1. PCT Practice Washington, DC
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2. The Benefits Of Using The PCT
CONSIDERATIONS
Applicant
Novelty
Claims
Description
Abstract
Searching Authorities
PPH
PCT Prosecution
Timing
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3. 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)
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4. 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of the period of priority, if, at the time of filing the subsequent application, the said previous application has been withdrawn, abandoned, or refused, without having been laid open to public inspection and without leaving any rights outstanding, and if it has not yet served as a basis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.”
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5. 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).
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6. 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 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.
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7. 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.
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8. 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.
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9. 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 ($52) per claim over one!
PCT Examiners Refuse to Search
Total Number of Independent Claims
No extra cost per se but…
Unity/Future Divisionals/Excess Search Fees/ Beware the EPO
PCT Unity Rule Bears on US Prosecution
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10. Claims Multiple Dependencies- Types Reference Numerals
rules vary by country - PCT Rule 6.4(a) - multiply dependent claims are acceptable but a multiply dependent claim may not depend upon another multiply dependent claim
Types
medical/means for/business method/ computer
Reference Numerals
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11. Claims US Practitioners Err with Narrow Claims
US Practitioners Err With Multiple Filings
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12. Description Claim Support - Japan, China, EPO Breadth - Claim Support
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13. Abstract
Support in the Description
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14. Searching Authorities
Available for US applicants
Primary - US, Australia, EPO, Korea, Russia
Secondary - Nordic Patent Authority (Denmark Iceland Norway), Sweden, Finland, EPO, Austria
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15. Value of the Searching Authority
Punctuality -PCT Rule months from the receipt of the search copy or 9 months from the priority date, whichever is later - Korea and Australia comply
Cost
Korea -$ Australia- $1972
US- $2080 EPO- $2545
Russia – $795
Limitations - EPO style report
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16. Before Entering National Stage-
Search in Japan
Search in China
Search in Korea- PCT/KO search will handle this
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17. 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.
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18. PPH - Saving Time and Money
Getting cases through the US with computer claims
Getting cases through many jurisdictions faster
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19. 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.
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20. 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
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21. Los Angeles, Chicago, New York, London, Munich
Mavis Gallenson
Ladas & Parry LLP
Los Angeles, Chicago, New York, London, Munich
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22. Thank You! Mavis Gallenson, Ladas & Parry, LLP Los Angeles