- Projected CLE: 15.0 hours
- Price: $2295
- Course Times: Fall 2013: 8:15-11:30; 1:30-4:45 (Wed-Thurs); 8:15-11:30 (Fri)
Please note that the faculty members listed for this course are subject to change prior to the actual course date.
Course Faculty • The two faculty members have extensive government and corporate experience in all aspects of PCT matters.
Why Should You Take This Course?
Attendees will learn the benefits and advantages of the PCT procedure as well as the numerous options and safeguards available for applications filed under the PCT. The Comprehensive PCT course enumerates procedures and strategies designed to obtain patent protection for inventions in multiple countries through the filing of a single international application under the Patent Cooperation Treaty. While a basic working knowledge of the PCT is useful when taking this course, it will prove valuable to both new and experienced users of the PCT.
Since coming into force in 1978, the Patent Cooperation Treaty (PCT) has established itself as a valuable way for applicants to obtain patent protection in many countries around the world. The number of PCT Contracting States is currently 146 and growing. PCT members include the vast majority of industrialized, developing and emerging countries of the world. The Comprehensive PCT course guides the attendees chronologically through the international phase of the PCT and into the national phase before the national and regional patent Offices of interest. The instructors present strategies for effective use of the PCT, the benefits obtained and options available when using the PCT. In addition, the course covers the numerous safeguards available for applicants, including the restoration of priority rights and incorporation by reference.
The PCT allows applicants to secure a filing date in all PCT Contracting States by filing a single application in their home country and in their home language. The PCT provides a comprehensive search of the prior art and a preliminary, nonbinding written opinion on the novelty, inventive step (non-obviousness) and industrial applicability (utility) of the claimed invention. In addition, applicant has an additional 18 months beyond the end of the Paris Convention priority year to make final decisions on where to seek patent protection. The delay in the associated expenses of national filings alone make the PCT a cost-effective procedure and can result in a significant cost saving by helping to avoid unnecessary filings and/or allowing filings in countries where commercial importance has grown between international filing and national phase entry.
By filing an international application, all PCT Contracting States and four regional offices are automatically designated and are available for national phase entry later in the process. Whether the international application is the first filing or it claims priority to an earlier filing, the applicant does not have to make the final decision on where to seek patent protection until 30 months from the earliest priority date. The final decisions are based on the information obtained in the international search report and the international preliminary report on patentability as well as information obtained by the applicant regarding the scientific status and commercial value of the invention. In short, through using the PCT, the applicant will have a much better idea of the likelihood of obtaining commercially meaningful patent protection for the claimed invention. In addition, the applicant will have the opportunity to obtain additional search results through the supplementary search option as well as have the opportunity to advance prosecution by using the optional international preliminary examination procedure. Applicant can amend the application and/or provide arguments for consideration by the examiner prior to the issuance of the international preliminary report on patentability (Chapter II of the PCT). Depending on the International Search and Preliminary Examining Authorities selected by the applicant, certain national and regional patent Offices (including the US) allow a favorable PCT work product (for example, international preliminary report on patentability) to be applicant’s “ticket” to accelerated examination on their patent prosecution highway.
This Comprehensive PCT course discusses: a) when the use of the PCT is advantageous and when it is not; b) the effects on patent term based on the first (priority) application; c) selection of international authorities under the PCT for greatest advantage; d) the information received by applicants during the PCT process; e) entering the national phase, f) upcoming changes in the PCT, g) use of PCT search and examination results to utilize the Patent Prosecution Highway, and h) the effect of the America Invents Act on practice under the PCT plus a host of other PCT-related topics. In addition, the course presents the growing information available from the WIPO Internet site via the PATENTSCOPE search tool. The Comprehensive PCT course includes a detailed look at patent-related provisions of the Paris Convention.
A comprehensive text is used in the course presentation that includes detailed explanations of the various topics and sample forms.