (include certified translations if necessary) Show claim “correspondence” in the request form or separately

  23. Allowance Rates PPH • USPTO Statistics • USPTO Allowance Rates (AIPLA Survey) • PCT-PPH cases: 97.9% • non-PPH cases: 46% (including RCEs)

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