PCT Practice Washington, DC Ladas & Parry LLP

The Benefits Of Using The PCT CONSIDERATIONS Applicant Novelty Claims Description Abstract Searching Authorities PPH PCT Prosecution Timing Ladas & Parry LLP

Loss of Priority, Loss of Patent Applicant and Timing Potential loss of priority or patent- Remember - Filing must be within 1 year of your FIRST filing (Paris Convention Rule*) Only list Applicants who own the invention** Nunc Pro Tunc rights negated*** **Board of Trustees of Leland Stanford Junior University v. Roche Molecular Systems, Inc., 583 F.3d 832 (Fed. Cir. 2009); ** *** Edwards Life Sciences AG v Cook Biotech Incorporated, [2009] EWHC 1304[82-100] *** Abraxis Bioscience, Inc. v. Navinta, LLC 625 F.3d 1359 (Fed.Cir. 2010) Ladas & Parry LLP

Paris Convention Article 4 C “ (1) The periods of priority referred to above shall be twelve months for patents and utility models, and six months for industrial designs and trademarks. (2) These periods shall start from the date of filing of the first application; the day of filing shall not be included in the period. (3) If the last day of the period is an official holiday, or a day when the Office is not open for the filing of applications in the country where protection is claimed, the period shall be extended until the first following working day. (4) A subsequent application concerning the same subject as a previous first application within the meaning of paragraph (2), above, filed in the same country of the Union shall be considered as the first application, of which the filing date shall be the starting point of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis for claiming a right of priority. The previous application may not thereafter serve as a basis for claiming a right of priority.” Ladas & Parry LLP

Entering the Proper Applicant The Paris Convention requires that the person filing a priority claiming application is the same as the person who has filed an application from which priority is claimed, or his or her successor in title (A&B named as apps in priority app, only Company X named as app in PCT/EPO/UK app). Edwards Life Science, supra. Failure in this respect can invalidate the claim to priority. The Applicant must have title at the time of filing to claim priority. (Germany requires ownership at least one day before the application is filed!) While in the US determining the applicant in part is derived from what is claimed, in other jurisdictions (the UK), the law looks to what is described. In Australia, you cannot assign what has not been created (typical US employment agreement). Ladas & Parry LLP

Entering the Proper Applicant Continued An “agreement to assign” is not an assignment. Stanford v Roche, supra. A Nunc Pro Tunc assignment will not work in many jurisdictions. To the extent that it does work in the US, the right to sue must also be Nunc Pro Tunc . Abraxis, supra. In France and arguably Germany an assignment of the invention is not the assignment of the priority. TGI Paris, 30 January 2009 - Magic Technologies v Swisscom AG (Note that the inventors and company were all Swiss and Swiss law would have not required such an assignment.) German Federal Patent Court, 28 Oct 2010, 11 W (pat) 14/09 Case law at the EPO and requirements in Japan suggest/require that both the Assignor and the Assignee sign an assignment. Ladas & Parry LLP

Some Elements of Assignment Assign the right to priority Assign the invention Include Nunc Pro Tunc rights to sue Recite the applicable law Have both the Assignor and Assignee sign Sign the Assignment when the invention is made. Ladas & Parry LLP

Novelty Many jurisdictions have no grace period For those that do, filing in the PCT will qualify as a national filing but you need to advise the country of plan to use their grace period. An offer for sale only starts the clock ticking outside of the US for what is disclosed in the offer unless you actually make the item available to the buyers. Ladas & Parry LLP

Claims Total Number Total Number of Independent Claims EPO charges 210 Eu/claim over 15 to 50 then 525 EU/claim over 50 JPO 4000 yen ($52) per claim over one! PCT Examiners Refuse to Search Total Number of Independent Claims No extra cost per se but… Unity/Future Divisionals/Excess Search Fees/ Beware the EPO PCT Unity Rule Bears on US Prosecution Ladas & Parry LLP

Claims Multiple Dependencies- Types Reference Numerals rules vary by country - PCT Rule 6.4(a) - multiply dependent claims are acceptable but a multiply dependent claim may not depend upon another multiply dependent claim Types medical/means for/business method/ computer Reference Numerals Ladas & Parry LLP

Claims US Practitioners Err with Narrow Claims US Practitioners Err With Multiple Filings Ladas & Parry LLP

Description Claim Support - Japan, China, EPO Breadth - Claim Support Ladas & Parry LLP

Abstract Support in the Description Ladas & Parry LLP

Searching Authorities Available for US applicants Primary - US, Australia, EPO, Korea, Russia Secondary - Nordic Patent Authority (Denmark Iceland Norway), Sweden, Finland, EPO, Austria Ladas & Parry LLP

Value of the Searching Authority Punctuality -PCT Rule 42.1- 3 months from the receipt of the search copy or 9 months from the priority date, whichever is later - Korea and Australia comply Cost Korea -$1212 Australia- $1972 US- $2080 EPO- $2545 Russia – $795 Limitations - EPO style report Ladas & Parry LLP

Before Entering National Stage- Search in Japan Search in China Search in Korea- PCT/KO search will handle this Ladas & Parry LLP

PPH - Saving Time and Money Getting cases through the US rush US PPH rules state that an allowable claim found in the PCT qualifies the applicant to use PPH in the US. Using PPH in the US fast tracks the handling of the case. No guarantee though that US examiner will agree with PCT examiner, but a higher number of PPH cases are allowed (90%) in the US than regular cases and are allowed more quickly. Ladas & Parry LLP

PPH - Saving Time and Money Getting cases through the US with computer claims Getting cases through many jurisdictions faster Ladas & Parry LLP

PCT Prosecution Save your client thousands of dollars and unify the prosecution history Don’t hide the ball - Use the JP search Don’t rely on US prosecution if you want the broadest claims possible. Consider Korea for Chapter II to keep obviousness rejections in control. Ladas & Parry LLP

Timing File first in the PCT File first elsewhere and then in the PCT Using PCT first still gives you 102(e) rights File first elsewhere and then in the PCT Pull your case out of the PCT early Ladas & Parry LLP

Los Angeles, Chicago, New York, London, Munich Mavis Gallenson Ladas & Parry LLP Los Angeles, Chicago, New York, London, Munich Ladas & Parry LLP

Thank You! Mavis Gallenson, Ladas & Parry, LLP Los Angeles