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Best way to nationalize pct applications in
 

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    Best way to nationalize pct applications in Best way to nationalize pct applications in Presentation Transcript

    • Nationalizing PCT Applications in the US Which is Better, 371 Route or Bypass CON Route?
    • Nationalizing PCT Applications in the US Which is Better, 371 Route or Bypass CON Route? 371 Nationalization v. Bypass Continuation Let’s get ready to…
    • …Training- Review of Some of the Basics
    • PCT Applications- Nationalization Routes • PCT Applications that designate the US are considered US applications, so... • Can Nationalize under 35 USC 371- traditional nationalization- a 371 nationalization is technically the same application as the PCT application • Can file a “Bypass CON”- a continuation application that claims priority under 35 USC 120 to the PCT application as a continuation application of the PCT application • 35 U.S.C. 363 provides that "[a]n international application designating the United States shall have the effect, from its international filing date under article 11 of the treaty, of a national application for patent regularly filed in the Patent and Trademark Office....“ --See, MPEP 1895
    • PCT Applications- 371 Nationalization Route International Phase Transmittal National Phase PCT Application US National Stage -Same Int'l App. No. -Assigned New US App. No. (for tracking) -Claims & Spec. amendments are based on those during international phase. -Generally, do not need a new IDS for Refs. cited in Search Report/Written Opinion (as long as transmitted to USPTO). -Generally, do not need to resubmit certified copies of foreign priority documents as long as transmitted to the USPTO (but may need to submit verified translation). Treated as if the Same Application
    • PCT Applications- Bypass Continuation Route International Phase PCT Application “This application is a continuation of CON. International Application No. PCT/... Continuation Application Treated as a New Application -New US App. No. -Claims & Spec. amendments are based on what is filed- amendments during international phase do not count. -Need a new IDS for Refs. cited in Search Report/Written Opinion. -Need to resubmit certified copies of foreign priority documents and may need to submit verified translation.
    • The Match- Let’ s Get Ready to…. Compare
    • …Filing Requirements Round 1
    • PCT Applications- Filing Requirements • 371 Nationalization • Bypass CON • Transmittal (PTO-1390) • Application- specification, claims, abstract & drawings • Filing Fees- Filing, Search, • Need priority claim and Examination fees, etc. • Filing Fees- not required •May also need.. • Preliminary Amendment - to remove multiple dependent claims
    • 371 Transmittal
    • …Practical Issues Round 2
    • PCT Applications- Practical Issues Filing • 371 Nationalization • Bypass CON • Sometimes, not sure which claims • Standard practice are pending due to amendments during the international phase • Allows addition of new • Have to deal with multiple matter (CIP) –see, MPEP dependencies 1895 • Not familiar with transmittal • Do not need to submit copy of the application and other paper work- just makes USPTO file messy • No new matter allowed (i.e., no CIP’s)
    • …Foreign Certified Copies Round 3
    • Certified Foreign Priority Documents • Easily missed- need to check PAIR – If Examiner comes across intervening reference, they may request foreign priority documents (to show entitled to earlier date) – Otherwise, no notice! • To Perfect a Foreign Priority Claim • USPTO Needs a Certified Copy 1. Paper Certified Copy, OR 2. Patent Document Exchange (PDX) Request- Electronic Transfer to USPTO (automatic now)- but some countries not yet participating. • Verified English Translation- for non-English foreign priority documents
    • PCT Applications- Foreign Certified Copies • 371 Nationalization • Bypass CON • Certified copies of foreign • You will need to submit a priority applications are not certified copy of foreign required so long as the priority application International Bureau • BUT now have Patent transmits the copies to the Document Exchange USPTO. (PDX) program with a majority of countries • USPTO will now • If priority application is not in automatically request English, you will still need to • If priority application is not in transmit a verified English, you will still need to translation. transmit a verified translation.
    • …After Filing Formalities Round 4
    • PCT Applications- After Filing Formalities • 371 Nationalization • Bypass CON • Filing Receipt takes a long • Filing Receipt- processed time to receive relatively fast • Signed Declaration- will not • Signed Declaration- filing receive a filing date until a date is not based on when signed declaration is filed declaration is filed (hurts patent term as well) • Filing Fees- can file later
    • PCT Applications- After Filing Formalities • 371 Nationalization • Bypass CON •Publication • Publication • Claim amendments made at the • As long as the amended time of nationalization via a claims are incorporated into Preliminary Amendment might the body of the application be published (or not) at the (i.e., not via a Preliminary discretion of the USPTO. Amendment), they will be published. • Normally, the application is published without the amended -Any new matter questions- claims from the Preliminary you can submit remarks. Amendment. • Eliminates the problem with damages calculations. • This is a BIG problem because you might time from your damages calculation for provisional rights.
    • …Information Disclosure Statements Round 5
    • PCT Applications- IDS Comparison • 371 Nationalization • Bypass CON • Do not need to submit IDS for references cited during • Need to submit an IDS international phase (e.g., in the • “When filing a continuing application that claims search report) so long as benefit under 35 U.S.C. 120 to an international USPTO Form PCT/DO/EO/903 application that designated the U.S. (see MPEP § 1895), it will be necessary for the applicant to indicates search results submit an information disclosure statement transmitted to national file. complying with 37 CFR 1.97 and 1.98 in the continuing application listing the documents •Still probably good practice to cited in the international search report and/or the submit IDS because international preliminary examination report of the international application if applicant wishes references will not be listed on to ensure that the information be considered by the face of the patent unless the examiner in the continuing application.<“ cited on IDS. --see, MPEP --MPEP 609.02 609.03 • Will need to submit IDS for new • Will need to submit IDS for new references references
    • …Restriction Practice Round 6
    • PCT Applications- Restriction • 371 Nationalization • Bypass CON • Relies on PCT unity of • Uses US standard restriction invention standard practice (independent & distinct) • Usually results in less independent claims • On average, more independent claims- more • This can cause problems permissive because US examiners may not be familiar with the • US Examiners are familiar standard and incorrectly use with the standard US standard restriction practice
    • …Prosecution & Fees Round 7
    • PCT Applications- Prosecution & Fees • 371 Nationalization • Bypass CON •Totally clean search report/opinion (i.e., all claims are patentable)- very • Bypass route is the only way to unlikely use traditional accelerated examination (371 will not work) • May receive marginal filing fee --See, USPTO’s Accelerated discount if have clean Search Examination FAQs Report/Written Opinion by US as ISA •$320 Savings US/ISA • Clean written opinion- still pay the •$650 Savings other normal ISA’s same fees (Rare) •New- May use PCT-PPH to speed • PCT-PPH available for bypass up examination when originating applications as well application is filed in certain countries (JPO, EPO, etc.) • No fee now required
    • …Patent Term Adjustment Round 8
    • PCT Applications- Patent Term Adjustment • 371 Nationalization • Bypass CON •Will lose patent term if: • Will only lose patent term if file signed declaration more • Do not request expedited than 3 months after mail examination (check the right date of missing parts. box on transmittal). • File signed declaration after nationalization date.
    • Quick Patent Term Adjustment Refresher • 35 USC §154(b)(1) Periods • (A) Guarantee of prompt USPTO responses- 14 months for USPTO to send an Office Action or Notice of Allowance (plus various 4 month periods)- Examination Delays • (B) Guarantee of no more than 3-year application pendency- USPTO fails to issue patent 3 years after actual filing date • No Double Counting When Periods Overlap • § 154(b)(2)(A) "[t]o the extent that periods of delay attributable to grounds specified in paragraph (1) overlap, the period of any adjustment granted under this subsection shall not exceed the actual number of days the issuance of the patent was delayed."
    • Wyeth v. Kappos (Fed. Cir. 2009) Issue: When does the overlap occur? USPTO 37 CFR § 1.703(f)- B guarantee period starts at the time of the filing of the application, not 3 years after the filing date. You only get the greater of the A or B periods USPTO – 3 Years PTA Overlap Overlap Here B Delay Here A Delay A Delay Filing 14 mo. Office 3 year Issue 4 mos. from Issue date date Action date fee issue fee date issued paid payment, patent should issue
    • Wyeth v. Kappos (Fed. Cir. 2009) Federal Circuit A & B overlap only occurs after 3 years from the filing date. (A+B Formula) 1 Year USPTO – 3 Years PTA Overlap B Delay Here A Delay A Delay Filing 14 mo. 26 mo. 3 year Issue 4 mos. from 6 date date Office date fee issue fee years Action paid payment, issue issued patent date should issue
    • Wyeth v. Kappos (Fed. Cir. 2009) • USPTO Response • USPTO will be processing recalculation requests under an interim procedure that is available to a patentee whose patent issues prior to March 2, 2010, and who requests it no later than 180 days after the issue date. • This procedure is available only for alleged errors in calculation that are specifically identified in Wyeth. • Information on requesting a recalculation of patent term is on the USPTO Web site at http://www.uspto.gov/patents/announce/pta_wyeth.pdf.
    • Wyeth v. Kappos (Fed. Cir. 2009) • USPTO Wyeth PTA Form PTO/SB/131
    • Novartis Challenges Interim Procedure • Novartis • "[t]hese interim procedures included an expedited, informal procedure for seeking recalculation of PTA solely on the basis of Wyeth, but extended that remedy only to patents issued on or after September 2, 2009." … it would “deny as untimely any request for recalculation of patent term adjustment indicated on a patent that is not filed within 180 days of the day the patent was granted."
    • Japan Tobacco Petition USPTO Miscalculating Period B for PCT 371 National Stage Applications Originally, USPTO considered the B Period filing date= when an international applications fulfilled the requirements of 35 U.S.C. § 371 (e.g., filed signed Oath/Dec.). BUT, 37 C.F.R. § 1.702(b) states that "the term of an original patent shall be adjusted if the issuance of the patent was delayed due to the failure of the Office to issue a patent within three years after the date on which the application was filed under 35 U.S.C. 111(a) or the national stage commenced under 35 U.S.C. 371(b) or (f) in an international application.” Section 371(b) states that subject to § 371(f), "the national stage shall commence with the expiration of the applicable time limit under article 22 (1) or (2), or under article 39 (1)(a) of the [PCT].“ = 30 Month Chapter II Deadline So the B-Period filing date for 371 national stages should be the 30-Month Chapter II deadline (if filed under 371(b)-- more later)
    • Japan Tobacco Petition USPTO USPTO relents- B-delay should be calculated based on the date on which the national stage commenced, not the date on which the requirements of § 371(c) were fulfilled. 3-Year B-Period Chap II File Signed Deadline Declaration- (30 Months) satisfy 371(c)
    • Japan Tobacco Petition PCT Patent Term Landmines B-Period Delay Landmine- Early 371 Nationalization If Nationalize under 371 before 30-month chapter II deadline and satisfy 371(c) requirements (e.g., pay fees, signed Declaration, etc.), you still need to expressly request early processing under 371(f) to get the nationalization date for B-Delay filing date. If not, B-Delay filing date will be based on the Chapter II (30- month) deadline & not the earlier nationalization date. Contrast regular utility or bypass CON- B-Period filing date is the actual filing date of the application.
    • Japan Tobacco Petition B-Delay Period Landmine Nationalize PCT Application before the Chapter II Deadline Satisfy 371(c)- file signed declaration, etc. Expressly request early processing (check the box on form) 3-Year B-Period B-Delay filing date starts before Chapter II Deadline Nationalize Chap II Deadline (30 Months)
    • Japan Tobacco Petition B-Delay Period Landmine Nationalize PCT Application before the Chapter II Deadline BUT Fail to satisfy 371(c) OR Fail to expressly request early examination 3-Year B-Period B-Delay filing date starts on Chapter II Deadline Nationalize Chap II File Signed Deadline Declaration- (30 Months) satisfy 371(c)
    • Japan Tobacco Petition B-Delay Period Landmine- COMPARE Instead file via the bypass CON route BUT Fail to file signed declaration OR Fail to expressly request early examination B-Delay filing date starts 3-Year B-Period before Chapter II Deadline Bypass CON Chap II File Signed Filing Date Deadline Declaration (30 Months)
    • PCT- Patent Term Adjustment PCT Patent Term A-Delay Landmines A-Delay Date is still based on fulfillment of national requirements under 371(c). For example, if you do not file a signed declaration when the PCT application is nationalized, you lose A-term until you file the signed declaration. Contrast to a regular utility or bypass CON- where you do not lose A-term so long as you file the signed declaration within 3-months of Notice to File Missing Parts
    • PCT- Patent Term Adjustment A-Delay Period Landmine Nationalize PCT application under 371 Fail to file signed declaration with nationalization A-Period A-Delay- lose term- until Lose Term file signed Declaration Nationalize Chap II File Signed Deadline Declaration (30 Months)
    • PCT- Patent Term Adjustment A-Delay Period Landmine- COMPARE Instead file via the bypass CON route Fail to file signed declaration when application filed File signed declaration 1-month after missing parts deadline A-Period 2 Month Deadline DO NOT LOSE ANY For Missing Parts A-TERM! Bypass CON Chap II File Signed Filing Date Deadline Declaration w/ 1-Month (30 Months) EOT + surcharge
    • …And the Winner is…
    • PCT- 371 Nationalization or Bypass CON? What is the best way to nationalize a PCT ? Answer: Generally, bypass CON!!! Patent Term PDX Bypass CON Simplicity 371 Nationalization US Restriction...
    • Want to know more? Chuck Schmal Patent Attorney Woodard, Emhardt, Moriarty, McNett & Henry LLP Chase Tower 111 Monument Circle, Suite 3700 Indianapolis, IN 46204 317.634.3456 cps@uspatent.com www.uspatent.com