1. PCT- Short Flow Chart Priority PCT Application Filed Restoration of Priority Deadline Search by ISA Int’l Publication + ISR Deadline to File Demand for Chapter 1 Countries O Months < 12 Months 14 Months 16 Months 18 Months 19 Months

2. PCT- Short Flow Chart Chapter 1 Deadline to Nationalize Deadline- Demand Examination & Response to Written Opinion Examination by IPEA Target Date to Issue IPRP by ISA (for Chapter 1) or IPEA (Chapter 2) Chapter 2 Deadline (Most Countries) Chapter 2 Deadline (A Few Countries) 20 Months 28 Months 30 Months 31 Months 22 Months

3. PCT Application- Pre-filing Checklist  Get Applicant and Inventor Information  Nationality may impact Receiving Office (RO)  Foreign Filing License Granted/Needed  Pick Receiving Office (RO)  USPTO  IB  Pick International Searching Authority (ISA)  Speed, Price, Where Nationalizing, etc.  Prepare Paperwork (format A4)

4. PCT Filing- Typical Flow US Attorney USPTO (RO) Int’l Bureau (IB) PCT Application RequestPCT Application Request Contents Inventor(s)/Applicant(s) Designate Agent Not Designate Countries (DE, JP, KR) Priority Claim & Documents Pick Int’l Searching Authority (ISA) Representative Figure

5. PCT Filing- Unusual Flow US Attorney Int’l Bureau (IB) + RO PCT Application Request Directly File with IB No Applicant is US Resident or National (but a resident/national of PCT Contracting State) Restoration of Priority- within 2 month window after 12 Month Paris Convention Deadline

6. PCT Receiving Office (RO) How to Pick a Receiving Office (RO) –Depends on where applicant is a national or residence Two Options –Applicant’s National Patent Office (if allowed)  Normally, USPTO –WIPO International Bureau (IB) From US Perspective, if no US Applicant, need to file with IB as RO and pick local attorney to prosecute.

7. Filing USPTO as Receiving Office (RO) 1.Familiarity with E-filing procedures. 2.File pdf’s of documents. 3.Instant Electronic Acknowledgment. 4.Payment via Credit Card in US Dollars. 5.Access to Documents in Private PAIR. 6.For invention made in the US, no separate request for a foreign filing license is needed.

8. Filing WIPO-IB as Receiving Office (RO) 1.Will need to obtain a WIPO Digital Certificate for each person who will physically file the applications. 2.The Digital Certificate must be used ONLY on the computer on which it was validated. 3.The Digital Certificate must be renewed every two years. 4.Will need to download and use PCT Easy software, which needs updating regularly.

9. Filing WIPO-IB as Receiving Office (RO) 5.Will need to open a WIPO Deposit Account 1.Otherwise, file an application at the International Bureau, then receive a link electronically to make an Epayment on WIPO via credit card. 2.You may have added conversion fees from US $ to Swiss francs on your credit card bill. 3.Pay by bank transfer to WIPO’s bank account or postal account 6.Will never have access to complete file history.

10. Filing WIPO-IB as Receiving Office (RO) 7.If invention made in the US, you will need a foreign filing license from the USPTO to file a PCT application at the IB. 8.Can file via fax; however, original must be delivered within 14 days from the fax transmission (FedEx preferred). 9.Lose valuable filing time since WIPO is six hours ahead of us.

11. PCT Searching Authorities (ISA) Right Now, You Can Select From Among Several Patent Offices to Conduct the Search US Searching Authorities Include –USPTO –EPO (European Patent Office) –KIPO (Korea) –Australia (IPAU) –Russia (Rospatent) –Israel (ILPO) Note: Option Secondary ISA

12. PCT Searching Authorities (ISA) Receiving Office (RO) US or IB ISA/USISA/EPISA/KRISA/AUISA/RUISA/IL

13. PCT- Options to Save Money  Below is a chart summarizing the options. Please note that the search fees are based on October 1, 2013 figures. ISA Office Search Fee BenefitsIssues Australia$1,925 Less expensive than Europe Only searches applications in very limited technology fields. For example, it does not search all mechanical engineering and some biotechnology type inventions. Europe$2,366 Perceived high quality search Expensive, and it will not conduct searches for applications that concern some types of technologies. Korea$1,219 Inexpensive and receive results relatively quickly. Limits the technology of applications that can be searched. United States of America $2080 Perceived high quality search Expensive and does not supply the search report in a timely fashion (e.g., before Chapter II deadline).

14. PCT- Options to Save Money  Below is a chart summarizing the options. Please note that the search fees are based on October 1, 2013 figures. ISA Office Search Fee BenefitsIssues Russia$704InexpensiveNo experience. Israel$969InexpensiveLimited number of applications allowed

15.  Generally two ways to prepare/file the "paperwork" for a PCT application.  PDF forms (e.g., Request, transmittal, etc.)  PCT-SAFE (SAFE = Secure Applications Filed Electronically) software helps to prepare the electronic forms for filing. Two modes: –Fully electronic mode: The description, claims, abstract and drawings are attached in PDF, TIFF or XML format. –PCT-EASY mode: The request form as well as the application body are submitted on paper, accompanied by a physical medium (floppy disk, CD, etc.) which contains a zip file with the request form, the abstract and a log file created through PCT-SAFE.  For ease of viewing, the presentation will show the PDF forms. How to File a PCT Application

16.  Application (format for A4 Paper and line nos.)  Specification- Format A4 paper & line numbers  Claims  Drawings- add drawing sheet numbers  Abstract- add reference numerals  Transmittal  Request  Fee Transmittal  Declaration(s) (optional) How to File a PCT Application- Paperwork

17.  Transmittal

18. How to File a PCT Application- Paperwork  Request- Page 1

19. How to File a PCT Application- Paperwork  Request- Further Applicants & Inventors

20. How to File a PCT Application- Paperwork  Request- Supplemental Box

21.  Request- Designations & ISA How to File a PCT Application- Paperwork

22.  Request  Transmit Prior Search Results  Declarations How to File a PCT Application- Paperwork

23.  Request - Sample Declarations

24.  Request  Checklist  Signature How to File a PCT Application- Paperwork

25.  Fee Calculation Sheet