WASHINGTON – Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) David Kappos and China’s State Intellectual Property Office (SIPO) Commissioner Tian Lipu, announced the start of the Paris Route and PCT Patent Prosecution Highway (PPH) pilot programs beginning on December 1, 2011.
PPH will permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country. Under the Paris Route PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF. The PCT-PPH pilot program will use positive international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty.
There are two issues at play when you reference “deadlines” in the context of foreign patent filing. One deadline can be a priority deadline. That is the deadline you need to meet so that your next filing is legally granted the filing date of a previously file application (i.e., the priority date). The Paris Convention (which guides portions of the PCT) has a 12-month priority deadline. That goes for U.S., Paris Convention Members and PCT Member States.
For the purposes of foreign filing, a provisional application and non-provisional are treated the same. That 12-month clock starts ticking from the provisional filing date to file PCT AND obtain that provisional’s priority date. If you:
1) Filed a provisional on January 1, 2000, (OK)
2) Filed a non-provisional on June 1, 2000, (OK)
3) Filed a PCT application on March 1, 2001 (PCT OK but only for June 1, 2000 priority date)
you would only get priority to the non-provisional filed on June 1, 2000 (only application within 12 months). HOWEVER, you might lose far more than a priority date as discussed below.
The second issue of deadlines is that of statutory bars resulting from publication. In the university environment, there is a strong tendency to disclose invention – particularly right after a provisional is filed. So, let’s add to the scenario above:
1) Filed a provisional on January 1, 2000, (OK)
2) Disclosed invention February 1, 2000, (OK)
3) Filed a non-provisional on June 1, 2000, (OK)
4) Filed a PCT application on March 1, 2001 (PCT Fails)
In the above-mentioned scenario you lost your provisional priority date for the PCT. Foreign countries have an absolute novelty requirement meaning there can be no disclosure before an application is filed. Since the PCT couldn’t use the provisional filing date (outside 12-months) it had to use the non-provisional filing date which was AFTER the disclosure.
TAMPA. November 21, 2008. Director of the Patent Cooperation Treaty (PCT) legal division at the World Intellectual Property Organization (WIPO) in Geneva, Switzerland gave a presentation on PCT at the University of South Florida. Matthew Bryan reported that 139 countries are currently PCT members. Some countries that may join soon include:
There are 13 active PCT searching authorities. For applications originating in the United States, there are four (4) searching authorities:
Bryan reported excellent anecdotal feedback from KIPO searches, both in timeliness and quality.
Japan and Korean file all their PCT applications in XML format which greatly facilitates processing the publication over the U.S. PDF format which is far less structured. Bryan reported that the USPTO admitted its ABX experiment in XML-based submissions was a gross failure due to its haphazard handling of equations and scientific notation frequently needed in patent applications. Bryan indicated that talks with Microsoft and OpenOffice have yielded some hope that these organizations will create tools for U.S. applicants to reliably submit PCT applications in XML format. However, nothing definite is currently planned.
As of January 1, 2009, new PCT amendments will permit Korean and Portuguese PCT applications to be published in those languages respectively. An English abstract and search report will also be published. By far the most significant new feature of PCT will be the Supplementary International Search (SIS).
Currently, the PCT search specification calls for searching 140 technical journals, 40 million patents and other references. The search is conducted in the native languages of the International Searching Authority (ISA). However, as noted above, U.S. applicants can only use one of four ISAs while 13 ISAs exist world-wide. Consider if a U.S. applicant may believe that the Russian ISA may provide meaningful search results not available from KIPO or EPO ISAs. Effective January 1, 2009, a PCT applicant may choose to have more than one search done. The PCT applicant would pay the normal ISA's search fee and the SIS would be a "language based" search which takes into account the growing linguistic diversity in prior art. In addition to the normal ISA search fee, WIPO would charge an administrative fee for facilitating the SIS.
A 19 month deadline exists for requesting a SIS. If the main ISA search is not done by 22 months, the SIS will proceed. The ISA carrying out the main search cannot be used for the SIS. For unity of invention issues, a SIS may be conducted on the secondary invention while the main ISA search is performed on the main invention. The Supplementary International Search Report (SISR) is issued 28 months from the priority date.
No opinion will be written in the SISR. Only a list of prior art references with their relevance (i.e., "X", "Y", and the like). The SIS search is retroactive for priority dates back to January 1, 2007 or applications before the 19 month priority term. SIS availability is not currently guaranteed and subject matter may be limited. The status of SIS available by ISA is as follows:
Amendments to Claims: As of July 1, 2009, replacement sheets for amendments will not be accepted. A full set of all new claims must be submitted.
Working Document Attachment: PCT applicants may now submit documents in pre-converted form (i.e., Microsoft Word prior to making into a PDF). These pre-converted files are attached to the PCT submission. If the PDF file has a problem, the PCT applicant has 30 months from the priority date to correct using the pre-converted attached file. For U.S. PCT information, applicants may contact Charlie Pearson or Mike Mees at the USPTO.
Future Plans for WIPO/PCT:
Practice Tip:
Bryan indicated that for a withdrawal of a PCT application technically either the International Bureau (IB) or the Receiving Office (RO) can accept a petition (having all the inventors' signatures). However, Bryan cautioned against sending it to the RO. There is often a delay and the RO does not send the withdrawal in time for the IB to halt publication. He suggested always sending to the IB and making the withdrawal conditioned on the IB's ability to keep the application from publication (at least 2 weeks are needed prior to publication).
