PCT timeline. Some statistics. Filing considerations. International search. National/Regional phase. Recent developments.

1. Advanced PCT Practice
Jay Erstling
January 27, 2010
PCT Timeline
Some Statistics
Filing Considerations
International Search
National/Regional Phase
Recent Developments

2. Advanced PCT Practice
Cargill
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3. Agenda
PCT Timeline
Some Statistics
Filing Considerations
International Search
National/Regional Phase
Recent Developments

4. PCT TIMELINE

5. International
Preliminary
Examining
Authority
(IPEA)
International
Searching
Authority
(ISA)Invention
Receiving Office
(local patent office)
is filed with
Patent application
is the object of
PCT
International Bureau
transmit application
transmit
reports*
publish
International
Publication
communicate
Designated Offices
(foreign patent offices)
Patents
grant
Months from
Priority Date
File Local
Application
(Priority Date)
0 16 18 22 28 3012
File PCT Application
with Receiving Office
(International Filing Date)
ISR &
Written Opinion
(IPRP I)
International
Publication
File Demand
for IPRP II
(optional)
IPRP II National Phase Entry
(where Applicants
seek Protections)
* ISA transmit International Search Reports (ISR) & the Written Opinions / IPEA transmit International Preliminary Reports on Patentability II (IPRP II) (optional)
International Phase National Phase

6. SOME STATISTICS

7. Trends in PCT Filings

8. Share of Country in Total PCT Filings: Top 12 Countries of
Origin
Source: WIPO Statistics Database

9. Annualized Growth Rate of PCT Filings: Top 12 Countries of
Origin
Source: WIPO Statistics Database

10. Long-term Trends in PCT Filings: Top 12 Countries of Origin
Source: WIPO Statistics Database

11. Long-term Trends in PCT Filings: Top 12 Countries of Origin
Source: WIPO Statistics Database

12. Long-term Trends in PCT Filings: Top 12 Countries of Origin
Source: WIPO Statistics Database

13. PCT Filings by Country of Origin
Source: WIPO Statistics Database
Note that “to date” is November 2009

14. PCT and Developing Countries

15. FILING CONSIDERATIONS

16. PCT Filings by Medium of Filing

17. International Filing Fee: U.S. vs. WIPO (IB)
Transmittal Fee
Receiving Office/US: $240.00
Receiving Office/IB: $98.00
Filing Fee:
RO/US & RO/IB: $1,300.00
Excess Page Fee:
RO/US & RO/IB: $15.00
Minus Electronic Filing Reductions
RO/US & RO/IB: allows for reduction
where:
• filed on paper together with a
copy in electronic form, in
character coded format, of the
request and the abstract.
• filed in electronic form, the
request not being in character
coded format.
• filed in electronic form, the
request being in character coded
format.
RO/IB only: allows for reduction where:
• filed in electronic form, the
request, description, claims and
abstract being in character
coded format.

18. Timeliness of U.S. Receiving Office in Transmitting Copies
of PCT Applications
Source: WIPO
Statistics Database

19. Timeliness of WIPO Receiving Office in Transmitting Copies
of PCT Applications
Source: WIPO
Statistics Database

20. Drafting Strategies – Converting U.S. to International
Concentrate on one invention
Cancel trivial dependent claims
Select one independent claim per category
Consider multiple dependent claims
Combine alternatives into one claim
Consider filing divisionals

21. INTERNATIONAL SEARCH

22. International Searching Authorities Selected by PCT
Applicants
Source: WIPO Statistics Database

23. International Search Reports Established by Searching
Authorities
Source: WIPO Statistics Database

24. Timeliness of Search Authorities in Transmitting International
Search Reports to the International Bureau
Source: WIPO Statistics Database

25. Timeliness of Search Authorities in Transmitting International
Search Reports to the International Bureau
Source: WIPO Statistics Database

26. Selecting a Search Authority
Cost
Australia (IPAU): $1,397.00
Europe (EPO): $2,515.00
Korea (KIPO): $1,092.00
United States (USPTO): $2,080.00
Language Proficiencies
Completeness of Search
Timeliness

27. Rule 39: Patentable Subject Matter Under Article 17(2)(a)(i)
39.1 Definition
No International Searching Authority shall be required to search and international
application if, and to the extent to which, its subject matter is any of the following:
Scientific and mathematical theories
Plant or animal varieties or essentially biological processes for the production of
plants and animals, other than microbiological processes and the products of such
processes
Schemes, rules or methods of doing business, performing purely mental acts or
playing games
Methods for treatment of human or animal body by surgery or therapy, as well as
diagnostic methods
Mere presentations of information
Computer programs to the extent that the International Searching Authority is not
equipped to search prior art concerning such programs

28. Article 19 and 34 Amendments
Article 19:
Opportunity to amend claims only
Made during Ch. I process
Amendments published
Not reviewed by an examiner
Article 34:
Opportunity also to amend description and drawings
Made during Ch. II process
Not published (but made public at 30 months)
Reviewed by an examiner

29. When Article 19 & 34 Amendments Might Make Sense
When entering national phase in many countries
When one set of claim amendments will do
When it’s important to get something on file in the international stage
When nationalizing in countries that show special deference to IAs
Singapore
Malaysia
Israel
Don’t forget the alternative of informal comments

30. Article 19 & 34 Amendments – New Rules Effective July 1,
2009
Replacement sheet(s) must contain complete set of claims (not just amended
claims)
Accompanying letter needs to identify amended and/or cancelled claims and
draw attention to differences
Pilot project underway to file amendments electronically

31. ISAs Selected by PCT Applicants
Source: WIPO Statistics Database

32. International Search Reports Established by ISA
Source: WIPO Statistics Database

33. Demand for International Preliminary Examination
Source: WIPO Statistics Database

34. NATIONAL/REGIONAL PHASE

35. Considerations for National/Regional Phase Entry
Country Entry Date Language # of Claims Patentable Not Patentable
CHINA 30 months
*32 months with
complete translation
& fees
Chinese 10
(150 CNY/$22 USD
per claim over 10)
Novelty, inventive
step & susceptibility
to industrial
application.
Substances obtained
by means of nuclear
transformation;
computer programs .
(See Rule 39 of PCT)
EUROPE 31 months
Note: new rules for
divisionals
English
French
German
15
16-50: EUR 200 per
claim
>50: EUR 500
New, involve an
inventive step and be
industrially
applicable.
Computer programs
(See Rule 39 of PCT)
INDIA 31 months English 10
Small entity
(Individual): 200
INR/$5 USD per
claim over 10
Large entity:
800 INR/$17 USD
per claim over 10
Industrial products,
pharmaceuticals,
chemical compositions,
processes for obtaining
industrial result/product;
combination of means,
known per se, to obtain
an industrial product of
result; and
microbiological
processes and micro-
organisms.
Inventions relating to
atomic energy;
diagnostic, therapeutic
and surgical methods
for the treatment of the
human or animal body;
inventions being
contrary to public order,
good customs, public
health, the nutrition of
the people, security or
the environment .
(See Rule 39 of PCT)

36. Considerations for National/Regional Phase Entry
Country Entry Date Language # of Claims Patentable Not Patentable
JAPAN 30 months Japanese
English (followed by
JP translation)
Per claim basis at
request for
examination
(4000 JPY/$45 USD
per claim)
Any highly technical
advance certain of
technical idea utilizing
natural law, which
involves novelty,
inventive step and
industrial applicability.
Plant and animal
varieties, and computer
programs.
Invention is not novel,
lacks sufficient inventive
merit, cannot be used in
industry, and contrary to
public order, health or
morals.
KOREA 31 months Korean Based on # of pages
(at time of filing)
32000 KRW/$23
USD per claim at
request for
examination
Pharmaceuticals,
chemical compositions;
inventions involving the
use of a computer
program (‘computer-
related inventions’);
select plant varieties;
and semiconductors.
Methods for the
treatment/diagnosis of
human beings.

37. RECENT DEVELOPMENTS

38. Sequence Listings – New Rules Effective July 1, 2009
Fee changes for large sequence listings
No excess page fees if filed in TEXT format as part of an IA filed in
electronic form
But fill excess page fees if filed in image format or on paper
No more mixed mode sequence listing filings
All sequence listings to be published

39. Supplemental International Search
International Searching
Authority specified for
supplementary search
Required language of
international application or
translation
Fees
(as of January 1, 2009)
Scope of search
Federal Service for
Intellectual Property,
Patents and Trademarks
(Russian Federation) (RU)
Russian or English Supplementary search handling
fee: CHF 200 ($ 170 USD)
Supplementary search fee: CHF
equiv of $350 USD
To be confirmed for any international
application:
At least the Russian language
documentation held by the Authority in its
collection and certain patent documentation
in other languages published by the former
Soviet Union or members of the
Commonwealth of Independent States.
Supplementary search handling
fee: CHF 200 ($ 170 USD)
Supplementary search fee: CHF
equiv of $500 USD
To be confirmed: If the main ISA has
issued a declaration that no International
Search Report will be established due to
inventions relating to the treatment of the
human or animal body:
At least the PCT minimum documentation,
as well as the documentation specified in
the above service.
Swedish Patent and
Registration Office (SE)
Swedish, English, Danish or
Norwegian
Supplementary search handling
fee: CHF 200 ($170 USD)
Supplementary search fee: CHF
2,726 ($2,318 USD)
At least the PCT minimum documentation,
as well as documents in Swedish, Danish,
Finnish and Norwegian held by the
Authority.
Nordic Patent Institute (XN) Danish, English, Norwegian,
Icelandic or Swedish
Supplementary search handling
fee: CHF 200 ($170 USD)
Supplementary search fee: CHF
2,726 ($2,318 USD)
At least the PCT minimum documentation,
as well as documents in Danish, Icelandic,
Norwegian and Swedish held by the
Authority.

40. Supplemental International Search
An option to consider in particular cases
Began January 1, 2009 – few requests so far
Deadline: 19 months from the priority date
Currently 4 offices:
Russia, Sweden, Finland, Nordic Patent Institute
Search based on original claims
Article 19 or 34 amendments not taken into account

41. E-Filing Enhancements
PCT Service Centre [ https://webaccess.wipo.int/pctservice/en/ ]
Permits PCT applicants to submit electronic documents relating to
international applications directly to IB
Post-filing electronic documents can be submitted quickly and efficiently
• Avoids the costs and delays relating to paper mailing and also
overcomes image quality problems that can result from fax
transmissions or paper scanning
The following document types can be uploaded via this service:
• Amendments to the claims under Article 19
• Requests for supplementary international search
• Notices of withdrawal
• Requests for the recording of changes under Rule 92bis
• Informal comments on the written opinion of the ISA
• General correspondence for the attention of IB

42. Patent Prosecution Highway
Bilateral agreements between the patent offices of two countries that allow
for expedited application prosecution in certain circumstances
As of July 2009, the USPTO had PPH agreements, either as fully
implemented programs or pilot projects with Japan, the UK, Canada, Korea,
Australia, Europe, Denmark, Singapore, Germany, and Finland

43. Patent Prosecution Highway – Agreement Between
Trilateral Offices
Bilateral Agreement Between USPTO-EPO and USPTO-JPO
Applicant receiving a written opinion or an international preliminary
examination report from the foreign office or the USPTO that at least one
claim in a PCT application has novelty, inventive step, and industrial
applicability may request that the other office fast track the examination of
corresponding claims in corresponding applications.
Will leverage fast-track patent examination procedures already available
in both offices to allow applicants in both countries to obtain
corresponding patents faster and more efficiently.
The trial period starts on 29 January 2010 and is set to expire 28 January
2012, but may be extended for additional time or terminated earlier
depending on volume of activity and other factors.

44. Other Developments
PatentScope [ http://wipo.int/pctdb/en/index.jsp ]
Search service provides access to the technology contained in over 1.5M
published PCT international applications since 1978
Looking Ahead
PCT Roadmap

45. Contact
Jay A. Erstling
Patterson, Thuente, Skaar & Christensen
4800 IDS Center, 80 South 8th Street
Minneapolis, MN 55402
(612) 349-5771
erstling@ptslaw.com
www.ptslaw.com