1. Article 34 Paperwork (Response to WO)
(3) Complete set of replacement sheets for amended claims, specification, and/or drawings
Clean Set Only (no mark-ups)

2. Article 19 v. 34 Amendments
If Demand filed, no need to amend claims under Article 19, unless you want provisional protection.
Article 19 Amendments are published, so you may gain provisional rights to the published Article 19 claim amendments (i.e., damages clock)
Article 19
Only need to amend the claims (not drawings or specification)
Don’t want to make any arguments
Article 34
Does not require to first file Article 19 Amendments
Want to Argue
Need to makes changes to specification, drawings (or claims)

3. PCT Examination Report
Type of Examination Report Depends on Whether Applicant Requested Examination (Chapter II) or Not

4. PCT Search (ISA)- Typical Flow
ISA Written
Opinion (WO)
PCT Application
Searching
Authority (ISA)
Not Public
Int’l Bureau (IB)
Int’l Search
Report (ISR)

5. PCT Chapter 1 Only- Typical Flow
(i.e., no Demand
for Examination)
Published
Not Public
International Preliminary
Report on Patentability
(IPRP)
ISA Written
Opinion (WO)
30 Months

6. PCT Chapter 1 Only
From:

7. PCT Chapter 1 Examination Report
Paperwork
International Preliminary Report on Patentability (IPRP)- preliminary, non-binding report on whether the claimed invention appears to be patentable. It is issued by the International Bureau on behalf of the International Searching Authority (ISA) under Chapter I of the PCT where an international preliminary examination report has not been or will not be established. The report has essentially the same contents as the written opinion of the International Searching Authority. In other words, if the Applicant does not file a demand for Chapter II examination, IPRP will be the WO.

8. PCT Search (ISA)- Typical Flow
ISA Written
Opinion (WO)
PCT Application
Searching
Authority (ISA)
Not Public
Int’l Bureau (IB)
Int’l Search
Report (ISR)

9. PCT Chapter 2- Typical Flow
Published
Chapter 2 (i.e., Demand
for Examination)
ISA Written
Opinion (WO)
Int’l Preliminary
Examination Authority
(IPEA)
Int’l Preliminary
Examination Report
(IPER)
30 Months

10. PCT Chapter 2
From:

11. PCT Chapter Examination Report
Paperwork
International Preliminary Examination Report (IPER)- is a preliminary, non-binding opinion, established by the International Preliminary Examining Authority (IPEA) on the request of the applicant, on the questions whether the claimed invention appears to be novel, to involve an inventive step (to be non-obvious), and to be industrially applicable. As of 1 January 2004, this report is also known as the "international preliminary report on patentability (Chapter II of the PCT)"..

12. PCT National Phase
Please see Nationalizing PCT Applications in the US presentation that compares the 371 National Stage Procedure with the Bypass Continuation Application Procedure
Presentation is Dated- Some Changes Required Due to AIA
Updated Presentation Coming Soon!

13. PCT Timetable PCT Timetable Months from Earliest Priority Date
Deadline/Action
29th-30th Month
Send Reminder Letter(s)/Call Client for Nationalization Instructions- If instructions are not received, you need to remind the client.
What you need to do- Send a copy of the nationalization letter stamped “Reminder” and/or call the client.
30th Month
Deadline to Nationalize the PCT Application- For most countries, this is the deadline when you need to nationalize the application. Note that you can nationalize the PCT application at any time, but it might be helpful to at least wait until after you receive the International Search Report before deciding whether or not to nationalize.
What you need to do- Send the application to the foreign associate(s) in the countries where the client wishes to seek patent protection

14. Sign up for PCT Newsletter at www.wipo.int
Final Item
Sign up for PCT Newsletter at
Updates on Fee, ISA’s, etc.

15. Woodard, Emhardt, Moriarty, McNett & Henry LLP
Need More Information?
Please Contact:
Chuck Schmal
Woodard, Emhardt, Moriarty, McNett & Henry LLP
111 Monument Circle, Suite 3700
Indianapolis, IN 46204
(317)

16. Patent Cooperation Treaty (PCT) Practice Overview
Patents- Practical Aspects of
International Patent Procurement/Prosecution
June 2015